Singapore

Practitioners note a rise in interest among clients to park their IP rights in Singapore – typically using subsidiaries – in exchange for tax incentives from the government. The ease of acquiring subsidies for Singaporean companies to file trademarks abroad has also improved, which is conducive for the monetisation of home-grown brands. In a landmark ruling in December 2017, the Singapore High Court decided that the transhipment of goods through the country does not constitute trademark infringement. Despite the absence of a customs recordal system and border enforcement, practitioners report that Singapore Customs still proactively contacts brand owners when goods enter the country that are potentially infringing.

Firms: enforcement and litigation

  • Baker McKenzie Wong & Leow
  • Bird & Bird ATMD LLP
  • Drew & Napier LLC
  • Amica Law LLC
  • Lee & Lee
  • Allen & Gledhill LLP
  • JurisAsia
  • Ravindran Associates LLP

Firms: prosecution and strategy

  • Allen & Gledhill LLP
  • Amica Law LLC
  • Baker McKenzie Wong & Leow
  • Bird & Bird ATMD LLP
  • Drew & Napier LLC
  • Donaldson & Burkinshaw LLP
  • Ella Cheong LLC
  • Lee & Lee
  • Marks & Clerk Singapore LLP
  • RHTLaw Taylor Wessing LLP
  • Dentons
  • JurisAsia
  • WongPartnership LLP

Firms: transactions

  • Amica Law LLC
  • Baker McKenzie Wong & Leow
  • Bird & Bird ATMD LLP
  • JurisAsia
  • RHTLaw Taylor Wessing LLP
  • WongPartnership LLP

Allen & Gledhill LLP

“A long-established leader in Singapore,” Allen & Gledhill has a great grasp of the interplay between intellectual property and various commercial law disciplines, making it a discerning choice for holistic and strategic trademark counsel. The ensemble performs flawlessly in its role as Singapore and worldwide trademark portfolio manager for a host of distinguished brands and acquits itself with distinction in both litigation and transactional settings. The nexus around which the practice revolves are litigator Stanley Lai SC, an IP thought leader who currently serves as chairman of the IP Office of Singapore (IPOS) and gold-rated portfolio protector Pei Lin Low.

Amica Law LLC

Over at Amica Law, Winnie Tham has been running the prosecution department at full throttle. “Well-organised and highly methodical, she lets nothing slip” for patrons including Warner Bros and Dell. Fellow director Jo-Ann See is a perspicacious brand strategist and is called on by Amazon, ExxonMobil Corporation and Starbucks for exacting standards and high efficiency. She recently pulled off a massive and urgent filing exercise of some 700 marks for Amazon alongside rising star Melvin Pang. A dexterous operator across the contentious/non-contentious divide, Pang has many other notable highlights, for example, he recently prevailed for Ceramiche Caesar at the Singapore Court of Appeal in a trademark opposition. Jason Chan leads a litigation practice that is in equally fine fettle. When it comes to commercial dealings, Wilson Wong and Anna Toh position Amica as one of the best.

Baker McKenzie Wong & Leow

Baker McKenzie Wong & Leow tends to the total trademark needs of patrons in Singapore and globally. The firm’s glittering client roster features a large proportion of Western-based multinationals, but instructions from Asian and local Temasek-linked companies have been markedly increasing of late. All-rounder Andy Leck is an outstanding leader. A force to be reckoned with in the fight against fakes, Leck regularly orchestrates successful anti-counterfeiting raids; this is in addition to dispensing sage portfolio advice. Newly ranked Ren Jun Lim is another trademark connoisseur. He boasts supplementary knowledge of regulatory issues in the consumer products industry.

