China and SARs: China: Domestic

August 2018 saw the SIPO renamed the China National Intellectual Property Administration; before this, the centralised IP authority’s remit was consolidated to encompass trademarks, patents and geographical indications. These moves are expected to streamline IP protection in the country. IP protection has also recently received renewed support from the central government, which has cemented its commitment to wipe out bad-faith registrations; given that China processed more than 5 million trademark applications in 2017, this is undoubtedly a daunting task, but sources reveal that a blacklist of malicious filers is circulating among examiners who would automatically block such applications. In addition, the Trademark Adjudication and Review Board and the courts have adopted “refreshed attitudes” towards protecting rights holders from bad-faith filers. To the delight of practitioners, they now “apply the trademark law to a much more mature and consistent standard”. The outlook for IP protection in China is optimistic because of the strong-willed central government.

Firms: enforcement and litigation

Firms: prosecution and strategy

Advance China IP Law Office

Advance China IP Law Office is an imposing presence on the China IP scene. Its 800-strong team stationed in Beijing, Guangzhou, Shanghai and Shenzhen draws on wide-ranging expertise and dispatches patent and trademark briefs with alacrity. Guangzhou-based Lucy Zheng and Steven Li are good first ports of call. Zheng is a diligent portfolio manager with a wealth of experience conducting domestic and international registrations. Li possesses unique insight on safeguarding the brands of Southern Chinese enterprises and organisations, although he represents foreign clients with equal finesse. He leads a patent and trademark practice that encompasses portfolio management and contentious matters.

AFD China Intellectual Property Law Office 

AFD China continues to garner excellent client feedback and as a result features in the WTR 1000 for the second time this year, all thanks to its “perennially prompt and dependable service which comes at great value”. “Superb efficiency” permeates the firm’s every level and it earns plaudits for dispensing “well-considered advice”. In this regard, Xia Zheng leads by example. As one respondent espouses: “She never fails to fill us in on the necessary details with her recommended courses of action. The chances of success, projected costs and implications of any office actions are always spelled out clearly to us – all in Zheng’s faultless English.”

An, Tian, Zhang & Partners

Patent and trademark boutique An, Tian, Zhang & Partners has amassed a loyal following of foreign clients since its inception 19 years ago because “the quality of service and the work itself trumps that of many Chinese firms”. Interviewees enthuse about the firm’s enforcement prowess, picking out for particular praise practice head David Tian. Referring to an anti-counterfeiting campaign, one client highlights that “even when it is not possible to conduct a notarised purchase – for example when the target has been alerted – you can trust David Tian to obtain sufficient evidence with a strategic mindset and sheer perseverance”. “He is also an excellent communicator who responds to questions promptly with helpful solutions.” Tian frequently appears before the Trademark Review and Adjudication Board (TRAB) to conduct office actions; most recently he prevailed for Pernod Ricard, Rothschild Wine and Watson Enterprises Limited.

AnJie Law Firm

Full-service firm AnJie has made considerable strides in augmenting its IP offering. The arrival of three former judges – from the Beijing IP Court, the Beijing High People’s Court and the Shenzhen Intermediary Court – coincided with a doubling in the number of IP lawyers; together these two initiatives have added a wealth of breadth and depth to the IP department, which is now home to 27 lawyers and seven partners. Hugo Boss is one of the most notable patrons of Jing He and Steve Zhao. Jing He is “a familiar face in copyright and trademark spats” and an authority on US-China IP issues. Fellow contentious ace Steve Zhao is firmly holding on to the seven-year winning streak he has held as plaintiff in IP litigations.

Beijing East IP Ltd

The “ambitious and diligent” squad at Beijing East IP does a sterling job obtaining registrations for, and protecting iconic Chinese and global brands operating in China. It is highly efficacious in the fight against bad-faith filers and knows the ins and outs of obtaining well-known trademark status. Notably, the firm has been doing some excellent work for a US internet company before the Trademark Office, the TRAB and the courts. Managing partner Jason Wang comes recommended for his prosecution and enforcement nous. He manages portfolios with an eye on potential office actions and litigations. A leading light for the firm’s 30-plus trademark professionals, Lulin Gao was the founding commissioner of the SIPO.

