IP RANKINGS HONG KONG - COVER STORY - Asian Legal Business
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COVER STORY
IP RANKINGS
HONG KONG
PATENTS
TIER 1
• Baker & McKenzie
• Bird & Bird
• Deacons
• DLA Piper
As Asia becomes a major innovation hub, and the filing of • Hogan Lovells
patents and trademarks continues at pace, law firms specialising in • Mayer Brown
• Orrick, Herrington & Sutcliffe
intellectual property are finding themselves increasingly in demand.
TIER 2
In the 2020 edition of its annual list, ALB once again picks the • AWA Asia
top firms for IP work across the region. • Barron & Young
• CMS
• ELLALAN
• Fangda Partners
BY M AR ICEL ESTAVILLO AND AS IAN L EG A L BUS I N E S S • Freshfields Bruckhaus Deringer
• Jones Day
• Morrison & Foerster
• Nixon Peabody
With the coronavirus pandemic certain more than half of all PCT applications,” says • Oldham, Li & Nie
to pull down global economic prospects from Gurry. • Quinn Emanuel Urquhart &
Sullivan
this year on, 2019 could go down in history China and Asia’s new dominant role in • Stephenson Harwood
as both the last hurrah before the impending global innovation was also highlighted in a • Wilkinson & Grist
• Winston & Strawn
slump and the prelude to a new era in inno- separate WIPO report on “The Geography • Vivien Chan & Co
vation in industries pushed to the fore to of Innovation: Local Hotspots, Global
mitigate the unprecedented health crisis. Networks” that was published last year. TIER 3
• Dechert
“Last year was the best year we The report finds that while innovation has • Eagle IP
have experienced in the course of the become more collaborative and transna- • Morgan, Lewis & Bockius
• Norton Rose Fulbright
past decade,” was how Francis Gurry, tional, it remains concentrated in a handful • Robin Bridge & John Liu
the outgoing director-general of World of countries and even within these countries, • Ropes & Gray
• Squire Patton Boggs
Intellectual Property Organization (WIPO), in particular cities and regions.
describes the 2019 performance of WIPO’s China, Japan, and South Korea were COPYRIGHT/TRADEMARKS
services. three of the five countries, along with
TIER 1
International patent, trademark, and Germany and the U.S., which accounted for • AWA Asia
industrial design applications filed with the most of the patent production and scientific • Baker & McKenzie
• Bird & Bird
WIPO systems all posted record growths activity from 2015 to 2017. • CMS
last year, according to the United Nations “China and the Republic of Korea are • Deacons
(UN) agency for IP. Year-on-year interna- largely responsible for the rising share of • DLA Piper
• ELLALAN
tional patent applications filed with the new areas in knowledge production and • Hogan Lovells
Patent Cooperation Treaty (PCT) grew by 5.2 innovation; together, they account for over • Mayer Brown
• Orrick, Herrington & Sutcliffe
percent to 265,800; international trademark 20 percent of patents registered in the • SIPS
applications filed with the Madrid System years 2015–2017, compared to under three • Stephenson Harwood
• Wilkinson & Grist
grew by 5.7 percent to 64,400; and indus- percent in 1990–1999,” notes the report. • Vivien Chan & Co
trial design applications filed with the Hague Patents filed in Asia rose to 48
System grew by 10.4 percent to 21,807. percent from 32 percent since the 2000s, TIER 2
• Dechert
For the first time in the long history of while scientific publications increased to • Fangda Partners
PCT, China became the biggest user of the 36 percent from 17 percent. “This reflects • Freshfields Bruckhaus Deringer
• MinterEllison
system last year, WIPO reported. This was a the rise of China and the Republic of Korea • MMLC Group
position previously held consistently by the and comes despite the relative decline in • Nixon Peabody
• Norton Rose Fulbright
United States since the system began oper- Japan’s share of patents and publications,” • Oldham, Li & Nie
ations in 1978. China filed 58,990 PCT appli- the report further elaborates while also • Quinn Emanuel Urquhart &
cations last year, a 200 percent increase emphasizing the emergence of new global Sullivan
• Robin Bridge & John Liu
from the 276 applications it filed in 1999. innovation producers, among them India • Rouse HK
“China’s rapid growth to become the and Singapore. • Simmons & Simmons
top filer of international patent applications A testament to Asia’s rise in the global TIER 3
via WIPO underlines a long-term shift in the IP and innovation scene, a major shift in • Barron & Young
locus of innovation towards the East, with leadership at WIPO favouring the Asian • Clifford Chance
• Jones Day
Asia-based applicants now accounting for group is set to happen this year.
