Top firms in trade marks

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Top firms in trade marks

In the second part of the eighth annual World IP Survey, MIP reveals the top-ranked firms for trade mark/copyright work in 25 jurisdictions in Europe, Asia and North America. Below, we explain how the results were compiled

The second part of the World IP Survey 2003, published in the following pages, covers the established markets in Europe, North America and Asia. Once again, we thank our readers and others for taking the time over the past few months to vote for the leading firms in a total of 50 jurisdictions.

This is the eighth annual MIP World IP Survey and the presentation has changed slightly, to provide more analysis and commentary on the results, and the trends they reveal. However, the methodology remains the same: the tables on the following pages simply reflect the votes cast by IP practitioners worldwide on who they believe are the leading firms in each jurisdiction.

The tables are compiled in a straightforward way. In June this year, nomination forms were sent to nearly 4,000 IP specialists in companies and in private practice in over 100 countries. Each individual was invited to nominate up to three firms in each of the two categories in 50 jurisdictions. Responses were received by fax, telephone and e-mail from practitioners all over the world, covering patent and trade mark/copyright work. Those polled were asked to nominate the leading firms in both categories and in all jurisdictions they were familiar with. To eliminate any cheating, MIP imposed the following rules: only nominations from people on our database who received nomination forms were accepted; and private practice firms were not allowed to vote for themselves.

When the votes were in, our researchers added up the scores, awarding each firm three points for a first vote, two points for a second vote, and one point for a third vote. The tables reveal which firms received the most points in their jurisdiction, in order.

The Survey is respected because it is an independent source of information on leading law firms and agencies in the IP field. No-one pays to be included in the Survey; no-one receives preferential treatment; and the staff of MIP do not have a say in who is listed. Only senior practitioners - in multinational companies and private practice - vote for the firms listed on the following pages, and the research is conducted rigorously and thoroughly.

As the voting patterns are different in each country, sometimes we can list the top 10 and sometimes the top five firms (in the US, we list the top 15). To help readers, we also indicate at the top of each table the total number of firms who received at least one point, and last year's positions are indicated in brackets. In the UK, there are separate tables for law firms and patent/trade mark agencies; in the US, contentious and non-contentious work is ranked separately. Where it is relevant, we indicate whether firms are primarily law firms (L) or firms of patent/trade mark attorneys (A).

It is important to stress that the firms listed are not necessarily the biggest, oldest or most active firms. And we do not claim that they are the best, or that other firms are inferior. MIP does not recommend or endorse any particular law or patent attorney firm. What is clear is simply that those listed will have received a large number of votes and command a great deal of respect among their peers around the world.

On the following pages, we have invited members of several of the top-ranked firms to reveal the facts that they believe international trade mark investors need to know in their jurisdiction. Then, alongside each table, we analyze this year's results and put the tables into context.

The results of the patents part of the survey for these countries were published in the October issue. Tables covering South America, central and southern Europe, Africa, the Middle East and south-east Asia will be published in the February and March issues.

Contents

North America

Western Europe

Asia-Pacific

What is the most important thing trade mark owners need to know about your jurisdiction?

MIP asked members of the number one firms in 10 jurisdictions to reveal their top tips for trade mark owners.

stevens-nov03.jpg

DAVIES COLLISON CAVE, AUSTRALIA

Trevor Stevens, trade mark group senior partner

For a prospective trade mark owner it is the efficiency and helpfulness of the Australian Trade Mark Office. It is a feature that does stand out. It is purposely making itself helpful and is especially helpful to self-filers. The Office is going out of its way to make itself user-friendly and it shows: last year the number of applications from self-filers exceeded that filed by trade mark attorneys. It is a very stark statistic and shows that its policy of helpfulness is working.

GOWLINGS, CANADA

Stuart Ash, partner

Trade mark owners often overlook the fact that filing in Canada is an excellent return on investment. In comparison to many industrialized countries, the cost of securing registration of a trade-mark in Canada is very reasonable. Canada has a vibrant and diverse economy, a population of over 31 million people and is the major trading partner of the United States. Trade mark owners in the G8 countries, Mexico, China, South Korea, and Taiwan (all of whom are major trading partners with Canada) should consider including Canada in their filing programmes if they wish to ensure that they are properly protected in key markets.