Beijing Janlea Trademark Agency & Co

The A-to-Z trademark solutions offered up by Beijing Jenlea’s 29-strong trademark team are a hot commodity among Chinese and foreign enterprises alike. The firm has an extensive network of branches spanning five provinces and covering both inland and coastal cities. International department manager Joanne Jiao is a name for the address book.

Beijing Sanyou Intellectual Property Agency Ltd 

The first privately held IP firm in China, Beijing Sanyou is a major player on the patent scene but also packs a punch in trademark mandates. With a deep bench of talent comprising former trademark examiners and staff who are proficient in English, Japanese and Korean, the firm is well-placed to mastermind challenging filing and enforcement exercises. Multinational companies find working with adroit portfolio manager Lena Shen a breeze. Educated in China and the United Kingdom, she has a knack for bridging cultural differences.

CCPIT Patent and Trademark Law Office 

Founded in 1952, CCPIT is a veteran IP firm with a venerable reputation as a prosecution powerhouse. Home to 292 patent and trademark attorneys, it is a dab hand at executing large-volume filing exercises largely thanks to the “stringent work flow controls in place that you would expect from a historic outfit like CCPIT”. The firm has a sprawling network of representative offices in Tokyo, Munich, New York and has recently opened a new outlet in Madrid. Aimin Huo and Gang Hu are key points of contact; both are diligent portfolio managers. Japanese speaker Huo keeps counterfeiters at bay with masterfully crafted enforcement actions, while Hu is a familiar face in administrative and civil litigations before the Beijing IP Court and the Supreme People’s Court.

Chang Tsi & Partners 

The “extremely well-rounded” Chang Tsi & Partners continues to win effusive praise from Chinese and US respondents for its “methodical and responsive prosecution and enforcement units”. Clients extol the “superior service, outside-the-box solutions and highly strategic advice” they receive from the rapidly expanding outfit. It recently added more than 20 IP professionals, including four new partner appointments, one of which was Michael Fu. Newly inducted on the WTR 1000, Fu is an incisive litigator on a winning streak. Most recently, he secured well-known trademark status for Tiffany & Co before the Beijing IP Court; prevailed against an infringer in an administrative dispute in a spat for 3M before the Supreme People’s Court; and, together with Simon Tsi, scored a preliminary injunction against a Chinese infringer on behalf of Under Armour, with Rmb2 million compensation to boot. Another of the firm’s pre-eminent litigators, Tsi co-heads the firm with Spring Chang – an indispensable ally to US associates and companies. A seasoned client relationship manager and deft strategist, “she is highly practical and has astute business acumen, not to mention a knack for getting to the bottom of clients’ goals which she works towards collaboratively”.

China Patent Agent (HK) Ltd

IP titan China Patent Agent “excels in all manner of trademark work in terms of quality, speed and cost”. With 30 trademark attorneys, the trademark team can operate swiftly while enjoying the benefits of a large firm; for example, branches in Munich, New York and Tokyo make liaising with global clients extremely straightforward. Members of the firm’s “immense client base” frequently turn to patent and trademark maven Hong Luo, who has a percipient understanding of branding issues faced by companies of all stripes. Justin Tao Jiang debuts on the listings this year, garnering praise for always presenting no-nonsense solutions: “Sometimes you get ambiguous answers in China, but you always get extremely timely and crystal-clear advice from Jiang.”

China Science Patent & Trademark Agent Ltd

Renowned for its assiduous patent know how, China Science Patent & Trademark Agent also leads a “reliable” trademark practice. Consisting of three trademark attorneys and two lawyers, it is an enticing option for clients on the lookout for highly personalised and attentive advice on branding matters. Juru Sun and Hanmin Sun are key names to note.

China Sinda Intellectual Property Ltd

Some 200 attorneys call China Sinda home, making it a Chinese IP behemoth. While the firm is “prosecution-heavy” on the trademark side, it does offer a complete trademark offering. The ability to receive instructions in a multitude of foreign languages – including English, German, Japanese and Korean – is well-received among clients. In the words of one client: “China Sinda is an extremely cosmopolitan Chinese firm. Clients can rely on the responsive attorneys, who get the message across in fluent English. Sometimes Chinese firms do not communicate in a level of English commensurate with their competence; however, this is not the case with China Sinda.” “What’s more, the president knows the team well and can recommend the best-qualified professionals for the job at hand.” Vice president and trademark practice head Xiang An is an important contact. She has been in the branding game since the country promulgated its trademark law.

