Deacons
Firm overview:
Deacons claims the title of the oldest full-service independent law firm in Hong Kong SAR, having opened its first office there in 1851. Since then, it has established three representative offices in Beijing, Guangzhou and Shanghai, and grown into one of Hong Kong’s largest law firms with over 200 lawyers. The firm founded its Deacons (Beijing) Intellectual Property Agency in 2013, which works closely with the Hong Kong team to assist clients with IP matters in Mainland China.
The trademark practice is very well respected across the region, advising clients on everything from trademark clearance searches and prosecution to the full range of contentious matters that can occur. Notable client work includes handling the Asia trademark portfolio of a UK banking and insurance company, consisting of over 1,000 cases including clearances, registrations and oppositions. Deacons offers an international service that covers trademark registration throughout the Asia-Pacific region and beyond.
Deacons has particular strength in litigation and dispute resolution, with a dedicated team taking on complex, high-value cases. Highlights include acting for Alibaba in proceedings commenced in Hong Kong by cosmetics supplier Mary Kay, and representing the Ping An Insurance group of companies in various court actions regarding trademark infringement and passing off.
Team overview:
Catherine Zheng heads Deacons’ IP department, and is triple qualified in Canada, New York and Hong Kong. Zheng specialises in China cross-border IP protection strategy and contentious matters, covering the full gamut of IP rights.
Another leader in IP matters at Deacons is Charmaine Koo, head of IP Commercial and Litigation. Koo’s practice is wide-ranging and covers IP work such as transactions, cybersecurity, anti-counterfeiting and enforcement of IP rights. She has won numerous high-profile court cases and is one of Hong Kong’s leading entertainment lawyers.
A notable departure over the past year was that of Annie Tsoi, who retired from private practice in January 2025 to embark on a new venture. Tsoi was at the firm for nearly 28 years and is highly respected for her IP practice, which has included managing the global trademark portfolios of numerous well-known brands.
Key matters:
- Miele v Instant Services (Hong Kong) and Anor
Deacons acted for Miele in a case before the Hong Kong High Court, which found a parallel importer of electrical appliances guilty of copyright infringement, passing off and trademark infringement. The team successfully obtained summary judgment from the court against the parallel importer, and its sole director was found liable as a joint tortfeasor.
With regards to the trademark claims, the court found that the use of Miele’s trademarks on the parallel importer’s websites and social media accounts amounted to infringement.
The case is Miele & Cie KG and Miele (Hong Kong) Limited v Instant Services (Hong Kong) Limited and Anor (2024).
Clients:
Miele
