China and SARs - China: Foreign
Allen & Overy LLP
Allen & Overy makes its debut appearance in the China section of the WTR 1000 this year. Of late the ultra-sophisticated firm has been expanding its global IP presence, a key part of which has been extending its reach and activities throughout Asia; the hiring of Hong Kong-based David Shen in early 2017 was a smart move in this regard. David is a key contact.
Having established its Asia-Pacific presence, ambitious outfit AWA Asia shows no signs of slowing down. It assuredly guides dispute resolution and transactional negotiations as companies seek to navigate the intricacies of entering and doing business in the Chinese market. North American, European and Australasian companies clamour for “stellar lawyer”, CEO and principal counsel Ai-Leen Lim, who garners some of the best feedback among those featured in the WTR 1000 China chapter. “She is a natural leader who keeps her clients’ best interests in mind. She always gives straight, well-reasoned advice that shows you the way forward and she is able to explain, in a very pedagogical way, how the Chinese trademark system differs from systems in Europe.” “She doesn’t sugar-coat anything, which helps you accurately determine how much risk is involved in a particular course of action and she is a flexible problem solver whose client service is unparalleled.” “She makes herself available at any time of the day or night and is an exceptionally responsive professional who you can rely on 100%.”
Baker McKenzie stands out for its globally integrated trademark offering. The firm is a master at resolving border-straddling problems, which it works on across the Asia-Pacific region. The Hong Kong office serves as a strategic coordinating hub in this part of the world and a conduit for companies moving into China, where the side has additional bureaux in Beijing and Shanghai. Lately, Baker McKenzie has been expanding its offering for Chinese companies; it signed a strategic cooperation framework agreement with China Eastern Airlines under which the firm will provide the company with full legal support, including on any IP issues. A key name for the address book is Hong Kong partner Loke-Khoon Tan.
Bird & Bird
Bird & Bird knows the lay of the land in the Asian market, having been active here for over 20 years. Its China group encompasses individuals in Hong Kong, Beijing and Shanghai, and includes six partners, one counsel and nearly 40 professionals in total; it has the resources, high-tech systems and experience to handle anything a brand owner can throw at it. Based in Hong Kong, David Allison is a wise consultant for guidance on Greater China prosecution and infringement concerns. He continues to stand out as one of the leading experts on alternative dispute resolution. Representing beloved pillars of Japanese pop culture in China, Rieko Michishita takes advantage of more than two decades of living on the mainland to offer striking local insights to clients.
DLA Piper LLP
DLA Piper has its finger on the pulse of all trademark law practice and policy developments throughout Asia thanks to the vigilance of its professionals stationed across seven offices in the region. It offers trenchant trademark solutions to global brands such as McDonald’s, AOL and Fitbit as they seek to compete in the booming Chinese market. Horace Lam co-heads the Asia IP practice with Hong Kong’s Edward Chatterton, and the two frequently collaborate on behalf of clients. A strategic mastermind with commercial acumen in abundance, Lam is a touchpoint for Fortune 500s.
Gowling WLG has become a big name in China; in recent years it has been doing top-drawer trademark enforcement, filing and transactional work for blue-chip names. It delivers rock-solid advice to clients, supported by its practitioners’ encyclopaedic knowledge of local conditions, customs and languages. This year Gowling formed an association with Singaporean firm JurisAsia to extend its regional reach even further. Heading up the Guangzhou office is Jamie Rowlands, an ace at leading large teams in the delivery of a cost-effective service with globally relevant results. “Responsive and practical”, Jian Xu also comes highly recommended. He captains the China trademark filing practice but is a versatile lawyer with plenty of enforcement and monetisation nous.
