Team Overview:

DLA Piper has a team of dedicated IP lawyers “who support their corporate clients” with Greater China coverage across Beijing, Shanghai and Hong Kong, and throughout Asia. Hong Kong-based co-head of IPT (Intellectual Property and Technology) Asia Edward Chatterton, who “is doing pretty well”, has a broad practice including brand protection and enforcement advice in Hong Kong and the PRC. He has also managed complex multinational litigation and enforcement work in the Asia-Pacific region. Fellow co-head of IPT Asia, Horace Lam, who is also co-country managing partner, China, assists Fortune 500 companies on pan-Asia brand protection strategies, global trademark portfolio management, cross-border IP litigation, infringement and enforcement. US-China veteran Skip Fisher’s relocation to Seattle is seen as a loss to the local team.

Key Matter:

• Chatterton and senior consultant Crystal Cai, with Beijing Wanhuida Law Firm, represented footwear and luxury brand Manolo Blahnik in a 22-year trademark battle against a pirate mark to register its mark in China, culminating in victory with a 2022 Supreme Court of China decision.
• In 1999, Chinese businessman and footwear manufacturer, Fang Yuzhou, registered “pirate mark” ‘Manolo&Blahnik’ for footwear in China and established use. Manolo Blahnik had been a world-famous designer since the early 1970s, but had not applied for a trademark nor commenced business in mainland China.
• An early 2000 attempt by Blahnik to oppose the pirate mark was dismissed, in first instance and on appeal at the Beijing High People’s Court, due to insufficient evidence proving Manolo Blahnik’s reputation in China.
• A 2013 and 2014 non-use cancellation and an invalidation action were unsuccessful as Fang established evidence of use of the pirate mark. The invalidation action was dismissed because of insufficient supporting evidence.
• Manolo Blahnik appealed before the Beijing Intellectual Property Court, but a claim of Fang’s bad faith was dismissed due to insufficient evidence, and claims in relation to unregistered well-known mark and prior name rights were dismissed due to res judicata—previously decided in law.
• Fang’s mark prevented the Spanish designer from registering his own mark and from entering the Chinese market.
  The Supreme Court’s judgment was a “clear victory” for Manolo Blahnik in line with a recent determination by Chinese IP authorities and courts to fight brand piracy and counterfeiting, developing an overall judicial environment more favourable to IP rights holders.

Clients:

Enjin, HSBC, Logitech, Manolo Blahnik, McDonald’s.

Firm Overview:

Mayer Brown has “a long history” in China, and “deserves to be on this list”, say peers. The full-service firm mainly serves international companies and a number of globally recognised brand names, including Adidas. The Intellectual Property and Technology, Media and Telecommunications (IP & TMT) team offer a full range of trademark services, advising on brand protection, rebranding, and enforcement to maximise the value of clients’ portfolios. Lawyers in China coordinate with the wider Mayer Brown team across Asia to advise clients entering the market and are currently managing 40,000+ trademarks in the continent.

Team Overview:

Of its three locations in Greater China, Mayer Brown’s “foothold in Hong Kong is very strong”. Gabriela Kennedy is the head of the IP & TMT group and co-leader of the global IP practice and has advised well-known clients for years in a range of sectors. Though based in Hong Kong, Kennedy works alongside the Beijing IP Agency and is adept in enforcement strategies against counterfeiters and brand hijacking in mainland China. Her practice extends into advising on brand management across Asia Pacific. Also experienced in domain names, Kennedy has drafted 600+ domain name complaints.

Also in Hong Kong is Amita Haylock, part of the IP & TMT group, who advises clients on all IP rights, including trademarks. Michelle Lee is head of brand management for Asia, and has particular expertise in Hong Kong and China. Lee advises on global trademark prosecution, opposition and cancellation matters and has written on multiple emerging IP topics in Greater China. Former China Trademark Office attorney Zhao Chunchun heads Mayer Brown’s Beijing IP Agency and has worked on a number of high-profile matters for famous international brands in China, and has experience in trademark prosecution and administrative litigation. 

Key Matter:

• Kennedy has managed the portfolio of Nvidia since it entered the Asia market 16 years ago.
• Kennedy, assisted by Leigh Tong, advises South China Morning Post on its ongoing re-branding in Hong Kong and other jurisdictions, managing its international trademark registrations.
• Mayer Brown handles multinational engine manufacturer Cummins’ global IP matters. The team across Asia coordinate its enforcement work, administrative actions and trademark protection in multiple jurisdictions.
• Mayer Brown (Beijing) Intellectual Property Agency represented Accenture Global Services in a 2022 trademark prosecution application before the China National Intellectual Property Agency (CNIPA).

Clients:

Accenture, Adidas, Anhui Jinhe Industrial, AsiaSat, Beijing Gingko Group, Cummins, EverPro Technologies, Hong Kong Cyberport Development, Nvidia & Mellanox, South China Morning Post, Sun Hung Kai Group.