Bird & Bird ATMD LLP

Bird & Bird ATMD works closely with colleagues in China, Hong Kong and other international offices to deliver first-rate regional protection. The firm demonstrates consistent thought leadership, which for example, means that it is sought out by brand owners facing trademark challenges brought on by technological development. Ensuring the highest standards are met is prosecution maestro Lorraine Anne Tay, who is “in a class of her own”. “Her counsel is highly strategic, effective and comprehensive.” Often invited by the government to give training on trademark law, she has also served as an IP adjudicator on behalf of IPOS. Contentious heavyweight Alban Kang leads the line on litigation. He recently prevailed at the High Court on behalf of Big Box Corporation, whose mark was under challenge for lack of distinctiveness.

Dentons

Global expansion has been the central narrative for Dentons, which now ranks as the world’s largest law firm; growth in Australia is particularly relevant in terms of what is going on for the side in Asia. In Singapore, “well-established” Dentons Rodyk & Davidson serves up 360-degree trademark counsel infused with a strong commercial flavour particularly to patrons in the IT, media and telecoms sectors. Veteran of 30 years Ai Ming Lee is a leading light on IP and commercial law.

Donaldson & Burkinshaw LLP

Standing tall in the Singaporean IP scene for seven decades now, Donaldson & Burkinshaw’s 50-strong team – supervised by sagacious portfolio manager Michelle Ng – is famed for its well-oiled prosecution practice. A top-five Singaporean trademark filer, the firm also maintains a sizable Malaysian filing department, in connection with which Shy Tsong Lee is a key contact; the Malaysian trademark agent splits his time between Singapore, Malaysia and Vietnam and has a birds-eye view of trademark protection in the region. Keeping infringers in check, meanwhile, is Chi Duan Gooi.

Drew & Napier LLC

Drew & Napier’s number is called when there are complex trademark problems to solve; indeed, the ensemble has put in performances with éclat in numerous landmark litigations. Although Dedar Singh Gill has left to become a judicial commissioner at the Supreme Court, the firm maintains a brilliant line up of experts who, collectively, can handle absolutely anything thrown their way. Siau Wen Lim, Tony Yeo, and Yvonne Tang are the names to note. “Well-versed in all aspects of trademark protection, Lim dispenses practicable and commercially sensible advice and always finds ways to add value. She makes everything easier and follows up proactively to ensure you are fully protected.” Recently, she successfully defended Morinaga Milk in an opposition lodged by Starbucks. A regular in the country’s courtrooms, Yeo appeared before the High Court on behalf of Sentosa Development Corporation in a hard-fought trademark dispute against the Vela group over the use of the SENTOSA mark in medical devices. Interviewees commend his “efficient delivery” of “well-informed” strategies. Tang is always in high demand among the fashion and luxury crowd. She performs with alacrity on a mix of registration, brand management, civil and criminal infringement and opposition matters.

Ella Cheong LLC

A firm fixture on the Singaporean IP landscape, Ella Cheong LLC prides itself on securing iron-wrought protection for valuable brands with regional influence – and on defending them to the hilt and monetising them for maximum gain. The ensemble operates a lean and cost-effective machine which does not make sacrifices when it comes to customer service. Someone to count on is managing director Kar Liang Soh, an unerring sherpa on all things trademark. He boasts phenomenal expertise in domain names and was the first Singaporean to be appointed as a WIPO domain name panellist. Kevin Wong has an intuitive understanding of his clients’ commercial objectives which he puts to good use in his portfolio management and transactional practice.

JurisAsia

Under the steady stewardship of the highly esteemed Sheena Jacob, JurisAsia has attracted the attentions of an illustrious clientele; the firm’s recent progress merits its WTR 1000 inclusion this year. Founding partner Jacob previously plied her trade at Bird & Bird and Tan Rajah & Cheah. The versatile operator undertakes search, clearance and strategic advisory work for the Body Shop and prosecution for Schroders, among others, and has recently advised Stokke on a joint product promotion agreement with Shangri-La Hotel Limited. JurisAsia has formed an exclusive association with international powerhouse Gowling WLG which gives life to an excellent global service.

