Asialaw Profiles
The Guide to the legal markets of the Asia-Pacific

Long considered to house one of the leading IP practices in Hong Kong, Baker & McKenzie represents the owners of many of the world’s best known trade marks and brand names. The practice covers all aspects of IP portfolio management, including acquisition, protection, enforcement and exploitation of IP rights.

Representative clients of Bakers include Starbucks, LVMH, Calvin Klein, British American Tobacco, Dell, Body Shop and Unilever.

Bakers recently advised Nokia on various injunctions for design patent infringements in China. In June 2007, the firm advised Nokia in suing a major mobile handset manufacturer in Shenzhen based on Nokia design patent rights. Nokia requested a permanent injunction and compensation of Rmb1 million (US$146,000).

The Shenzhen Intermediate Court granted orders to conduct evidence preservation and to freeze the deposit of the defendant bank account. The court conducted a hearing in September 2007 and a final judgement was issued a year later.

Key lawyers include department head Loke Khoon Tan, Joseph Simone, Shih Yann Loo, Winston Zee and Maria Smith.

Housing one of the largest IP groups in Asia of any international law firm, Lovells is known for its depth of practice – covering areas such as patent litigation, trade mark portfolio management, copyright, the protection of IP rights online and the relatively new area in Asia of competition law in relation to IP.

Matters that have kept the group busy over the last year include managing the global and regional trade mark portfolio for Prudential in over 200 jurisdictions. This includes the filing and maintenance of trade mark applications and registrations as well as opposition and cancellation actions in China, Vietnam, Malaysia, Philippines, South Africa, India, Bangladesh and Australia.

The firm also continues to act for Alibaba.com on domain name recovery and a range of IP issues including trade mark applications, trade mark infringement / passing-off actions and patent applications in Hong Kong and China. Other significant international clients whose global and regional trade mark portfolios are managed by Lovells include Toys R Us and Citigroup.

Key partners in the group include the very experienced Henry Wheare and Gabriela Kennedy.

For many years Wilkinson & Grist has been one of the top e-filers in Hong Kong for trade mark, design and patent applications. The Hong Kong firm handles and manages the IP portfolio of many multinational corporations including Wyeth, Philips, Johnson & Johnson, Hutchison, Ikea and CK Life Sciences International Inc.

On the enforcement front, the firm’s key clients include Richmont International, Panasonic Corporation and Chanel.

The firm recently advised entrepreneur and philanthropist Li Ka-shing, Cheung Kong (Holdings), Cheung Kong Infrastructure Holdings and Li Ka Shing Foundation in filing complaints against over 40 top level and country level domain names incorporating the names or trade marks of the above clients.

Partners Anne Choi, Yvonne Chua and Andrea Fong enjoy an excellent profile in this area.

UK IP boutique Bird & Bird has been a long time player in Asia, but has recently stepped up its commitment to the region. Apart from establishing a licensed Shanghai office, the firm has hired former Motorola in-house counsel James Luo in Beijing and formed a global association in Singapore with Alban Tay Mahtani & de Silva.

The Hong Kong office acts as a base for Bird & Bird’s IP litigation practice across the region, and works with multinational clients in jurisdictions such as China, Indonesia, Malaysia, the Philippines, Taiwan and Thailand. A range of big-name clients, including Apple, Sanofi-Aventis, Creative Technology, Techtronic and DTS, instruct the firm to manage their trade mark portfolios.

The practice is led by the experienced long-time Hong Kong resident Matthew Laight, and includes the well respected Shirley Kwok. A recent addition to the team is partner Ai-Leen Lim, who specialises in strategic IP counseling, infringement matters, IP commercialisation, and licensing work.

The IP practice at JSM advises and manages trade mark portfolios and other IP registrations for a range of clients, including HSBC, Hang Seng Bank, Cathay Pacific Airways, Swire Group, Procter & Gamble, Kodak, Shell, Alcatel, Sega and The 3M Company.

A key development came in March 2009, when the firm opened a trade mark agency in Beijing enabling it to assist clients in their PRC trade mark registration and renewal, copyright registration and domain name registration needs. In its first month of operation, the agency filed over 100 trade mark applications.

The Hong Kong practice was kept busy over the last 12 months on the Wong To Yick and Wood Lock Ointment case. This was an unfortunate family saga involving a father and some of his children that included contempt proceedings and an appeal regarding the ownership of certain shares of the company (which was heard in late July 2009).

Partner Kenny Wong heads JSM’s IP team, which includes key partner Rosita Li who advises blue-chip clients like Cathay Pacific, Swire Properties and Li & Fung.

Ling Ho heads the regional IP group and China L&DR practice at Clifford Chance. The eight-lawyer team, which includes senior associate Audrey Shum, covers IPR protection and counselling on strategies, complex licensing programmes, IP-related investment and R&D programmes, sale and acquisition of IPR portfolios, anti-counterfeiting enforcement programmes and IPR infringements, and conflict actions. Recent work includes advising Taiwanese electronics and computer component manufacturers Foxconn International on actions in Hong Kong regarding trade secrets and confidential information. The firm also provides general IP advice, and assists with IP infringements in Hong Kong and mainland China, for Goldman Sachs. Over the last 12 months, the firm has added Chinese power producer Huadian Power and Pfizer to a client list that already includes Airbus and Star TV.

The Hong Kong IP practice at Freshfields Bruckhaus Deringer is heavily geared towards mainland China. The firm specialises on the IP aspects of mergers and acquisitions, spin-offs, joint ventures and IPOs, but it also covers commercial and contentious IT matters such as outsourcing. Practice head, and former Mallesons Stephen Jaques partner, Connie Carnabuci is particularly strong on the telecoms and IT side and the firm enjoys a fruitful relationship with Alibaba.com, whose in-house team is headed by former Freshfields partner Timothy Steinert. Other key clients include Homeland, Morgan Stanley, Star Group and UPS.

The IP practice at Jones Day was significantly boosted in 2008 with the lateral hiring of a team of three partners from Baker & McKenzie. Anita Leung, Peggy Cheung and Chiang Ling Li receive many plaudits from peers and clients alike. Recent work includes executing an interim evidence preservation order in China for the first time. The firm successfully convinced the court to waive the bond requirement and persuaded the court to discover evidence from various Chinese government departments in support of its client’s case.

Following up on wins in 2005, 2006 and 2007, Deacons once again this year was awarded the top Hong Kong government award for electronic filing in Hong Kong. The firm has acted as IP adviser to the Hong Kong Trade Development Council (HKTDC) for the last 10 years, and this year successfully tendered for patent work with the Hospital Authority.

It has been an exceptionally busy year for Deacons’ litigation practice, with the firm acting in a copyright and passing off action for Yeo’s against its distributor and competitor for copying its drinks packaging and designs. Another matter was its work for Tradeeasy in a complex action against its employees and a competitor for copyright infringement in its database and confidential information/trade secrets.

On both occasions, Deacons was successful in obtaining interlocutory injunctions against the defendants – with the firm obtaining a mareva injunction against the infringers in the Tradeeasy case.

Partner Lindsay Esler heads Deacons’ IP department.