Taiwan

Taiwan’s IP and trademark environment continues to thrive, with trademark filings expected to rise in 2019 as interviewees report that international businesses are placing more importance on the Taiwan market amid the US-China trade war. A specialised IP and commercial court is also in the works; the Legislative Yuan has passed draft bills to establish such a forum, which would be responsible for hearing civil, criminal and administrative matters.

Firms

A & Finet International Patent & Law Office

A & Finet International Patent & Law Office breaks into the WTR 1000 on the back of strong recommendations from foreign associates. “A & Finet routinely impresses with its experience in Taiwanese IP matters. Frequent and clear communications keep clients abreast of the status of their files and the set routinely impresses with its prompt and proactive provision of useful advice and information.” Akina Pan is a key contact for interested parties.

Baker McKenzie 

Baker McKenzie “delivers outstanding service quality and cost efficiency in Taiwan”, making it a hot commodity among top-tier rights holders – as demonstrated when one notable luxury retailer recently consolidated all its enforcement work with the firm. The presence of Grace Shao is a blessing for any brand owner. “A dependable, forthright and redoubtable litigator who does a great job in managing business expectations, she takes a measured approach to carefully ponder every possible argument in order to get great results.” A former public prosecutor who previously headed Google’s public policy and government relations in Hong Kong and Taiwan, Jo-Fan Yu works in perfect harmony with Shao to effortlessly pull off challenging IP enforcement campaigns. The recent arrival of former IP court judge Joanna Ouyang has further enhanced this illustrious outfit.

Chen & Lin Attorneys-at-Law

Despite being one of the smaller practices in this full-service law firm, Chen & Lin’s trademark practice provides clients with a top-quality, A-to-Z trademark service. The varied clientele ranges from foreign law firms, multinational companies and small-to-medium enterprises. Shelly Chen heads up the trademark team, with 30 years of expertise in everything from trademarks and copyright to commercial law through to entertainment law. Newest joiner Claire Lai is a former public prosecutor and Taiwan High Court judge.

Eiger

Eiger is an attractive option for international rights holders because of its “depth of trademark knowledge, efficiency and responsiveness”. Its team of US, German and Taiwan-qualified attorneys – recently augmented by the addition of former Dolby man Edward Swift – tackle the whole range of trademark work with verve for its largely foreign client base. The firm has carved out a niche for itself in conducting trademark analyses for social media companies and luxury brands, while its ability to take on regional briefs in cooperation with its Shanghai bureau is another highlight. “A source of hands-on trademark knowledge, John Eastwood heads the IP and technology practice and “is ever responsive to enquiries”. Consummate litigator Eve Chen is an enforcement guru with ample experience in protecting trademark rights for international brand owners.

Formosa Transnational

Formosa Transnational is “renowned for its formidable contentious nous with a fast-developing non-contentious trademark practice”. Litigants would do well to have Yulan Kuo and Fa-Li Lin on their sides; both are preeminent litigators with three decades’ experience each.

Jones Day

“Although most famed for its M&A and commercial practices, the trademark outfit at Jones Day has solid footprints in Taiwan.” Jason Chen is a name for the contact book; the former district court judge possesses an enviable track record when it comes to resolving high-stakes contractual and IP disputes.

Lee and Li Attorneys at Law

“One of the largest trademark firms in Taiwan with robust working relationships with the Taiwan IP Office (TIPO), Lee and Li undoubtedly belongs to the upper echelons of the Taiwanese IP market, thanks also to the large number of top brands it represents.” The firm’s success can be ascribed to its “perennially timely and unambiguous” working style; however, its affiliation with Lee and Li – Leaven IPR Agency in China makes it a one-stop shop for rights holders seeking protection in Greater China. Ruey-Sen Tsai offers potential litigants plenty of options for resolving disputes; he is a patent attorney, an arbitrator and a lawyer admitted to the Taipei, Hsinchu and Tainan bars. Joseph Shih-Pin Yang is a deft IP strategist who has honed his craft over his 20-plus years in the trade.

Saint Island International Patent & Law Offices

With a “highly respected prosecution practice”, Saint Island International Patent & Law Offices is a booming trademark practice – a red-letter year has seen both outbound and inbound trademark filing numbers rise steadily. The firm has taken on trademark work from a regional airline while serving existing clients – including several well-known US and Korean technology companies and a Japanese fast-moving consumer goods company – to their utter satisfaction. Its dominant contentious practice is best demonstrated by its position as one of the two firms that file the greatest number of civil and criminal suits through the IP Court’s online system. Amanda Liu focuses on incoming cases from EU jurisdictions; recently she prevailed in defending a trademark opposition on behalf of Next Retail Limited and cancelling two confusingly similar marks for Wagamama Limited. The work of Julia Hung attracts plaudits from clients for its “punctilious and of exceptional quality”; her most recent work highlights include the successful enforcement of the NIKON and JEEP marks in TIPO invalidation and opposition proceedings respectively. Tony Chang earns his place in the WTR 1000 for spectacular performances on trademark cases at the IP Court, in one of which he successfully secured a declaratory judgment on behalf of Vitalon Foods Company against a tea culture expert on the grounds of trademark dissimilarity.