Chofn Intellectual Property

“Highly accommodating and responsive, lightning-fast turnaround times, great English-language skills and meticulous advice” are just some of the compliments offered up for Chofn. “Highly commercially attuned,” the firm is renowned for charging reasonable rates; its 96-member trademark team also commands a rising profile in China and abroad. Foreign associates laud its “devout and can-do” work ethic, which is instrumental in “achieving great results in adverse situations”. With 21 offices dotted around mainland China – plus outposts in Hong Kong and in Silicon Valley – it possesses one of the most extensive domestic networks among Chinese firms. Managing partner Tingxi Huo epitomises the firm’s results-oriented ethos.

Fangda Partners

Renowned for its capital markets practice, general law firm Fangda Partners places particular emphasis on “high-end IP dispute work”. Gordon Gao and Dixon Zhang are both first-rate litigators with a history of representing foreign clients in high-value disagreements.

Ferrante Intellectual Property 

Ferrante Intellectual Property’s “highly professional service combines big-firm expertise with the service of a boutique firm”. Staffed by Chinese and European attorneys who “understand the philosophy and how to approach IP issues from Chinese and European perspectives”, the “proactive and efficient” firm is routinely entrusted with key trademark disputes by top Italian brands. Most recently, the set has entered into a partnership with Santander Bank to assist clients to break into the Chinese market. Stewarding the firm is Michele Ferrante, a “reliable expert on the Chinese legal market”. A fluent speaker of English, French, Italian and Spanish, he effortlessly bridges the gap between the Chinese and Western IP markets, having contributed to numerous EU-China dialogues and government meetings.

GoldenGate Lawyers

GoldenGate Lawyers is “a high-end firm staffed by friendly lawyers with an excellent command of English” and stands out from the competition due to its “stable team” who craft “cost-effective” solutions. Its trademark service is all encompassing; trademark application section head Caroline He is the main contact.

HongFang Law & IP Consulting Firm

With bases in Beijing, Guangzhou and Shanghai, HongFang is a smart choice for foreign brands with trademark needs in China. Clients confide that “the firm has superb legal skills and a good grasp of the commercial environment in which clients operate and their business needs”. “Knowledgeable and responsive, the team is skilled in formulating outside-the-box solutions”. Guangzhou-based Nikita Xue impresses with her cosmopolitan outlook and client-oriented mentality. “Intelligent and practical, her advice is truly tailored to the client’s individual situation. Reasonable rates aside, her communication and English-language skills are excellent.” She lately masterminded a raid action in Dongguan for WD-40 that yielded 16,680 infringing items. She is also an active INTA participant who currently co-chairs the Law and Practice: Asia-Pacific Sub-committee. In Shanghai, partner Eric Su breaks into the rankings for the first time – clients extol the resourcefulness and strategic thinking that goes into his enforcement work. Recently, he and his team secured well-known trademark status for Johnnie Walker.

IntellecPro 

With a reputation for the “fine execution of inbound instructions” at “reasonable rates”, IntellecPro is fast emerging as a well-rounded IP shop. It recently added Master Kong, a Chinese food and beverage giant, to its client roster, which already consists of iconic names such as Groupon and ZTE. “Efficient, thoughtful, prompt and reliable,” Wenjuan Liu embodies many of the firm’s virtues.

JunHe LLP

Packed to the rafters with astute legal minds, full-service firm JunHe offers wide-ranging legal services. When it comes to trademarks, the firm’s partners – who have been practising for over 20 years – provide stringent process and quality controls aligned with the firm’s focus on the high-end segment of the market. Chumeng (Jessica) Xu provides “fantastic strategic and commercial advice in a timely manner”. As one client lauds: “Counsel of Jessica Xu’s calibre can be difficult to find in the market. Keeping track of every deadline, she provides reliable guidance which makes it easy for us to understand the Chinese trademark system.” She leads the trademark department alongside Qiang Ma, another highly acclaimed trademarks maestro. “Qiang Ma is very personable and responsive. He is skilled at thinking laterally to arrive at his clients’ objectives in a cost-effective manner”. His partner Tao Sun is lauded for the “excellent results” that he obtains for clients. “He makes satisfying client needs a priority and is flexible in striking a balance with budgetary expectations”.