18 ASIAN LEG AL BU S I N ES S – M AY 20 20 W W W. L EG A L B U S I NE S S O NLI NE .COM
COVER STORY
• Morrison & Foerster Associates • Makarim & Taira S. • Foley & Lardner
• Spruson & Ferguson • ZeusIP • Pulungan, Wiston & Partners • Mayer Brown
• Squire Patton Boggs • Prawiranegara • Squire Patton Boggs
TIER 3 • Stephenson Harwood
INDIA
• DePenning & DePenning COPYRIGHT/TRADEMARKS
JAPAN DOMESTIC
• K&S Partners
• Krishna & Saurastri Associates TIER 1
PATENTS • Mason & Associates • Baker & McKenzie
• Phoenix Legal PATENTS • Hogan Lovells
TIER 1 • Morrison & Foerster
INDONESIA
• Ajay Sahni & Associates TIER 1 • Orrick, Herrington & Sutcliffe
• Anand and Anand • Abe, Ikubo & Katayama
• Chadha & Chadha • Anderson Mori & Tomotsune TIER 2
• Khaitan & Co PATENTS • Mori Hamada & Matsumoto • Finnegan, Henderson, Farabow,
• K&S Partners • Nagashima Ohno & Tsunematsu Garrett & Dunner
• Lakshmikumaran & Sridharan TIER 1 • Nakamura & Partners • Foley & Lardner
• L&L Partners • Am Badar & Partners • Oh-Ebashi LPC & Partners • Mayer Brown
• Remfry & Sagar • Dwipo Lubis Baskoro & Partners • Morgan, Lewis & Bockius
TIER 2 • Squire Patton Boggs
• HHP Law Firm
TIER 2 • Rouse/Suryomurcito & Co • Abe & Partners
• AZB & Partners
• Beruar & Beruar
• Cyril Amarchand Mangaldas
• SKC Law
• Tilleke & Gibbins
• Atsumi & Sakai
• Fukami Patent Office
• Itoh International Patent Office
MALAYSIA
• Fox Mandal & Associates TIER 2 • Nishimura & Asahi PATENTS
• IndusLaw • Acemark IP • Ohno & Partners
• Khurana & Khurana • AMR Partnership • Onda Techno Intl. Patent Attys. TIER 1
• Rahul Chaudhry & Partners • Barumun International Patent • Ryuka IP Law Firm • LAW Partnership
• Singh & Associates • Biro Oktroi Roosseno • Seiwa Patent & Law • Marks & Clerk
• Majmudar & Partners • George Widjojo & Partners • Shiga International Patent • Shearn Delamore & Co
• Mason & Associates • Hadromi Adnan IP Group Office • Skrine
• R.K. Dewan & Co • Inter Patent Office • Soei Intellectual Property Law • Tay & Partners
• Samvad Partners • Januar Jahja & Partners • Sugimura & Partners • Wong & Partners
• Singh & Singh Lall & Sethi • K&K Advocates • TMI Associates • ZICO IP
• Subramaniam, Nataraj & • Pacific Patent Multiglobal
Associates • Roosdiono & Partners COPYRIGHT/TRADEMARKS TIER 2
• Christopher & Lee Ong
TIER 3 TIER 3 TIER 1 • Rahmat Lim & Partners
• ALMT Legal • Assegaf Hamzah & Partners • Anderson Mori & Tomotsune • Raja Darryl & Loh
• DePenning & DePenning • Budidjaja International Lawyers • Atsumi & Sakai • Shook Lin & Bok
• Fidus Law Chambers • Citius Intellectual Property • Mori Hamada & Matsumoto
• Mason & Associates • Lumenta, Sitorus & Partners • Nagashima Ohno & Tsunematsu TIER 3
• Perfexio Legal • Makarim & Taira S. • Nakamura & Partners • Lee Hishammuddin Allen &
• RNA IP Attorneys • Pulungan, Wiston & Partners • TMI Associates Gledhill
• Saikrishna & Associates • Prawiranegara International • Wong Jin Nee & Teo
• ZeusIP Patent & Trademark TIER 2
• SS&R Legal Consultants • Abe, Ikubo & Katayama COPYRIGHT/TRADEMARKS
COPYRIGHT/TRADEMARKS • Stephenson Harwood • Fukami Patent Office
• Itoh International Patent Office TIER 1
TIER 1 COPYRIGHT/TRADEMARKS • Nishimura & Asahi • LAW Partnership
• Ajay Sahni & Associates • Oh-Ebashi LPC & Partners • Lee Hishammuddin Allen &
• Anand and Anand TIER 1 • Ohno & Partners Gledhill
• AZB & Partners • Assegaf Hamzah & Partners • Onda Techno Int. Patent Attys. • Marks & Clerk
