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

Baker & McKenzie’s team regularly acts on multi-jurisdictional and domestic matters when it comes to IP work in China. The IP group advises clients on the full spectrum of IP issues, representing trade mark owners on matters including registration, branding advice, portfolio management, patent applications and internet issues. The firm’s litigation team advises on IP enforcement and contentious matters.

The practice also has particular experience in advising clients on regulatory issues for industries such as life sciences, pharmaceuticals and healthcare. This expertise encompasses matters such as R&D, clinical trials, product labelling and liability, and recall issues.

Bakers’ IP team recently represented Martell and Hennessy in an infringement lawsuit against five persons who were accused of counterfeiting trade marks on a large amount of seized goods. Bakers’ team was able to obtain a successful judgment for the client, which involved seven years in prison sentences and Rmb142,000 in fines.

The firm’s leading IP lawyers in China include Chris Smith, Scott Palmer and Clement Ngai.

Bird & Bird has a leading IP practice representing clients on a wide array of IP matters. The practice is familiar with representing clients’ IP interests in court cases in China, including winning copyright infringement and unfair competition cases. The IP team often advises multinational corporations on their trade mark portfolios and advises on IP strategy.

In February 2011, Bird & Bird’s China IP group bolstered its practice with the addition of Clifford Borg-Marks, formerly of Hogan Lovells’ Beijing office. Borg-Marks specialises in portfolio management and licensing and due diligence work, and has a special proclivity for helping multinationals navigate IP related crises in China.

Hogan Lovells fields a large IP practice across greater China, housing 30 practitioners. The firm has an especially strong patent practice, particularly on pharmaceutical related work. The firm has a history of representing pharmaceutical companies such as Merck Shap & Dohme, Novartis, Sanofi-Aventis, Bristol Myers Squibb and Bayer on their China IP matters.

A firm team, led by Hong Kong-based partner Henry Wheare, is managing the global trade mark portfolio of Prudential across 200 jurisdictions. This includes brand prosecution, rights maintenance, and oppositions and enforcement action in Greater China.

Hogan Lovells partners Gabriela Kennedy and Deanna Wong are also advising Costa Coffee on its Chinese trade mark portfolio management.

Rouse is routinely mandated by multinational corporations with well recognised brands to defend their IP interests in China. The practice is associated with PRC law firm Lusheng, and is part of Rouse’s global network of IP advisers.

The China team fields over 180 staff members and has experience in commercial IP work and investigations. Where the team really shines is representing clients in high stakes litigation and copyright prosecution. The firm has filed over 150 litigation cases with the Chinese courts at all levels, some of which have been precedent-setting in the Supreme People’s Court as well as other prominent courts across China’s major cities.

One partner at a rival firm says: “The firm is absolutely at the top of the market. They are specialists that know what they’re doing, and they work for the very best and most high profile clients.”

Clifford Chance’s Asia IP group is led by experienced partner Ling Ho. Ho has experience on transactional work, anti-counterfeiting and portfolio management, and high stakes litigation and dispute resolution.

The practice recently advised Philip Morris on a US$2.34 billion joint venture in the Philippines and India with Fortuna Tobacco. Ho led the team, which had to navigate strategic IP issues in the midst of the tandem signing and closure of the deal.

Clifford Chance also has a strong roster of leading multinational clients that it counsels on patent litigation issues.

Partner Kenny Wong leads Mayer Brown JSM’s IP practice, which is held in high regard by peers in the market. Wong is known in China, Hong Kong and the US for his frequent speaking engagements, and his willingness to educate others on IP developments.

The firm opened up a trade mark agency in Beijing in the early part of 2009, and the office has since served as a one-stop-shop for all of its clients’ IP needs. Mayer Brown JSM’s Greater China practice is also well known for its leadership in handling IP issues relating to the IT, media and entertainment sectors.

This past year, the IP practice handled more than 30 infringement cases for client Seven Towns in relation to stopping counterfeit versions of the puzzle toy, Rubik’s Cube.

Orrick Herrington & Sutcliffe’s strong Silicon Valley presence helps the firm earn major IP mandates from US multinational technology companies. The firm’s IP lawyers also show deep experience in their selected fields, with many having earned scientific or engineering degrees before joining the firm.

In addition to helping multinationals defend their interests in Greater China, Orrick also helps domestic Chinese companies placing their R&D and IP assets in the US.

One of Orrick’s most high profile mandates this year was representing Microsoft in a worldwide cybercrime case against China’s botnet. Orrick’s China and US offices worked in tandem to bring a case against 278 internet domains that were registered to Chinese registrars. With Orrick’s advising, Microsoft was able to gain temporary restraining orders against the registrars and eventually obtain permanent injunctions to close all of the domains forever and contain the infection.

Wilkinson & Grist has a strong reputation for managing the IP portfolios of major international companies in Greater China, especially in Hong Kong. The firm continues to supervise the portfolios of multinationals such as Cartier, Coca-Cola, Kraft, Philips, Heinz, Johnson & Johnson and Hutchison.

Wilkinson & Grist routinely advises on court proceedings in relation to various domain name disputes brought forth by multinational companies. It has a history of representing clients in CIETAC’s Domain Name Dispute Resolution Centre. The firm is also well known for effectively and successfully working with Chinese enforcement authorities on cross border infringement cases.

Dewit Law Office

Dewit Law Office primarily specialises in IP issues related to its clients’ Sino-European interests. The firm offers a range of IP services including territorial checks for pre-existing protection of third party IPRs, preparation of IPR documents for filing, and application support. Dewit also provides litigation services to clients should infringement issues arise.

Finnegan

Finnegan specialises in US IP law, but the firm’s Shanghai office also assists Chinese companies as they grow their businesses and require advice on IP matters relating to the US market.

Finnegan recently advised CooTek, a designer and developer of mobile applications, on its patent application filings and IP considerations. Finnegan continues to work for the mobile company.