Firm Overview:

Perkins Coie is a full-service international firm with 1,200 lawyers across the US and Asia. Working with its IP Agency, Perkins Coie’s China practice offers a range of trademark services to its diverse client base, including well known multinational companies. Named Perkins Coie Intellectual Property Agency (Beijing), the group is licensed by the China National Intellectual Property Administration (CNIPA) and can register, maintain and enforce trademarks directly in China. On the contentious side, the team has assisted on civil litigation matters reaping high damages and administrative cases up to the Beijing Higher Court and Supreme People’s Court.

Team Overview:

Perkins Coie has four offices in Greater China, with the IP agency based in Beijing and Shenzhen. “Scott Palmer is fantastic”, says one international lawyer. Knowledgeable in the market and fluent in Mandarin, Palmer is the head of Perkins Coie’s China IP Agency and advises on a wide range of contentious and non-contentious trademark matters. Palmer’s litigation track record includes advising on administrative and civil litigations reaping seven-figure dollar damages, assisting international clients up to the Supreme People’s Court and handling trademark infringement and complex brand identity matters. On the non-contentious side, Palmer handles large portfolios and leads on anti-counterfeiting efforts and customs and cross-border trademark enforcement.

Key Matter:

• Perkins Coie represents food colouring manufacturer AmeriColor before the CNIPA. The team registers trademarks for the client’s products such as ‘Soft Gel Paste’ and ‘Glitter Bitters’.

Clients:

AmeriColor.

Firm Overview:

Kilpatrick Townsend & Stockton’s trademark practice handles over 8,400 active registration matters and 6,300 active trademark disputes in China. From offices in Beijing and Shanghai, KT offers in-depth brand protection services, including advising on trademark enforcement, conducting investigations and creating customised anti-counterfeiting strategies. The broad-service firm manages global portfolios in China for well-known brands and Fortune 500 companies, including trademark registration before the China National Intellectual Property Administration (CNIPA) for American multinational tech company Meta Platforms.

Team Overview:

Christopher Woods, practice head Asia trademarks and brands, has been steeped in advising international brands in Hong Kong and China since the late 1990s. Founder and managing partner of KT’s Beijing office, he operates from New York and in China. Heading the China trademark team, Woods works with top brands on establishing their marks in an unfamiliar market, including US health insurer BlueCross BlueShield with its strategic development in China. Having lived in Hong Kong and admitted before courts in New York, Hong Kong and the UK, his Chinese IP knowledge covers all aspects of trademarks, though his specialty lies in anti-counterfeiting and infringement matters.

Key Matter:

• KT’s Woods advised a Fortune 500 multinational corporation and manufacturer of electronics in a trademark infringement matter in China. The case was brought against a computer supplier and its distributor which had been selling products with a logo similar to KT’s client.
• The case was brought before the Shenyang Intermediate People’s Court and concluded with the Fortune 500 company being awarded the highest amount of damages for a trademark dispute by the Shenyang Court.

Clients:

Dolby Laboratories, Meta, Spanx, Zoetis Services.

Firm Overview:

Squire Patton Boggs stands out for its detailed investigations into trademark anti-counterfeiting. The full-service firm has 100+ IP specialists worldwide and prosecutes marks in seven time zones including the China practice, which collaborates with the international team on global portfolios for multinational household-name brands. “They do a great job,” say clients. Squire Patton Boggs is directly involved in investigations and enforcement actions, with the team leading on and attending anti-counterfeiting operations for its clients. The team advises and implements litigation strategies and has obtained recognition of high reputation for clients’ trademarks, such as shoe brand Clarks and US cotton clothing brand, Supima.

Team Overview:

Italian-origin China veteran, Paolo Beconcini, based between Los Angeles and China, brings a cross-cultural understanding and a focus on evidence gathering to his leadership of the China Intellectual Property team. Beconcini leads business intelligence teams, pursues evidence and attends police raids for anti-counterfeiting operations. Both international lawyers and clients recognise the quality and distinctiveness of Beconcini’s practice, which also covers portfolio management and advising on litigation matters. Fashion and consumer goods are his specialty industries.

Key Matter:

• Beconcini collaborates with colleagues in Frankfurt and London to manage the global portfolio of cosmetic distributor Bora Creations and its licensee Cosnova. The team provides trademark prosecution, clearance searches and litigation services to protect the client’s 2,600-mark portfolio, including the main brands ‘Essence’, ‘Catrice’, ‘Lash Princess’ and ‘I Love Extreme’. In China, Squire Patton Boggs represents Bora Creations in a number of ongoing opposition matters.
• Squire Patton Boggs’ US, UK and China teams advise leading shoe brand Clarks on its global trademark portfolio, home to more than 1,200 trademarks. The team handles numerous opposition and cancellation proceedings before the Chinese Trademark Office. Beconcini and his team manage Clarks’ customs protection programme.

Clients:

Bora Creations/Cosnova, C & J Clark, Furla, Supima.