• Beruar & Beruar • HHP Law Firm • Ryuka IP Law Firm • Rahmat Lim & Partners
• Chadha & Chadha • Inter Patent Office • Seiwa Patent & Law • Shearn Delamore & Co
• Cyril Amarchand Mangaldas • Januar Jahja & Partners • Shiga International Patent • Skrine
• Fox Mandal & Associates • K&K Advocates Office • Shook Lin & Bok
• IndusLaw • Roosdiono & Partners • Soei Intellectual Property Law • Tay & Partners
• Khaitan & Co • Rouse/Suryomurcito & Co • Sugimura & Partners • Wong & Partners
• K Law/Krishnamurthy & Co • SKC Law • ZICO IP
• L&L Partners
• Rahul Chaudhry & Partners
• Remfry & Sagar
• Tilleke & Gibbins
TIER 2
JAPAN INTERNATIONAL TIER 2
• Christopher & Lee Ong
• Sujata Chaudhri IP Attorneys • Acemark IP PATENTS • Raja Darryl & Loh
• Saikrishna & Associates • Am Badar & Partners • Wong Jin Nee & Teo
• Singh & Associates • Barumun International Patent TIER 1
TIER 2
• Fidus Law Chambers
• Biro Oktroi Roosseno
• Budidjaja International Lawyers
• Dwipo Lubis Baskoro & Partners
• Baker & McKenzie
• Finnegan, Henderson, Farabow,
Garrett & Dunner
PHILIPPINES
• Khurana & Khurana • George Widjojo & Partners • Hogan Lovells PATENTS/COPYRIGHT/
• Lakshmikumaran & Sridharan • Hadromi Adnan IP Group • Morgan, Lewis & Bockius TRADEMARKS
• Majmudar & Partners • Pacific Patent Multiglobal • Morrison & Foerster
• Mason & Associates • Orrick, Herrington & Sutcliffe TIER 1
• R.K. Dewan & Co TIER 3 • Quinn Emanuel Urquhart & • ACCRALAW
• RNA IP Attorneys • Assegaf Hamzah & Partners Sullivan • Castillo Laman Tan Pantaleon &
• Samvad Partners • Citius Intellectual Property • Ropes & Gray San Jose
• Singh & Singh Lall & Sethi • HeruLukito & Partners • Cruz Marcelo & Tenefrancia
• Subramaniam, Nataraj & • Lumenta, Sitorus & Partners TIER 2 • Quisumbing Torres
W W W. LEG ALBU SINES S O N L I N E.CO M A S I A N L EG A L B U S I N E S S – MAY 2020 19
COVER STORY
• Romulo Mabanta Buenaventura • Ravindran Associates • Stephenson Harwood • Dharmniti Law Office
Sayoc & de los Angeles • Robinson • YOU ME Patent & Law Firm • Mayer Brown
• SyCip Salazar Hernandez & • YP Lee Mock & Partners
Gatmaitan TIER 3 COPYRIGHT/TRADEMARKS
TAIWAN
• Villaraza & Angangco • Davies Collison Cave
• Mayer Brown TIER 1
TIER 2 • Mirandah Asia • Baker & McKenzie
• Baranda & Associates • Morgan Lewis PATENTS • Domnern Somgiat & Boonma
• Bengzon Negre Untalan. Simply, • Stephenson Harwood • Tilleke & Gibbins
IP • Spruson & Ferguson TIER 1 • ZICO IP
• Betita Cabilao Casuela • Baker & McKenzie
SOUTH KOREA
Sarmiento • Finnegan, Henderson, Farabow, TIER 2
• Carag Caballes Jamora & Garrett & Dunner • Apisith & Alliance
Somera • Jones Day • Chavalit & Associates
• MarksPro PATENTS • Lee and Li • Rouse
• Puyat Jacinto & Santos • Saint Island International Patent • Satyapon & Partners
TIER 1 & Law Offices • Siam Premier International
SINGAPORE • Bae, Kim & Lee • Tai E International Patent & Law • Vidon & Partners
• Kim & Chang • TIPLO
• Lee & Ko TIER 3
PATENTS • Ropes & Gray TIER 2 • Ananda IP
• Shin & Kim • Chen & Lin • Dej – Udom & Associates
TIER 1 • Yoon & Yang • Formosan Brothers • Dharmniti Law Office
• Allen & Gledhill • Yulchon • Formosa Transnational • Mayer Brown
• Amica Law • Tsar & Tsai
• Baker & McKenzie Wong & Leow
• Bird & Bird ATMD
• Dentons Rodyk
TIER 2
• C&S Patent and Law Office
• Dr. Ahn International Patent
• Winkler Partners
TIER 3
VIETNAM
• Drew & Napier Law Office • Deep & Far PATENTS
• Donaldson & Burkinshaw • Finnegan, Henderson, Farabow, • Eiger