CABINET BEAU DE LOMENIE, FRANCE

Aurélia Marie, partner

We believe there will be great interest in US accession to the Madrid Protocol. An international registration application designating the US will be registered in this country without the use of the trade mark being proved for the registration. But we are concerned because we usually have a large definition of products and services in an international registration application, when for the US we try to have a precise definition for these products and services. Consequently, we expect to receive a large number of objections from US examiners against the list of goods for international registration applications designating the US and we do not know whether these applications will be cost-effective for our clients.

esler-sep03.jpg

DEACONS, HONG KONG

Lindsay Esler, head of IP

Hong Kong has become much cheaper than trade mark owners thought. Also, they have to treat Hong Kong separately to China. That's the least understood thing about Hong Kong. Trade mark owners think that by filing in Hong Kong they have China covered.

JACOBACCI & PARTNERS, ITALY

Carlo Demichelis, IP partner

We have a new IP code due to enter force in January next year, which includes a new provision for calculating damages. The door has now opened for it to be possible to obtain damages based on the net profit of the infringers.

Since July 1 Italy has had specialized sections in tribunals that are dedicated to IP. This is important for consistency of decisions in trade mark matters. And since the beginning of the year, it has been possible for the police to seize infringing goods offered for public sale and automatically order their destruction without waiting for the outcome of any administrative proceedings. However, trade mark owners must help raise police awareness of this new authority.

thompson-nov02.jpg

AJ PARK, NEW ZEALAND

Bryan Thompson, partner

What is different about New Zealand legislation is that a trade mark may be removed from the register when it becomes generic. Trade mark owners and practitioners must take care of the distinctiveness of their marks and not let them become generic in the public mind. At a practical level it's a case of trade mark owners keeping an eye on what appears in the press and on the internet and educating the public about proper use, usually with a friendly letter. That's the only negative thing in our legislation. All the rest is good stuff.

singhgill-nov03.jpg

DREW & NAPIER, SINGAPORE

Dedar Singh Gill, head of trade mark division

Getting a trade mark in Singapore is a relatively speedy and cheap process. You can get a registration within a year. The only area of concern to trade mark owners is trans-shipment. So many goods pass through Singapore, which is one of the busiest ports around, and trans-shipment is arguably not an infringement. Our border enforcement provisions don't cover trans-shipment.

lee-nov02.jpg

ALBIHNS, SWEDEN

Peter Lee, head of trade marks

What we are seeing now is that Sweden is more clearly belonging to Europe; there are more international and CTM registrations. Consequently, Swedish trade mark owners must realize that the approach of the Swedish Patent Office has changed. Previously, the Office had a very strict process for evaluating whether two marks were confusingly similar. The Office was therefore protecting existing rights by investigating whether owners of these rights were interested in protecting them or not, and industry had become used to this. They have not yet understood that Sweden is a part of Europe and there is a new practice coming into this country that you have to look after your own rights. They have to be more proactive than before.

mutimear-nov03.jpg

BIRD & BIRD, UK - LAW FIRM

Jane Mutimear, IP partner

If you have a word that is vaguely descriptive, or is not very distinctive, or if you have a shape mark, whether it is inherently registrable is almost impossible to guess. You cannot even say that the UK has a stricter or more relaxed approach than other countries because there are many cases that OHIM lets through but which the UK does not, and the other way around.

Baby-Dry has turned out to be a high water mark and we are retreating from that. We are still in a state of flux in how you show acquired distinctiveness. This makes it difficult for unconventional marks such as colours and shapes. In the old days you used to be able to look at a mark and give a pretty good estimate as to whether it could be registrable. Now there is a much larger subset of marks than before, making it very difficult to judge.

hosford-nov03.jpg

MARKS & CLERK, UK - ATTORNEYS

Pen Hosford, partner

The US joining the Madrid Protocol on November 2 is expected to increase the popularity of the international system. In preparation, trade mark owners should conduct an audit of their portfolios, something they should be doing as matter of course anyway.

