Hong Kong

Hong Kong’s legal market has faced turbulence throughout the past two years of Covid-19, the imposition of the national security law and an exodus of Hong Kong locals from the city. Several high-profile firms have left the city in the past year or so, including Orrick Herrington & Sutcliffe, Osborne Clarke,

Stephenson Harwood, Vinson & Elkins and Locke Lord.

When Osborne Clarke announced its withdrawal from Hong Kong, it blamed the shift on the “disruption and uncertainty” triggered by “political pro-tests and the coronavirus pandemic.”

Although the city’s future as a legal hub is somewhat murky, some of the firms that are staying have been leaving the city’s pricy central business dis-trict – cleverly known as “Central” – for less-expensive office parks in places like Quarry Bay and Causeway Bay.

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Swedish law firm Awapatent operates its Asia units out of AWA Asia in Hong Kong and AWA Asia’s wholly-owned Chinese IP consultancy, AWA IP (Bei-jing). Ai- Leen Lim serves as the chief executive officer and principal counsel of AWA Asia, and serves mainland Chinese, Hong Kong and international clients with a focus on brand management and social media matters.

Baker McKenzie has offices in Beijing, Shanghai and Hong Kong, and main-tains an impressive team of IP specialists backed up by an international network. China and Hong Kong IP practice head Loke-Khoon Tan also co-leads the firm’s luxury and fashion industry practice, working extensively with global brands in major jurisdictions. The firm was named Asia Pacific trademark firm of the year and Hong Kong patent firm of the year at the 2020 Asia IP Awards.

Barron & Young is an IP specialist located in the Hong Kong Science Park known best for its work in patent and trademark filing and registration, patent specification preparation and for facilitating PCT National Entry to China.

Bird & Bird’s intellectual property group is led by partner Matthew Laight, who is noted for his expertise in both contentious and non-contentious matters in sectors including electronics, pharmaceuticals, communications, IT media, broadcasting and F&B. The firm counts Alison Wong and Christine Yiu among its leading trademark practitioners, Ted Chwu for patent work, and Rieko Michishi-ta for copyright-related matters. The firm was named Asia Pacific patent firm of the year at the 2020 Asia IP Awards.

China Patent Agent (H.K.) Ltd. has a full-service offering incorporating both prosecution and litigation strengths. The firm advises both domestic and overseas clients from its main office in Hong Kong, supported by a network of of - fices in Beijing, Shenzhen, Shanghai, New York, Tokyo and Munich. Top manage-ment includes Xiangling Zeng, Hong Luo, Tina H. Tai, Jingchao Wang, Shaohui Yuan, and Yuhe Wu, who together oversee more than 570 staff across its network.

Deacons’ IP practice remains one of the best among the city’s firms; partner Annie Tsoi and Charmaine Koo co-head the practice, while Catherine Zheng heads the patents and designs group. Patsy Lau is key contact for trade-mark work, Jeffrey McLean and Catherine Zheng for patent, and Charmaine Koo for copyright.

In November 2015, Dentons became the largest law firm in the world through a merger with Chinese law firm Dacheng, and through other merger deals occurring around the same time. The firm operates 45 offices in China alone. Senior partner Mingyue Dun is the key contact for Dentons’ IP and tech-nology practice, having represented clients such as ExxonMobil, Nike and Hen-nessy & Co. The firm, known by Dentons in Hong Kong and most of the world, is known as 大成 – Dacheng – in China. The firm won Asia Pacific copyright firm of the year at the 2021 Asia IP Awards. Beijing-based senior partner Mingyue Dun is the key contact for Dentons’ IP and technology practice, having represented clients such as ExxonMobile, Nike and Hennessy & Co.

DLA Piper’s intellectual property and technology group encompasses nearly 500 lawyers in over 24 countries, with DLA Beijing managing partner Horace Lam co-heading IPT to provide greater China coverage across Beijing, Shanghai and Hong Kong. The firm has handled all of HSBC’s trademark portfolio management and enforcement work in Hong Kong.

