The Legal 500

Clifford Chance ‘has a strong command of IP law’. Practice leaders Miquel Montañá and Montserrat López-Bellosta in Barcelona have ‘outstanding knowledge on IP issues’, are ‘hardworking and accurate’, and provide ‘precise and timely advice’. It has acted for Pfizer in patent infringement actions, and for Aston Martin on trade mark enforcement against possible infringers in Spain.

Gómez-Acebo & Pombo Abogados handles patent instructions for a number of pharmaceuticals clients and has been increasing its presence in the telecoms and electronics sectors. In trade marks, areas of expertise include banking and finance, and it has been representing Apple in relation to copyright, defending it against a claim made by a Spanish organisation that manages the IP rights of musicians and other performers. Clients recommend practice head Gonzalo Ulloa.

IP boutique Grau & Angulo fields ‘very trustworthy lawyers’, and its clients include Nokia, Barcelona FC and BMW. It acted for Adidas in a case relating to the protection of its three stripes logo trade mark, and it set up a global enforcement programme for Sisvel to protect patents relating to MPEG audio compression technology and DVB-T technology. Founding partner Alejandro Angulo is ‘a very talented and hardworking lawyer’, and new partner Maite Ferrándiz is also recommended.

Uría Menéndez’s IP group has ‘deep legal knowledge and a practical approach’. It advises across the full spectrum of IP, with recent examples including acting for a Japanese vehicle manufacturer concerning infringements of two vehicle component patents. It is advising a US research and development company that holds the IP rights for medicines for neuronal diseases, and representing a large Spanish chemicals company regarding nullity and infringement of a product utility model. Agustín González García is ‘a superb lawyer with a great approach towards client’s satisfaction’. José Massaguer and Montiano Monteagudo are also recommended.

Baker & McKenzie’s practice is led by José María Méndez in Madrid and Carles Prat in Barcelona. In 2011, it helped Marriott to acquire all IP rights of AC Hoteles and set up the licence structure for the creation of a new global co-branding with two joint venture companies. It also advised Danone on an IP protection strategy for its new yoghurt packaging.

IP is one of Bird & Bird’s core areas, and as such it acts for a number of big-name clients and attracts quality work. New client gains include Reyal Urbis, which instructed it in a trade mark infringement matter. Other mandates in 2011 came from Actavis and the University of Queensland. Manuel Lobato oversees the department.

Cuatrecasas, Gonçalves Pereira represents blue-chip clients in Spain and abroad. It represented Caviar Petrossian in litigation over the trade mark ‘chatka’; Havana Club in trade mark litigation against Bacardi; and Levi Strauss in civil and criminal proceedings defending its trade marks in Spain. Other expertise includes unfair competition and data protection. Barcelona-based Jorge Llevat heads the practice.

Elzaburu is well known for its IP expertise, which spans patents, copyright and domain names, as well as anti-counterfeiting and anti-piracy measures. Executive president Alberto de Elzaburu is recommended, as is Antonio Castán, who co-ordinates the litigation group.

Garrigues has ‘a great team of multidisciplinary lawyers in this area’. It is representing Google Spain in a claim filed by an individual seeking to enforce their right to be removed from the internet. It is also acting for Procter & Gamble in a trade mark infringement matter, and for Casa Tarradellas in an appeal following the refusal of a trade mark on the grounds of lack of distinctive character. The team includes João Miranda de Sousa, Carolina Pina, Dulce Miranda and Maria Teresa Fernández Mateos.

Herrero & Asociados’ clients include Pfizer and Unilever, and it recently acted for Ursa when the company was sued for infringement of a Spanish design; and represented Fernando Martin Menis during a copyright infringement case. Founding partner José Antonio Hernández has a wealth of IP experience, and Patricia Koch is an expert in pharmaceuticals IP.