With the new countries joining the EU on May 1, it would be wise for trade mark owners to file applications before November 1. If they file their trade mark applications after this date there is a possibility of opposition from earlier national rights in one of the new member states. They need to be aware of the benefits of getting in early to avoid problems and to save on costs.

ehrlich-nov03.jpg

FROSS ZELNICK LEHRMAN & ZISSU, US - NON-CONTENTIOUS

David Ehrlich, partner

Apart from the fact that the US will accept Madrid Protocol extensions of international registrations starting on November 2 2003, trade mark owners need to know that (1) searching a mark before adoption is crucial in the US because so many marks are in use or registered, and an unregistered mark can still be infringed, (2) the US application for a mark should not include entire class heading lists or extra goods, because US law only permits registration of goods intended to be sold under the mark, (3) use declarations must be filed to maintain US trade mark registrations, (4) infringement protection in US courts is both broad by international standards, because protection extends to related goods, and narrow, because confusion-avoiding circumstances of use can provide a defence to infringement, and (5) litigation in the US (including oppositions) is very expensive.

Americas

US - Litigation (total 73)

Rank

Firm

1 (1)

Finnegan Henderson Farabow Garrett & Dunner

2 (4=)

Fross Zelnick Lehrman & Zissu

3 (6)

Knobbe Martens Olson & Bear

4 (10=)

Kilpatrick Stockton

5 (8)

Darby & Darby

6 (10=)

Fish & Neave

7 (3)

Pennie & Edmonds

8 (4=)

Kenyon & Kenyon

9 (-)

Oblon Spivak McClelland Maier & Neustadt

10 (25)

Cooley Godward

11 (14)

Cowan Leibowitz & Latman

12 (-)

Welsh & Katz

13 (-)

Wilson Sonsini Goodrich & Rosati

14 (2)

Brinks Hofer Gilson & Lione

15 (17)

Pattishall McAullife Newbury Hilliard & Geraldson



The trade mark litigation crown is retained by Finnegan Henderson Farabow Garrett & Dunner, with Fross Zelnick and Knobbe Martens rounding out the top three. Kilpatrick Stockton is the highest-placed general practice firm on the list, ranking inside the top five. Other general firms that feature are west coast tech specialists Cooley Godward and Wilson Sonsini Goodrich & Rosati.

US - Non contentious (total 98)

Rank

Firm

1 (1)

Fross Zelnick Lehrman & Zissu

2 (2)

Ladas & Parry

3 (5)

Finnegan Henderson Farabow Garrett & Dunner

4 (4)

Abelman Frayne & Schwab

5 (-)

Oblon Spivak McClelland Maier & Neustadt

6 (6)

Knobbe Martens Olson & Bear

7 (13=)

Cowan Leibowitz & Latman

8 (-)

Welsh & Katz

9 (7)

Burns Doane Swecker & Mathis

10 (25)

Morgan Lewis

11 (20)

Sheridan Ross

12 (-)

Pillsbury Winthrop

13 (8)

Darby & Darby

14 (12)

Brinks Hofer Gilson & Lione

15 (18)

Sughrue Mion



Fross Zelnick Lehrman & Zissu keeps top spot for the third successive year, while Oblon Spivak McClelland Maier & Neustadt shoots into the top five after missing out on the rankings last year. Welsh & Katz and Pillsbury Winthrop are also new entrants, celebrating along with high-climbers Morgan Lewis and Sheridan Ross. Knobbe Martens is the highest ranked firm from outside the east coast region.

Mexico (total 34)

Rank

Firm

1 (2)

Uhthoff Gomez-Vega & Uhthoff

2 (1)

Olivares & Cia

3 (4=)

Arochi Marroquin & Lindner

4 (4=)

Basham Ringe & Correa

5 (4=)

Clarke Modet

6 (-)

Gonzalez Rossi

7 (-)

Becerril Coca & Becerril

8 (-)

Panamericana Patentes

9 (3)

Goodrich Riquelme & Asociados

10 (-)

Calderon & De La Sierra



Uhthoff Gomez-Vega & Uhthoff claims top spot in the trade mark rankings for the first time since 2000, beating the number one firm of the past two years, Olivares & Cia. With the expansion of the Mexico rankings from five firms to 10, there are new entries this year for Gonzalez Rossi, Becerril Coca & Becerril, Panamericana Patentes and Calderon & De La Sierra.