Ed Chatterton, Scott Thiel and Richard Wageman, who also chairs the firm’s franchise and advertising group in China, are key contacts.

 Eagle IP is a specialized patent firm that facilitates the transfer of new technology from the research environment into the marketplace. The firm boasts a unique combination of U.S. and Chinese patent agents/ attorneys who can practice directly before the USPTO and CNIPA. The team covers a full range of technologies such as physics, electronics, computer science, telecommunication, electrical, renewable energies, biomedical and mechanical engineering, material science, life science and chemistry. In addition to Hong Kong, the firm has offices in Macau and Shenzhen.

Long-time Hong Kong lawyer Ella Cheong practices her craft from Hong Kong-based ELLALAN along with managing partner Alan Chiu. The firm, which until June 2020 had been known as Ella Cheong & Alan Chiu, advises on IP enforcement, transactional and commercial IP and internet-related issues, as well as matters concerning entertainment and media, dispute resolution, commercial law and regulatory law. The firm was named Hong Kong trademark firm of the year at the 2020 Asia IP Awards.

The well-respected Cedric Lam runs Eversheds Sutherland’s IP practice in greater China from the firm’s Hong Kong office. Lam, a prominent IP strategist in the region, has more than two decades of experience counselling cross-border, complex, high-stakes intellectual property-related transactions and disputes. Lam is known for his work helping multinational corporations acquire, exploit and enforce their IP rights and trade secrets, as well as implement technology transfer, IP protection, licensing, litigation and anti-counterfeiting strategies. The firm also advises on legal issues affecting advertising, marketing and sponsorship campaigns, including strategy and providing fast copy clearance to ensure advertisements and packaging comply with the relevant advertising codes and regulations, and on data protection laws. It regularly advises on this area of the law, including all data privacy in Hong Kong and Asia, and in relation to cross-border data flows and direct marketing.

The history of Hastings & Co. dates to 1885, when the firm’s founder was admitted as a solicitor in England. The firm itself was formed in 1904. Today, the firm is a forward-looking, full-service firm with a capable intellectual property practice noted for its registration work, opposition work and brand manage-ment work, among others. Senior partner Ching Tat Yung primarily deals with IP, banking, corporate, finance and commercial work. Partner Janine Mok heads the firm’s IP department.

Hogan Lovells operates its IP practice out of the Hong Kong, Shanghai and Beijing offices. The firm is the sole Hong Kong member of the Pacific Rim Ad-visory Council, a strategic alliance of 32 major independent law firms globally. Eugene Low leads the IP practice from Hong Kong and is a key contact for trade mark and copyright. Andrew Cobden is a key contact for patent matters. Located in the Hong Kong Science Park, inCompass IP is well-positioned to draft patent specifications, handle patent and trademark searches, man-age portfolios, file applications and to provide a host of other IP services. The firm is led by partners Ewan Bewley, Owen Gee and Yannie Chan. Vivian Poon joined the firm last year as a consultant. The firm’s lawyers are registered to practice in Europe, the United Kingdom, Australia, New Zealand, mainland China and Hong Kong.

Jones Day maintains strong intellectual property and life sciences practices in Hong Kong, alongside disciplines such as capital markets, dispute resolution, leveraged finance and M&A. Partner Haifeng Huang splits his time between Hong Kong and Beijing; he has extensive experience in courts on and arbitration panels at all levels. He also handles due diligence related to the acquisition of intellectual property assets and negotiates agreements involving the transfer, use, and license of intellectual property. Partner Peter J. Wang shares time between Hong Kong and Shanghai; he leads the firm’s China antitrust and litigation practices and regularly handles complex technology and IP litigation.

 Kwok Yih & Chan is a dynamic Hong Kong-based corporate law firm. Known best for its corporate and securities work, the firm recently acquired the services of Vivian Poon, a former long-term partner at Deacons, where she focused on brand protection strategies and trademark advisory work, including auditing and due diligence in commercial transactions. She joins IP consultant Peggy Cheung, a well-known Hong Kong lawyer who was a partner at Baker McKenzie. Cheung is recognized for her work on brand protection strategies, complex IP litigation, licensing, franchising, technology transfer, advertising and data privacy laws.