• JurisAsia Garrett & Dunner • Tsai, Lee & Chen TIER 1
• Lee & Lee • Lee International IP & Law Group • Baker & McKenzie
• Marks & Clerk • Royal Patent & Law Firm COPYRIGHT/TRADEMARKS • Pham & Associates
• Rajah & Tann • Tilleke & Gibbins
TIER 3 TIER 1 • Vision & Associates
TIER 2 • AIP Patent & Law Firm • Baker & McKenzie
• Davies Collison Cave • AJU Kim Chang & Lee • Chen & Lin TIER 2
• Eversheds Harry Elias • Barun IP & Law • Eiger • Hogan Lovells
• Joyce A. Tan & Partners • Central Intellectual Property & • Lee and Li • Indochine Counsel
• Gateway Law Corporation Law • Saint Island International Patent • InvestConsult Group
• Mayer Brown • Cho & Partners & Law Offices • Rouse
• Morgan Lewis • Kasan IP & Law Firm • Tai E International Patent & Law • SB Law
• OC Queen Street • Kim, Choi & Lim • Tsar & Tsai • ZICO Law
• Ravindran Associates • Koreana Patent Firm • TIPLO
• RHTLaw Asia • Muhann Patent & Law Firm • Winkler Partners TIER 3
• Spruson & Ferguson • Stephenson Harwood • BROSS & Partners
• Viering, Jentschura & Partner • Yangjae Law Firm TIER 2 • IPMAX Law
• YOU ME Patent & Law Firm • Deep & Far • Phuoc & Partners
TIER 3 • Y.P. Lee Mock & Partners • Finnegan, Henderson, Farabow, • Mayer Brown
• Cantab IP • 5T International Patent Law Firm Garrett & Dunner
• CNP Law • Formosa Transnational COPYRIGHT/TRADEMARKS
• Mirandah Asia COPYRIGHT/TRADEMARKS • Formosan Brothers
• Stephenson Harwood • Jones Day TIER 1
• WongPartnership TIER 1 • Tsai, Lee & Chen • Baker & McKenzie
• Bae, Kim & Lee • BROSS & Partners
COPYRIGHT/TRADEMARKS
TIER 1
• Kim & Chang
• Lee & Ko
• Shin & Kim
THAILAND • Hogan Lovells
• IPMAX Law
• Tilleke & Gibbins
• Allen & Gledhill • Yoon & Yang PATENTS • Vision & Associates
• Amica Law • Yulchon
• Baker & McKenzie Wong & Leow TIER 1 TIER 2
• Bird & Bird ATMD TIER 2 • Baker & McKenzie • Indochine Counsel
• Dentons Rodyk • AJU Kim Chang & Lee • Domnern Somgiat & Boonma • InvestConsult Group
• Drew & Napier • Finnegan, Henderson, Farabow, • Rouse • Pham & Associates
• Donaldson & Burkinshaw Garrett & Dunner • Tilleke & Gibbins • Rouse
• Eversheds Harry Elias • KBK Patent Law Office • ZICO IP • SB Law
• Gateway Law Corporation • Lee International IP & Law • ZICO Law
• JurisAsia Group TIER 2
• Lee & Lee • Ropes & Gray • Apisith & Alliance
• OC Queen Street • Chavalit & Associates
• Rajah & Tann TIER 3 • Satyapon & Partners
• RHTLaw Asia • Barun IP & Law • Siam Premier International
• WongPartnership • Central International Law Firm • Vidon & Partners
• Cho & Partners
TIER 2 • Jipyong TIER 3
• CNP Law • Kim, Choi & Lim • Ananda IP
• Joyce A. Tan & Partners • Muhann Patent & Law Firm • Dej – Udom & Associates
20 ASIAN LEG AL BU S I N ES S – M AY 20 20 W W W. L EG A L B U S I NE S S O NLI NE .CO
.COMMCOVER STORY
COUNTRY REP ORTS In most cases, the work, from due The U.S. for instance, in its 2019
diligence, to prosecution, or enforce- Special 301 Report that put India on the
Hong Kong ment, bundled the territory with neigh- Priority Watch List continued to push for
Last December, Hong Kong started bouring Macau and China. In one key reforms in the country’s patent system.
accepting and examining filings under account for McDonald’s, DLA Piper “India has yet to take steps to
a new patent system which creates a handled IP management for the iconic address long-standing patent issues
direct route for applicants of standard American brand in Hong Kong, Macau, that affect innovative industries.