Canada (total 60)

Rank

Firm

1 (1)

Gowling Lafleur Henderson

2 (3)

Bereskin & Parr

3 (5)

Ogilvy Renault/Swabey Ogilvy Renault

4 (2)

Smart & Biggar/Fetherstonhaugh & Co

5 (6)

Ridout & Maybee

6 (-)

Blake Cassels & Graydon

7 (4)

Sim McBurney/Sim Hughes

8 (7)

Robic/Leger Robic Richard

9 (9)

Marks & Clerk

10 (-)

Borden & Eliot

Gowlings holds on to top spot for the fourth year, holding off a challenge from last year's number three firm, Bereskin & Parr. Ogilvy Renault also leapfrogs 2002's second place firm Smart & Biggar, rising to third, while Blake Cassels & Graydon makes the top 10 after missing out last year. Borden & Eliot features on the list for the first time. Osler, Hoskin & Harcourt and Goudreau Gage Dubuc both slip out of the top 10.

Europe

Austria (total 44)

Rank

Firm

L

A

1 (1)

Sonn & Partner

?

2 (2)

Dr Thomas M Haffner

?

3 (4)

Puchberger, Berger & Partner

?

4 (3)

Barger Piso & Partner

?

5 (-)

Schönherr & Partner

?



Sonn & Partner is again comfortably the number one ranked firm in Austria, and the top four show little change from last year. In one of the smaller European markets, it is perhaps surprising that as many as 44 firms were nominated at least once. Attorney firms dominate, although the large general practice law firm Schönherr makes this year's top five, and the patent firm Collin & Haüpl drops out.

Benelux (total 55)

Rank

Firm

L

A

1 (1)

Bureau Gevers

?

2 (2)

Novagraaf

?

3 (4)

Nauta Dutilh

?

4 (3)

Knijff & Partners

?

5 (-)

Shield Mark

?

6 (-)

Office Kirkpatrick

?

7 (-)

Vereenigde Octrooibureau

?

8 (5)

Nederlandsch Octrooibureau

?

9 (-)

Steinhauser Hoogenraad

?

10 (-)

Octrooibureau Los & Stigter

?



Since the opening of the Community Trade Mark Office, attorney firms in the three Benelux countries (which share a common trade mark system) have built up a strong reputation for the quality and quantity of their filing work. In this, they have been led by Florent Gevers, whose firm is number one for the second year in a row. The second-placed firm Novagraaf, formed from the merger of Markgraaf and Novamark, continues to increase its share of the vote.

Denmark (total 24)

Rank

Firm

L

A

1 (2)

Chas Hude

?

2 (1)

Zacco

?

3 (3)

Budde Schou & Ostenfeld

?

4 (4)

Sandel Løje & Wallberg

?

5 (5)

Plougmann & Vingtoft

?

6 (-)

Plesner Svane Grønborg

?

7 (-)

Internationalt Patent-Bureau

?

8 (-)

Kromann Reumert

?

9 (-)

Gorrissen Federspiel Kierkegaard

?

10 (-)

Patentgruppen/Advokatgruppen

?

?



In a reflection of this year's patent result, Chas Hude has overtaken Zacco to be the number one ranked firm. A higher number of votes in Denmark this year means that we can list the top 10 (rather than top five) firms, and interestingly all bar one of the new names are law practices (although the final name on the list also has an associated attorney firm).

Finland (total 20)

Rank

Firm

L

A

1 (1)

Kolster Oy

?

2 (2)

Berggren Oy

?

3 (5)

Papula Oy

?

4 (3)

Heinonen & Co

?

5 (4)

Leitzinger Oy

?

6 (-)

Roschier Holmberg

?

7 (-)

Seppo Laine Oy

?

8 (-)

Benjon Oy

?

9 (-)

Oy Jalo Ant-Wuorinen

?

