Intellectual Property

Market status

Professional staff

Technology

Innovation

Intellectual Property Practice Groups

Costs

Some matters recently handled by Deacons

Intellectual Property

Deacons has the largest and longest-established intellectual property practice in Hong Kong. Our multiple award winning intellectual property practice is recognised as a market leader in Hong Kong. It provides the full range of intellectual property services required by multinational businesses.

The Intellectual Property Department is organised into practice groups covering trade marks, patents and designs, litigation/enforcement and commercial exploitation of intellectual property (including entertainment, media and internet-related issues).

Through our representation of international and Hong Kong-based businesses throughout Asia and worldwide, our lawyers have developed both the experience and the contacts necessary to represent clients efficiently and cost-effectively.

Market status

For many years, Deacons has continuously achieved the highest ratings of any Hong Kong law firm in patents and trade marks in the annual client/peer surveys conducted by Managing Intellectual Property magazine (a Euromoney publication). The Intellectual Property Department handles the largest number of trade mark applications and registrations in Hong Kong and has a busy patents practice. The Hong Kong litigation practice group successfully represented the plaintiffs in some of the most significant legal actions decided in recent years. Deacons also successfully handled the last Hong Kong case ever heard before the Privy Council.

Deacons acts for 44 of the world's 75 leading brands (as identified by Interbrand PLC). We represent the world's largest individual companies in the electronics, paint, construction, hotel, chemical, pharmaceutical, food and beverage, petrochemical, media/entertainment, camera, business software, computer hardware and mobile phone industries (source: Fortune Global 500/The Economist). We are particularly experienced in representing long term clients in the luxury goods, electronics , IT and pharmaceutical industries.

From registering Hong Kong's oldest trade mark in 1874 to making the first ever e-filings, Deacons has become an institution in Hong Kong intellectual property.

Professional staff

The Intellectual Property Department employs nearly 40 fee earning staff, almost all of whom are bilingual or trilingual. The staff includes four qualified patent attorneys and eight of the professional staff are qualified as engineers or scientists.

Technology

Deacons has Hong Kong's most sophisticated intellectual property management infrastructure and the Intellectual Property Department employs two full-time computer programmers, supported by the firm's ten other IT developers. Our computer systems provide clients with the convenience of comprehensive extranets and e-billing facilities. Our staff have instant access to sophisticated file location and accounting facilities. Many procedures such as "e-renewals" are entirely web-based.

Innovation

Deacons is the leading innovator in intellectual property practice in Hong Kong. Deacons filed the first trade mark application under Hong Kong's new Trade Marks Law, the first multiple class trade mark application ever filed in Hong Kong, made the first e-filings of trade mark, patent and design applications in Hong Kong and also made the first interactive electronic filing with the Hong Kong Trade Marks Registry.

Intellectual Property Practice Groups

Deacons Intellectual Property Department has six core service areas: 

• Litigation/Enforcement: This practice concentrates on the enforcement and defence of intellectual property rights through the civil or criminal courts, customs or other administrative agencies. Attorneys within this group have played a leading role in the development of jurisprudence and procedures in the enforcement of intellectual property rights in Asia.

• Trade Marks: This practice focuses on searching and registration as well as opposition or cancellation proceedings before trade mark or other relevant Registries and before the courts or other administrative agencies. 

• Patents & Designs [click here]: Our firm offers a full range of patent and registered design services including searching, drafting, filing and maintenance. We employ 4 qualified patent attorneys together with supporting staff.  Please click here for further information.

• China Intellectual Property: Our China Intellectual Property Group offers a range of registration and enforcement services for intellectual property matters in Mainland China.

• Exploitation: This practice advises on the commercial exploitation of intellectual property rights, including conducting IP audits, licensing, franchising, drafting assignments, manufacturing and distribution agreements, joint ventures, technology transfers and due diligence on the sale and purchase of businesses. Attorneys in the practice area also advise on information technology and Internet issues, including software licensing and development. 

• Entertainment & Media [click here]:This practice provides business-orientated and creative solutions and advisory services in all aspects of the film, music and publishing industries. Attorneys in this practice area have extensive industry-based legal and business knowledge and diverse entertainment experience. Please click here for further information.

Costs

Our attorneys are well aware of current economic pressures. Although specialisation and economies of scale already render Deacons' services extremely cost-effective, a flexible approach is taken with regarding to billing.

Some Matters Recently Handled By Deacons

• Acting for a well-known major United Kingdom manufacturer of electrical products against a Hong Kong company with major operations in the PRC. Successfully obtained a Mareva Injunction against the defendants.

• Taking Copyright infringement and breach of confidence proceedings against two employees of a Hong Kong business matching company (which is a subsidiary of a listed company) for stealing the Plaintiff's client database. Successfully obtained a Mareva Injunction.

• Acting for a major luxury brand in a trade mark infringement and passing off action against use by one of the founder's family members of the brand name as part of his own name in a competing new business.

• Advising a leading international search engine provider on setting up of local search site and compliance with major laws in Hong Kong including IP laws, defamation, advertising and other laws.

• Advising a leading international search engine provider on complex privacy issues in Hong Kong.

• Advising a major Japanese telecoms provider on copyright issues arising from setting up a search engine business based in Hong Kong.

• Advising a major internet contents provider on setting up a music website based in Hong Kong and related complex copyright issues.

• Advising a leading international search engine provider on ICP liabilities and related legal issues.

• Advising a major provider of digital cinema systems in negotiations with all major US studios on complex arrangement for deployment of digital cinema systems throughout Asia.

• Advising a large number of well-known international brands against "shadow" companies in Hong Kong on strategy and successfully taking actions in the courts and at Companies Registry level.

• Acting for a well-known Japanese electronics manufacturer in Hong Kong in relation to a major counterfeit ring covering the PRC, Taiwan, Japan and Hong Kong.

• Acting for an iconic and long standing fashion and cosmetic brand against a Korean cosmetic company with substantive operations in Asia in relation to trade mark infringement.