Deacons

Firm Overview:

“Good in the Greater China Region, a credible and reputable practice.” Established in 1852, Deacons is one of Hong Kong’s oldest law firms, and maintains Hong Kong’s oldest trademark, registered by Nestlé in 1874. The firm has one of the largest specialist IP teams in Hong Kong, with 13 partners, one counsel and over 110 staff. Deacons works for, and maintains long-standing client relationships among, 50 of the world’s 100 best-known and most valuable brands. For example, Deacons handles the majority of Nestlé’s trademark portfolio and registers over 50 filings for Nestlé a year.

Deacons has advised clients on China-related IP issues since China opened up for foreign direct investments in 1986. The solely-owned Deacons (Beijing) Intellectual Property Agency, founded in September 2013, files trademark applications, oppositions, and invalidations directly with the China National Intellectual Property Administration (CNIPA), and handles customs-related IP protection. Across China, Deacons operates a single partnership, offering a full range of IP services, with a main office in Hong Kong and representative offices in Beijing, Shanghai and Guangzhou. The mainland offices report vertically to service leaders in Hong Kong.

Deacons has handled influential trademark cases in China, including matters related to trademark commercialisation or well-known trademark recognitions and administrative and infringement appeals at the Beijing IP Court and Beijing Higher People’s Court. The firm has also acted for clients in retrial proceedings before the Supreme People’s Court of China. Some of these cases are cited by the Beijing Intellectual Property Court as leading authorities.

Team Overview:

Consultant Charmaine Koo is head of IP Commercial and Litigation. Peers say: “Deacons has grown under her leadership and she does some good IP trademark cases as well”. Koo has served as chair of the International Bar Association’s Trademark Law Subcommittee. Annie Tsoi, co-head of Deacons’ IP department and head of the China IP Practice Group, manages global trademark portfolios and brand protection for a number of Hong Kong, China and international companies including China’s largest online marketplace Alibaba.

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