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Who Represents Who

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Rio de Janeiro based Dannemann Siemsen Advogados has a longstanding reputation for IP work, and a growing technology practice. Another significant source of work is the pharma sector, where it advises clients such as Sanofi, Johnson & Johnson, and Wyeth. The group defended the last-mentioned client in a trade mark revocation claim for the ‘Minesse’ mark, which had not been used in five years due to an outstanding health regulatory agency licence; the claim was filed by Farmoquímica following its unsuccessful attempt to register the similar trade mark ‘Ginesse’. Plant variety expert Mauricio Teixeira Desiderio and sports law expert Peter Eduardo Siemsen add niche capabilities to a broad practice. Luiz Henrique do Amaral, Gustavo de Freitas Morais and Marina Inês Fuzita Karakanian are also recommended.

One of the most renowned IP boutiques in the country, the ‘committed’ Gusmão & Labrunie provides ‘clear risk assesments and takes excellent decisions’. Fernando Eid Philipp led the successful defence of Funcional Drinks, as co-owner of the ‘Power Bull’ trade mark, against a trade mark nullity claim brought by Red Bull. The group also represented BRF Brasil Foods and Johnson & Johnson in advertisement infringement cases, and the team was also active in relation to patent and trade dress infringements. The ‘reliable and sharp’ João Vieira da Cunha, ‘excellent’ Ana Paula Celidonio and ‘very experienced’ Laetitia d’Hanens are recommended along with name partners José Roberto Gusmão and Jacques Labrunie, who is ‘service oriented’.

A market leader, Kasznar Leonardos Intellectual Property offers the full range of IP services. In 2016 it represented a Brazilian airline in an infringement claim against an online travel agency which had registered domain names reproducing the client’s trade mark and copied the trade dress of its website. In another highlight case, it achieved indemnification for a luxury fashion brand in infringement litigation concerning the sale of counterfeit products. João Vianna and Filipe da Cunha Leonardos lead the patent and trade mark teams respectively, and Cláudio Roberto Barbosa, Nancy Satiko Caigawa, Gabriel Francisco Leonardos and Elisabeth Kasznar Fekete are recommended for litigation. Anderson Ribeiro joined from Provedel Advogados in September 2016.

Recognised for its ‘unrivalled professionalism’, BMA – Barbosa, Müssnich, Aragão acts for an impressive roster of clients including Blackberry, L’Oréal, Raízen, Starbucks and Vodafone. In an indication of its international capabilities, it advised the Supreme Committee for Delivery & Legacy, which is responsible for the delivery of infrastructure for the 2022 FIFA World Cup in Qatar, on its trade mark portfolio. Antonella Carminatti, the ‘extremely clear, swift and focused’ Claudia Schulz, and senior associate Pedro Frankovsky Barroso are recommended. Former senior associate Paula Mena Barreto left to become a partner at Campos Mello Advogados in September 2016.

The ‘trustworthy’ Bhering Advogados gives ‘advice that goes beyond the routine’. It is defending Heinz Brazil in litigation filed by WOW Nutrition concerning an intended trade mark application, and has been instructed to manage Warner Group’s nationwide anti-counterfeiting measures. The seven-partner team includes technology transfer specialist and head of the French desk Karlo Fonseca Tinoco, and ‘reliable and effective’ head of the German desk Philippe Bhering. Both are based in São Paulo, while founding partner Pedro Bhering is the key figure in Rio de Janeiro.

Based in Rio de Janeiro, IP boutique Montaury Pimenta, Machado & Vieira de Mello is praised for its ‘solution-oriented approach’. It successfully defended Indústria Química Santo Antônio in litigation brought by Manufatura Produtos King concerning the use of an allegedly trademarked term on a product label. Recommended partners include Luiz Edgard Montaury Pimenta, Eduardo Magalhães Machado and Roberto Vieira de Mello, together with newly promoted patent specialist Gabriela Salerno.

Benefiting from a strong international network, Trench Rossi Wanatabe assists clients such as AbbVie, Caterpillar, Elizabeth Arden, H&M, HSBC, Volvo and Votorantim in the management of their trade mark portfolios, and clients such as Gillette, Procter & Gamble and Wyeth in relation to their patent portfolios. Alongside its mainstream IP work, the group regularly acts on technology transfer and biotechnology matters. Esther Flesch, Flávia Rebello, Marcela Trigo de Souza and Flávia Vasconcelos are recommended.

Full-service firm Veirano Advogados has a large IP team with strong expertise in advertising, franchising, technology transfers and IT-related matters. It handles trade mark portfolios for clients such as Nadir Figueiredo and Jacob Douwe Egberts, and recently assisted NBA Properties in relation to ambush marketing matters. Practice heads Valdir de Oliveira Rocha Filho and Fábio Pereira are also experienced in IP litigation.

Daniel Legal & IP Strategy has a strong practice advising on anti-counterfeiting matters in the technology arena. It is representing IP Holdings in litigation against StarBrands seeking the cessation of the use of the trade mark ‘Ecko Unltd.’, following termination of a licence agreement due to non-payment of royalties. André Ferreira de Oliveira, Andrew Bellingall and Robert Daniel-Shores are recommended.

David do Nascimento Advogados Associados S/C is a ‘proactive’ boutique which covers all aspects of IP work. Marcello do Nascimento represented a leading tyre company in a domain name dispute, while Ricardo do Nascimento acted for a beverage company in a dispute concerning the coexistence of similar brands in the market.

Demarest Advogados is ‘a true business partner’, and is regularly sought by international clients such as Snap-on and Diebold Nixdorf. It handles all patent and trade mark licensing for Pirelli as well as the licensing of IP rights and the prosecution of trade marks for Harley-Davidson. The ‘highly professional’ Tatiana Campello ‘makes ideas happen’, and is recommended along with litigation expert Marcelo Inglez de Souza and newly promoted partner Camila Biral Vieira da Cunha.