10 (-)

Castrén & Snellman

?



Like Denmark, there were more votes in Finland this year, enabling a top 10 to be published. Kolster is again the top ranked firm, although Papula (which also does work in the former USSR states under the name Nevinpat) has climbed two places in this year's survey. Three of the country's leading law firms also feature in the list alongside seven IP specialist firms.

France (total 76)

Rank

Firm

L

A

1 (1)

Cabinet Beau de Loménie

?

2 (2)

Cabinet Lavoix

?

3 (3)

Cabinet Plasseraud

?

4 (4)

Cabinet Hirsch

?

?

5 (-)

Germain & Maureau

?

6 (9)

Rinuy Santarelli

?

7 (10)

Gide

?

8 (6)

Gilbey De Haas

?

9 (5)

Sodema Conseils

?

10 (-)

Bouju Derambure Bugnion

?



The French market shows very little change since last year, with the top four firms staying exactly the same. France is a big market with many firms, and below the top two the results are very close. Two new firms make the list this year, with Cabinet Weinstein and William J Rezac dropping out of the top 10. The only pure law firms which feature are the giant Gide and the smaller specialist firm Gilbey De Haas, although the Hirsch firm does legal work as well as filing.

Greece (total 27)

Rank

Firm

L

A

1 (1)

Theodorides PD & Papaconstantinou HG

?

2 (2)

Patrinos & Kilimiris

?

3 (-)

Malamis & Malamis

?

4 (-)

Vosemberg Law Office

?

5 (3)

Dontas Law Office

?



The Papaconstantinou firm is again the comfortable winner in Greece. Lower down the table, there are some changes as two firms enter the top five and two others - Tavalaridis and Sakellarides - drop out.

Ireland (total 16)

Rank

Firm

L

A

1 (1)

FR Kelly & Co

?

2 (2)

Tomkins & Co

?

3 (3)

MacLachlan & Donaldson

?

4 (5)

A&L Goodbody

?

5 (4)

Cruickshank & Co

?



The same five firms feature in Ireland as last year, although in a slightly different order. Just one general practice firm is included in a list dominated by the large attorney practices, with FR Kelly once again the winner by a big margin.

Italy (total 42)

Rank

Firm

L

A

1 (1)

Jacobacci & Partners

?

2 (3)

Società Italiana Brevetti

?

3 (2)

Barzanò & Zanardo

?

4 (5)

Racheli & Co

?

5 (7)

Bugnion

?

6 (-)

Trevisan & Cuonzo

?

?

7 (4)

Studio Torta

?

8 (6)

Modiano & Associati

?

9 (-)

Studio Ferrario

?

10 (8)

Notarbartolo & Gervasi

?



The market leader, Jacobacci, is the clear winner in this year's survey. Trevisan & Cuonzo returns to the top 10 while the Milan-based Studio Ferrario features for the first time in the eight years of the World IP Survey, remarkable given that this mid-sized firm was set up in 1944 by one of the drafters of the Italian Patent Law. Dropping out of the top 10 this year are last year's ninth and tenth placed firms, Studio Legale Sutti and Perani Mezzanotte & Partners.

Norway (total 21)

Rank

Firm

L

A

1 (1)

Zacco

?

2 (5)

Onsagers

?

3 (2)

Bryn & Aarflot

?

4 (3)

Oslo Patentkontor

?

5 (4)

Actio-Lassen

?

6 (-)

Bergen Patentkontor

?

7 (-)

Håmsø Patentbyrå

?

8 (-)

Simonsen Føyen Advokatfirma

?

9 (-)

J K Thorsens Patentbureau

?

10 (-)

Norsk Patentbyrå

?



The Norway table has a familiar look, despite more firms being listed this year. Onsagers (which was ranked first in patents this year) climbs up three places, but Zacco retains the top trade mark spot. It is worth noting that, as Norway is not in the EU, CTM registrations and EC law do not apply here so national trade mark flings arguably have a greater importance.

Portugal (total 14)

Rank

Firm

L

A

1 (1)

J Pereira da Cruz

?

2 (5)

Raul César Ferreira

?

