China and SARs: Hong Kong

Hong Kong’s economy continues to hum and there is a healthy stream of trademark work for the city’s practitioners, particularly those engaged in prosecution and licensing; litigation is limited locally. While the city is gearing up for the Madrid Protocol – which is poised to come into force in 2019 – there is also word of informal talks between the Intellectual Property Department and the community over possible amendments to the trademark law. To position Hong Kong as an arbitration hub, the government confirmed the arbitrability of IP cases back in 2017, but the take-up rate thus far has been limited due to cost pressures.

Firms: enforcement and litigation

  • Baker McKenzie 
  • Bird & Bird
  • Deacons
  • Mayer Brown
  • DLA Piper Hong Kong
  • Ella Cheong & Alan Chiu, Solicitors & Notaries
  • Hogan Lovells
  • Jones Day
  • Robin Bridge & John Liu
  • Simmons & Simmons LLP
  • SIPS 
  • Stephenson Harwood LLP
  • Wilkinson & Grist

Firms: prosecution and strategy

  • Highly recommended
  • Baker McKenzie 
  • Deacons
  • Mayer Brown
  • Recommended
  • Bird & Bird
  • DLA Piper Hong Kong
  • Hogan Lovells
  • Marks & Clerk Hong Kong
  • Norton Rose Fulbright
  • Reed Smith Richards Butler
  • Robin Bridge & John Liu
  • Rouse & Co International
  • Simmons & Simmons LLP
  • SIPS 
  • Spruson & Ferguson
  • Stephenson Harwood LLP
  • Vivien Chan & Co 
  • Wilkinson & Grist

Baker McKenzie 

Baker McKenzie is the original one-stop IP shop, striking gold time and time again for its clients. Although the firm never misses a beat when it comes to managing large, multi-jurisdictional portfolios – thanks to its sprawling network of high-ranking Asia-Pacific offices and a bespoke, online docketing system – its ability to engineer innovative solutions to branding conundrums of all stripes truly sets it apart from its competitors. For example, the side is consulting a European fashion house on the best strategy to protect its non-traditional marks in Hong Kong. The firm also puts up stellar performances in enforcing trademarks and other soft IP rights in Hong Kong and China. IP department head Loke-Khoon Tan is a leading light. He is a consummate adviser with an enviable track record in the enforcement of high-value marks in China. Christopher Smith is another China specialist, whose “pragmatic and business-friendly outlook” has won him a loyal following. Steering the Hong Kong and Regional brand protection and enforcement squad with a steady hand, Maria Smith is au fait with registering enforceable marks in Hong Kong and throughout countries in the the Association of Southeast Asian Nations (ASEAN); while the “efficient and responsive” Shih Yann Loo comes recommended for his astute insight into the Hong Kong and Chinese markets and ability to never lose sight of the global picture. Finally, life sciences whizz Isabella Liu blends patent and trademark expertise to superb effect.

Bird & Bird

With six partners, one counsel and close to 40 professionals who have a wealth of sectoral knowledge, Bird & Bird offers impressive breadth and depth. Most of the firm’s partners straddle the patent and trademark practices, which puts them in the perfect position to advise on concerted patent and trademark protection strategies. Asia-Pacific IP group helmsman Matthew Laight is a familiar face at the Hong Kong High Court litigating high-stakes cases. He is well-known for his talents for resolving unwieldy global disputes. Life sciences expert Alison Wong is a shrewd adviser on matters spanning the IP lifecycle. She has been assisting a leading energy drink company with portfolio management and civil and administrative enforcement alongside Hank Leung, a “highly responsive” commercialisation buff with supreme data privacy know-how.

