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Rouse

World IP Survey Coverage: Print-friendly version

Editorial coverage

China

"We find that Rouse is the best firm that we have used," says one client. "Its fantastic in-house investigation department is a particular asset for us. Its ability to communicate clearly in English is also a great help." Linda Chang took over the position of country manager from Luke Minford in February 2010 and the firm had another remarkable year. "Linda Chang at Rouse is a very impressive lawyer. She is thoughtful and quick to respond to requests for assistance," says an in-house client.

Also a key member of the team, executive Tim Smith receives special mention from this client: "I really like working with Tim Smith. He is very practical and has the ability to walk us through the law and help us understand China."

More foreign companies are reported to be facing problems with their former licensees or joint venture partners in the country in recent years and Rouse acted on one such case last year. Executive August Zhang led a team for Swissotel to sue Dalian Swiss Hotel, its former licensee, for trade mark infringement. The court ordered Dalian Swiss Hotel to cease the infringement, publish a statement in the newspaper, transfer the domain name back to Swissotel and pay damages to the client.

In another matter that involved trade mark infringement and unfair competition, Beiersdorf turned to Rouse to protect its Nivea brand. The client got favourable results both in administrative proceedings and in court. This case shows that unique packaging of well-known products can be protected even if no prior registrations have been made.

"The firm is professional, approachable, and has a good knowledge of the subject," says a client who has sought advice from Rouse on litigation matters. "It understands the drivers for our business and what we want to achieve. It is able to explain the differences between working in China and working in other jurisdictions easily."


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Thailand

With a solid team of about 35 members, Rouse is lauded by peers for its active involvement in raid actions as well as in trade mark and copyright contentious work. Two important victories this past year saw the firm successfully protect the trade mark Stalinskaya, which was opposed by the owner of Stolichnaya, as well as advise stationery company Pelikan in a passing off case. In the latter, the group was able to prove the criminal intention of the defendant despite its use of the mark for more than 20 years.

The firm is a sound choice for patent prosecution work due to its team of scientists in the areas of mechanical engineering, pharmaceutical and biological sciences. The group also does patent mapping.

One client that seeks the firm's expertise on trade mark enforcement was particularly impressed by Fabrice Mattei. "I especially want to mention his commitment. Regardless of how busy he is, he will schedule and find time to debrief me on his team members' actions. He stands out among the rest because of his attentiveness and energy. He is always readily available for any clarification."

Mattei and his team represented Asahi Glass in an infringement case over a technology patent. The group is also helping Desjoyaux in a patent enforcement action. Mattei garners more praise from a client who used the firm in a patent infringement suit. "He manages the litigation team. His good point is that he always tries to hear clients' demands and to satisfy the demands."

As for the firm's other practitioners, the client continues: "Manoon Changchumni organises facts and evidence well to make good arguments. Prasit Siricheepchaiyan handles patent issues and knows about the patent practice in Thailand well." Other clients of the firm include L'Oréal Group, Google, Eli Lilly and Unilever, with the latter entrusting the firm with managing its patent portfolio in Thailand.


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United Arab Emirates

Rouse operates as a mixed practice with lawyers, trade mark attorneys, patent agents and specialist IP researchers. The firm operates out of 17 offices in 12 jurisdictions providing a full range of IP services. The firm continues to hold a leading position in the UAE and is highly respected by peers for its expertise. One says: "Rouse is excellent. It does a lot of enforcement work and has good capable lawyers." In an ongoing case, the firm is advising Ma'arib, a UAE property development company, in connection with a copyright dispute involving a European design company. The case is handled by Sara Holder, James Elliot and Samantha Grainger and relates to the underlying principle between commissioner and commissionee of copyright work. The subject of who owns commissioned work is a relatively untested area in UAE law. In other ongoing work Jon Parker has been active in representing Dubai Racing Club in connection with trade marks around the world, as well as securing the acceptance of two trade marks in overseas jurisdictions, based on acquired distinctiveness.


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United Kingdom

Launched into the top tier for copyright, Rouse stands tall in a highly competitive market. Led by managing partner Luke Minford, who returned to the UK after serving as the firm's China country manager for six years, the firm stamps a recognisable footprint in both the prosecution and contentious areas through Rouse Patents and Rouse Legal, respectively. It lost Shireen Peermohamed to Harbottle & Lewis last year, but gained prominent patents litigator Richard Willoughby from Howrey. Arty Rajendra helped Diageo win a ruling in its favour after the Court of Appeal dismissed the argument from its competitor, Intercontinental Brands, that vodka was a protectable term. Clients of the firm include BP, Nokia, Shell, GSK and Merck.


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Firm contact

This firm does not have a profile in the 2011 Handbook