Deacons

Firm overview:

Deacons is the oldest and largest law firm in Hong Kong SAR, having opened its first office there in 1851. Since then it has established three representative offices in Mainland China—Beijing, Guangzhou and Shanghai.

While it has a deep-rooted reputation and expertise in the region, Deacons maintains connections with more than 270 member firms of international networks. Peers recognise its work on trademarks in the region for its “credible and reputable practice.” In recognition of this ongoing work, the firm moves up the rankings table from Notable to Highly Recommended (Contentious) and retains its position this year in Recommended (Non-Contentious).

Team overview:

Operating one of the largest specialist IP teams in Hong Kong, and counts among its clients around 50 of the world’s 100 best-known and most valuable brands. For instance, the trademarks team handles the majority of Nestlé’s trademark portfolio (including Hong Kong’s oldest trademark, registered by Nestlé in 1874) and registers more than 50 filings for the confectionary brand a year.

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.

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.

Annie Tsoi, co-head of Deacons’ IP department and head of the China IP Practice Group, has been with the firm for almost 28 years. Tsoi retains her ranking as a Recommended Individual in the Non-Contentious category, and is also a WIPR Insights Leader 2024.

Tsoi continues to manage global trademark portfolios and brand protection for a number of Hong Kong, China and international companies including China’s largest online marketplace, Alibaba. She formerly served on the executive committee of the International Association for the Protection of Intellectual Property (AIPPI).

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”.

Key matters:

• Deacons (Beijing) Intellectual Property Agency represented one of the world’s largest lighting manufacturers in managing its trademark portfolio and trademark enforcement matters, and non-contentious and commercial matters in China. This included litigations based on trademark infringement and trade name infringement from the perspective of the Anti-Unfair Competition Law.
• Annie Tsoi advised a well-known Swiss watch brand in connection with worldwide trademark portfolio, trademark infringement, infringing domain names and cybersquatting cases.

Clients:

Alibaba, Nestlé, Tsit Wing (Hong Kong).

Individuals:

• Annie Tsoi, Recommended (Non-Contentious)