Taiwan

The importance of brand protection is recognised not just by Taiwanese businesses – which are increasingly expanding internationally – but also by the Taiwanese government. The authorities have a much better appreciation for intellectual property now and provide channels for effective enforcement. The specialised IP unit of the police, for example, closely monitors both the physical and online marketplace and proactively liaises with rights holders and their professional representatives.

Firms: enforcement and litigation

1
Baker McKenzie
Formosa Transnational
Lee and Li Attorneys at Law
Tsar & Tsai
Winkler Partners
2
Eiger
Jones Day
Saint Island International Patent & Law Offices
TIPLO - Taiwan International Patent & Law Office

Firms: prosecution and strategy

1
Lee and Li Attorneys at Law
Saint Island International Patent & Law Offices
Tai E International Patent & Law Office
TIPLO - Taiwan International Patent & Law Office
2
Baker McKenzie
Eiger
Winkler Partners
Baker McKenzie
Baker McKenzie’s Taipei crew works shoulder to shoulder with colleagues in other Asian offices and is a crucial cog in a regional – and global – trademark protection and enforcement machine. The group has enjoyed immense contentious success thanks to the close relations it has fostered with the Taiwan government authorities over the years. The benefit of these was apparent when the group led a major raid conducted by the National Police Agency’s special IP division against counterfeiters on behalf of Piaggio & C SpA; the raid resulted in the seizure of more than 500 fake Vespa scooters. Taking charge of this case was Grace Shao, an experienced and no-nonsense enforcer and litigator who does her utmost to get to the right result for her clients.
Eiger
The IP team at full-service outfit Eiger is in fine fettle; over the last year the side has been inundated with new instructions, consolidating relationships with existing clients and hiring new talent. The set provides a first-class service to many famous technology and luxury brands and, with its dexterous straddling of the contentious/non-contentious divide, has helped to cement its reputation as a one-stop shop par excellence. Many clients make a beeline for practice head John Eastwood. Of late, he has been advising Tiffany & Co and Philip Morris International on brand protection initiatives alongside engagements advising on the development of Taiwanese IP policy. Teaming up with Eve Chen, the two acted for Bottega Veneta to take out a local company called Bottega, which had created and submitted a false company history to the administrative courts. Chen is an assured litigator and a firm favourite in the fashion world.
Formosa Transnational
Technology-focused Formosa Transnational is storied in litigation and dispute resolution and is a safe bet in any trademark conflict. Sources state that “it has the best litigators in the country” and point to Fa-Li Lin and Yulan Kuo as prime examples. Although it is best known for its contentious prowess, the ensemble is proficient with anything trademark-related and can guide clients through the prosecution process at home and abroad with verve.
Jones Day
International commercial and IP powerhouse Jones Day has had a branch in Taiwan for nearly 20 years and can provide seamless global support and profound local expertise to brand owners. Litigation and transactional work are meat and drink to the Taipei-based panel of high-calibre IP experts. This includes former district court judge Jason Chen, who is an inveterate litigation winner.
Lee and Li Attorneys at Law
Lee and Li represents a large proportion of the most valuable and powerful global brands with a presence in Taiwan – with whom it goes back a long way. Showcasing “an intimate understanding of the needs of international clients”, its large trademark team gets its teeth stuck into protecting and enforcing IP rights, with superb results. Joseph Shih-Pin Yang is the first port of call for portfolio management and licensing mandates, while Ruey-Sen Tsai is an advocate who is ready for any complex piece of litigation.
Saint Island International Patent & Law Offices
“Saint Island has one of the best prosecution practices in Taiwan and conveys sensible and reliable trademark protection guidance clearly and concisely.” Catering to the firm’s especially strong following of large domestic corporates is Julia Hung, an ever-reliable source of “excellent and meticulous advice”; she executes prosecution briefs with aplomb. As does Amanda Liu and together the pair have cultivated a network of foreign associates and can help local companies to extend their IP reach and business overseas. Veteran William Chen acts as a strategic sounding board for colleagues and clients.
