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

Loke Khoon Tan leads Bakers’ intellectual property practice in greater China. Bakers is known as a leading trade mark and patent practice, and is also seen representing high profile multinational clients in disputes in Hong Kong and across the region. It is especially well known for its long history of advising healthcare, life sciences and pharmaceutical companies.

Bakers is acting for Microsoft as part of Business Software Alliance’s anti piracy software campaign in Hong Kong. The campaign aims to drive software legalisation by corporate end-users in Hong Kong. The firm also regularly advises Polo Ralph Lauren on enhancing its trade mark portfolio, and on registration and anti-counterfeiting issues.

Deacons fields a leading intellectual property practice in Hong Kong, which boasts 90 full time staff members including seven specialist partners, 30 associates and five qualified patent agents. The well regarded practice routinely advises local and international clients on the full range of IP matters. Partner Christopher Britton leads Deacons’ IP practice.

This past year, the IP team advised Internet Content Provider on its transfer of operations from China to Hong Kong. The firm provided advice on data privacy issues that arose over the use of ‘Street View’ in Hong Kong, including advising and lobbying the Hong Kong Government on proposed changes to Hong Kong Copyright Law in relation to ISP liability.

The IP practice at Hogan Lovells, while always strong, has been gaining clients as a result of its increased multijurisdictional capability following the merger. “It is not the largest IP firm in town,” says one partner at a rival firm, “but it does have some really major international IP clients.”

Partners Gabriela Kennedy and Henry Wheare lead the IP practice in Hong Kong. Hogan Lovells is managing the global trade mark portfolio of Prudential across 200 jurisdictions. Advisory work for Prudential includes brand prosecution, rights maintenance, and oppositions, cancellations and enforcement actions. The firm also serves as counsel to Costa Coffee in managing its China portfolio, including prosecution and maintenance of trade mark applications and registrations.

Wilkinson & Grist’s strength in dispute resolution matters is a key benefit for its IP clients. Partners Anne Choi, Yvonne Chua and Andrea Fong are all members of the firm’s IP team.

Wilkinson & Grist continues to advise a number of record companies as they pursue trade mark and copyright infringement actions in connection with karaoke music videos against Hong Kong karaoke operators. The IP team also represents Koninklijke Philips Electronics NV and Volkswagen AG in issuing nearly 50 Hong Kong court actions against suspected ‘shadow’ companies involved in trade mark infringement.

The firm is a leading trade mark, design and patent application e-filer in Hong Kong, and manages IP portfolios for many leading multinationals such as Coca-Cola, Cartier, Colgate-Palmolive, Kao, Kraft, Philips, Heinz, Johnson & Johnson, Ericsson, the Cheung Kong Group, Hutchison and Ikea.

Global IP firm Bird & Bird is known for its prowess in technology related patent matters. The firm is a leading light in Hong Kong patent and litigation circles. Managing partner and patent and litigation expert Matthew Laight is highly thought of in the market. Laight’s background in the life sciences is also a benefit to the practice in that he can advise on clinical trial agreements and joint promotion, development and marketing agreements for companies in that sector.

Experienced partner Alison Wong is known for her litigation skill, particularly when it comes to life sciences, banking and electronics matters in Asia. Partner Shirley Kwok is a leading trade mark lawyer within the firm.

Star partner Kenny Wong is head of Mayer Brown JSM’s Asia wide intellectual property and information technology groups. The IP group in Hong Kong handles both commercial and contentious IP issues, and Wong has a niche entertainment practice that advises A-list celebrities, major record companies and international film production companies. In 2010, Wong advised on local contracts for the production of the movie ‘Contagion’, and also counseled Universal Pictures on the Hong Kong law aspects of the international production ‘Battleship’.

This past year, Mayer Brown JSM’s IP team acted for client Seven Towns in dealing with over 30 infringers by stopping counterfeits and imitations of the classic Rubik’s Cube puzzle.

Partner Matt Glynn serves as head of DLA Piper’s intellectual property and technology practice across Asia, while partner Edward Chatterton leads its Hong Kong IP group. DLA Piper has been investing in its IP offering in Hong Kong this year, and its hard work is starting to pay off. The firm now has a client list that includes leading companies such as HSBC, The Gap, Christie’s, Ping An, Polo Ralph Lauren and Pfizer.