Rio de Janeiro based boutique Di Blasi, Parente & Associados successfully represented Accor Hotels in infringement litigation concerning its ‘Ibis’ trade mark, which had been used by the defendant as a central part of its company name and in invoices. While it is particularly recommended for litigation, the practice is also active on the non-contentious side, recently advising Samsung Eletrônica da Amazônia on a patent application. Gabriel Di Blasi and ambush marketing expert Paulo Parente Marques Mendes are recommended.

Porto Alegre based boutique Guerra IP ‘fulfils all requirements an international firm might have’, and its advice is ‘detailed, relevant and set out in excellent English’. Names to note include the ‘outstanding’ Ricardo Pinho, the ‘effective’ Cristina Guerra, Alberto Guerra and Rosane Tavares.

Rio de Janeiro-based firm Licks Attorneys is highly rated for work in the pharma sector, where it acts for clients such as Lundbeck, Novartis and Sanofi Brasil. Recent work saw the team defend Diffucap-Chemobras in patent infringement litigation filed by pharma group EMS. Founding partner Otto Licks is recommended for contentious IP-matters; and both Ana Carolina Corrêa and Ana Montenegro – practice heads for patents and trade marks, respectively – are also noted. The firm has also promoted Felipe Mesquita to the partnership and recruited Nuno Carvalho, who joined from a post at the World Trade Organisation.

Noted for its ‘excellent response times’, Luiz Leonardos & Advogados was recently successful in revoking an international client’s patent application rejection. Luiz Leonardos, trade mark department head Marcelo de Oliveira Müller and patent expert Ana Paula Jardim – all senior partners – are recommended.

‘Excellent in every respect’, boutique firm Murta Goyanes Advogados has a 20-strong group including name partners Antonio Murta Filho and Marcelo Goyanes, as well as the ‘knowledgeable’ Luiza Duarte Pereira and ‘excellent strategist and litigator’ Luis Henrique Porangaba. In 2016 it was charged with handling Alpargatas’ entire trade mark portfolio, while already prosecuting and enforcing the client’s patents and industrial designs in Brazil and abroad. In other work, it advised Hyundai Rotem on a technology transfer agreement entered into with Taekwang Enterprise concerning the manufacturing of passenger trains and related technology.

Pinheiro Neto Advogados’ IP team gives ‘proactive and timely advice’, with particular expertise in contentious matters and transactional support. José Mauro Machado is representing Consorzio del Prosciutto di San Daniele in litigation concerning the local processing of an imported product protected by denomination of origin. He co-heads the practice with André Zonaro Giacchetta.

Siqueira Castro – Advogados is particularly recommended for contentious IP work, and has ‘an excellent understanding of its clients’ business’. The group successfully represented Peixe Urbano in litigation against Hotel Urbano Serviços Digitais concerning the use of the expression ‘Urbano’, as well as the use of images and colours on its website. Eduardo Ribeiro Augusto and Márcio Costa de Menezes e Gonçalves co-head the team.

Soerensen Garcia Advogados Associados is a highly rated IP boutique active across a range of sectors, for national and international clients such as Dell and Nestlé. Name partner Mario Augusto Soerensen Garcia ‘does not shy away from confrontation’.

At TozziniFreire Advogados, Marcela Waksman Ejnisman assisted McCain do Brasil in the registration of trade marks and the filing of figurative trade mark applications for emoticons. Andreia de Andrade Gomes, who has specialist expertise in fashion and design law, advises Aurobindo Pharma, fashion brand Nannacay and Hyundai.

KLA-Koury Lopes Advogados successfully represented Instituto Brasileiro de Opinião Pública e Estatística (IBOPE) in litigation filed against Iclop – Tecnologia em Pesquisas e Hábitos de Consumos in relation to the similarity of the trademarked abbreviation. Tania Liberman leads the team, which regularly advises on the IP aspects of M&A transactions.

With a great reputation in the pharma sector, Mattos Filho, Veiga Filho, Marrey Jr. e Quiroga Advogados represented Parmalat, as former master licensee of the ‘Parmalat’ trade mark, in litigation against subsidiary Lactalis. In another matter, practice head Fabio Kujawski led advice to Snapchat in relation to IP infringements and image rights.

Opice Blum, Bruno, Abrusio, Vainzof Advogados Associados focuses on IT-related IP matters, and is active in investigations into unauthorised database access. It recently represented a client in litigation concerning image rights, due to association with false news of the client’s aircraft shown in videos spread through social media. Renato Opice Blum and Juliana Abrusio are recommended.

Silveiro Advogados covers the full range of IP matters, with notable expertise in IT-related matters. It successfully represented lift manufacturer Otis in litigation against Elevadores Cts claiming unlawful use of the expression ‘CTS’ and other acts of unfair competition. Porto Alegre based Rodrigo Azevedo is the name to note.

Souto Correa Cesa Lummertz & Amaral Advogados’ team now includes the ‘very competent’ Leticia Provedel, following the firm’s merger in 2016 with Provedel Advogados. She represented Vale in disputes concerning patents and developments by former and current employees, and advised SABMiller on entering into a trade mark agreement with Companhia Müller de Bebidas.

ZCBS – Zancaner Costa & Spiewak Advogados’ 18-strong IP group, led by the ‘straightforward’ Benny Spiewak, has specialist expertise in advising Israeli enterprises as well as pharma sector clients such as Teva Pharmaceutical Industries, Sanofi, and Johnson & Johnson. Dow AgroSciences instructed the group in relation to crop protection matters.

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