Lee & Lee

Tactically astute in prosecution and robust in litigation and enforcement, famed corporate firm Lee & Lee is as much in its element in the IP sphere as it is in other commercial disciplines. Yee Swan Boo anchors a growing team and holds it down on the prosecution side of the practice. “Efficient and organised,” she is a reliable source of “top-quality and timely advice” on pan-Asian and global filing. Colleague Zechariah Chan is “highly experienced” particularly in view of his time spent in-house at a US enterprise. He provides a commercially attuned and “impeccable service”. Commanding immense respect for his litigation prowess, Tee Jim Tan SC has a long track record of success in major trademark battles.

Marks & Clerk Singapore LLP

Marks & Clerk’s Singapore team gets a great write up from clients, as one respondent enthuses, Candice Kwok, the internationally well-connected captain of the side, “provides timely and concise legal advice alongside helpful commercial risk analyses. She responds rapidly and is very strategic at overcoming IPOS refusals when issued. She can be recommended for anything contentious without hesitation too.” Highly innovative companies such as TradeGecko hire her for global trademark protection work, but she does equally well on behalf of other companies such as Thye Shan Medical Hall, one of the oldest Chinese medicine businesses in Singapore, whose portfolio she has grown considerably in a remarkably short period of time. Recent opposition wins include a successful defence of Mixi, maker of mobile game ‘Monster Strike’ in a proceeding launched by Monster Energy.

Ravindran Associates LLP

Ravindran Associates LLP makes a well-deserved debut in the WTR 1000 this year. Citing it as “one of the most active firms in trademark enforcement”, peers commend the “aggressive” stance it takes on behalf of renowned luxury goods brands. The star of the show is Ravi Ravindran, who has chaired the Singapore Law Society’s trademark committee and served on INTA’s Asia-Pacific anti-counterfeiting committee. He has written extensively on trademarks and is as knowledgeable as they come on Singaporean trademark legislation. The managing partner is very hands on with his cases and thrives in the cut and thrust of courtroom duels.

RHTLaw Taylor Wessing LLP

Full-service commercial outfit RHTLaw Taylor Wessing understands the business drivers of the consumer goods, life sciences and technology, media and telecoms sectors and translates this into commercially astute trademark counsel. This is dispensed by a dedicated team of specialists captained superbly by Jonathan Kok. Clients say they “feel very secure in his hands” and are full of praise for his “well-balanced advice, prompt and efficient service and flexibility around costs”. Proficient in both technology and trademarks locally and regionally, Rizwi Wun embodies legal versatility. “Rizwi handles complicated requests easily and stands out for the clarity of his advice. He helps you choose the best strategy, taking into account the difference in approach taken to trademark protection in a multitude of jurisdictions.”

WongPartnership LLP

Patrons in need of cutting-edge transactional expertise would do well to enlist the help of WongPartnership. The firm made an interesting move recently in establishing the WPG law network – which pulls together firms in the Southeast Asian region, China and the Middle East – to enhance its capacity for international deal making. The IP, technology, telecoms and data protection practice leader Chung Nian Lam knows how to get signatures on the dotted line with the minimum amount of fuss. His partner Jeffrey Lim appreciates the nuances involved in commercialising intellectual property in a vast variety of industries.

