China and SARs: China: Foreign
International firms in China are plugged into their wider global networks so as to support their diverse, often multinational clientele in a range of trademark matters. While most of these possess a trademark agency licence that permits local trademark filing, only a quarter of the firms ranked in the China: foreign chapter – namely, Baker McKenzie, Clyde & Co, Hogan Lovells and Rouse – have local litigation capabilities available to them. This is a significant distinction, as it means that IP services can be streamlined in one place instead of clients having to instruct multiple firms.
Allen & Overy LLP
The only magic circle firm with a global trademark and design prosecution practice, Allen & Overy LLP stands out from the crowd for its prowess in arbitration – although it is equally proficient in all aspects of trademark work. From developing brand protection strategies to enforcing trademarks against local squatters, the team has the technical expertise to service clients across sectors. Recently, it was involved in advising global conglomerates on a significant transaction deal. All-round IP expert David Shen is the man to look for when faced with a trademark issue.
Going from strength to strength, year on year, AWA Asia recently expanded its trademark department and moved to a bigger office in Beijing. The one-stop shop effortlessly handles all manners of IP issues in China for a largely European clientele across industries and wins accolades for providing timely and thorough advice that combines analysis with practical solutions, while keeping rights holders’ overall goals and objectives in mind. Foreign associates cannot praise the side highly enough: “They are amazing – effective, affordable, helpful, Western-thinking in litigation and generally fabulous. They have a tremendous knowledge of all aspects of IP law and understand what US in-house teams want and need; they cut to the chase and give me a gut check on issues or a ‘quick and dirty’ analysis of a situation.” Master IP strategist Ai-Leen Lim helms the IP practice and is lauded for her practical advice and for always fighting for her clients. “Ai-Leen is a warm and caring person with exceptional listening skills, but she is also tough as nails with the opposing counsel and a pit bull of an IP rights enforcer. This rare combination of genuine warmth, toughness and legal acumen makes her so effective.” “A talented, knowledgeable and dedicated practitioner, Ai-Leen is creative, practical and very strategic. She understands the Western mindset and thinks like a business person as well as a lawyer.” “She always has a solution for every single matter. I have decided never to change our Chinese agent!” WTR 1000 debutante Ashley Zhao is a solid partner, providing “valued and trusted counsel” with a clear legal basis. “She always responds with spot-on advice, making me feel like she really values the business and partnership. I know that my matters are in excellent hands.”
Global IP heavyweight Baker McKenzie is a force to contend with in the complex Chinese legal landscape. Drawing on its vast expertise in the Asia-Pacific region, close cooperation with the Hong Kong team and its joint operation with Chinese law firm FenXun Partners, the global giant offers a complete set of legal services to businesses of all sizes and industries. Its prosecution and litigation capabilities are top notch, especially when it comes to protecting foreign companies against local infringers and trademark squatters. For instance, it helped Givenchy to obtain well-known status in China – a first for the LVMH fashion group. Andrew Sim dispenses advice on IP strategy for the consumer goods and retail industry, as well as food and beverage operations; he recently obtained several multiple well-known trademark designations for Starbucks before the Supreme People’s Court. After a stint at ZY Partners, former IP judge Hui Zhang returns to Baker McKenzie, drawing on two decades of IP experience to counsel multinational clients.
Bird & Bird
Deep industry expertise and a dedicated Greater China trademark team are the hallmarks of Bird & Bird’s IP practice. With eight trademark agents, three of whom are qualified in China, and a local trademark agency complete with an anti-counterfeiting team, the general law firm covers the full spectrum of trademark matters, especially filing and prosecution. Clients can further draw on its offices around the world and formal association with China expert Lawjay Partners, which allows for direct representation in Chinese courts. Trilingual Rieko Michishita straddles the contentious/non-contentious divide, tending to the trademark portfolios and cross-border disputes of famous Japanese brands.
