Intellectual property: Trade marks and designs in France

Bird & Bird‘s client roster includes French and multinational companies in the life sciences and healthcare, manufacturing, technology, media, entertainment and sports industries. Its team excels in advising on trade mark protection and enforcement matters. Patent litigator Yves Bizollon leads the practice, which includes Anne-Charlotte Le-Bihan, who has experience of sensitive trade mark and design mandates. Géraldine Arbant focuses on brand management and litigation, as well as transactional IP matters. Key clients include Piasten & Lutti, CrossFit and Groupe Candy Hoover.

De Gaulle Fleurance & Associés is a strong choice for advice on trade mark and design portfolio management and litigation, as well as corporate transactions involving IP assets. Francine Le Péchon-Joubert handles contractual matters and disputes. Serge Lederman acts for clients in the fashion, media and food sectors in trade mark disputes, while Julien Horn handles transactional work involving IP assets. Along with Louis de Gaulle, all named lawyers collectively lead the ‘dedicated team’.

Gide Loyrette Nouel A.A.R.P.I. is particularly well-known for its strengths in IP litigation, particularly regarding patent and trade mark disputes. Raphaëlle Dequiré-Portier and Emmanuel Larere focus on French and European trade mark and patent disputes for clients in the life sciences, telecommunications, luxury goods, technology, and consumer goods industries, among others. Jean-Hyacinthe de Mitry has extensive expertise in national and multijurisdictional patent disputes. The team is also noted for its international trademark prosecution work. Elsewhere, trade mark filings and portfolio management are other key drivers of mandates.

Jones Day provides full coverage to its clients on French and European trade mark disputes and litigation. Notably, the team has sector-specific knowledge in the wine and spirits industries and is able to advise on relevant IP matters such as licensing, marketing and regulatory issues, as well as the protection of brands that utilise the protected geographical indication system. Practice head Emmanuel Baud is experienced in representing clients in IP matters such as trade marks, designs, trade secrets and unfair competition, with a track record in assisting well-known food and beverage players with protected geographical indications. Edouard Fortunet, who made partner in January 2021, focuses on soft IP matters, with expertise in advising on IPOs and technology and wine and spirit industry clients.

Laude Esquier Champey specialises in IP-related dispute resolution, both in France and internationally. IP practice head Sophie Havard Duclos is noted for her broad litigation experience, including representing clients in trade marks and design disputes. The firm's clients include French and international corporates and SMEs active in the fashion, cosmetics, luxury goods and technology industries.

The IP team at ADVANT Altana represents French and international clients in trade mark litigation and cross-border disputes. Its broad scope of IP work includes the protection and valuation of trade marks, domain names, and designs, as well as IP enforcement before places such as the French and European Trademark Offices. Additionally, the team is highly experienced in trade mark portfolio management, alternative dispute resolution methods, and commercial IP arbitration. Practice co-chair Pierre Lubet is a highly experienced IP/IT litigator and often acts for clients in the manufacturing and luxury brand industries. He works alongside co-chair Jean-Guy de Ruffray, a specialist in IP litigation. He also represents clients regarding data protection law, copyright law, and patent litigation.

With offices throughout Europe, the IP specialist team at Bardehle Pagenberg is highly active in representing clients in trade marks and designs enforcement, prosecution and litigation. Its clients include multinationals and big-name brands active in sectors such as fashion, pharmaceuticals, and media and entertainment. Practice co-heads Rebecca Delorey and Axel Munier are both experienced in representing clients before French courts over complex trade mark and design disputes. Marie-Claude Pellegrini made partner in January 2021, while Lionel Vial joined from Universite Paris-Saclay in June 2021.

BCTG Avocats covers all areas of IP law, particularly in relation to trade marks and designs. The team provides strategic advice and handles litigation for French and international clients, such as those active in the retail, sports, pharmaceuticals, cosmetics and software industries. It also is active handling unfair competition matters, parasitism and ambush marketing issues. The head of the IP department is Gaëlle Bloret-Pucci, who is an expert in both advisory and contentious IP matters, with a particular focus on trade marks and designs, brand protection, marketing, and parasitism. Consumer law and competition law specialist François Dauba was promoted to partner in January 2021. He frequently represents major players in the health and food sectors.

Candé Blanchard Ducamp is a well-known name among French and international companies active in the luxury brands, pharmaceuticals, insurance, technology and banking industries. Clients turn to the firm for advice on IP infringement and unfair competition actions, as well as customs and arbitration proceedings. The team is frequently active in both French and European courts. Founding partners Claire Herissay-Ducamp, Patrice de Candé and Julien Blanchard are each highly experienced IP litigators and advisors, often active before civil, criminal and community courts. Associates Clarisse Tourneux and Anna Revidi are also noted for their IP experience.

