Simone Intellectual Property Services (SIPS)

Hong Kong SAR

Address:
25/F, 3 Lockhart Road
Wanchai
Hong Kong SAR

+852 3468-7500

+852 2866-6408


Key contacts:

Managing Partner: Dan Plane
Partner: Helen Tang
Partner: Joe Simone
Partner: Joshua Miller

Quick facts:

Established: 2012
Number of Partners: 4
Number of IP Practitioners: 18
Languages: English, Italian, Cantonese, Mandarin, Shanghainese, and other Chinese dialects
Network Memberships: INTA, APAA


SIPS is a market-leading IP firm servicing the needs of multinationals and SMEs in Greater China. It has offices in Hong Kong, Beijing and Shanghai.

SIPS helps clients in managing their IP portfolios, including the registration, enforcement and licensing of trademarks, copyrights and patents. It also assists with investigations management, advice on supply chain integrity, trade secret protection, data privacy, retail and wholesale distribution, ecommerce, distribution and sourcing agreements, and regulatory matters relating to IT and other high-tech sectors.

The firm’s clients include household name brands across a broad range of industries, including information technology and consumer electronics, F&B, fashion, media and entertainment. It also assists start-ups and SMEs that require support in protecting their IP in both the sourcing and distribution of their products in China.

SIPS is recognized as a top-tier service provider for trademark protection in China by leading industry surveys, including WTR 1000, Managing Intellectual Property, Chambers and Legal 500.

 

Trademark Clearance

SIPS helps in searching new marks throughout the region. To manage costs, it typically runs a preliminary scan of the register and offers a cap or fixed fee for projects. SIPS also offers different tiers of searches. It can conduct low-cost “knock-out” searches to help in narrowing down the list of candidate marks. Alternatively, SIPS can provide deep analysis that includes creative advice on the options for overcoming serious conflicts. To these ends, it relies heavily on its in-house investigation team.

Trademark Registration Advice 

SIPS never just files applications without first considering whether adjustments should be made to save cost and reduce the risks of objections. Likewise, it routinely provides creative suggestions for responding to office actions and rejections. The firm also proactively advises on enforcement risks, rather than limiting its comments to the implications of conflicts on registrability.

Portfolio Management and Audits

Upon taking responsibility for a portfolio, SIPS conducts an audit of the register as well as online sales platforms to ensure that existing applications and registrations are sufficient. SIPS may then suggest new filings to cover additional goods and services, as well as new marks – including Chinese-language marks that may have been overlooked. 

Enforcement

A core part of SIPS’ practice is the management of investigations and enforcement against all varieties of IP violations. The bulk of this work relates to anti-counterfeiting, with about half of that concerning targets that advertise their goods online. The firm is known for its innovative approach to enforcement, testing the boundaries of the law and practice, as evidenced by SIPS’ work with coalitions, creative civil strategies, use of landlord liability strategies, and the proactive use of government affairs strategies to address more challenging cases.

Online Investigative Research Team

Beyond handling day-to-day takedown work, and unlike most of the firm’s competitors, SIPS has an in-house team of trained fraud investigators who are expert in analyzing search results and conducting deep research into infringers based in China and elsewhere. Their work can be crucial in prioritizing targets, uncovering infringers’ identities, tracing links between sellers and factories, and even mapping entire counterfeiting networks. 

IP Investigations

For on-site investigation work, SIPS has an established a network of outside investigation firms, including those run entirely by local Chinese and those managed by expats. 

SIPS selects firms for projects based on their capabilities, budget realities and other factors. On occasion, SIPS works with firms based in Hong Kong, US and Europe which are adept in organizing “offshore approaches” to purchase from infringers that sell mainly to buyers outside China. 

Government Affairs

The SIPS team has a deep interest in the development of IP law and understand that involvement in the legal reform process can provide early access to useful information and thereby enrich its advice to clients. Most of the firm’s association work is conducted on a volunteer basis. But SIPS is also frequently engaged by associations and companies to provide draft position papers, speeches and research data to assist in their own direct lobbying efforts. Through this lobbying work, SIPS has generated contacts and a profile with a range of national and local authorities that in turn helps it in outreach to officials that can assist in resolving sensitive cases for clients.

Trademark and Domain Name Acquisitions

SIPS’ investigators and paralegals have extensive experience in negotiating with other parties for the purchase of trademarks and domain names.

Licensing

Another core part of SIPS work is the drafting and recordation of trademark, copyright, and technology license agreements. Its work in this regard is mainly done for companies in the entertainment sector, toys, fashion, and F&B.

Creation of New Chinese Marks

SIPS also assists clients with inventing and assessing new Chinese-language marks, in part to ensure that they are culturally and linguistically appropriate, keeping in mind the many oral dialects in China (Cantonese, Shanghainese, Fujianese, etc.). For clients seeking assistance in developing marks in languages other than Chinese, SIPS works in cooperation with an affiliate, Appella.

 

Last updated 16th October 2020

Practice Areas: Copyright & related rights, Designs, Trade mark contentious, Trade mark prosecution, IP transactions, Trade mark

Sector Expertise: Automotive, Advertising, Computer technology & services, E-commerce, Electronics, Fashion & luxury goods, FMCG, Food & beverage, Gaming, Hospitality & leisure, Industrials, Manufacturing, Media, Medical device, Mining, Pharmaceutical, Oil & gas, Publishing, Retail, Sports, Technology hardware, Music, Financial services, Chemical, Professional services, Tobacco