patent protection. and Mainland China as it ramped up its Companies across different sectors
“The OGP (original grant patent) brand protection strategy in the region remain concerned about narrow patent-
system demonstrates the government’s following the divestment of its assets in ability standards, the potential threat of
commitment to bringing the local the three territories to CITIC and Carlyle compulsory licensing and patent revo-
patent system on par with the main- in a deal reportedly worth $2 billion. cations, as well as overly broad criteria
stream patent practices of the interna- In another landmark case handled for issuing such licenses and revocations
tional community. It will also facilitate last year, Mayer Brown worked with the under the India Patents Act,” it says.
the development of the innovation and Asia Video Industry Association to find IP is of particular importance in
technology sector in Hong Kong,” says a solution to copyright infringement in India’s pharmaceutical industry. India’s
David Wong, Hong Kong’s director of IP. Internet streaming pending changes in generic drugs industry is the world’s
As one of the busier trade hubs in Hong Kong’s copyright regulation. biggest and local manufacturers are
the region, Hong Kong was a routine leg either competitors or collaborators of
for global law firms managing foreign IP India the world’s top pharmaceutical compa-
for multiple jurisdictions in the region. IP is both a source of pride and a matter nies. Naturally, the caseload of top law
Passing off and trademark infringe- of contention in India especially with firms in India last year included filings
ment cases involving foreign brands some of its trading partners which and litigation cases for both domestic
were some of the top cases handled by demand higher level of protection for and foreign pharmaceutical firms.
top law firms last year. their exported IPs. Outside pharmaceutical, Anand
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W W W. LEG ALBU SINES S O N L I N E.CO M A S I A N L EG A L B U S I N E S S – MAY 2020 21COVER STORY
& Anand handled a landmark case for websites and social media platforms, an in-demand market for foreign brands
Ferid Allani against the Union of India says partner Kritika Sahni. “With busi- in the region.
which could pave the way for software nesses going digital and getting access With its strong consumer market
innovation patents, a timely develop- to a global audience, infringers are using and having the fourth largest population
ment amidst the rise of AIs and block- more sophisticated techniques such as in the world, IP protection, especially of
chain technologies. In its decision, automated bots to create new seller copyright and trademarks, accounted
the court for the first time gave a new accounts or social media handles when for a big share in the caseload of IP law
interpretation of Section 3(k) of India’s previous ones get delisted or blocked,” firms in Indonesia.
Patents Act which excludes algorithms she says. “Another disturbing trend that Based on WIPO data, trademark
from getting a patent. emerged was the mushrooming of local filings had been on an increase since
In copyright, one of the big trans- startups that steal from patents owned 2015, posting a growth of 59 percent
actions handled by AZB & Partners was by larger multinational companies, often in four years. Trademark filings via the
Thomas Cook India’s $1.9 million acquisi- not commercialised in India, and receive Madrid system stood at 65,206 in 2018.
tion of the ‘Thomas Cook’ brand for India, large seed or pre-series A funding from Patent filings via PCT, meanwhile, were
Sri Lanka and Mauritius. This enabled VCs, usually without conducting IP due at 1,451 in the same year.
Thomas Cook India to retain the brand diligence. We received many briefs to At the top of the list of concerns of
in the three jurisdictions despite Thomas contest pre-grant oppositions against IP holders in the country are the rela-
Cook UK entering into liquidation. such infringing patent applications – tively widespread piracy and counter-
Ajay Sahni & Associates were in that were often on a fast-track route, feiting. Of late, law firms have handled
the top tier in both patents, as well as owing to the applicant’s startup status.” an increasing number of IP disputes on
trademarks and copyright. Owing to the Internet and social media.
a boom in the eCommerce industry, Indonesia While IP work continued to be
the firm received several mandates Despite experiencing a slower economic copyright and trademark-heavy,
to initiate enforcement action against growth of 5.02 percent in 2019, Southeast patent protection is gaining ground in
counterfeiters on popular eCommerce Asia’s largest economy continued to be Indonesia.
www.drewnapier.com • ip@drewnapier.com • T: +65 6535 0733
22 ASIAN LEG AL BU S I N ES S – M AY 20 20 W W W. L EG A L B U S I NE S S O NLI NE .COMCOVER STORY
Last year, the Direktorat Jenderal Japan’s total number of patent similar appearance to GSK’s Diskus. In
Kekayaan Intelektual signed an agree- applications declined by 1.78 percent this particular case, the firm was able
ment on reinforced partnership with the to 307,969 in 2019. While domestic to convince the court that there was a
European Patent Office, the second IP filings were slightly down, international likelihood of confusion despite it being
office to do so in Southeast Asia after patent applications grew by 4.6 percent a prescription drug.