Deacons

Cosmopolitan and “exceptional” to the core, Deacons is home to an eight-partner team of professionals serving up a “strategic, clear and practical” trademark service to half of the world’s 100 most valuable brands. “Highly experienced and knowledgeable,” the 20-plus lawyers at this illustrious set have truly global origins – including individuals from Australia, Canada, China and Hong Kong – and they all collaborate to seamlessly deliver top-notch results. “Deacons lawyers are truly invested in their clients’ success, and serve as invaluable assistants on all Asia-bound work.” Catherine Zheng, Dora Si and Annie Tsoi are the firm’s foremost authorities on Chinese intellectual property. Zheng hails from Shanghai via Ottawa and is a formidable litigator who is intimately familiar with the workings of the Beijing IP Court and the Supreme People’s Court. With numerous landmark decisions to her name, litigants often bring her in to turn the tide for their most commercially crucial disputes. Meanwhile, Dora Si is always well prepared when mobilising the Chinese Administration for Industry and Commerce to conduct administrative raids on counterfeiters’ premises throughout the country and she routinely secures spectacular results on that front. Never fazed even when faced with unreasonable demands, she keeps a cool head in the tensest negotiations. Her partner Annie Tsoi is a deft strategist with the big picture in mind; she lets nothing slip as a result of her hands-on approach to IP protection and actively attends Chinese IP conferences and gives training to Chinese customs officials on behalf of foreign brands. She provides inspirational leadership to the IP department alongside Charmaine Koo, one of the city’s most prominent IP litigators and arbitration experts. Courtroom sharpshooter Koo was recently entrusted with defending Ping An Insurance from allegations of trademark infringement and passing-off before the Hong Kong courts. Rodney Goh, Patsy Lau and Vivian Poon are key contacts for portfolio management and brand strategising. “A meticulous and sensible prosecutor,” New Zealand-qualified Rodney Goh always strikes a chord with international – and particularly Antipodean – brand owners. Qualified in California and Hong Kong, Patsy Lau knows how to deconstruct and reconstruct trademark portfolios for maximum value. Vivian Poon has a loyal following among top local companies and international hotel chains. She is a font of knowledge when it comes to non-traditional marks and opposition proceedings in Hong Kong and Taiwan.

DLA Piper Hong Kong

DLA Piper is the guardian of some 9,000 trademarks in China and offers clients access to profound regional wisdom through its 14 Asia-Pacific offices and a carefully cultivated network of associates across Southeast Asia. The dedicated cadre of 20 professionals based in Beijing, Hong Kong and Shanghai ably assist forward-thinking international and Chinese brand owners with strategy, prosecution, enforcement and monetisation initiatives. Representing a host of multinational names, Edward Chatterton co-heads the IP and technology practice with Horace Lam.

Ella Cheong & Alan Chiu, Solicitors & Notaries

Established in 2016 Ella Cheong & Alan Chiu, Solicitors & Notaries has risen to prominence in Hong Kong’s crowded IP marketplace. The side covers the whole spectrum of IP matters with additional capabilities in regulatory issues and entertainment and media law. Hong Kong IP legend Ella Cheong is a recent IAM IP Hall of Fame inductee. While most of the day-to-day practice management falls on the shoulders of the “diligent” Alan Chiu, his sagacious advice is still in high demand. Having cultivated a loyal client base – including names such as Pandora – he also operates Alan & Associates (Hong Kong Beijing) Intellectual Property Agency Limited to handle China instructions.

Hogan Lovells

Hogan Lovells is home to a wealth of experience and expertise stationed across its 49 offices worldwide. In Hong Kong, the newly-ranked and “approachable” Eugene Low acts as a highly acclaimed trademark prosecutor and strategist for a host of local heavyweights. “Clear, concise and practical are the hallmarks of Eugene’s service, which is always delivered in lightning-fast turnaround times. Never wordy, his advice is to-the-point and he goes the extra mile for his clients. Not to mention, his fees are flexible and represent great value.” Luminary Kenny Wong operates at the forefront of Hong Kong’s IP community, chairing the Law Society IP Committee and sitting in the government’s patent reform focus group.

Jones Day

Based in Hong Kong and Beijing, the Jones Day China trademark practice has a laser focus on contentious and transactional mandates. Star of the show Haifeng Huang frequently represents top-tier Chinese and foreign companies in 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. Peggy Cheung and Chiang Ling Li are two other key names to note.

Marks & Clerk Hong Kong

One of the strongest patent firms in the United Kingdom and Hong Kong, Marks & Clerk is also a prime destination for those looking to file, license and enforce trademarks locally and globally. UK trademark attorney Simon Speeks sets the gold standard in client service. As one respondent enthuses: “His client-friendly demeanour and excellent counselling skills lured us away from other Hong Kong counsel. His pragmatism is highly conducive to fast and accurate decision making.” Sandra Gibbons is highly sought after for her understanding of everything related to trademarks.