Other recommended experts

Cyril Chua has a knack for devising “unorthodox yet highly effective ways of locating and seizing counterfeit products in Asia”. His unparalleled understanding of the region’s counterfeiting problems stems from a two-decade long career running anti-counterfeiting programmes spanning more than 20 jurisdictions. He plies his trade at Robinson LLC, where he maintains an enviable client roster that includes Canon and Hewlett Packard, among others. Sources describe Margaret Law as “proactive, practical and efficient”. She operates out of her own eponymous boutique to which Chinese companies such as Alibaba flock. Gateway Law managing director Max Ng is known for his “pragmatic” approach to trademark law. Infinitus Law Corporation IP chief Teresa O’Connor is one of, if not the most experienced practitioners in Singapore today, having dedicated over 36 years to intellectual property. Soo Ling See Tow heads the IP team and serves as deputy head of disputes at CNP. Her broad legal experience makes her a very effective problem solver. Davies Collison Cave trademark partner Esther Seow breaks into the WTR 1000 for the first time this year. Francine Tan at Francine Tan Law Corporation displays total commitment to her clients. “She is always available to answer questions, no matter how trivial, and comes up with smart and workable solutions to contentious and non-contentious issues.” Joyce Tan leads a busy licensing and commercialisation practice out of Joyce A Tan & Partners. Mary Thomas knows what clients want, having served as in-house counsel herself. She is the managing director of Mary Thomas IP Strategies. As a Singaporean advocate and solicitor and a registered trademark, patent and industrial design agent in Malaysia, who is also admitted to the UK bar, she is well qualified to give brand owners a wraparound trademark service. Audrey Yap Su Ming is the managing partner of IP boutique Yusarn Audrey. She has an international reputation as an astute strategist who holds the keys to unlocking IP value for her patrons.

Individuals: enforcement and litigation

  • Alban Kang - Bird & Bird ATMD LLP
  • Andy Leck - Baker McKenzie Wong & Leow
  • Jason Chan - Amica Law LLC
  • Cyril Chua - Robinson LLC 
  • Stanley Lai SC - Allen & Gledhill LLP
  • Siau Wen Lim - Drew & Napier LLC
  • Ravi Ravindran - Ravindran Associates LLP
  • Tee Jim Tan SC - Lee & Lee
  • Tony Yeo - Drew & Napier LLC
  • Chi Duan Gooi - Donaldson & Burkinshaw LLP
  • Ren Jun Lim - Baker McKenzie Wong & Leow
  • Max Ng - Gateway Law Corporation
  • Melvin Pang - Amica Law LLC

Individuals: prosecution and strategy

  • Pei Lin Low - Allen & Gledhill LLP
  • Jo-Ann See - Amica Law LLC
  • Lorraine Anne Tay - Bird & Bird ATMD LLP
  • Yee Swan Boo - Lee & Lee
  • Sheena Jacob - JurisAsia
  • Candice Kwok - Marks & Clerk Singapore LLP
  • Margaret Law - Margaret Law Corp
  • Andy Leck - Baker McKenzie Wong & Leow
  • Michelle SH Ng - Donaldson & Burkinshaw LLP
  • Teresa O'Connor - Infinitus Law Corporation
  • Esther Seow - Davies Collison Cave Pty Ltd
  • Kar Liang Soh - Ella Cheong LLC
  • Winnie Tham - Amica Law LLC
  • Mary Thomas - Mary Thomas IP Strategies & Solutions
  • Kevin Wong - Ella Cheong LLC
  • Audrey Yap Su Ming - Yusarn Audrey
  • Chung Nian Lam - WongPartnership LLP
  • Shy Tsong Lee - Donaldson & Burkinshaw LLP
  • Jeffrey Lim - WongPartnership LLP
  • Soo Ling See Tow - Colin Ng & Partners LLP
  • Francine Tan - Francine Tan Law Corporation
  • Yvonne Tang - Drew & Napier LLC
  • Rizwi Wun - RHTLaw Taylor Wessing LLP

Individuals: transactions

  • Zechariah JH Chan - Lee & Lee
  • Sheena Jacob - JurisAsia
  • Jonathan Kok - RHTLaw Taylor Wessing LLP
  • Chung Nian Lam - WongPartnership LLP
  • Margaret Law - Margaret Law Corp
  • Jeffrey Lim - WongPartnership LLP
  • Joyce A Tan - Joyce A Tan & Partners
  • Anna Toh - Amica Law LLC
  • Wilson Wong - Amica Law LLC
  • Audrey Yap Su Ming - Yusarn Audrey