3 (3)

Clarke Modet & Co

?

4 (4)

JE Dias Costa

?

5 (2)

AG da Cunha Ferreira

?



Portugal does not sustain a large number of IP firms, and the same five feature this year as in last year's trade mark table. J Pereira da Cruz is once again ranked top, with the remaining four firms very close together. A number of foreign (notably Spanish) firms have established themselves in the Portuguese market, but they have not registered strongly in the voting this year.

Spain (total 45)

Rank

Firm

L

A

1 (1)

Elzaburu

?

2 (-)

Herrero & Asociados

?

3 (4)

Durán-Corretjer

?

4 (3)

Gómez-Acebo & Pombo

?

5 (5)

J Isern Patentes y Marcas

?

6 (2)

Clarke Modet & Co

?

7 (-)

Jacobacci & Partners

?

8 (-)

Ungria Patentes y Marcas

?

9 (-)

Uria & Menendez

?

10 (-)

Dr Ing M Curell Su-ol

?



More votes this year means that the Spanish table includes the top 10 firms, and the most striking change is the entry of the Herrero firm in second place. A couple of significant hires, combined with an expansion into contentious areas of IP, has no doubt raised this firm's profile. However, Elzaburu is still comfortably the number one firm, thanks to its enormous global client base.

Sweden (total 34)

Rank

Firm

L

A

1 (1)

Albihns

?

2 (2)

Awapatent

?

3 (3)

Zacco

?

4 (4)

Groth & Co

?

5 (6)

Ström & Gulliksson

?

6 (5)

Dr Ludwig Brann

?

7 (7)

Nihlmarks Advokatbyrå

?

8 (8)

Grundén & Gozzo

?

9 (9)

Magnusson Wahlin Qvist Stanbrook

?

10 (-)

Erhner & Delmar Patentbyra

?



Although the top four firms are the same as last year, the result is closer this time, perhaps thanks to the raised profile of Zacco following its merger with AB Stockholm. Other recent changes in this market include the merger of law firms Magnusson Wahlin and Qvist - Stanbrook. This firm has represented parallel importer Paranova in a number of ECJ cases. The only new name this year is the attorney firm Erhner & Delmar.

Switzerland (total 43)

Rank

Firm

L

A

1 (3)

E Blum & Co

?

2 (1)

Isler & Pedrazzini

?

3 (2)

AW Metz & Co

?

4 (-)

Meisser & Partner

?

?

5 (4)

Kirker & Cie

?

6 (6)

Bugnion SA

?

7 (7)

Katzarov

?

8 (-)

Wild Schnyder

?

?

9 (9)

Troller Hitz Troller & Partners

?

10 (10)

Lenz & Staehelin

?



There is a new winner in Switzerland this year, but there is little to choose between the top two firms, who scored very similar numbers. Two new names in the Swiss table this year are both firms that claim to combine trade mark prosecution with legal advice - Meisser & Partner and Wild Schnyder. Bovard and Braun are the two firms to miss out on inclusion this year.

UK - Law Firms (total 46)

Rank

Firm

L

A

1 (1)

Bird & Bird

?

2 (3)

Bristows

?

3 (2)

Linklaters

?

4 (8)

Simmons & Simmons

?

5 (5)

Clifford Chance

?

6 (10)

Field Fisher Waterhouse

?

7 (6)

Wragge & Co

?

8 (9)

Taylor Wessing

?

9 (-)

SJ Berwin

?

10 (7)

Rouse & Co International

?



The IP specialists Bird & Bird and Bristows once again triumph over the general firms in the UK. Although they are all law firms, a number of those included on this list also practise trade mark filing - notably Field Fisher, Clifford Chance and Linklaters, who have large practices in this area. SJ Berwin has re-entered the top 10 this year, while Eversheds (which has lost a couple of high-profile partners) loses out.

UK - Agents (total 57)

Rank

Firm

L

A

1 (1)

Marks & Clerk

?

2 (3)

RGC Jenkins

?

3 (7=)

Wildbore & Gibbons

?

4 (2)

Boult Wade Tennant

?