Clyde & Co rides a wave of profusive praise from clients and foreign associates into its sophomore appearance in the WTR 1000; it has “excellent knowledge about Chinese intellectual property, with a European perspective in many legal areas”, enabling attorneys to “understand cultural and legal backgrounds”. The IP team knows how to craft its outstanding knowledge of trademark law “into useful advice and strategy, providing efficient, accurate, solid and arm’s-length services to solve problems completely and promptly”. Further, it “provides excellent legal services with different angles of legal knowledge to tackle the fast-changing legal environment and matters in China”. Unlike other foreign firms, Clyde & Co prides itself on its Chinese joint law venture Clyde & Co Westlink JLV – the only one of its kind outside China’s special economic zones, which enables the side to offer seamless litigation services. A favourite among blue-chip European companies, Elliot Papageorgiou takes the reins of the China IP practice. He is “technically sharp and fully understands legal requirements in his market. Not only is he quick and responsive, he offers cogent and accurate advice to clients, with whom he has developed personal relationships.” “He is an excellent counsel for whole IP strategy in China as he is always sensitive to the commercial and financial realities. He is extremely prompt in responding to requests, often by a simple but very helpful phone call – he is a personal and high-quality contact.” Experienced in contentious trademark matters, Molly Zhuang “delivers high-quality information by working closely with administrative and non-governmental organisations”. IP lawyer Gong Yan recently joined the team and now heads the trademark practice. “She always provides detailed and complete reporting emails that promptly explain any questions we have and is excellent at explaining differences between the Chinese and US trademark systems, making things understandable to a non-Chinese attorney. Her explanations and prompt services are better than others I have worked with in China.”
“A leader in the industry, DLA Piper combines strategic technology with best practices. Its lawyers are experts in the trademark field, providing pertinent rationalised advice and communicating excellently at both global and regional scales.” Priding itself on its worldwide service, the “forward-looking and innovative” IP practice is plugged well into the firm’s global network, enabling it to easily manage multi-jurisdictional trademark portfolios and disputes for industry giants such as Hyatt and Avon. Not only has the side raked in numerous successes in Chinese courts, it is also particularly strong in carrying out anti-counterfeiting measures on behalf of luxury brands. At the helm of the IP practice is gold-rated Horace Lam, supported heavily by California-qualified attorney Reking Chen. “Very creative and resourceful, Horace possesses exceptional character and knowledge. He is responsive and attentive to details too. He leads a very dedicated yet young outfit; our global IP team feels confident when they handle and manage our work.”
The only firm in the China: foreign chapter based in Guangzhou, Gowling WLG is the go-to set for companies with an eye on the South China region. Its trademark filings in China are experiencing serious growth, as is its team, which now consists of two dedicated trademark attorneys focused on prosecution. The side is trusted with the global IP portfolios of many famous brands, which recognise the immense value of attorneys who can offer “Chinese advice with a global perspective” and marry this with “creative and forward-thinking solutions for cross-border trademark protection”. The outfit also undertakes a high volume of enforcement work and runs various anti-counterfeiting programmes, making Chinese litigation “as easy as it can be”. “Great at distilling the complexities of Chinese practice,” Jamie Rowlands captains the IP practice. Jian Xu produces “consistently excellent work”; according to one foreign associate, he is “not only always very responsive, but succeeds in giving us and our clients a good understanding of the – for Europeans sometimes unusual – specialties of Chinese IP law. He and his team are a key contact for resolving difficult situations in China.” Another respondee describes Jian as their go-to person in China, praising his ability to “think of pragmatic solutions to situations where legal remedies might not prove adequate. His English is also excellent, he is very easy to communicate with.” Alice Li wins plaudits for being “a stand-out adviser that we really trust”.
Hogan Lovells International LLP
One-stop service Hogan Lovells protects global brands and local companies alike in China. Through its associated law firm Hogan Lovells Fidelity, the full-service IP team has had a proven track record in the contentious space for the past 35 years, providing direct domestic legal advice that is further enhanced by its broader, international network. Not only has the side been taking on high-stakes cases, including a major cross-border dispute for Merck Sharpe & Dohme (Asia) Limited, it has also been winning well-known marks before the Supreme People’s Court and advising businesses in the life sciences and medical devices field on technology transfer – clearly enjoying a competitive edge over its peers. “They think in the client’s shoes and provide a feasible and efficient way to deal with problems holistically. We will instruct them on more challenging issues.” With Chinese and US-qualified lawyers Zhen (Katie) Feng and Helen Xia at the forefront of the litigation practice, the outfit has had a busy year in court. The former enjoys a fantastic reputation in the local trademark industry, while the latter makes her first appearance in the WTR 1000 this year. Xia obtained recognition for ZF TRW Automotive’s trademarks at the Supreme People’s Court and emerged victorious for WAWI Group’s original equipment market business in China.
