China and SARs: China: Foreign
As part of the firms’ global networks, international firms in China provide invaluable support on regional trademark issues to a wide range of largely multinational clients. Four firms in the China: foreign chapter – Baker McKenzie, Clyde & Co, Hogan Lovells and Rouse – stand out due to their local litigation capabilities, offering their clients the marked advantage of being able to use a single firm to tend to all of their trademark needs, while the rest conduct local filing with a trademark agency licence.
- Allen & Overy LLP
- AWA Asia
- Baker McKenzie
- Bird & Bird LLP
- Clyde & Co
- DLA Piper
- Gowling WLG
- Hogan Lovells
- Jones Day
- Kilpatrick Townsend & Stockton LLP
- Perkins Coie LLP
- Simmons & Simmons LLP
- Squire Patton Boggs
Allen & Overy LLP
Allen & Overy LLP is the only Magic Circle firm in China with a global trademark and design prosecution practice. With a focus on life sciences, technology, media and telecoms, consumer goods and chemicals, it provides everything from brand protection strategies to trademark enforcement services, in addition to assisting with complex commercial transactions. “Reliable, accessible and open for discussions and new ideas,” the team advises on cross-border matters and develops effective strategies for tackling IP infringement in China.
AWA Asia’s China trademark practice continues to grow from strength to strength. Fifteen professionals stationed in China and Hong Kong provide “personal and timely services of the highest quality” to a primarily European clientele across a range of sectors while being “flexible on cost to accommodate clients’ budgets”. Brand owners seeking assistance on all kinds of IP issues in China value the “depth of expertise, speedy turnaround and ability to translate local legal concepts into relatable terms”. Much of the firm’s success in Asia can be attributed to the “brilliant legal strategist and admirable leader” Ai-Leen Lim. Managing the Hong Kong headquarters and the Chinese IP consultancy in Beijing, she “not only meets expectations, but far surpasses them”. Her personal qualities and “thoughtful and kind nature” have allowed her to build a loyal client base where she “treats clients like friends”. Not only do they benefit from “clear and concise guidance that won’t break the bank”, they “love working with Ai-Leen”. Foreign associates are just as enthusiastic: “Ai-Leen excels because she always adds value and treats every matter with care.” “She has a keen understanding of the law in China and Hong Kong. Above all, she is pragmatic and assertive when facing challenges. I love that she is able to look at complex issues from every angle and seems to automatically know the perfect and most expedited solution.” Ashley Zhao is another member of the “diligent, practical and business-oriented” team, providing “clear guidance on challenging aspects of trademark law in China”.
Clients of global heavyweight Baker McKenzie can expect to receive “one-stop shop services in China covering all types of IP-related matters such as portfolio management, trademark filing and prosecution, brand protection and enforcement as well as administrative, civil and criminal litigation”. The strength of the China practice is based on its “unparallel local and global network, established relationships with local authorities and tailored, industry-specific advice”. Close cooperation with the Hong Kong team and a joint operation with China firm FenXun Partners makes Baker McKenzie an excellent option for those looking for comprehensive legal services in the region carried out by a group of “experienced lawyers who hold a consistently high standard”. Andrew Sim is the go-to for those in the consumer goods, retail and food and beverage sectors with diverse IP needs; he is “always able to deliver”. Recently, he helped Starbucks to obtain well-known status for the Chinese name of Frappuccino, the first time that a company succeeded in securing well-known trademark recognition for a non-house mark.
Bird & Bird LLP
Specialising in the technology and innovation-driven life sciences and healthcare sectors, Bird & Bird’s China practice is known for its deep industry expertise. More than 40 IP professionals serve clients from offices in Hong Kong, Beijing and Shanghai. Through a local trademark agency outfitted with an anti-counterfeiting team and a formal association with Chinese outfit Lawjay Partners, the firm effortlessly handles all aspects of trademark matters, including representing clients before the Chinese courts. Rieko Michishita offers trilingual advice on contentious and non-contentious matters with a focus on Japanese companies present in China.