Kangxin Partners, PC 

Kangxin Partners is held in high esteem by both Chinese peers and foreign associates. With close to 50 members proficient in Chinese, English and Japanese, the firm’s work processes are Six Sigma and ISO compliant. “It is no secret that Kangxin’s internal management is excellent, which is particularly beneficial to its busy registrations practice.” Indeed, Kangxin possesses a proprietary trademark search system, which makes use of artificial intelligence to generate accurate results. The practice is overseen by Gloria Q Wu, a consummate trademark maestro who “thrives under pressure”. “Responsive and meticulous, she builds efficient strategies in line with business objectives; her practical approach is immensely helpful in complex situations.” Her colleague Samiko Sun debuts in the WTR 1000 this year. The rising star recently masterminded several office actions on behalf of Bear Grylls Ventures and Bulgari. Sources describe her as being a “proactive, helpful and pragmatic counsel who communicates her advice to foreign associates without ambiguity”. Another key touchpoint for foreign clients, and particularly US, European, Indian and Australian companies is Aaron D Hurvitz. His special subjects include IP enforcement and technology-driven deals. Finally, managing partner Samson Gang Yu writes about and lectures widely on intellectual property.

King & Wood Mallesons

One of the most revered outfits in China, King & Wood Mallesons is a byword for quality. Offering the full spectrum of trademark services, superb client service helps it stand out from the crowd. “This firm really gets its clients. Its attorneys are always available for a call and would have an answer for us straight away.” The acclaimed set is in expansion mode to consolidate its coverage of the country’s economic clusters. A new South China IP team based in its Shenzhen and Guangzhou outposts complements the well-established Beijing and Shanghai offices; while a new Nanjing office brings the total number of Chinese branches to 12. The “eminent” Xiaoli Yang presides over the trademark team. She is a tenacious strategist and an enforcer all in one, making her a favourite among foreign brands. Lately, she oversaw an opposition and invalidation action on behalf of TripAdvisor, clearing the way for its Class 35 registrations. Jiuchu Lin draws on an impressive arsenal of weapons to fight bad-faith filers. He recently scored wins for Amer Sports, Bottega Veneta and Brioni before the TRAB. Fellow prosecution ace Fei Liao recently took over the Medtronic trademark portfolio. Litigants would do well to seek out Yusheng Shi and Zhongsheng Li.

Lawjay Partners

Primarily serving international law firms and fashion houses, Lawjay Partners enjoys an excellent reputation for its “potent” anti-counterfeiting and litigation offering. The practice is a solid performer in the courtroom where it routinely secures substantial compensation from infringers for its clients. In one case, practice head James Luo triumphed for a famous UK fashion house before the Beijing Chaoyang District Court, obtaining Rmb1.8 million in damages from a counterfeiter. Armed with a PhD in intellectual property, Luo is a fearsome litigator who knows how to secure the best results against infringers. He often makes a point of alerting the media about high-profile trademark litigation decisions. He oversees an expanding practice, which recently admitted a new trademark partner following the opening of two offices in Guangzhou and Shanghai.

LexField Law Offices 

Lexfield’s “pragmatic, results-oriented and intuitive” trademark squad makes light work of the most challenging instructions for the 200-plus companies that make up its premier client base. Its “ability to come up with innovative solutions based on an incisive understanding of international businesses and their goals” is highly acclaimed; much of this can be traced back to founding partner Jan Liu’s “effective leadership”. An erstwhile CCPIT trademark director and King & Wood Malleson’s IP department founding partner, Liu is highly regarded for her “multi-faceted expertise in prosecution and enforcement”. Courtroom sharpshooter Hairuo Zhang made a splash when she secured a victory for Google before the Supreme People’s Court in a TRAB retrial with a consent letter from Shimano – owner of the Nexus mark – resulting in the coexistence of the NEXUS and Nexus marks on the registry.

