Taiwan

The Taiwanese IP environment is described by stakeholders as being stable. Prosecution at the Taiwan Intellectual Property Office is efficient, but the bar on distinctiveness remains high and the resultant office actions pose challenges to foreign applicants with scant knowledge of the system. The registration of non-traditional marks is on the rise while the IP Court “continues to improve and impress”, especially in terms of predictability in its interpretation of the law.

Firms

Baker McKenzie 

“Baker McKenzie makes brilliant use of its global network to reach and serve an international audience.” It has a gift for the meticulous management of portfolios but also showcases outstanding enforcement capabilities thanks to excellent relationships with Taiwan’s government authorities. Consummate IP pro Grace Shao is a dexterous operator across the contentious/non-contentious divide; she expertly guides trademark applications through the Taiwan Intellectual Property Office and enforces clients’ rights through effective raids and seizures and in courtroom battles. She is a repository of trust for a glittering array of multinational industry leaders.

Eiger

Eiger is a full-service outfit that truly lives and breathes intellectual property. It enters 2019 off the back of a banner year in which it has expanded its team, gained new clients and recorded multiple victories and successes for existing clients. The set’s cosmopolitan style and outlook makes it a compelling option for US and European concerns, as does its deep IP litigation and cross-strait enforcement expertise. John Eastwood and Eve Chen are the stars of this dynamic practice. They keep counterfeiters at bay while undertaking wide-ranging strategic brand protection work for a swathe of top brands, including Prada, Tiffany & Co and Philip Morris International. Eastwood is an influential voice when it comes to IP policy in Taiwan; he has a panoramic view of intellectual property that is immensely valuable to his clients. While Chen is a master of litigation and enforcement tactics.

Formosa Transnational

Formosa Transnational has outstanding litigation pedigree and brings the heat in IP infringement disputes; however, with the side’s outstanding alternative dispute resolution skills it can often solve problems without costly court proceedings. “Top litigators” Fa-Li Lin and Yulan Kuo get the job done no matter how complicated the case.

Jones Day

With boots on the ground in Beijing, Hong Kong, Shanghai and Taipei, Jones Day is one of the few international players with an IP practice which covers the entire Greater China region. The Taiwan team is renowned for its comprehensive IP offering, but is especially impressive when it comes to contentious and transactional briefs. Commercial and IP litigator Jason Chen has several landmark decisions to his name and is often called on to handle high-stakes matters where only a win will do.

Lee and Li Attorneys at Law

Interviewees opine that “market leader” Lee and Li represents more of the world’s most influential brands than any other firm in Taiwan. Offering an A-to-Z trademark service – and utilising its own IP agency in Beijing – the firm is a reassuring one-stop shop for representation across Greater China. Joseph Shih-Pin Yang is an adroit portfolio manager and a dab hand when it comes to convoluted licensing deals. Ruey-Sen Tsai acquits himself with distinction in IP litigation.

Saint Island International Patent & Law Offices

Creator of the first trademark database in Taiwan, prosecution powerhouse Saint Island International Patent & Law Offices assiduously tends to the total trademark needs of its patrons. With five offices dotted around the island, the “exceptional” set is within easy reach of domestic brand owners. “Many at the firm do excellent work in prosecution and strategy,” but Julia Hung, Amanda Liu and William Chen are the stand-out stars.

Tai E International Patent & Law Office

IP stalwart Tai E serves brand owners efficiently and effectively. It is always looking for ways to add value and established a special issue-research team in 2017 looking into ways to collaborate more closely with clients and deliver more targeted advice – an effort that has been paying dividends ever since. Beacons of excellence Fred Chi-Tai Yen and Amanda Hung have been doing impressive work in the automotive industry of late, acting for Audi, Bentley Motors and Volkswagen in complicated oppositions proceedings. The side has also found a happy hunting ground in the toy sector, as demonstrated by anti-counterfeiting successes for ROI VISUAL (of Robocar Poli fame) and opposition wins for Mattel.

TIPLO - Taiwan International Patent & Law Office

With Japanese-speaking attorneys in its ranks and a liaison office in Tokyo, the 300-strong TIPLO hits the spot for Japanese rights holders in need of 360-degree branding guidance. Trademark veteran of 30 years Johnny Yang is a fount of strategic insight and analysis and an ever-reliable port of call for influential global brands. HG Chen is a safe pair of hands for high-stakes disputes.

Tsai, Lee & Chen Patent Attorneys & Attorneys at Law 

Tsai, Lee & Chen’s young and dynamic IP team is in hot demand among an ever-growing list of high-profile clients, in response to which the team has undergone major expansion. Greater bandwidth has enabled it to make its patent and trademark prosecution services even more efficient and given it additional firepower to wield and deploy in IP litigation. Crystal J Chen’s designer litigation and enforcement strategies go down well among the fashion and luxury goods crowd. She blends proficiency in trademark, copyright and unfair competition law to great effect.

Tsar & Tsai Law Firm

General law ensemble Tsar & Tsai produces error-free work whatever the nature of the IP instruction, although it is particularly recommended for its talents in resolving complex disputes. An unfair competition authority with a deep knowledge of IP law, Joyce Ho is a key name for the address book. She possesses an encyclopaedia of attack plans and makes smart tactical choices about which to utilise for her patent and trademark cases.

Winkler Partners

Plugged into the international IP community in a way that few local firms are, Winkler is a reference point in Taiwan for top global brands across a broad variety of industries. The set’s service is attentive and aligned with the needs of each client, but it is the team’s successful record in disputes and major clearance and prosecution projects that really turns heads. Sophisticated international IP thinker Peter Dernbach inspires the team to win after win. Gary Kuo spent his past life managing portfolios but now dedicates much of his practice to litigation; his understanding of what makes for a strong brand gives him an edge when defending his clients or launching an attack. Christine Chen contributes much to the Winkler IP practice as part of her broad litigation-focused role in the firm.

Other recommended experts

Gary Scott is a foreign registered lawyer and Taiwanese trademark agent at ALTAI Partnership, where he operates a thriving trademark, design and domain name practice.

Individuals: enforcement and litigation

  • Christine Chen - Winkler Partners
  • Crystal J Chen - Tsai, Lee & Chen Patent Attorneys & Attorneys at Law 
  • Eve Chen - Eiger
  • HG Chen - TIPLO - Taiwan International Patent & Law Office
  • Jason Chen - Jones Day
  • William Chen - Saint Island International Patent & Law Offices
  • Peter J Dernbach - Winkler Partners
  • John Eastwood - Eiger
  • Joyce Ho - Tsar & Tsai Law Firm
  • Gary Kuo - Winkler Partners
  • Yulan Kuo - Formosa Transnational
  • Fa-Li Lin - Formosa Transnational
  • Amanda Liu - Saint Island International Patent & Law Offices
  • Grace Shao - Baker McKenzie
  • Ruey-Sen Tsai - Lee and Li Attorneys at Law

Individuals: prosecution and strategy

  • Peter J Dernbach - Winkler Partners
  • Amanda Hung - Tai E International Patent & Law Office
  • Julia Hung - Saint Island International Patent & Law Offices
  • Gary Scott - ALTAI Partnership
  • Grace Shao - Baker McKenzie
  • Johnny Yang - TIPLO - Taiwan International Patent & Law Office
  • Joseph Shih-Pin Yang - Lee and Li Attorneys at Law
  • Fred Chi-Tai Yen - Tai E International Patent & Law Office