5 (9=)

Frank B Dehn & Co

?

6 (-)

David Keltie Associates

?

7 (-)

Withers & Rogers

?

8 (7=)

Kilburn & Strode

?

9 (9=)

Reddie & Grose

?

10 (-)

Castles

?



Marks & Clerk is once again comfortably first placed among UK agents, while Jenkins, Wildbore & Gibbins and Frank B Dehn are the other big winners this year. An interesting omission from the table is Hallmark (formerly the Trade Mark Owners Association) whose re-branding does not seem to have compensated for the loss of several key partners. The other firm to have slipped out from last year's listing is Forrester Ketley & Co, which (along with Carpmaels & Ransford and WP Thompson) narrowly misses out on inclusion this year.

Asia-Pacific

Australia (Total 39)

Rank

Firm

L

A

1 (1)

Davies Collison Cave

?

?

2 (4)

Allens Arthur Robinson

?

?

3 (2)

Spruson & Ferguson; Spruson: Solicitors

?

?

4 (3)

Griffith Hack

?

?

5 (5)

Freehills

?

?

6 (9)

Clayton Utz

?

?

7 (-)

Banki Haddock Fiora

?

?

8 (6)

Watermark

?

9 (-)

Blake Dawson Waldron

?

?

10 (7)

Baldwin Shelston Waters

?

?



Banki Haddock Fiora and Blake Dawson Waldron enter the list as two new names in Australia's top 10 trade mark firms. Davies Collison Cave heads the list once again, just as it did the patent results in October. The top five firms are the same ones as last year, though there is some reordering. Allens Arthur Robinson's move up two places to second, means a fall of one place for Sprusons and Griffith Hack. Another to make a significant move is Clayton Utz, up to sixth from ninth. Watermark is the sole registration-only practice in the list. Last year there were three. Perhaps that is a sign that if litigation looms, owners prefer to keep their work at the one firm.

China (Total 49)

Rank

Firm

L

A

1 (1)

CCPIT

?

?

2 (3)

China Sinda

?

?

3 (-)

NTD Patent & Trademark Agency

?

?

4 (-)

Lehman Lee & Xu

?

?

5 (-)

Kangxin Partners

?

?

6 (5)

China Patent Agent (HK)

?

?

7 (-)

Rouse & Co International

?

?

8 (-)

Vivien Chan & Co

?

9 (-)

China Trademark and Patent Law Office

?

?

10 (-)

Zhongzi Law Office

?

?



CCPIT retains its position as the top firm in China for trade mark work. Although there are seven new firms in the list, it is not a fair comparison with 2002, when only five firms were ranked. China Sinda keep their usual position near the top and NTD, China Patent Agent (HK) and Kangxin Partners show up in the rankings again. Rouse & Co International, the consultancy, which celebrates a decade in China this year, makes an appearance in the list at seventh. Vivien Chan & Co, one spot behind Rouse, is the first firm of Hong Kong origin to reach China's top 10. And Zhongzi Law Office makes its first appearance as a leading trade mark firm in China.

Hong Kong (Total 46)

Rank

Firm

L

A

1 (1)

Deacons

?

?

2 (2)

Wilkinson & Grist

?

?

3 (3)

Vivien Chan & Co

?

?

4 (-)

So Keung Yip & Sin

?

?

5 (8)

Sit Fung Kwong & Shum

?

?

6 (9)

Eccles & Lee

?

?

7 (4)

Johnson Stokes & Master

?

?

8 (-)

Richards Butler

?

?

9 (10)

Robin Bridge & John Liu

?

?

10 (-)

Wenping & Co

?

?



Deacons and Wilkinson & Grist lead the way again in Hong Kong, as they have done for a number of years. Vivien Chan & Co, which, uniquely this year, also made the list in China, retains its position in third. According to our readers, So Keung Yip & Sin was not one of the top 10 firms in Hong Kong last year for trade mark work. This year it performs strongly, featuring in fourth place. This firm, together with Richards Butler and Wenping & Co, are the three newcomers to the list. Both Sit Fung Kwong & Shum and Eccles & Lee jump up three places.