Mayer Brown

Mayer Brown operates a substantial Asian IP and technology, media and telecoms practice from its bases in Beijing, Hong Kong and Shanghai. It manages over 38,000 trademarks across all corners in Asia for a diverse assortment of marquee names such as Alibaba and adidas; it also possesses a wealth of expertise in resolving soft IP disputes from domain name to trademarks via arbitrations and litigations. Gabriela Kennedy leads this illustrious practice with alacrity. One of the arbitrators with the Hong Kong International Arbitration Centre and a domain name panellist with several arbitration centres, she is one of the city’s foremost authorities on alternative dispute resolution. A familiar face before Hong Kong courts, Rosita Li is a staunch protector of her clients’ interests. Council member of the Hong Kong Institute of Trademarks, Benjamin Choi is also a member of the INTA Famous and Well-Known Marks East Asia & Pacific Sub-committee.

Norton Rose Fulbright

Made up of commercial IP gurus, the Norton Rose Fulbright professionals are prime candidates for transactional support work. Running in conjunction with its corporate department, the team covers everything – from joint ventures to ownership transfers through to licensing arrangements – and often assists large-scale Chinese companies to list in Hong Kong. Making full use of its sprawling international network, it conducts trademark prosecution and enforcement for a host of household names; for example, it handles the global portfolio of Crown Worldwide in 70 countries. Justin Davidson and Maggie Chong are the names to commit to memory. Davidson is “responsive and knowledgeable” and a source of “accurate and thorough” opinions. A fresh face in the WTR 1000, Chong frequently collaborates with Davidson.

Reed Smith Richards Butler

The extensive presence of Reed Smith Richards Butler in Asia, Europe, the Middle East and the United States appeals to clients with global interests. With bureaux in Beijing, Hong Kong, Shanghai and Singapore, the firm is well positioned to advise clients in any and all Chinese and ASEAN trademark matters. Mandarin speaker Steven Birt stands out for his sweeping soft IP know-how.

Robin Bridge & John Liu

“Robin Bridge & John Liu provides pragmatic and commercially astute advice at reasonable rates on all trademark matters.” The firm has carved out a niche for its Greater China enforcement and litigations prowess; most recently it secured a permanent injunction on behalf of Richemont International against Dynasty Jewelry for passing off and trademark and copyright infringement of its Cartier and Van Cleef & Arpels products before the High Court of Hong Kong. The mastermind behind this case was Anthony Tong. He is “responsive, reliable and thoughtful” and is highly sought after for his “pragmatic advice”. His fellow partner Anthea Loo is another stalwart advocate. She recently invalided over 20 Hong Kong trademarks filed in bad faith on behalf of Caffe Nero in addition to masterminding a successful Chinese Supreme Court retrial.

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 also keeps on top of every deadline.” In Hong Kong, the firm recently transitioned from a law firm into a consultancy with two new executive appointments to boot. A familiar face at trade shows and conventions, Adelaide Yu manages the Hong Kong enforcement programmes for Burberry, Harley-Davidson and Samsonite. Global trademark head Rachel Li-Mei Tan recently relocated from Beijing to Hong Kong to take up a management position.

Simmons & Simmons LLP

Simmons & Simmons offers an A-to-Z trademark service out of its Hong Kong office and Beijing-based trademark agency. “Nimble and sophisticated, the Simmons & Simmons team is firmly committed to superior client service.” Epitomising these qualities is London-based John Slater, an astute adviser and brand strategist who is a loyal ally for Aquascutum, Cathay Pacific and Cathay Dragon.

SIPS 

Having embarked on rapid growth drive after the establishment of SIPS (Shanghai) Ltd in 2017, SIPS is now home to a 70-strong China IP team based across its Beijing, Hong Kong and Shanghai branches. “The SIPS team are experts in Chinese intellectual property. With a grounded understanding of the challenges faced by foreign brand owners in China, SIPS is willing and able to provide comprehensive advice encompassing the mitigation of legal and business risks while steering the client away from commercial conflicts.” Multinationals speak highly of Baker McKenzie alumnus Joseph T Simone who knows the lay of the land in Hong Kong and China, having worked in the region for over two decades. “He is particularly savvy when it comes to figuring out clients’ priorities.” His partners Helen Tang and Troy Rice are also highly sought after. “Tang is perennially clear and practical, her explanation of complicated problems and competing claims in a given matter in perfect English always ends up with the best commercial outcomes for the client. Not merely answering questions, she goes above and beyond to tell clients what they need to know – an uncommon trait among practitioners in China. Her excellent turnaround times also make her a reliable port of call for urgent issues that need resolving.” Meanwhile, Rice’s prior experience at international law firms and a technology licensing company means that his advice and assistance across the trademark spectrum is always spot on.