Lifang & Partners

Continuously expanding its practice scope and teams, Lifang & Partners has made considerable progress. Last year, more than 30 IP attorneys joined the firm while the new antitrust and compliance department opened for business. It also became the first Asian law firm to formally establish a presence in South Korea, when it established a legal consultant office in Seoul to provide counselling on IP and unfair competition law. Guanbin Xie and Bin Zhang have been representing Shanghai Canxing Culture & Media before the Beijing IP Court in a series of Voice of China disputes. Xie is a tenacious litigator who has cultivated a loyal following of multinational technology companies, including IBM and Microsoft, while Zhang is au fait with contentious and contractual issues in the technology and creative industries. An integral member of the firm, Yajun Huang shines brightest in TRAB and court proceedings.

Linda Liu & Partners

Although it is most renowned for its patent service, a buzz is continuing to build around the trademark department at Linda Liu & Partners and it breaks into the WTR 1000 rankings this year as a result. The set is popular with Japanese and Western heavy hitters; and most recently the firm set up outposts in Suzhou and Dalian to cope with rising demand. Fluent Chinese, English and Japanese speaker Sophia Xiao is a name to note; she is a particularly popular choice with Japanese concerns.

Liu, Shen & Associates

Liu, Shen & Associates is a stalwart on the IP scene, having been in the game for a quarter of a century now. It combines a trademark agency and a law firm under one proof, so all instructions are taken care of. Lawyer Lily Changxin Lei and trademark attorney Yuguang Wei embody the best of the firm’s offering. “Incredibly thoughtful, they are always available to answer questions in a great deal of detail; not to mention their excellent English skills make navigating the Chinese legal system easier. They also advise clients in a cooperative manner, which means they are open to different strategies.”

Lung Tin Intellectual Property Agent Ltd 

Among the first firms permitted by the government to represent international clients, Lung Tin is a “top-notch shop providing a highly professional, reliable and cost-efficient service”. Technology companies are increasingly turning to the firm; most recently it secured well-known trademark status on behalf of Kyocera Group before the TRAB. A fluent Japanese speaker, Di (Deland) Wu leads the trademark department with poise. “She is highly professional and deeply knowledgeable about the practicalities of IP protection and has broad experience across numerous industries”. Also highly rated is Ping Sui, an experienced trademark registration and administrative litigation expert with excellent English language skills.

NTD Intellectual Property Attorneys 

NTD’s team of 15 trademark attorneys and 51 lawyers provides incisive guidance on branding issues in English, French, German and Japanese. With liaison offices in New Jersey, Paris and Tokyo, NTD is a popular choice for international businesses. Aidi Ge and Christopher Shen are key contacts.

Panawell & Partners LLC 

Having opened its doors in 2003 as a preferred agency for Chinese research and tertiary institutions, Panawell & Partners serves a diverse client base. The firm’s nimble trademark team – in conjunction with its law firm – has all bases covered, from a brand’s inception to protection through to licensing. William Yang is the first port of call.

Shanghai Patent & Trademark Law Office LLC

Shanghai Patent & Trademark Law Office is a “historic” outfit that runs an “auxiliary” trademark registrations practice, which dovetails nicely with the patent practice.

Unitalen Attorneys at Law 

An IP colossus with some 650 attorneys, Unitalen Attorneys at Law has a sprawling network of offices – covering 24 locations in Greater China on top of outposts in Germany, Japan and the United States. It submits 10,000 trademark applications per year to the Trademark Office on behalf of its diverse international and domestic clients who appreciate the firm’s one-stop shop model. International department director Ray Zhao is respected by foreign associates who admire his “high-quality and professional” service and his “likeable demeanour”. Dan Chen is another cosmopolitan trademark whizz. “She is meticulous, thorough and gives pragmatic advice, which makes her an excellent choice for large portfolios.” She chairs the firm’s US-based consulting arm. Ying Huang possesses an all-around skill set with supplementary knowledge in EU trademark law. Bo Li takes charge of litigation in Shanghai. He is an experienced advocate with a winning record in all manner of trademark actions.