Liu, Shen (Hong Kong) works closely with its Beijing counterpart Liu, Shen & Associates to help clients in obtaining and enforcing their intellectual property rights including patents, trademarks, designs, copyright in China and Asia. Bessie Wong is a leading trademark practitioner and Doris Jin is recommended for patent work. As one of the oldest specialist IP practices in Hong Kong, Marks & Clerk continues to be a market leader in the region. The firm is on the go-to list for local and multinationals when it comes to prosecution work. Partners Mike Flint and Michael Lin are key contacts for patent issues and Simon Speeks is the firm’s trademark expert. Flint is involved in contentious matters in China, Europe and the US, while Lin manages the life sciences group of the firm’s Hong Kong and Beijing offices, where he focuses on drafting, prosecution and opinion work.

Mayer Brown was established in 1863 in Hong Kong and has since expand-ed across Asia with offices in Shanghai and Beijing. Partner and head of the firm’s Asia IP & TMT group Gabriela Kennedy is also co-leader of Mayer Brown’s global IP practice and has extensive experience in technology and data protection is-sues in China and beyond. The firm was named Hong Kong copyright firm of the year at the 2020 Asia IP Awards.

Nixon Peabody CWL was formed from the October 2015 combination be-tween Nixon Peabody and CWL Partners. The firm is now home to more than 30 lawyers who advise on a full spectrum of legal issues for clients throughout the Asia-Pacific region including China, Singapore, Malaysia, Australia, Japan, Korea, Myanmar, Thailand and Vietnam. The Hong Kong office is also associated with JunZeJun Law Offices and leverages JunzeJun’s nine greater China offices and its 300 practicing lawyers, including 50 partners. Veteran IP specialist Henry Wheare is a well-recommended partner at the firm.

Partner Justin Davidson heads the IP team at Norton Rose Fulbright, which in Hong Kong and mainland China has a very efficient, client-focused, and com-mercial litigation practice. Its practice includes estate litigation for high-net-worth families and individuals, as well as commercial disputes, which frequently involve Chinese manufacturers.

Oldham, Li & Nie has more than 40 partners and lawyers across its Hong Kong and Shanghai offices, providing a full range of legal services including com - mercial and intellectual property practices. The firm has a small but qualified IP team that deals with Hong Kong and China intellectual property law, and counts Vera Sung, who heads the firm’s IP practice for Hong Kong and China, and Evelyne Yeung among its leading practitioners.

General practice firm P.C. Woo & Co. handles patents and designs, trademarks, IP commercialization and management work. The firm has a strong litigation team which assists clients on enforcement. It is one of the law firms on the panel list of the Fast Action Scheme for trade fairs enforcement in cooperation with the Hong Kong Customs and Excise Department. Sandra Wong, a senior associate who heads the firm’s IP department, and senior associate Lewis Luk are key contacts.

IP boutique Rebecca Lo & Co is a key local player. The firm handles trademark registrations and portfolio management as well as advises on commercial IP matters. Founding partner Rebecca Lo was also a founding member of the Licensing Executive Society China Hong Kong Sub-Chapter.

Reed Smith announced in May 2019 that Stephen Chan joined the firm as a partner in its litigation practice in the Hong Kong office of Reed Smith Rich-ards Butler. Chan, who was previously a dispute resolution partner at Oldham, Lie & Nie, is an experienced advocate who focuses on commercial litigation, in-ternational arbitration, intellectual property litigation, employment and labour disputes, and white-collar crime. Before relocating to Hong Kong in 2013, Chan was with McVeagh Fleming in New Zealand.

Reynolds Porter Chamberlain (RPC) was known as Smyth & Co in associ-ation with RPC until May 1, 2017, when the firm received approval from the Hong Kong Law Society to operate as a partnership under the RPC name. The firm is a commercial-oriented business law firm with a broad range of expertise across many industry sectors. Managing partner for Asia Antony Sassi is noted for his work handling technology and cyber risk matters, among others.