Spruson & Ferguson

Spruson & Ferguson debuts in the WTR 1000 this year. Offering top-class trademark services throughout Asia, the firm excels in cost efficiency, reliability and responsiveness; all of which are the order of the day in Hong Kong. It also provides direct filing capabilities into mainland China. International and Asian brand owners take comfort in the judicious advice dispensed by Asia-Pacific trademarks chief Coral Toh. Her popularity with clients is what sets her apart.

Stephenson Harwood LLP

Last year Stephenson Harwood made its debut in the Hong Kong chapter of the WTR 1000 on the back of effusive client feedback and this year its reception was no less emphatic. With offices in Beijing, Guangzhou and Shanghai, the firm comprehensively covers Greater China, this was augmented recently when the side’s Beijing outpost incorporated a substantial team from a US law firm to boost its transactional practice. Dynamic duo Jonathan Chu and Jezamine Fewins provide clients with the right tools and expertise to prosecute, enforce and commercialise IP assets; above all, they go the extra mile to ensure customer satisfaction. “A diligent attorney and a reservoir of knowledge on Hong Kong law, Jonathan strives for the best solutions no matter the nature of the instruction.” Fewins is “an impressive lawyer who provides clients with pragmatic advice”. In the words of one respondent: “She is always accessible and is truly invested in the client’s interests, having her on your side is tantamount to having an in-house counsel.”

Vivien Chan & Co 

A stellar trademark firm with a focus on attracting and maintaining inbound work, Vivien Chan & Co is well-positioned to handle the full range of trademark matters. It is also one of the top filers in Hong Kong.” Qualified to practice in Australia, England and Wales, Hong Kong, Singapore and as a Chinese notarial attesting officer, Vivien Chan is a cosmopolitan attorney whose dynamism is an inspiration to the Hong Kong IP community.

Wilkinson & Grist

With an illustrious history stretching back over 130 years, Wilkinson & Grist has firm roots in Hong Kong and China. With an extensive network of foreign associates around the world, it is also a globally attuned outfit well-suited to managing multi-jurisdictional trademark portfolios. With a line-up of resourceful lawyers, it is a popular destination for both contentious and transactional mandates. Andrea Fong leads the IP group, she is a council member of the Hong Kong Institute of Trademark Practitioners and vice chair of the Hong Kong Intellectual Property Rights Protection Alliance, she is a highly regarded lawyer with all-encompassing IP know-how. Yvonne Chua is an integral consultant for the firm.

Other recommended experts

A “highly regarded” senior partner at JCC Cheung & Co Solicitors, John Cheung debuts in the WTR 1000 for 2018. He is extremely pragmatic and has been in Hong Kong for two decades working at various international firms and as a result is a sage when it comes to the Hong Kong and Chinese legal markets. Cedric Lam recently swapped Dorsey & Whitney for Eversheds Sutherland as its Greater China IP leader. Stephenson Harwood alumnus Chloe Lee serves up a wide-ranging offering, in addition to Chinese attesting services out of Chloe Lee & Co. Working out of Rebecca Lo & Co, Rebecca Lo is one of a handful practitioners in the city with IP arbitration experience. “Highly reliable and straightforward trademark prosecutor” Janine Yee Shun Mok is a repository of trust among local and international concerns. She plies her trade at Hastings & Co. “A dab hand at contentious and commercial IP work,” Haldanes’ Gina Reid also breaks into the WTR 1000 this year. Over at Nixon Peabody CWL, veteran IP practitioner Henry Wheare can solve the most puzzling branding conundrums. Barry Joseph Yen is a transactional maven at So Keung Yip & Sin.

Individuals: enforcement and litigation

  • Jonathan Chu - Stephenson Harwood LLP
  • Gabriela Kennedy - Mayer Brown
  • Charmaine Koo - Deacons
  • Matthew Laight - Bird & Bird
  • Shih Yann Loo - Baker McKenzie
  • Loke-Khoon Tan - Baker McKenzie
  • Edward Chatterton - DLA Piper Hong Kong
  • Alan Chiu - Ella Cheong & Alan Chiu, Solicitors & Notaries
  • Yvonne Chua - Wilkinson & Grist
  • Justin Davidson - Norton Rose Fulbright
  • Jezamine Fewins - Stephenson Harwood LLP
  • Haifeng Huang - Jones Day
  • Chiang Ling Li - Jones Day
  • Rosita Li - Mayer Brown
  • Dora Si - Deacons
  • John Slater - Simmons & Simmons LLP
  • Christopher Smith - Baker McKenzie
  • Helen Tang - SIPS 
  • Anthony Tong - Robin Bridge & John Liu 
  • Henry Wheare - Nixon Peabody CWL
  • Alison Wong - Bird & Bird
  • Adelaide Yu - Rouse & Co International
  • Catherine Zheng - Deacons