Malaysia. The agreement is aimed at to 66,968 from the previous year. Patent
strengthening bilateral cooperation on registrations totalled 179, 910 last year. Malaysia
capacity for searching and examining Following Malaysia’s implementation of
applications amid steady growth in Korea its new trademark law last year, a subse-
patent filings. Last year, South Korea introduced a new quent increase in filings, especially for
Demand for complex patent work law, the Medical Device Industry and non-traditional trademarks is seen.
has also started to pour in. Tilleke Innovative Medical Device Support Act, The Trademarks Act 2019 offers
& Gibbins handled one for Ping An which is aimed at promoting the devel- protection for shape of goods, pack-
Technology, the tech incubator and AI opment of new innovative technologies aging, sound, scent, colour, holograms,
R&D arm of China’s largest insurance and creating a new breed of local inno- positioning and sequence of motions
company. vative companies. that could be graphically presented to
There was no shortage of landmark identify goods and services. The new law
Japan cases in South Korea last year, especially has also raised penalty for trademark
Despite the relatively sluggish perfor- in healthcare. infringements to RM1 million ($232,070),
mance of IP filings in Japan in recent Yulchon successfully repre- a maximum of five years imprisonment,
years compared to its East Asian sented GSK in a preliminary injunction or both.
counterparts, it remains one of the proceeding in a trademark infringement In 2019, trademark filings in
top producers of innovation in the and unfair competition case against a Malaysia were up by 6.6 percent to
region and an indispensable market domestic pharmaceutical company 46,530 while registrations dipped by
for foreign IP. over its disk-shaped inhaler bearing 43.6 percent to 19,481.Industrial design
W W W. LEG ALBU SINES S O N L I N E.CO M A S I A N L EG A L B U S I N E S S – MAY 2020 23COVER STORY
applications by 3.1 percent to 1,904 while number of copyright cases involving trials heard in Singapore, spanning over
registrations were down by 16 percent to parties based in other parts of Asia. seven weeks in two tranches,” say Yeo
1,238. Meanwhile, patent applications in One landmark copyright case in and Tang. “The issues in the suit involve
2019 grew by 3.3 percent to 7,743 while Singapore last year was the one handled extremely technical and contentious and
registrations fell by 3.8 percent to 4,213. by Allen & Gledhill for Sea Group/ highly complex patent invalidation and
Garena. It was touted as the first copy- infringement issues, making it one of the
Philippines right case in the city-state relating to the most complex patent infringement case
The Philippines saw record growth in mobile game industry. that the Singapore High Court has heard.
IP protection filings in 2019, with total Tony Yeo, managing director and There were two patents concerned, both
filings increasing by 10 percent from the head of Tier 1 firm Drew & Napier’s IP of which relate to diamonds grown by
previous year to 43,000. practice, and Yvonne Tang, a director chemical vapour deposition (CVD).”
Being a consumption-driven in the IP practice, say that the depart- They add that the Singapore High
economy with strong growth prospects, ment has been kept busy this year as Court delivered its written judgment
filings for trademarks last year grew by 2020 brought on a whole new set of on Feb. 7 this year. “The High Court
10 percent to 39,399. Most of the filings challenges. “In light of the COVID-19 agreed with IIa Technologies that one
were in the areas of agricultural prod- pandemic, the department had to of Element Six’s patent was neither new
ucts and services and pharmaceuticals, quickly adapt to allow for work to nor inventive and ordered for the patent
health, and cosmetics. continue seamlessly, first on an alter- to be revoked,” say Yeo and Tang. “As an
Industrial design applications native team basis as a business conti- invalid patent is a complete defence to
grew by 7 percent to 1,631; utility model nuity measure and subsequently to a infringement, the High Court also found
filings increased by 4 percent to 2,228; full work-from-home basis,” they say. that IIa Technologies did not infringe the
and patent filings grew by 2 percent “These measures were implemented said patent. As for the other patent, the
to 4,024 from 3,962. The top filers for swiftly and efficiently to allow Drew & High Court found that the patent was
patent protection were from the U.S., Napier to honour its commitment to our valid and infringed. IIa Technologies
Japan, and China. clients to continue to provide excellent has filed an appeal against this finding
Like the rest of the developing service regardless of the circumstances and Drew & Napier will represent IIa
economies in the region, IP protection like we have done so for the past years. Technologies Pte Ltd at the appeal
in the country is hampered by coun- We are grateful for our clients’ continued before the Court of Appeal.”
