Search 
  Advanced
 
Our Services    List of Services    Intellectual Property
Newsworthy | Key Contacts | Knowledge

Intellectual Property

Market Status

Professional Staff

Technology

Innovation

Services offered

Costs

Intellectual Property

Deacons provides the full range of intellectual property services required by multinational businesses. The Department is organised into practice groups covering trade marks, patents and designs, litigation and enforcement and commercial exploitation of intellectual property (including entertainment, media and internet-related issues).

Through our representation of international and Hong Kong-based companies throughout Asia and worldwide, our lawyers have developed both the experience and the contacts necessary to represent clients’ interests both effectively and economically.

Market status

Deacons has achieved the highest ratings of any Hong Kong law firm in patents and trade marks over the past several years in the annual surveys conducted by Managing Intellectual Property magazine (a Euromoney publication). The Department handles the largest trade marks portfolio 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 handled the last Hong Kong case ever heard before the Privy Council.

Deacons acts for 44 of the world’s leading 75 brands (as identified by Interbrand PLC). We represent the world’s largest companies in the electronics, construction, hotel, chemical, pharmaceutical, food and beverage, petrochemical, media/entertainment, business software, computer hardware and mobile phone industries (source: Fortune Global 500/The Economist).

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

Professional staff

The Intellectual Property Department employs 25 professional staff, almost all of whom are bilingual or trilingual. The staff includes three qualified patent attorneys, two PhD graduates and eight of the staff are qualified as engineers or scientists. All our attorneys are native to Hong Kong or Mainland China and/or qualified in Hong Kong.

Technology

The Intellectual Property Department has installed Hong Kong’s most sophisticated intellectual property management database and the Department employs two full-time computer programmers. The computer systems of the Department provide clients with the convenience of comprehensive extranets and e-billing facilities and our staff have instant access to sophisticated file location and accounting facilities. Operations are entirely computerised and many procedures are “paperless”. All professional and support staff have access to both email and Internet/Intranet facilities.

Innovation

Deacons is a leading innovator in intellectual property 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.

Services offered

The four core service areas of the Intellectual Property Department are Litigation/Enforcement, Registration, Exploitation and Entertainment & Media: 

  • The Litigation/Enforcement 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.  

  • The Registration practice focuses on the registration, defence or cancellation of intellectual property rights before patent, trade mark or other relevant Registries, and before the courts or other administrative agencies.

  • The Exploitation practice advises on the commercial exploitation of intellectual property rights, including conducting IP audits, licensing, franchising, assignment, 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.

  • The Entertainment & Media 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 highly flexible approach is taken with regarding to billing.

 
   
Newsworthy

Deacons was awarded the "Hong Kong Firm of the Year 2007" by the Managing Intellectual Property (a Euromoney publication).

Worldwide surveys conducted by Managing Intellectual Property have rated Deacons as the number one firm in Hong Kong for Patents in 2002, 2003, 2004, 2005, 2006, 2007 and 2008.

The same surveys have also rated Deacons as the number one firm in Hong Kong for Trade Marks in 2003, 2004, 2005, 2006 and 2007.

Deacons’ Intellectual Property Practice Group has been ranked first-tier for the past eight years by Asia Pacific Legal 500 (2000/2001, 2001/2002, 2002/2003, 2003/2004, 2004/2005, 2005/2006, 2006/2007 and 2007/2008 editions).

In the same publication, Lindsay Esler (managing partner) and Chris Britton (partner) have been acknowledged seven times as leading lawyers in the area of Intellectual Property (2001/2002, 2002/2003, 2003/2004, 2004/2005, 2005/2006, 2006/2007 and 2007/2008 editions).

Deacons has been acknowledged as a highly recommended law firm for the past seven years in the area of Intellectual Property by PLC Which Lawyer? (2002, 2003, 2004, 2005, 2006, 2007 and 2008 editions).

In the same publication, Lindsay Esler (managing partner) has been acknowledged three times as a recommended lawyer in the area of Intellectual Property (2006, 2007 and 2008 editions).

Deacons has been ranked as a leading law firm in the area of Intellectual Property in Hong Kong by the Chambers Asia (2007 and 2008 editions).

In the same publication, Lindsay Esler (managing partner) and Annie Tsoi (partner) have been acknowledged as leading lawyers in the area of Intellectual Property in Hong Kong (2007 and 2008 editions).

Lindsay Esler (managing partner) has been acknowledged as leading lawyers in the area of Intellectual Property in the Chambers Global - The World's Leading Lawyers (2006, 2007 and 2008 editions).

Deacons was rated in the top tier of foreign firms for China intellectual property work and is described as "one of the big Hong Kong names for intellectual property advice" by the World IP Contacts Handbook (2005 edition). The Handbook is published annually by Euromoney and bases its commentary on a survey of 4000 IP practitioners and clients worldwide.

In 2005, 2006 & 2007, Deacons won the top Hong Kong Government award for electronic filing recognising Deacons as the pioneer and largest e-filing firm in Hong Kong.

Lindsay Esler (managing partner) has been acknowledged seven times as one of Asia’s Leading Lawyers in the area of Intellectual Property in the AsiaLaw Leading Lawyers Survey (2001 - 2007 inclusive).

Chris Britton (partner) and Annie Tsoi (partner) have been acknowledged as Asia’s Leading Lawyers in the area of Intellectual Property in the AsiaLaw Leading Lawyers Survey (2005).

Deacons won the Intellectual Property Law Firm of the Year Award at the Asian Legal Business Awards 2002 and 2004.

Lindsay Esler (managing partner) has been acknowledged as a leading lawyer in the area of Trademarks in the Who’s Who Legal - The International Who’s Who of Business Lawyers (2002, 2004, 2006 and 2007 editions).

Chris Britton (partner) was acknowledged as the leading media lawyer in the Guide to the World's Leading Technology, Media and Telecommunications Lawyers in 2002 published by Euromoney Legal Group.

Lindsay Esler (managing partner) was listed in Euromoney's Expert Guides - Trade Mark Law Practitioners 2004 and 2006, and also appointed as Hong Kong country editor for the same publication.

As one of Hong Kong's largest Intellectual Property firms, Deacons represents 31 of the owners of the world's 100 leading brands (as identified by Interbrand - 2006).

Deacons has over 17,000 active clients in all aspects of intellectual property — these clients include many international "household" names as well as Hong Kong’s blue chip enterprises and institutions.

 
 
Key Contacts
Christopher Britton, [Hong Kong]
Lindsay Esler, [Hong Kong]
Rodney Goh, [Hong Kong]
Charmaine Koo, [Hong Kong]
Patsy Lau, [Hong Kong]
Annie Tsoi, [Hong Kong]
 
 
Knowledge
Registration of Trade Marks in Hong Kong
Registration of Trade Marks in HONG KONG_01699967
Registration of Trade Marks in HONG KONG_01700181
Asia IP Bulletin - July 2007
The Copyright (Amendment) Ordinance 2007
Next >>>