Hogan Lovells International LLP’s ‘outstanding’ group is acting for Dell in various trade mark and copyright prosecution and litigation in Spain. It also acts for Banco Santander, British American Tobacco and LG. Burkhart Goebel heads the team, which also includes Ana Castedo, who is ‘a good strategist’ and ‘a clever, hardworking lawyer attuned to her clients’ needs’.

Abril Abogados, SL’s team ‘works well together’ under the leadership of Ignacio Temiño Ceniceros, who is ‘a brilliant lawyer with excellent academic skills’. Patents and trade marks expert Carlos Gonzalez Valdes is ‘a qualified negotiator with great capabilities’. In 2011, the firm represented two major publishers, Hearst and Condé Nast, against a website that published hundreds of magazines free of charge.

Diego Ramos heads the IP team at DLA Piper, which also includes legal director Jason Flint. The firm represents several blue-chip electronics companies, and has been advising Outcome Sciences on clinical research.

Ecija Abogados adopts ‘a consultative approach to IP matters’, and has notable ‘experience in the media field’. This ‘business-oriented’ team is ‘legally excellent, pragmatic, and provides real solutions’. Recent instructions included ITV Studios Spain, Freemantle Media and LaSexta. Hugo Écija has ‘outstanding commercial experience’, and he and Carlos Saiz Peña ’stand out as specialists and have a great understanding of the latest regulations’. Clients also recommend Juan Salmerón.

Freshfields Bruckhaus Deringer is particularly active in IP litigation, representing key clients such as Johnson & Johnston and Sony. It also advised Amadeus on disposing of its online travel service Opodo, and acted for Visa Europe in a high-profile data protection case. Sergio Miralles is the key contact.

Iuris Valls Abogados has strong capability in patents and trade marks litigation. Its considerable knowledge of pharmaceuticals won it an instruction to provide pre-litigation advice regarding a potential infringement by a competitor to the client. Eduardo Zamora and Carlos Valls are the key partners.

IP boutique Ruiz & Veiga Abogados is adept in all patents, trade marks and copyright matters as well as in unfair competition. Recent work includes an IP protection case for an entertainment company, and advising an automotive sector client on patent infringement.

Barcelona-based boutique Sol Muntañola Abogados was founded by Mario Sol Muntañola, who ‘has an extraordinary knowledge and involvement in all cases’; he ‘never surrenders’ and is ‘among the top IP lawyers in Spain’. The team is particularly strong in trade mark disputes, and acts for brand owners such as Crocs, as well as music producers and performers. Marita Dargallo Nieto heads the international law practice and is also highly recommended.

Jones Day represents Toys “R” Us, Voest Alpine and Marsan Industrial. New instructions in 2011 included advising Spanish toy manufacturer Injusa on patent infringement proceedings internationally. Of counsel Marta Delgado Echevarría heads the practice.

Pedro Alemán Abogados represents clients from sectors including the internet, art, publishing and not-for-profit organisations. Copyright law specialist Pedro Alemán Laín is recommended.

RCD Asesores legales y tributarios SLP advises on patents and copyright, as well as research programmes and development or licensing agreements. Founding partner Ignasi Costas heads the team, which also includes Carles Ros and Barcelona-based Oscar Alegre.

Roca Junyent ‘produces outstanding results’, and advises on the full spectrum of IP matters and unfair competition. Anna Viladàs Jené has ‘equal strength in business and legal judgement – a combination that is rare’. Alberto Segura Roda heads the practice.

Suárez de la Dehesa is a prominent player in the entertainment industry, especially for copyright and unfair competition matters. Clients include Egeda, the audiovisual producers’ rights society. Managing partner Jose Antonio Suárez Lozano is the key contact.

Ventura Garcés & López-Ibor, Abogados is advising the publisher of V magazine on copyright matters, and representing I.A.R Art Resources as owner of the IP rights of the works of Salvador Dalí. Other clients include The Picture Desk. Andrea Garcés heads the team from Barcelona, and Jaime Morey is the key contact in Madrid.