A regular at representing multinational and Chinese companies in contentious trademark matters, Jones Day is sought after for its “professional advice with a global perspective”. Its track record of success in high-stakes IP disputes is the result of a suite of cases in the High Court and the Supreme People’s Court on behalf of foreign companies. With a fully licensed domestic IP agency, the firm prosecutes trademarks with ease too. Haifeng Huang splits his time between Beijing and Hong Kong, where he is also ranked as an expert in trademark enforcement. One satisfied client proclaims that they are “deeply impressed by Haifeng’s modesty, speed of response and customer-oriented services”.
Kilpatrick Townsend & Stockton LLP
Kilpatrick Townsend & Stockton LLP makes its first appearance in the China: foreign chapter of the WTR 1000 this year. Gold-rated nationally in the United States, the firm made its second foray into Asia in January 2019 when it opened a Beijing office, where it mainly supports US and European brands in China. After founding the New York office, managing partner Christopher Woods is bringing his experience to China.
Perkins Coie LLP
International IP powerhouse Perkins Coie LLP recently strengthened its IP offering in China with the addition of Sheppard Mullin’s entire team, led by Scott Palmer. Tending to a roster of A-list companies from around the world, the side draws on the platform provided by the general law firm to craft regional IP strategies. It is particularly active in the contentious space – fending off trademark pirates, raking in victories in the IP courts and conducting raids against infringers. Satisfied clients proclaim: “The side is timely and accurate in its work; we never have to worry about missing a deadline. The high-quality and outstanding sophistication of its work has made a difference to our objectives, as has its ability to bridge the language gap between English and Chinese.” Fluent in Mandarin, Palmer rises to the gold tier this year. The vice chair of the INTA trademark office practices committee and member of the INTA China Global Advisory Counsel is highly sought after for “sage and practical” trademark advice. “Scott is very professional and helpful. He thinks outside the box and focuses on finding a pragmatic solution, with the aim of having infringement cease as soon as possible.” “An expert in his field, Scott is very well versed in substance and procedure. We rely heavily on his advice.”
Rouse & Co International
Global IP consultancy Rouse & Co International is a trusted partner of top global and Chinese companies thanks to its “edge over other firms in China when dealing with international IP cases”. One of the largest trademark practices in an international firm, the team takes on some of the most diverse trademark work among foreign outfits in the region and produces excellent results in both contentious and non-contentious matters. Its close collaboration with Lusheng Law Firm, which handles local disputes, further enables it to offer a truly comprehensive set of IP services through an “incredibly professional and responsive” department. This includes 65 professionals prosecuting trademarks, consultants dispensing strategic IP advice and litigators arguing before the Supreme People’s Court. Recently, Rouse helped Bayer Consumer Care Holdings LLC to prevail against Li Qing in a trademark infringement suit valued at Rmb700,000. One of the first trademark agents to qualify in China, general manager Linda Chang is celebrated for her advice on IP strategies with 25 years of experience in the trademark field behind her. Formerly an in-house counsel at China Central Television, WTR 1000 debutante Hatty Cui oversees the trademark practice in China. “Her knowledge of the IP landscape in China has proven invaluable to our working relationship and is one of the main reasons that we have found working with her to be an enjoyable experience.”
Simmons & Simmons (Beijing) Intellectual Property Agency
For the past five years, the efficient 14-strong team at Simmons & Simmons has been running a one-stop shop for trademark owners. Although the firm predominantly defends companies of all stripes against trademark infringers and squatters, it also keeps busy prosecuting trademarks, managing portfolios in China and negotiating IP agreements with “upmost professionalism”. “Always customer-focused, organised and timely,” the outfit is seeing an increasing number of foreign companies transfer trademark portfolios over to secure their IP rights in complex problems, thanks to its “impressive combination of strategic thinking and flawless execution”. Canadian-qualified attorney George Chan heads the IP practice and enjoys an excellent, gold-rated reputation among his peers. “From our first meeting, George was able to clearly articulate the arguments that he felt would help us succeed. His vast knowledge and expertise in IP matters and ability to develop strategic and innovative solutions gave us a formidable advantage.” He wins particular praise for his grasp of the international aspects of intellectual property – where Chinese practice differs from what many lawyers are used to. “George always gives practical advice that allows us to steer through complicated situations effortlessly. He treats this as a relationship business, and he goes out of his way to maintain personal contact on a consistent basis.”