Tai E International Patent & Law Office

Forty-three years of illustrious history, a substantial trademark filing practice and consistently excellent results in enforcement have won Tai E the trust of numerous multinational brands, including Audi and Giorgio Armani. The firm recently beefed up its inbound trademark filing team, bringing the trademark team’s headcount up to 40. The firm handles over 300 contentious matters a year and Henry Guei recently cooperated with the IP police and Taipei Customs Office to achieve significant results in anti-counterfeiting campaigns, yielding 8,000 pieces of counterfeit rainwear for a Taiwanese company and 1,880 pieces of counterfeit t-shirts for Abercrombie & Fitch respectively. Fred Chi-Tai Yen and Amanda Hung have enjoyed a winning streak in trademark oppositions on behalf of Audi, Giorgio Armani and Volkswagen.

TIPLO - Taiwan International Patent & Law Office

“An imposing presence in Taiwanese intellectual property for the past half a century, TIPLO is best known for its superb Japanese base of Japanese clients” – these are excellently supported by a liaison office in Tokyo. HG Chen is a veteran litigator with 36 years’ experience under his belt, while Johnny Yang is a key contact for both US and European brand owners.

Tsai, Lee & Chen Patent Attorneys & Attorneys at Law 

A burgeoning, 170-strong IP outfit that works in Chinese, English, Japanese, German and Korean, Tsai, Lee & Chen is an enticing option for international brand owners. Its attorneys are qualified to practise in Taiwan, China and the United States and they bring to the table the full gamut of trademark services. Crystal J Chen is eligible to practise in China and New York and boasts a comprehensive understanding of regional IP protection strategies.

Tsar & Tsai Law Firm

Tsar & Tsai is a major commercial law firm in Taiwan with a strong contentious IP practice; however, it can tackle instructions of all stripes with style. Joyce Ho is an “exemplary trademark counsel” and was recently appointed as an adjunct professor by the National Taiwan University.

Winkler Partners

Winkler is a “client-focused” law firm of choice for 30 of the 100 Best Global Brands, as measured by Interbrand’s 2018 survey. Under the steady stewardship of international thought leader Peter Dernbach, the firm has been achieving dazzling outcomes across the contentious/non-contentious divide, defying the low average success rate in overturning TIPO decisions with several recent triumphs. Gary Kuo took over an infringement matter from another law firm on behalf of a car parts manufacturer to secure a winning judgment from the Supreme Court, ending a long-running dispute that first surfaced over 15 years ago. Christine Chen is an enforcement sage with a flair for multi-jurisdictional matters; lately she helped a Taiwanese bicycle manufacturer to win back its domain name in Chile.

Zoomlaw Attorneys-at-Law 

Newcomer to the WTR 1000, Zoomlaw Attorneys-at-Law is distinguished by its high degree of internationalisation, filing over 10,000 trademarks in more than 150 countries in the past five years; it is also able to file trademarks in China by virtue of its Suzhou subsidiary. Kuo-Hua Fan was formerly chief legal officer with Taiwanese tech giant, Gigabyte Technology; armed with a PhD in law, Fan first set up the firm with a view to serving the licensing needs of his old employer – Zoomlaw has since morphed into a fully-fledged IP boutique with an extensive client base.

Other recommended experts

UK solicitor and Taipei Bar Association member Gary Scott runs an IP, contractual and company law practice out of ALTAI Law Firm. Jane Tsai is a deft IP strategist and litigator at Lee, Tsai & Partner.

Individuals: enforcement and litigation

  • Peter J Dernbach - Winkler Partners
  • Grace Shao - Baker McKenzie
  • Tony Chang - Saint Island International Patent & Law Offices
  • 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
  • Shelly Chen - Chen & Lin Attorneys-at-Law
  • John Eastwood - Eiger
  • Kuo-Hua Fan - Zoomlaw Attorneys-at-Law 
  • Henry Guei - Tai E International Patent & Law Office
  • Joyce Ho - Tsar & Tsai Law Firm
  • Julia Hung - Saint Island International Patent & Law Offices
  • Gary Kuo - Winkler Partners
  • Yulan Kuo - Formosa Transnational
  • Fa-Li Lin - Formosa Transnational
  • Amanda Liu - Saint Island International Patent & Law Offices
  • Ruey-Sen Tsai - Lee and Li Attorneys at Law
  • Jo-Fan Yu - Baker McKenzie

Individuals: prosecution and strategy

  • Peter J Dernbach - Winkler Partners
  • Grace Shao - Baker McKenzie
  • Eve Chen - Eiger
  • Shelly Chen - Chen & Lin Attorneys-at-Law
  • John Eastwood - Eiger
  • Kuo-Hua Fan - Zoomlaw Attorneys-at-Law 
  • Joyce Ho - Tsar & Tsai Law Firm
  • Amanda Hung - Tai E International Patent & Law Office
  • Julia Hung - Saint Island International Patent & Law Offices
  • Amanda Liu - Saint Island International Patent & Law Offices
  • Gary Scott - ALTAI Partnership
  • Jane Tsai - Lee, Tsai & Partners Attorneys-at-Law
  • 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