Clyde & Co
Garnering high praise year after year from clients and foreign associates alike, Clyde & Co comes “highly recommended for their trademark work as they use different angles and areas of knowledge to tackle the fast-changing legal environment in China”. “Not only do they have excellent professional legal skills; their client care is unparalleled.” An important feature that distinguishes them from other foreign firms is the joint law venture, Clyde & Co Westlink JLV – unique in its kind outside China’s special economic zones, this allows for seamless litigation services. The “brilliant” Elliot Papageorgiou leads the IP practice. Truly invested in his clients, Papageorgiou “genuinely cares about each business – a win for them is a win for him, and only then is it a win. As long as it is the best commercial option for his client, he is prepared to tackle challenging cases and take calculated risks after discussing it with them.” One satisfied customer enthuses: “We have always felt well looked after by a capable and social team. Elliot understands the situation and has offered us an all-round service that has included taking proactive action to strengthen our portfolio as well as defensive actions.” Foreign associates also note that “the most important difference is, when compared to other service providers, they provide efficient, accurate, solid and arms-length services, which completely and promptly addresses clients’ needs.” Molly Zhuang is part of the diligent group of lawyers who operate “proactively and come up with their own ideas rather than merely execute instructions” through their “long experience and a deep understanding of Chinese IP law”.
DLA Piper boasts one of the largest China IP practices among international firms in the region. The multilingual lawyers with solid local knowledge skillfully manage cross-border matters while working closely with six other offices around Asia to produce top-quality services for their clients. “DLA has a really strong offering in IP globally, offering a coordinated approach for IP protection, enforcement and related advice.” Besides caring for large multi-jurisdictional trademark portfolios, the firm works on intricate IP issues including administrative and civil litigations and arbitrations. First-class customers such as Hyatt and Avon are attracted by the team’s “attention to detail, excellent client care and creative solutions” as well as “cost-effective and commercial advice that is also clear and manageable for internal use”. Gold-ranked Horace Lam co-heads the Asia IP department, which is known for its “technically sound advice, commercial sense, attention to detail as well as out of the box thinking”. He is supported by newly promoted partner Reking Chen.
One of the few international firms with a legal representative office in Guangzhou, Gowling WLG serves companies with their sights on the industrial core of China. Working with a hub-based strategy, the side maintains close relationships between its offices internationally and has developed a strong local network to offer comprehensive IP services, including handling large volumes of trademark filings and enforcement work while running various anti-counterfeiting programmes. It makes sure to stay on top of the latest innovations by adopting AI-led solutions, blockchain and smart contracts to explore the latest legal technologies. Jamie Rowlands, who leads the China team from London, has considerable experience in multi-jurisdictional IP disputes and international arbitration. Biochemistry PhD holder Jian Xu heads the domestic trademark filing practice and deals superbly with all areas of trademark, patent and copyright law.
Hogan Lovells offers cutting-edge integrated global IP protection services to international and domestic enterprises. Over the past 35 years, it has developed a China practice well deserving of its excellent reputation. Unlike many rivalling outfits, the full-service law firm is able to provide domestic legal advice and litigation through the associated Hogan Lovells Fidelity. The “diligent, professional and agile” team handles challenging matters with finesse through a proactive approach. Helen Xia recently scored an important victory for Metro-Goldwyn-Mayer in an infringement and unfair competition case involving a Shenzhen-based company setting up a cross-country franchising network of over 30 infringing MGM cinemas. The highly publicised case was recognised by the Shanghai Pudong court as one of the notable cases of the year in 2019. With a “can-do spirit”, Zhen (Katie) Feng has represented Lego and other clients in numerous contentious cases in China. “Her persistence and determination really makes a difference and distinguishes her team from others in the industry. She always identifies and tackles key issues from a practical point of view.”