TIPLO - Taiwan International Patent & Law Office
TIPLO enjoys the patronage of many Japanese corporates; the firm has a liaison office in Tokyo and practitioners with language skills that make communication swift and simple. Operating a trademark practice for over 30 years, the side knows how to guide foreign brand owners through the murky waters of the Taiwanese trademark system, while putting patrons at a distinct advantage thanks to its comprehensive proprietary database. Johnny Yang is a safe pair of hands for absolutely anything relatedto brands. Another seasoned pro, HG Chen shines brightest in trademark and unfair competition disputes. With over 150 specialists, Tsai, Lee & Chen is ready to deal with any IP-related mandate thrown its way. The trademark practice here is in fine form, with new domestic and international clients instructing it on a daily basis; a key attraction is the efficient and cost-effective portfolio management service, although recent litigation wins have served to boost an already outstanding reputation. An ace cross-strait enforcer and IP litigator, Crystal J Chen continues to record impressive victories for her clients.
Tsar & Tsai
Award-winning general practice Tsar & Tsai has extensive expertise in a multitude of legal areas, a central one being intellectual property. Drawing on a deep repository of trademark expertise, it robustly advises clients – including top players in the fashion and tobacco industries – on all manner of issues, from prosecution to litigation and anti-counterfeiting, in addition to IP valuation and commercial exploitation. Clients queue around the block for the services of IP group director Joyce Ho; she supplies gilt-edged strategic patent and trademark counsel and blends substantial antitrust expertise into her IP practice.
Winkler Partners
Already a hot commodity among high-value brands, Winkler Partners’ reputation has been growing consistently as the household names continue to come calling. Busy and innovative companies – those that regularly launch new products and services – find that the dynamic team has the technological infrastructure necessary to rapidly procure and maintain trademark rights, while devising solutions for marketplace competition and conflict issues. Recommended for his “profound knowledge, great experience, practical solutions and clear communication”, practice chief Peter Dernbach is a Swiss Army knife of a lawyer who can guide the way when the path forward is not clear. A prominent figure within various Taiwanese IP organisations as well as the International Trademark Association, he makes a key contribution to the development of trademark law and policy at home and abroad. Showcasing her prosecution nous, partner Christine Chen has recently been advising the Scotch Whisky Association on certification marks. However, with precedent-setting infringement awards to her name, she is best known for her litigation prowess.
Tai E International Patent & Law Office
In 2017 Tai E celebrated 40 years as a specialised IP firm, having entered the legal market in 1952 as a general practice office. Its large team – comprising eight trademark agents and 35 professionals – maintains the top filing and registration practice in the country. The firm also delivers when it comes to contentious administrative actions; acting together, Fred Chi-Tai Yen and Amanda Hung have recently recorded successes for Audi, Volkswagen, the US Postal Service and Kangol in oppositions. Yen manages the firm, while Hung holds the reins of the trademark practice.

Individuals: enforcement and litigation

Christine Chen - Winkler Partners
Crystal J Chen - Tsai, Lee & Chen Patent Attorneys & Attorneys at Law
Eve Chen - Eiger
HG Chen - TIPLO - Taiwan International Patent & Law Office
Jason Chen - Jones Day
William Chen - Saint Island International Patent & Law Offices
Peter J Dernbach - Winkler Partners
John Eastwood - Eiger
Joyce Ho - Tsar & Tsai
Yulan Kuo - Formosa Transnational
Fa-Li Lin - Formosa Transnational
Amanda Liu - Saint Island International Patent & Law Offices
Grace Shao - Baker McKenzie
Ruey-Sen Tsai - Lee and Li Attorneys at Law

Individuals: prosecution and strategy

Peter J Dernbach - Winkler Partners
Amanda Hung - Tai E International Patent & Law Office
Julia Hung - Saint Island International Patent & Law Offices
Gary Scott - ALTAI Partnership
Grace Shao - Baker McKenzie
Johnny Yang - TIPLO - Taiwan International Patent & Law Office
Joseph Shih-Pin Yang - Lee and Li Attorneys at Law
Fred Chi-Tai Yen - Tai E International Patent & Law Office
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Issue 72