Local specialist Robin Bridge & John Liu acted for HYX China before the Trade Mark Register and secured the client’s trademarks against a bad faith application. The firm was appointed by the Office of the Privacy Commissioner for Personal Data, Hong Kong, under the Legal Assistance Scheme. The team is headed by managing partner Anthony Tong, who has a substantial IP litigation practice in both Hong Kong and China; Tong also manages local clients’ world-wide trademark portfolios and international clients’ trademark portfolios in greater China. Partners Anthea Loo and consultant Phoebe Chui are also key contacts for the IP practice.

Rouse Legal is the Hong Kong office of global IP specialist Rouse. It pro-vides a full range of intellectual property legal services in Hong Kong, includ-ing clearance, filing and prosecution, patent agency, civil and criminal litigation and commercial IP services. Director Chris Vale acts as key contact for the Hong Kong, Vietnam and Cambodia offices.

Simmons & Simmons has a robust trademark practice that counts high-caliber US corporations amongst its clients. Partner John Slater and Jingyu-an Shi are key IP contacts who have significant experience practicing IP in both Hong Kong and China. Slater is known for his work in prosecution and mainte-nance of the global trademark portfolios of Cathay Pacific and Cathay Dragon airlines, together with brand strategy advice and guidance.

Simone Intellectual Property Services, also known as SIPS, is headquar-tered in Hong Kong with offices in Shanghai and Beijing. With the opening of its China trademark agency in mid-2017, the firm now has over 60 members of staff. The bulk of its work relates to trademark portfolio management (particularly clearance, registration and elimination of pirated registrations) and all types of IP enforcement, with an emphasis on anti-counterfeiting, online enforcement, trade secret protection, copyright, and patents. Key contacts include founding Joe Simone and partners Dan Plane, Helen Tang, and Troy Rice.

Local commercial firm Sit, Fung, Kwong & Shum offers integrated intellectual property services from drafting, filing, prosecution and registration to commercial exploitation and enforcement. Apart from dealing with China IP work, the firm also acts for local and international companies in the Americas, Asia, Australia and Europe.

Spruson & Ferguson established a significant presence in Hong Kong and China in 2016 by acquiring Ella Cheong (Hong Kong) and its subsidiary Ella Cheong Intellectual Property Agency (Beijing). The highly-recommended Coral Toh, head of trademarks and head of the Greater China practice at the firm, is based in Hong Kong; principal Robert Jackson is a go-to lawyer for chemicals and life sciences matters. Spruson & Ferguson is part of the publicly-listed IPH Limited, the holding company for intellectual property professional services and adjacent businesses operating under different brands across the Asia-Pacific region.

Squire Patton Boggs has had a presence in Hong Kong for more than 15 years. Los Angeles-based consultant Paolo Beconcini heads the firm’s China intellectual property team. He manages the trademark, copyright and design portfolios of European and US clients, conceives and implements IP litigation strategies, regularly appears in Chinese courts and attends IPR administrative and police raids on counterfeiters.

 Tiang & Partners, an independent Hong Kong law firm which collaborates closely with PwC, strengthened its intellectual property practice significantly in August 2021 when Chiang Ling Li, a leading IP lawyer in Hong Kong and mainland China, joined the firm to lead its IP practice. Li, who joined the firm from Jones Day, has more than 25 years’ experience in the field of China IP and pharmaceutical law. The firm’s IP practice will complement its digital and technology, international trade and supply chain and other business-focussed legal services. Finance lawyer and partner Michelle Taylor is a member of PwC’s global legal leadership team.

Vivien Chan & Co. is an important player in China. Operating from offices in Hong Kong and Beijing, the firm has done work for clients such as G-Star Raw and Yves Saint Laurent. Senior partner Vivien Chan oversees the firm from Hong Kong and has extensive experience in IP and corporate finance matters.