Norton Rose Fulbright in Canada is unique in its ability to provide seamless IP advice on a truly national and global scale. We have one of the few IP practices with such a designation in Canada covering IP professionals in each of Québec City, Montréal, Ottawa, Toronto, Calgary and Vancouver. The integration of Bull Housser Tupper was completed on January 1, 2017 and has added a particular depth in trademark prosecution and litigation, anti-counterfeiting, and trade secrets.
Litigation practice: The team of IP litigators at Norton Rose Fulbright is ranked among the best in Canada. We provide offensive and defensive litigation counsel in all areas of intellectual property, including patents infringement and impeachment actions under the Patent Act and pursuant prohibition proceedings and section 8 damages actions under the Patented Medicines (Notice of Compliance Regulations), copyrights, trade-marks, trade-mark oppositions, trade secrets, counterfeit enforcement, and industrial designs. The team is particularly well known and regarded for its patent litigation work for pharmaceutical clients. Our roster of innovative pharmaceutical clients for which we act in litigation is second to none in Canada. As pharmaceutical patent disputes represent a significant part of patent litigation in Canada, our team is extremely active in this area. The patent litigation practice also includes mechanical patents, medical devices and oil and gas patents, among other technologies. More recently, several new partners with leading practices in trademark and copyright litigation have increased our capabilities, successes and client base in this area.
Patent practice: Norton Rose Fulbright's Canada patent attorneys and agents have highly specialized degrees and provide comprehensive intellectual property advice and global portfolio strategy. We handle the Canadian and global patent work for a stellar cross section of Canadian and international clients. Our Canadian Patent Centre of Excellence complements notably the patent expertise within Norton Rose Fulbright in the United States.
We are one of the largest patent filers in Canada with a particular emphasis on drafting original patents and global portfolio strategy, as evidenced by the fact that we are consistently one of the top PCT filers in Canada. We are often selected over our competitors because our patent prosecution expertise is unrivalled and works seamlessly with our disputes and regulatory lawyers to provide strategic and holistic approach to patent portfolio management.
Trademark practice: We assist clients with all aspects of the branding process. This includes providing overall branding strategy, the drafting and prosecuting of trade-mark applications, the provision of advice regarding availability and registrability of marks in Canada and globally. Our team provides strategic trade-mark advice including portfolio review, infringement surveillance, and advice on legal issues connected with introducing products and services to the market, such as branding, product information and advertising. We assist clients with all aspects of brands expansion into social media including acquisition of domain names, and enforcement of brands on all social media channels globally. Our litigation team acts for clients in opposition proceedings, infringement proceedings and expungement proceedings and trade libel actions.
Copyright practice: Our copyright team has expertise in all aspects of copyright law including clearance, acquisition and registration, infringement and litigation, due diligence, licenses, assignments and transactional issues. We act for copyright owners working in various industries such as film, television, video, music, art, fashion, literature, software and evolving media including telecommunications and the Internet. Similarly, our trade-marks team works with clients to acquire, commercialize and safeguard their brands, including logos, product or container shapes and packaging. We advise on all aspects of the selection, registration, commercialization and protection of rights related to trade-marks and brands. We are regularly called upon to advise on the copyright aspects of advertising and marketing campaigns. Clients consistently call upon our professionals for wide industry coverage, the shared experience between the team and our large panel of services. Our litigation lawyers are also active in copyright disputes at both the trial and appellate levels in the software, media, communications, and entertainment sectors with clients including film studios, software and gaming developers, telecommunications companies, the television industry and the music business. We have extensive experience representing rights holders before the Copyright Board and assisting in the enforcement of tariffs, as well as in anti-counterfeiting mandates for fashion enterprises and standards organizations, including border seizures and rapid enforcement campaigns.
Commercial IP practice: The IP team handles a wide range of commercial transactions relating to all areas of intellectual property. For example, our commercial IP team has assisted a major financial institution in developing key collaboration agreements, developed and negotiated licensing agreements with other financial institutions, developed blockchain consortium agreements, and very complex IP co-existence and ownership issues.
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.
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.
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.
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.
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.
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.
Marks & Clerk is one of the UK’s largest, and longest established, intellectual property firms. Our expert teams of patent and trade mark attorneys and lawyers are wired directly into the UK’s innovation economies via our offices in London, Birmingham, Manchester, Oxford, Cambridge, Edinburgh, Glasgow and Aberdeen. Alongside our presence in the UK, we also have offices in nine international locations covering the EU, Canada and Asia, meaning we can tap into local expertise, globally.
Our team provides a full-service IP offering, from the initial filing of IP, through to litigation and commercial exploitation. Having seen the benefits that our clients derive from our full-service model, a number of patent attorney firms have since sought to follow a similar approach by adding solicitors to their teams. However, our well-established and highly regarded litigation and commercial transactions practices continue to set us apart from other firms.
We are experts not only in intellectual property law, but also in the science and technology that underpins our clients’ businesses. Our ability to draw upon this specialist technical expertise, not just in the context of patent prosecution but also in the context of litigation and commercial transactions, enables us to provide clients with a level of service and reach unmatched by other firms.
Vivien Chan & Co. is a full-service law practice with offices in Hong Kong (1985) and Beijing (1993). We are consistently recognized as a premier law firm for and in Greater China. With nearly 30 years of doing business in Greater China, our Hong Kong and China teams have an in-depth understanding and knowledge of the legal culture and market dynamics.
We support our clients to build global intellectual property portfolios, encompassing patents, trademarks copyright and other unregistrable rights, like trade secrets and software applications. We do so by reducing the risk of infringement and increasing the value of companies’ intellectual property assets. Our two offices provide full-service IP practice that is fully integrated with other matters, including franchise law, technology licensing and related transactions, e-commerce, privacy & data security, domain names and social media.
We clear obstacles in registration and enforcement directly with the regulators. Our advice is based on over 30 years of experience in the law, practice and culture, targeted at practical and expeditious resolution of problems. We see Greater China IP management as a strategic issue, with experience in adopting a cost effective and result oriented approach to delivering practical solutions.
The new challenges in IP protection are increasingly difficult and complex. We are a one-stop service firm with substantial experience in assisting clients manage and enforce IP portfolios in Greater China. Our team has gained working and streetwise knowledge of the common and consistently changing tactics of counterfeiters in greater China, and is therefore experienced in devising corresponding anti-counterfeiting strategies to tackle them.
We are licensed to file and execute enforcement directly in Mainland China and Hong Kong. We adopt a multi-facet approach to IP enforcement and are experienced in border control, surveillance, complaint with regulatory bodies, administrative bodies and litigation. Our in-house investigation capabilities, having received tertiary training in specialized institutions including China People’s University of Public Security, enable us to manage our client’s investigative needs in different regions in China and provide assistance to our legal team in forum shopping. We recognize it is not a one-size-fits-all-solutions objective. We partner with our clients to develop a custom-tailored protection and enforcement strategy to protect client’s unique products and brand names in a cost-effective manner. Our broad experience covers a spectrum of industries — including luxury and fashion, pharmaceutical and healthcare, food and beverage, entertainment, media, consumer products, hard ware and education institutions.
For multi-jurisdictional disputes, we manage these and offer global strategies to our client through working with our associates. We have worked with the best lawyers in their respective discipline and jurisdiction closely in our 30 years of practice. Premised as an independent Greater China Law Firm, we only use the best for our client and are not bound or obliged in any way to use one’s own office in another jurisdiction.