Boasting the highest number of ranked individuals in the China: foreign chapter, SIPS is an expert in Chinese trademark matters, whether in China, Hong Kong or Taiwan. Thriving in both the contentious and non-contentious space, the firm tends to a large amount of IP enforcement work in South China, given that it is one of the few foreign outfits with an in-house investigations team. “They are some of the leading professionals in the anti-counterfeiting field – they know the industry inside and out, obtaining results that very few do because they think outside the box.” The ensemble also maintains key relationships with local counsel in various parts of China to work with and consult on local practice, which multinationals fully appreciate. “They know our IP portfolio and provide practical advice and a thorough analysis on how our trademarks can help us get the results we need and what protection we need to combat problems. Overall, they are cool, fun guys to work with.” The side is singled out for the astuteness with which it advises US companies doing business in China on a wide variety of issues; as well as for the fact that lawyers there are fluent in English and Mandarin Chinese. “I value their honesty, integrity and very transparent way of working. They view themselves as an extension of the brand that they represent; they are completely aligned on goals and provide solutions to achieve them while staying within the budget.” Founder Joseph (Joe) T Simone is laser focused on registry and enforcement work, as well as an active government lobbyist against online counterfeiting and bad-faith trademark registration: “He has his ear to the ground on important geo-political issues.” “Joe provides highly responsive, no-nonsense, practical advice on prosecution, enforcement and strategic matters in China, which can be hard to come by. When we need to know the answer as of yesterday, we turn to Joe.” A trusted adviser to Fortune 500 companies and an excellent litigator, managing partner Dan Plane has been a China IP strategist for nearly two decades. His experience as an in-house attorney for several famous brands has given him “a great understanding of the pressures that brands face, which he works hard to minimise”. He now manages litigation suits in Hong Kong and China. On the commercial side, Troy Rice is a learned hand, who is “responsive and practical”. “His roots in the United States facilitate his understanding of US companies and the legal issues that they face in Asia. His analysis of legal issues is far deeper and more insightful than any other Chinese firm with which I have worked, and he gets excellent results.” For prosecution matters in Hong Kong, Helen Tang puts over two decades of IP expertise to superb use, having managed regional trademark portfolios for multinational and Asia-based clients.
Squire Patton Boggs
Squire Patton Boggs debuts in the China: foreign chapter of the WTR 1000 this year. Alongside global offices across the United States and Europe, the seasoned team in Beijing serves a wide range of US and European companies, including C&J Clark International Limited, Deutsche Bank AG and Henkel AG & Company, in the full spectrum of trademark matters. From portfolio management to cross-border disputes, the side draws on more than 100 IP specialists around the world to ensure that the IP rights of multinationals are protected. It is also one of the few foreign firms in China to have its own squad of investigators on the ground, enabling direct involvement in investigative and enforcement actions. After spending almost 18 years in China, Paolo Beconcini now commands his team from California. The polyglot IP maven sees the commercial aspects of legal problems and comes up with custom solutions, helping his clients to navigate the complex legal landscape in China.
Other recommended expertsAt Taylor Wessing, head of the IP group Thomas Pattloch counsels German companies on licensing law and technology transfer in China, as well as Chinese companies on market expansion to Germany and Europe.
- George Chan - Simmons & Simmons (Beijing) Intellectual Property Agency
- Horace Lam - DLA Piper
- Ai-Leen Lim - AWA Asia
- Scott J Palmer - Perkins Coie LLP
- Elliot Papageorgiou - Clyde & Co
- Paolo Beconcini - Squire Patton Boggs
- Linda Chang - Rouse & Co International
- Hatty Cui - Rouse & Co International
- Zhen (Katie) Feng - Hogan Lovells International LLP
- Haifeng Huang - Jones Day
- Rieko Michishita - Bird & Bird
- Dan Plane - SIPS
- Troy Rice - SIPS
- Jamie Rowlands - Gowling WLG
- Andrew Sim - Baker McKenzie
- Joseph (Joe) T Simone - SIPS
- Helen Tang - SIPS
- Jian Xu - Gowling WLG
- Hui Zhang - Baker McKenzie
- Thomas Pattloch - Taylor Wessing
- Christopher Woods - Kilpatrick Townsend & Stockton LLP
- Helen Xia - Hogan Lovells International LLP
- Ashley Zhao - AWA Asia
- Molly Zhuang - Clyde & Co Westlink Joint Law Venture