Wanhuida Peksung IP Group 

The product of a successful tie-up between Wan Hui Da and PEKSUNG, Wanhuida Peksung is one of the nation’s most venerable destinations for trademark instructions. The combined firm now commands a crack squad of 200 trademark attorneys and lawyers. Its undisputed prestige comes not just from its size but also its “collegial working relationships with authorities” and “deep bench of academic knowledge”. In this respect, Hui Huang is an exemplary scholar who has worked as an IP researcher at the University of Strasbourg and the China Academy of Social Sciences. He is not afraid to break new ground; most recently he netted an impressive victory for Le Conseil Interprofessionnel du Vin de Bordeaux before the Changsha Court in the country’s first-ever civil case, which resulted in protection for the Bordeaux geographical indication. Huang heads the litigation department with Gang Bai who co-chairs the INTA China Global Advisory Council. Newly ranked Jason Yao is a “main driving force in the litigation department”. A former in-house counsel with Proctor & Gamble and the Acushnet Company, he “possesses a can-do attitude that enables him to craft novel brand protection solutions”. His partner Haiyan Ren holds down the fort on the prosecution side, having recently prevailed for Minnetonka Moccasin Company in an opposition before the China Trademark Office.

Watson & Band Law Offices

Consisting of a law firm and an IP agency, Shanghai-headquartered Watson & Band is a potent force particularly in Eastern China and debuts in the WTR 1000 this year. The firm’s sphere of influence is far-reaching; with existing branches in Beijing, Guangzhou, Harbin and Hong Kong and new offices in Anhui, Gansu and Shangdong provinces. It provides an A-to-Z soft IP service – replete with an in-house investigation team – to a combination of Chinese, Japanese and Western concerns. The side’s ability to nimbly form ad hoc teams for a given project is a particular strength. Yizhou Liu is a deft resolver of soft IP and unfair competition disputes; Liming Zhang is a key contact for registrations, licensing and litigations.

Zhong Lun Law Firm 

Zhong Lun climbs up the league table this year on the back of effusive client feedback. “Highly commercial in its outlook, Zhong Lun provides creative solutions in a prompt manner.” “The team is extremely responsive and diligent, exercising intuitive judgement and manoeuvring nimbly to deal with enforcement issues. On top of this, the firm is skilled in keeping costs within budget while providing updates every step of the way.” The quality of legal advice is highly rated too: “Instead of giving purely legalistic answers, Zhong Lun goes the extra mile and tailors the solution to the commercial reality.” Clients love working with Jimmy Huang and call him “a great ally”. Educated in China and the United Kingdom, “he is articulate and can effortlessly convey advice in a clear and meaningful way to non-Chinese speakers”. “He is extremely smart, dependable and sensitive to the commercial issues faced by clients.” He has implemented “highly effective” registration practices for marquee names such as Jim Beam, Live Nation Worldwide and Treasury Wine Estates, while also overseeing a busy contentious practice. His partner Weihua Yang is a prosecution ace who recently secured well-known trademark statuses for China National Offshore Oil Corporation, iQIYI and Zhongrong International Trust.

Zhongzi Law Office 

Complementing its extensive patent capabilities, the “stable” trademark team at Zhongzi Law Office is an integral part of the firm’s overall IP offering. The compact trademark team – comprising a cosmopolitan mix of talents with overseas work and study experience – can tackle prosecution, licensing and enforcement instructions with alacrity. Xuemin Chen particularly excels in trademark disputes and licensing briefs.

ZY Partners 

Contentious powerhouse ZY Partners has a knack for resolving conflicts “extremely efficiently and effectively” thanks to its customer-oriented service. “It is extremely responsive and provides detailed reports on the status of filings in good time, giving clients sufficient time to make the next strategic move.” Credit must also go to the ZY attorneys who tailor enforcement actions to each individual situation. Making use of the Anti-unfair Competition Law, Hui Zhang enforced the rights of Hyatt International Corporation against infringers in an appeal trial to superb effect. Jingbing Li is another hotshot litigator who adds further contentious strength. Yanling Zheng blends portfolio management, enforcement strategy and administrative litigation expertise, making her a superb all-rounder.

Other recommended experts

Italian rights holders would do well to seek out Fabio Giacopello; he is an arbitrator with the Shanghai International Arbitration Centre and HFG Law & Intellectual Property’s Italian desk contact. Yunze Lian is an anti-counterfeiting ace who recently founded Jadong IP Law Firm. At Hanhow Intellectual Property, Guizeng (Wayne) Liu is an all-around trademarks master, as is Chaoyang Wang, who founded AZIMARC.

Individuals: enforcement and litigation

Individuals: prosecution and strategy