Hogan Lovells International LLP
Hogan Lovells has three IP partners in its Greater China offices who, alongside experts in Hong Kong, offer a streamlined and efficient trademark service to marquee clients such as H&M and Blizzard Entertainment. For the latter, it recently obtained the first interim injunction ever to be issued by the Guangzhou IP Court. The team also made headlines with a major victory for Tencent under the Uniform Domain Name Dispute Resolution Policy to win back the Chinese domain name behind WeChat. In other news, the side has established Hogan Lovells Fidelity – a new association with a Chinese law firm in the Shanghai Free Trade Zone. Zhen (Katie) Feng is another seasoned pro and a crack litigator; she was in charge of the Blizzard case.
Jones Day prides itself on its business acumen and clear-sightedness on all China issues and the firm caters to the growing demand for copyright and trademark counsel within the country with finesse. It deals with litigation both in and out of China and also astutely manages portfolios while directing brand strategy. By entering into fruitful partnerships with only the best-suited local firms, it ensures jobs are done to the highest international standards. A superb advocate in trademark infringement cases, “experienced litigator” Haifeng Huang is the man to talk to when complex contentious situations arise.
Rouse & Co International
In the past five years Rouse China has tackled over 1,000 IP litigations and has carried the day in a number of game-changing cases, earning great results before the Supreme People’s Court. Few firms have been as active on the contentious front or recorded as many victories as Rouse. A knack for swaying the opinion of the China Trademark Office also makes the set an excellent choice for prosecution mandates. China country manager Linda Chang was one of the first trademark agents to qualify under China’s IP regulatory system back in 1995 and is steeped in the market. A proactive, solutions-oriented strategist, she helps clients overcome difficult obstacles on the path to commercial success in China. Another key player is Rachel Li-Mei Tan, who heads the firm’s China and global trademark groups. The Beijing executive has a well-rounded and sophisticated brands practice and engages in lobbying activities to help improve the market for all stakeholders.
Sheppard Mullin Richter & Hampton LLP
Sheppard Mullin is leading the foray in the fight against fakes and trademark infringers across Greater China. Boasting a shrewd trademark team that is no stranger to complex multi-jurisdictional entanglements, it is also engaged in cutting-edge prosecution projects. Leading partner Scott Palmer is a no-nonsense enforcer who has put in outstanding performances for household names in the automotive, transportation, hospitality and technology sectors.
Simmons & Simmons (Beijing) Intellectual Property Agency Company Ltd
Known as an “excellent resource for all things intellectual property”, Simmons & Simmons is a first-rate one-stop shop for brand clearance, prosecution and enforcement in China. Its Beijing agency handles each file diligently as part of the bespoke service it provides to each and every client. Running the show is the “extremely responsive, knowledgeable and super qualified” George Chan. He “keeps abreast of the latest developments” and “deals with complicated issues well”, which explains why he is often called up for a second opinion on matters that other firms have handled in the first instance.
Other recommended experts
Clyde & Co has a marquee new signing in Elliot Papageorgiou, who has been setting the standard for foreign lawyers active in China to emulate for years. Blending a rich commercial awareness with profound knowledge of substantive IP law, he devises winning protection, enforcement and monetisation strategies to be implemented across the entire Asia-Pacific region. Former European Commission officer and now Taylor Wessing partner Thomas Pattloch is based in Munich but companies would be hard pressed to find a foreign lawyer who has a greater understanding of the Chinese IP field. He helps US and European brands to grow in China, but is also increasingly popular among domestic companies engaged in IP disputes in Europe.
- George Chan - Simmons & Simmons (Beijing) Intellectual Property Agency Company Ltd
- Linda Chang - Rouse & Co International
- Horace Lam - DLA Piper LLP
- Ai-Leen Lim - AWA Asia
- Scott J Palmer - Sheppard Mullin Richter & Hampton LLP
- Elliot Papageorgiou - Clyde & Co
- David Allison - Bird & Bird
- Zhen (Katie) Feng - Hogan Lovells International LLP
- Haifeng Huang - Jones Day
- Rieko Michishita - Bird & Bird
- Thomas Pattloch - Taylor Wessing
- Jamie Rowlands - Gowling WLG
- Rachel Li-Mei Tan - Rouse & Co International
- Jian Xu - Gowling WLG