China and SARs: China: Foreign
Allen & Overy LLP
Household name UK Magic Circle firm Allen & Overy is a reliable guide for multinationals in China. Its Shanghai IP team showcases outstanding strategic wisdom when it comes to brand protection and fighting counterfeiters. The group, under the supervision of David Shen, has been busy on the disputes front over the last year, handling important trademark matters for global pharmaceutical, healthcare, energy and industrial clients, proving itself proficient at resolving problems caused by clients’ hitherto lack of appropriate focus on China.
The Asian entity of AWA was established in 2015 and has been making impressive strides in the Greater China market ever since. As a testament to this, it recently recruited new partner Charlie Liu and promoted Ashley Zhao to the partnership. “The highly efficient set resolves branding issues in a well-thought out and structured manner” and yields “crystal-clear advice” to a long list of European and US companies and high-ranking foreign associates. CEO Ai-Leen Lim is the foremost authority on the prosecution and enforcement of trademarks and designs. “Incredibly responsive, commercially minded, creative, yet practical, Ai-Leen has everything you want. She is a true client partner who provides superb value and thoughtful advice.”
Baker McKenzie has had a banner year; its association with Chinese firm FenXun Partners has proved to be incredibly fruitful, as evidenced by the string of well-known trademark recognitions that it achieved for a slew of top foreign brands, including Whirlpool. Among those doing first-rate work is newly ranked Andrew Sim, who has substantially improved the branding position of Starbucks in China by netting well-known trademark designations for three of its English and Chinese-language marks before the Supreme People’s Court. “He dispenses clear and concise advice and demonstrates an impeccable mastery of the law. He also has the ability to navigate the labyrinth of government organs and enforcement authorities. He is incredibly responsive and is available almost 24/7.”
Bird & Bird
With six partners, one counsel and close to 40 professionals, Bird & Bird draws on an impressive squad in China. Most of the firm’s partners straddle the patent and trademark practices, putting them in a great position to furnish coherent overall IP strategies to those with diverse portfolios. Rieko Michishita has called China home for 20 years. She is best known for her astute insight into the Chinese market and her ability to bridge cultural differences; she is an absolute repository of trust for Japanese companies.
Set up in July 2017, Clyde & Co’s China IP practice has been building great momentum since, as a string of major client wins attest. The set runs the gamut in terms of trademark services but shines the brightest in complex infringement and counterfeiting matters. At the forefront of an “industrious, efficient and highly experienced” team is Elliot Papageorgiou, a favourite of European and particularly German companies. Sources laud him as being a “first-rate litigator who devises tactically brilliant strategies by blending superb legal expertise with industry knowledge. He is resolutely focused on his clients’ best interests and never sugar-coats anything.” He forms a formidable team with Molly Zhuang, a new entrant in the WTR 1000, who attracts plaudits for her “excellent legal advice and persistence going after infringers”.
DLA Piper is the guardian of some 9,000 trademarks in China; the owners of which have access to the astute regional understanding offered by specialists in 14 Asia-Pacific offices and from a carefully cultivated network of associates across Southeast Asia. The dedicated cadre of 20 professionals based in Hong Kong, Beijing and Shanghai deftly assist forward-thinking international and Chinese brand owners with strategic prosecution, enforcement and monetisation initiatives. Beijing-based Horace Lam tackles a kaleidoscopic range of trademark matters with confidence and poise.
Utilising a network of tried-and-tested Chinese firms and investigators, Gowling WLG makes light work of high-power online and offline enforcement programmes, which it runs for a host of household names out of its South China office. The team can communicate and work in English, Cantonese, French and Mandarin, which ensures smooth communication with global clients. Jamie Rowlands takes charge in Guangzhou. He has a knack for managing large portfolios and coordinating nation-wide enforcement campaigns, and consistently delivers top-notch results while keeping costs to a minimum. “He is very hands on and leads his dedicated team by example.” His colleague Jian Xu “provides clear-cut advice and routinely comes up with impressively creative solutions”.
Hogan Lovells International LLP
Hogan Lovells has infinite wisdom when it comes to brands and draws on the expertise of practitioners in a multitude of offices worldwide. The team in China exploits these resources to help achieve superb results for clients. New York-qualified Zhen (Katie) Feng has been knocking it out of the park lately. She acted on behalf of Blizzard Entertainment to secure a final appeal judgment before the Guangdong Higher People’s Court which confirmed the Rmb6 million-worth of damages handed down by the Guangdong IP Court. The resourceful litigator has also been busy handling 19 copyright infringement and unfair competition suits filed in Guangzhou on behalf of a toy company.
Managed out of Hong Kong and Beijing, the Jones Day China trademark practice acquits itself with distinction in contentious and transactional mandates. Star of the show Haifeng Huang often represents top-tier Chinese and foreign companies with respect to both inbound and outbound litigations. Most recently, he assisted Qualcomm with a successful defence in a trademark suit filed by a Chinese company before the Shanghai High Court.
Rouse & Co International
“Rouse & Co is an invaluable partner and resource for anyone who needs help navigating the intricacies of trademark protection in China. The team is highly knowledgeable and proactive in understanding client needs, which helps tremendously in coming up with suitable strategies. It is also on top of every deadline there is.” China country manager and sagacious consultant Linda Chang is a great first port of call.
Simmons & Simmons (Beijing) Intellectual Property Agency Company Ltd
Established four years ago, Simmons & Simmons (Beijing) Intellectual Property Agency Company has grown to a 19-person team that renders a comprehensive trademark service that completely lives up to the quality standards set by the international firm in other jurisdictions. The agency has a striking success rate in Beijing IP Court administrative review cases involving foreign parties and, testament to the sophistication of its expertise, is regularly called on for second opinions. The “well-respected” George Chan is “a great resource” for companies and foreign associates venturing into China for the first time. He has refined strategic instincts and is not afraid to try something new.
Other recommended expertsDebuting in the WTR 1000 for 2019, enforcement and licensing buff Paolo Beconcini leads a China-based team from Squire Patton Boggs’s Los Angeles office. Having spent 15 years in China, he has top-class local knowledge, which his loyal following of fashion and automotive clients are keen to tap. Fierce enforcer Scott Palmer recently transferred his practice to Perkins Coie from Sheppard Mullin. Formerly an IP officer at the European Commission, Munich-based Thomas Pattloch heads the China IP group at Taylor Wessing. With an astute understanding of the difficulties faced by foreign enterprises in China, he resolves disputes and monetises intellectual property with alacrity.
- George Chan - Simmons & Simmons (Beijing) Intellectual Property Agency Company Ltd
- Haifeng Huang - Jones Day
- Horace Lam - DLA Piper
- Ai-Leen Lim - AWA Asia
- Elliot Papageorgiou - Clyde & Co
- David Allison - Bird & Bird
- Paolo Beconcini - Squire Patton Boggs
- Linda Chang - Rouse & Co International
- Zhen (Katie) Feng - Hogan Lovells International LLP
- Rieko Michishita - Bird & Bird
- Scott J Palmer - Perkins Coie LLP
- Thomas Pattloch - Taylor Wessing
- Jamie Rowlands - Gowling WLG
- Andrew Sim - Baker McKenzie
- Jian Xu - Gowling WLG
- Molly Zhuang - Clyde & Co