Japan (Total 62)

Rank

Firm

L

A

1 (1)

Asamura Patent Office

?

?

2 (5)

Nakamura & Partners

?

?

3 (4)

A Aoki Ishida & Partners

?

?

4 (2)

Yuasa & Hara

?

?

5 (3)

Suzuye & Suzuye

?

?

6 (6)

TMI Associates/Simmons & Simmons

?

?

7 (-)

Kyowa Patent and Law Office

?

?

8 (9)

Hiroe & Associates

?

?

9 (-)

Ryuka

?

?

10 (-)

NGB

?

?



Asamura Patent Office has clinched the top spot as the leading trade mark practice in Japan for the second successive year, according to MIP's readers. There is never much difference, as far as the firms are concerned at least, between the Japanese patent and trade mark results. The first six in the list of leading trade mark firms were also in the top 10 of Japan's best patent firms last month. A Aoki Ishida & Partners, which was top for patents, is third for trade marks, but up a place on last year. Nakamura is up three places to the runner-up position. Suzuye and Suzuye and Yuasa & Hara both slip a couple of places. The newcomers this year are Kyowa Patent and Law Office and Ryuka.

Korea (Total 27)

Rank

Firm

L

A

1 (1)

Kim & Chang

?

?

2 (-)

Kim & Cho

?

?

3 (5)

Kims & Lees

?

?

4 (3)

EM Hwang & Partners

?

?

5 (2)

You Me Patent & Law Firm

?

?

Kim & Chang is number one for trade mark work in Korea, just as it was last month for patent work. The firm has contended for the lead ever since MIP started the World IP Survey. Kim & Cho is the newcomer, coming in at number two. The other firms in the list were also among the top five in Korea for trade mark work in 2002. EM Hwang & Partners and You Me were also in the list of leading patent firms this year. Kims & Lees moves up two places to third; You Me falls three to fifth.

New Zealand (Total 19)

Rank

Firm

L

A

1 (1)

AJ Park

?

?

2 (2)

Baldwin Shelston Waters

?

?

3 (4)

James & Wells

?

?

4 (3)

Henry Hughes

?

?

5 (6)

Pipers

?

?



The leading five firms in New Zealand were in the top six in the jurisdiction last year and were the leading five firms in last month's patent results. AJ Park is the number one firm for patent and trade mark work once again. It has taken a prominent position in the discussions about the new Trade Marks Act in the media this year, which came into force in August. The enactment of the new law, after many years debate, was the biggest news of the year. Some contentious issues, such as the registration of marks likely to cause offence, had to be resolved before it could take effect. Getting it on the statute books was an achievement in itself, following 10 years of discussion.

Singapore (Total 31)

Rank

Firm

L

A

1 (1)

Drew & Napier

?

?

2 (3)

Allen & Gledhill

?

?

3 (2)

Ella Cheong Mirandah & Sprusons

?

4 (6)

Tan JinHwee, Eunice Lim ChooEng

?

?

5 (7)

Alban Tay Mahtani & De Silva

?

?

6 (5)

Rodyk & Davidson

?

?

7 (4)

Donaldson & Burkinshaw

?

?

8 (9)

Lovells Lee & Lee

?

?

9 (-)

Shook Lin & Bok

?

?

10 (-)

Lloyd Wise

?



Drew & Napier remains the firm that all others in Singapore have to aim at when it comes to trade mark work. The top three firms stay the same as last year, with Allen & Gledhill and Ella Cheong Mirandah & Sprusons swapping positions. Shook Lin & Bok and Lloyd Wise make it into the top 10 as the last two firms. They are the only two newcomers, though they did appear in the top 10 before 2002. Apart from the typical shifting in position from year to year, the firms in mid-table were all there last year. The lack of new firms is a sign that few dispute who are the leading 10 firms in the jurisdiction, though it remains a fiercely competitive place in which to run an IP practice.

Look out for the rest of the World IP Survey results:

February 2004:
Top patent firms in South America, central and southern Europe, Africa, Middle East and south-east Asia

March 2004:
Top trade mark firms in South America, central and southern Europe, Africa, Middle East and south-east Asia

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