An international firm with Chinese litigation capabilities, Jones Day frequently represents global and domestic businesses in contentious trademark matters. No stranger to complex IP disputes, its background is littered with successful cases for foreign companies in the High Court and the Supreme People’s Court. The side masterfully prosecutes trademarks through a fully licensed domestic IP agency. Trademark enforcement expert Haifeng Huang splits his time between Beijing and Hong Kong, where his contentious work is widely known.
Kilpatrick Townsend & Stockton LLP
Making its sophomore appearance in WTR 1000’s China: foreign chapter is Kilpatrick Townsend & Stockton LLP, a general law firm that occupies a spot in the top tier in the United States. In 2019, it opened an office in Beijing in addition to its Shanghai office, further cementing its position as a strong protector of US and European brands with a presence in China. The group “provides very helpful input and strategy guidance with intelligence and creativity”. Managing partner of the Beijing office and head of the China brands team, Christopher Woods has “apparent experience navigating clients through an unfamiliar landscape. He also explains strategy in a manner which a layperson will understand – anticipating questions that will arise from somebody without local knowledge. Chris avoids unnecessary formal steps that might generate a lot of work (and fees) in favor of practical and efficient solutions. He is able to understand the company’s goals and plan accordingly.”
Perkins Coie LLP
With the arrival of Scott Palmer and his team in 2018, Perkins Coie LLP IP practice has grown to become one of the most impressive among international outfits in China. The team now consists of 16 attorneys and paralegals, who tend to an ever-growing client base. While the general law firm “is relatively new to the PRC trademark market, Scott is a highly regarded practitioner with excellent local knowledge and long experience”. It supports multinational corporations with regional trademark registration, maintenance and enforcement while assisting Chinese companies with their US IP needs. Particularly strong in contentious matters, the side not only play an active role in the fight against trademark infringers by conducting raids, it has also brought much success to clients before China’s IP courts. Satisfied customers are impressed by the “bilingual team’s high level of expertise in China matters and in efficiently managing complex IP litigation while communicating clearly”. Palmer, a fluent Mandarin speaker and gold-ranked lawyer, “consistently provides high-quality work in an efficient and practical manner”.
Due to its “strong global service offerings”, renowned multinational and Chinese companies turn to IP consultancy Rouse & Co International for their most “nuanced, tricky matters that require substantial expertise”. “Excellent and proactive in terms of IP enforcement” and for “top-notch strategy work”, the side boasts one of the largest trademark practices among international law firms in China to take care of both contentious and non-contentious matters with ease. Offering the full range of IP services, it provides local dispute resolution services through Lusheng Law Firm, allowing clients to access 65 professionals who prosecute marks and defend clients’ IP rights before the Supreme People’s Court. Satisfied customers eagerly shower the team with praise. “They are smart attorneys who develop excellent strategies meeting clients’ business objectives and budgets.” “Rouse is clear in communicating their plans, actions and results. They are knowledgeable and sophisticated in their approach, going the extra mile to understand our products, brand, and business objectives in China.” One of the first qualified trademark agents in China, general Manager Linda Chang is an IP strategist with 25 years’ trademark experience. Overseeing the trademark practice is former in-house counsel at China Central Television Hatty Cui, an experienced practitioner with multi-jurisdictional IP and legal knowledge. Amanda Yang joins the rankings this year, receiving heaps of positive feedback. “Amanda is an excellent practitioner. She works extremely hard, gives very clear advice and always responds promptly. She is very thorough. Most importantly, she is a very nice person and I always enjoy working with her.” “Amanda provides an amazing level of client service. She conveys complex and nuanced issues clearly, with practical yet comprehensive recommendations. Amanda and her team are simply fantastic attorneys and partners in China.”