terfeiting and piracy. The caseload of trust and confidence in our work.” Additionally, Tang and her team,
the top law firms included conducting Significant milestones for Drew’s senior associate Jaswin Kaur Khosa
criminal raid actions for mostly foreign IP practice in 2019-20 included Yeo and associate Edsmond Cheong, also
brands. The increasing popularity of the being appointed to the Intellectual successfully represented Adidas in its
Internet has also created a new avenue Property of Singapore’s (IPOS) panel appeal against the decision of Principal
for counterfeiters and copyright pirates of IP Adjudicators for a two-year term Assistant Registrar of Trademarks, in a
to distribute fake products. starting April 2019. “Only a very small trademark opposition commenced in
number of leading private practitioners 2016 against a mark filed in Class 25
Singapore are appointed as IP Adjudicators,” say by Lutong Enterprise which resembled
In a step aimed at strengthening its posi- Yeo and Tang. “As an IP Adjudicator, Tony an inversion of the iconic Adidas trape-
tion as the region’s alternative dispute recently heard a trademark opposition zoid mark.
resolution hub for IP, Singapore worked matter at IPOS. The matter is pending
with the WIPO Arbitration and Mediation his written judgment.” Taiwan
Center to offer reduced rates to busi- Also, a team comprising Yeo and Taiwan, a known technology manufac-
nesses and creators who opt for media- fellow director Meryl Koh, and senior turing hub, is seen to be a big winner
tion to resolve copyright disputes in the associate Javier Yeo, represented IIa from the U.S.-China trade war. A recent
city-state. The previous arrangement Technologies, an industry leader and report by the UN Conference on Trade
only covered patents, registered designs, manufacturer of lab-grown diamonds and Development (UNCTAD) estimated
and trademarks. with the largest diamond growing facility the amount of windfall to the island from
“The goal is for the diverse stake- in the world, in a patent infringement suit the trade tension to reach $4.2 billion.
holders in the copyright and creative commenced by Element Six Technologies, The Government of Taiwan
industries to gain greater access to a subsidiary of the De Beers Group, in launched last year a program to lure
more efficient and cost-effective routes Singapore High Court Suit No. 26 of more Taiwanese companies operating
to resolve their copyright disputes, 2016. “The suit includes a counterclaim in the Mainland for at least two years
including those relating to collec- by IIa Technologies to invalidate and and are affected by the trade tension to
tive management and orphan works,” revoke Element Six Technologies’ patents move back home. The transfers could
the Singapore IP Office says. It notes in the Singapore High Court. The suit was give added lift to its technology industry.
that there had been an increase in the one of the longest patent infringement Last year, patent applications in
24 ASIAN LEG AL BU S I N ES S – M AY 20 20 W W W. L EG A L B U S I NE S S O NLI NE .COMBROUGH T TO YOU BY A JAY SA H N I & A SS O CIATES
Ajay Sahni & Associates
177, Lawyers’ Chambers, Delhi High Court, New Delhi 110003 T +91 11 41032782, 41022982 E postbox@asahni.co W www.asahni.co
Ajay Sahni & Associates (ASA) is a boutique corporate law practice focused on intellectual • regular speaker on IP laws at the Institute of Company Secretaries, the Institute of
property, innovation and technology. The firm was founded in 1983 with the objective of Chartered Accountants, the Haryana Police Academy and the Export Promotion
rendering creative, robust and effective strategic legal advice and representational services. Council of India; and
ASA is committed to delivering out-of-the-box, avant garde solutions to complex • formerly appointed as a senior panel counsel in the High Court of Delhi for conducting
problems faced by its clients. The team strives to work with its clients as partners, helping central government cases.
them manage risk and navigate challenging legal and business landscapes. In addition, Mr Sahni has written extensively on the subject of IP law, including as:
ASA has a very strong disputes and enforcement practice with over 100 reported • a revising author of Lal’s Commentary on the Indian Copyright Act, 1957; and
judgments in leading law journals and reports to its credit. The firm handles large IP • a co-author of seven volumes of the book titled Cases and Materials on Trademarks
portfolios for many Fortune 500 clients (both Indian and international) on the prosecu- and Allied Laws.