Individuals: prosecution and strategy

  • Edward Chatterton - DLA Piper Hong Kong
  • Maria Smith - Baker McKenzie
  • Annie Tsoi - Deacons
  • Catherine Zheng - Deacons
  • Steven J Birt - Reed Smith Richards Butler
  • Vivien Chan - Vivien Chan & Co 
  • John CC Cheung - JCC Cheung & Co Solicitors
  • Peggy Cheung - Jones Day
  • Benjamin Choi - Mayer Brown
  • Andrea Fong - Wilkinson & Grist
  • Sandra Gibbons - Marks & Clerk Hong Kong
  • Rodney Goh - Deacons
  • Patsy Lau - Deacons
  • Chloe Lee - Chloe Lee & Co
  • Rosita Li - Mayer Brown
  • Rebecca Lo - Rebecca Lo & Co
  • Anthea Loo - Robin Bridge & John Liu
  • Eugene Low - Hogan Lovells
  • Yee Shun Janine Mok - Hastings & Co
  • Vivian Poon - Deacons
  • Gina Reid - Haldanes
  • Joseph T Simone - SIPS 
  • John Slater - Simmons & Simmons LLP
  • Simon J Speeks - Marks & Clerk Hong Kong
  • Rachel Li-Mei Tan - Rouse & Co International
  • Coral Toh - Spruson & Ferguson
  • Anthony Tong - Robin Bridge & John Liu 
  • Maggie Chong - Norton Rose Fulbright

Individuals: transactions

  • Edward Chatterton - DLA Piper Hong Kong
  • Alan Chiu - Ella Cheong & Alan Chiu, Solicitors & Notaries
  • Jonathan Chu - Stephenson Harwood LLP
  • Gabriela Kennedy - Mayer Brown
  • Charmaine Koo - Deacons
  • Cedric Lam - Eversheds Sutherland (International) LLP
  • Isabella Liu - Baker McKenzie
  • Troy Rice - SIPS 
  • Anthony Tong - Robin Bridge & John Liu 
  • Henry Wheare - Nixon Peabody CWL
  • Alison Wong - Bird & Bird
  • Barry Joseph Yen - So Keung Yip & Sin
  • Catherine Zheng - Deacons

Luminaries

  • Ella Cheong - Ella Cheong & Alan Chiu, Solicitors & Notaries
  • Kenny KS Wong - Hogan Lovells

China and SARs: Hong Kong: The Bar

Other recommended experts

Senior counsel

“The first port of call for many firms, Andrew Liao SC is one of the most dedicated barristers handling trademark actions.” Steeped in intellectual property, Winnie Tam SC of Des Voeux Chambers is another favourite among the city’s top litigators. John Yan SC is a “go-to trademark counsel in Hong Kong and his fingerprints are on many of the city’s legendary IP cases”.

Junior counsel

As a former Hogan Lovells solicitor Douglas Clark of Gilt Chambers knows what law firms want from him as a barrister. He has advocated in all kinds of trademark, patent and copyright cases and has sat as an arbitrator and court appointed examiner, making him a very well-rounded practitioner. At Prince’s Chambers, fluent Mandarin speaker Sebastian Hughes can take on civil litigation, arbitration and mediation with equal finesse. Ling Chun Wai of Des Voux Chambers specialises in civil and commercial cases and intellectual property is a substantial component of his practice. At Counsel’s Chambers Colin Andrew Shipp is “highly intelligent and has a deep knowledge of trademark law”. Research respondents describe Philips Bun Fai Wong as “thorough and client-friendly”. He is also “one of the most active trademark barristers in Hong Kong”. Wong and Dominic Pun are “the rare few junior barristers in Hong Kong pure IP practices”.

Junior counsel

  • Colin Andrew - Counsel’s Chambers
  • Douglas Clark - Gilt Chambers
  • Sebastian Hughes - Prince’s Chambers
  • Dominic Pun - Counsel’s Chambers
  • Ling Chun Wai - Des Voeux Chambers
  • Philips Bun Fai Wong - Counsel’s Chambers

Senior counsel

  • Andrew Liao SC - Andrew Liao SC Chambers
  • Winnie Tam SC - Des Voeux Chambers
  • John Yan SC - Counsel’s Chambers