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Clifford Chance

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Editorial coverage

China

Core focus for the Clifford Chance IP team in China is contentious work. Though the firm has some prosecution work, this is limited to trade mark and copyright registration. Ling Ho oversees the China team as head of Asia IP. With offices in Beijing and Shanghai, the China team comprises two IP litigators stationed in Shanghai and one full time IP lawyer. The team has an enviable list of clients including TWG Tea, BDO, Philip Morris, SanDisk and Aston Martin.

In January 2012, Alice Tang was promoted to senior associate, while Michael Ni joined the team in February 2012. Ni has a niche in the healthcare, life science and industry chemical sectors.

Ho and Ni worked on a case for Somfy, a global leader in automatic control of buildings openings and closures. The dispute involves invention patent invalidation review before the Beijing Intermediate Court and parallel patent infringement action in Shenzhen Intermediate Court.

Aston Martin is a notable client. Ho, Tang and Helen Wang frequently provide strategic advice and support for the company's trade mark portfolio in China.


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Hong Kong

Focusing on IP litigation, Clifford Chance has had a fruitful year representing many global multinational companies in their IP disputes. Ling Ho is the head of Asia's IP group, who is known most for her litigation and transactional IP advice. Alice Tang was promoted to senior associate in 2012. A smaller IP team compared to other firms, this team is strong in the areas that it focuses on.

Notable clients of the firm include BDO, SanDisk, Philip Morris and John Deere.

Ho led a team in representing TWG Tea in its trade mark infringement and passing off action before the High Court. The firm similarly represented BDO Unibank in its trade mark infringement and passing off action involving an international network of accounting firms.

Ho also successfully defended Philip Morris in its revocation action against the Marlboro Light trade mark registration in Hong Kong.


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Spain

Clifford Chance consolidates its position in tier 1 of the patent contentious table. "It is good at everything," one partner says. "It built its pharma reputation and is creative as it helped develop the law here in Spain." The firm's IP team of 17 individuals includes two partners and one counsel and it is based in Barcelona. Even though it is part of an international firm, the IP team works like a boutique and its litigation department is headed by the impressive Miquel Montañá, who is widely considered to be one of the leading patent litigators in the country. And this is especially so in pharmaceuticals disputes. "Clifford Chance does deserve tier 1. It is active in patent litigation and is good at it," one partner says. "And 90% [of its IP team] specialises in pharma."

A key client of the firm is AstraZeneca and it has acted for the client in a number of matters. For example, the firm acted for the client in a patent dispute against generic companies involving the launch of a generic product with the active ingredient of quetiapine. The firm also acted for it in a nullity action that was filed by a generic competitor against the patent that protected an extended release formulation of quetiapine with a gelling agent. And it advised AstraZeneca with respect to a potential patent dispute against generic companies that intend to launch generic versions of zolmitriptan and rosuvastatin, and extended release formulations of quetiapine into the Spanish market.


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United Kingdom

Vanessa Marsland leads the IP team at Clifford Chance, overseeing a team of nine lawyers, a trade mark attorney and two paralegals. The team works closely with other practices within the firm, but also maintains its own clients.

Non-contentious work has kept the department busy recently, with Marsland and fellow partners Daniel Sandelson and Andre Duminy advising on the IP aspects of Citigroup's disposal of EMI, acting for L'Oréal on a number of acquisitions and disposals, and also providing counsel to Global Radio as it acquired the Guardian Media Group's radio business.

contentious work has included trade mark disputes for Weight Watchers at the Patents County Court and acting for Fruit of the Loom in an opposition at OHIM.

Clifford Chance also recruited two solicitors in 2012, Will Shiel, from Gilbert + Tobin, in August, and James Plummer, from Slaughter and May, in March.


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Firm contact

This firm does not have a profile in the 2013 Handbook