tion side. It has various awards and listings to its credit, such as the International Client
Choice Award (Trademark), World Trademark Review (Leading firm and individual in Firm’s key service offerings
enforcement & litigation as well as prosecution & strategy categories), Thomson Reuters Litigation, enforcement and dispute resolution
Asian Legal Business IP Rankings (Tier 1 firm for Trademark and Copyright, Tier 2 firm for • Handling civil, criminal and regulatory cases on infringement of patent, trademark,
Patent) and Thomson Reuters Asian Legal Business India Rising Stars 2019, among others. copyright, design, trade secrets, unfair competition; commercial mediation and
Its members serve on various committees and expert groups in international associa- arbitration
tions, as well as government bodies. • IP dawn raids, enforcement cases and domain name disputes
ASA works with a sophisticated artificial intelligence and automation based in-house • Dispute strategy, risk assessment, drafting of submissions, preparation of documen-
trademark portfolio management system to manage compliances, monitor threats and tation, evidence, witnesses
alerts for clients. It is also the first law firm in India to offer blockchain-based IP protec- Prosecution, compliance and audit
tion services. • IP prosecution
ASA is led by its founder Ajay Sahni, who has been practising IP law since 1983 at • Entry assistance: clearance searches, landscape studies, freedom-to-operate searches
the Supreme Court, high courts, district courts and tribunal levels across India. He has • IP audits and health checks
argued numerous landmark cases, many of which have been reported in leading law • IP compliance management services
reports and journals. His dispute resolution experience covers a wide spectrum of indus- • Cutting-edge tools based on automation and AI for 360-degree IP monitoring, threat
tries, including pharmaceutical, retail, infrastructure, real estate, automotive, finance, assessment and compliance management services
fast-moving consumer goods, power, telecommunications, education, chemical and Transactional
industrial products. • Acquisition and commercialisation of IP assets
• IP valuation
A strong founder • Technology transactions and licensing
Mr Sahni’s experience is evident in the number of key positions he holds or has held: • Safeguarding IP assets in mergers, acquisitions and joint ventures
• former vice president at Intellectual Property Attorneys Association, New Delhi; Advisory and public policy
• former vice president at Asian Patent Attorneys Association (India Chapter); • Anti-counterfeit investigations, forensics and enforcement strategy
• invited by the Rajya Sabha Secretariat (upper house of the Parliament of India) • Customs border protection assistance and strategy
and examined as an expert witness by the Parliamentary Standing Committee on • Branding, advertising, marketing, packaging and labelling strategies
Commerce in relation to the Trademarks (Amendment) Bill 2007; • Drug and pharma regulatory filings, representation and support
• member on the Advisory Board of The Patents and Trademarks Cases, a leading • Data protection and privacy
monthly journal of IP case law in India; • Public policy advisory, advocacy and strategic litigation support
Taiwan increased by 2 percent from the filings in 2019 so everything looks quite anti-counterfeiting measures for their
previous year to 74,652. Of the total, well from the relevant statistics,” CF clients formed a big part of the work of
invention patents were at 48,268; design Tsai, managing partner of Taiwanese law firms in Thailand last year.
patents at 8,804; and utility model firm Deep & Far, said. “However, from For the bigger law firms, the work
patents at 17,580. the firm’s perspective, 2019 was a hard- covered managing IP portfolio for the
The government reported that the ship year because this firm was subject larger Southeast Asia. In one case, ZICO
total invention patent applications filed to a last transition period from human- IP did the trademark portfolio manage-
by residents at 18,984 in 2019 was the based management to deeply computer- ment in eight countries in Southeast Asia
highest in five years due to increases based one by which we have seen various for property and casualty insurer Chubb
in the number of applications filed by signs of recovery even at these COVID-19 Limited.
corporations, large enterprises and rampant months.”
small and medium-sized enterprises. Vietnam
In patents, Japanese firms were the top Thailand Vietnam passed a new law last year
applicants followed by Chinese firms. IP protection has improved consider- effecting key changes to its IP regula-
In addition to patent filings, top ably in Thailand, but a few challenges tion and to make it more aligned with the
law firms in Taiwan for IP were kept busy remained, at least that’s according to terms of a new trade agreement it signed
handling infringement cases, with some the U.S. in its 2019 Special 301 Report. with 10 countries, the Comprehensive
patent-related cases matters of cross- “Concerns remain regarding the and Progressive Agreement for Trans-
border litigation. availability of counterfeit and pirated Pacific Partnership (CPTPP).
Meanwhile, trademark applications goods, both in physical markets and Among the changes are the longer
at 86,794 were the highest since 2001. online,” it says in its unilateral review of grace period for patent applications from
“This was due mainly to a 3 percent IP protection of its trading partners. The the date of public disclosure to 12 months
increase in resident applications,” the report put Thailand on the watch list with from the previous six months and the
government reports. Vietnam in Asia, while China, India, and terms in determining common name of
“Some industries have strongly Indonesia were on the priority watch list. goods in applications for geographical
backed up either the patent or trademark Indeed, IP protection and deploying indications.
W W W. LEG ALBU SINES S O N L I N E.CO M A S I A N L EG A L B U S I N E S S – MAY 2020 25You can also read