Simmons & Simmons LLP
Over at Simmons & Simmons, an integrated international team of around 50 professionals provide multi-jurisdictional trademark advice for clients across the firm’s extensive global network. Besides deploying “careful and commercial legal strategies” when prosecuting marks and managing portfolios, the side has a well-deserved reputation for defending brands against trademark infringers and squatters. Over the past year, it has added a number of star clients to its list, further strengthening its position as a top international player in the region. A “leading authority in IP matters in China”, gold-ranked George Chan and his “equally competent team resolve complex matters with the level of service and quality of work that you expect from a top tier firm”. Chan has both “legal skill and personality. He just ‘gets’ the problem. Being both a Chinese and western facing lawyer, he knows how to deal with clients unfamiliar with the way things work in China, explaining and reporting in a way familiar to Western clients – clear, concise, and competently.” Besides his “vast knowledge in IP matters and ability to develop strategic and innovative solutions to give clients a formidable advantage”, Chan “cares not just about solving the problem, but about you as a client and the impact the issue is having on your personal workload. He takes a lot of pressure off of you, which is a special, admirable quality.” His “excellent combination of strategic thinking, flawless execution” and personal characteristics “impresses to no end”.
A trusted advisor on Chinese trademark matters in the Greater China region, SIPS is one of few foreign firms with its own in-house investigations team. This allows it to handle large volumes of enforcement work, making the outfit a force to be reckoned with in contentious as well as non-contentious matters. The side also draws upon well-established relationships with local counsel throughout China to provide advice on local practice. US clients appreciate the open communication and support provided by the group of multilingual lawyers on a range of regional trademark issues: “They are incredibly responsive, cover multiple areas in the region and understand the challenges facing American companies in China.” Founder Joseph Simone focuses on registry and enforcement. Recently, he has been busy lobbying against online counterfeiting and bad-faith trademark registration. US-born managing partner Daniel Plane has nearly two decades of experience practising in China. A trusted advisor to Fortune 500 companies in need of an excellent litigator and IP strategist, he “provides very practical, timely and efficient advice” while being “extremely easy to work with”. One foreign associate regards him as the go-to person for Hong Kong and China work, as his “communications and advice is concise and practical, which enables us to chart successful strategies for our clients. I have recommended him to several other colleagues and have heard nothing but positive feedback about his work.” The “proactive and responsive” Helen Tang leads the team in Hong Kong, which “does a great job coordinating nuanced matters that involve both the China and Hong Kong”. Having been in the IP field since 1997, she has developed the ability to “answer your question and the next three question you haven’t asked yet”. After 18 years at Baker McKenzie, Christopher Smith joins SIPS as a partner in January 2021.
Squire Patton Boggs
Boggs makes its sophomore appearance in WTR 1000 this year. A roster of US and European enterprises – including C&J Clark International Limited, Deutsche Bank AG and Benetton SpA – rely on the firm for their Chinese trademark matters. Through a global team of 100 IP professionals, it handles everything from portfolio management to cross-border disputes, with the additional bonus of its own team of local investigators to help multinational companies safeguard their IP rights in the region. Having spent 18 years in China, Paolo Beconcini now leads the group from California. In-house counsel appreciate “the practicality of his advice. You can really tell he tries to put himself in the client’s shoes and looking for best serving strategies. He is also very easy to communicate with and very responsive.”
- George Chan - Simmons & Simmons LLP
- Horace Lam - DLA Piper
- Ai-Leen Lim - AWA Asia
- Scott J Palmer - Perkins Coie LLP
- Elliot Papageorgiou - Clyde & Co
- Joseph T Simone - SIPS
- Paolo Beconcini - Squire Patton Boggs
- Linda Chang - Rouse
- Hatty Cui - Rouse
- Zhen (Katie) Feng - Hogan Lovells
- Haifeng Huang - Jones Day
- Rieko Michishita - Bird & Bird LLP
- Daniel Plane - SIPS
- Jamie Rowlands - Gowling WLG
- Andrew Sim - Baker McKenzie
- Helen Tang - SIPS
- Christopher J Woods - Kilpatrick Townsend & Stockton LLP
- Jian Xu - Gowling WLG
- Helen Xia - Hogan Lovells
- Amanda Yang - Rouse
- Ashley Zhao - AWA Asia
- Molly Zhuang - Clyde & Co