With offices in France and across Europe, Casalonga is well-placed to provide a full IP service to international clients, including mandates involving trade marks, patents, designs and copyright. Caroline Casalonga, who leads the trade mark and design team, frequently acts for French clients active in the life sciences, beverage, electronics and media industries. She works with Arnaud Casalonga and Marianne Gabriel as joint heads of the trade mark and design litigation practice. Karina Dimidjian-Lecomte is dual-qualified in New York and France and advises on trade mark and design matters, as well as portfolio management.

Dentons‘ trade mark and designs practice is gaining momentum under the stewardship of new practice head Loïc Lemercier, who joined in March 2021 from Clifford Chance. Working with the very experienced senior counsel Isabelle Leroux, Lemercier handles a mix of litigation, counselling and transactional matters; the work often has an international component, with the firm’s global reach making it a popular choice for multijurisdictional matters. The technology, life sciences, fashion and luxury goods sectors are core sectors of the practice, in line with the firm’s general positioning.

DLA Piper hired Frank Valentin from ADVANT Altana in February 2021 as global co-chair for media, sport and entertainment. Since his arrival, the very experienced litigator (whose expertise also includes patent and copyright matters) has built on the team’s strong track record in international disputes. In addition to its forensic practice, the group also assists with licensing matters, frequently in the context of wider contracting strategies, and acts on trade mark and design clearance and prosecution matters.  The practice is particularly active in the media and entertainment, IT, e-commerce and life sciences sectors.

The team at FTPA covers the full gamut of IP matters, including trade marks, designs, copyright, and patents, as well as appellations of origin and disputes involving patronymic names. Additionally, it is highly experienced in search clearances and IP litigation before French and European courts, as well as related non-contentious matters such as data privacy, IT issues, and data protection. The team is particularly strong advising clients active in luxury brands, media and entertainment, fashion, and the perfumery and cosmetic industries. Antoine Gautier-Sauvagnac specialises in IP and media law, both within France and internationally. Counsel Hélène Huet frequently litigates before French and European courts and is also experienced in IP contract drafting and negotiations. Boriana Guimberteau left the firm.

Gowling WLG‘s broad IP experience includes both contentious and non-contentious mandates involving trade marks, patents and design matters. The team is particularly strong in IP litigation and disputes, negotiation of operating contracts and management of IP rights. It frequently acts for French and international clients active in the cosmetics, food and drink, science and technology, and pharmaceutical industries, among others. IP head Céline Bey is experienced in French and pan-European trade mark and patent litigation and disputes, as well as trade mark clearance, oppositions and settlement agreements. Philippe Rousseau is a highly regarded commercial litigator. He also specialises in dispute resolution and international arbitration. IT/IP specialist and principal associate Clémence Lapôtre advises on copyright, trade marks and designs.

The specialist IP, media and technology team at Hogan Lovells (Paris) LLP frequently advises clients active in the consumer goods, technology and media industries. Its work on trade marks and designs is part of a broader practice that encompasses patents and copyright issues. The dispute resolution team covers international litigation, mediation and arbitration matters before the French courts and the French IP office. Practice heads Marie-Aimée de Dampierre, David Taylor and Jane Seager collectively deal with major IP disputes and brand protection. Counsel Olivia Bernardeau-Paupe focuses on IP transactions, prosecutions and IP litigation.

Osborne Clarke has longstanding experience in IP litigation and IP asset management, particularly in relation to trade marks. The team frequently advises clients in advertising and other industries on internet IP content licensing, as well as IP enforcement, and has related experience in trade secrets. Claire Bouchenard focuses on trade marks and design-related advice and litigation, while Xavier Pican specialises in IP litigation and data protection, especially for clients in the energy, defence and telecoms industries. Béatrice Delmas-Linel covers IP and IT-related matters, such as regulatory and data privacy law, online distribution and cloud services for clients in the financial services and health sectors.

Taylor Wessing‘s team, which is 'very knowledgeable and well-respected', has particular expertise in matters where soft IP issues, cybersecurity and data protection cross over. Soft IP is an area in which associate Inès Tribouillet often acts both as a counsel and as a litigator. The team is led by experienced practitioner Marc Schuler, who concentrates on the technology and media industries. The offering to clients covers filing strategy and trademark protection, as well as infringements and reputational risk to clients in the digital communication age.

UGGC Avocats‘s trade mark and design practice is a core part of the broader IP offering at the firm. The team has expertise in the development and implementation of domestic and international portfolio strategies, as well as commercial contracts, including agreements for marketing, merchandising and franchising purposes. Contentious matters are also a key driver of work, including anti-counterfeiting matters, opposition, revocation and infringement proceedings. Elsewhere, domain name matters, including cybersquatting cases, and alternative dispute resolution matters are other areas of strength. The group's wide sector expertise includes the fashion and luxury goods, pharmaceutical and cosmetics, consumer goods, publishing and IT industries. Elisabeth Logeais, Corinne Khayat and Anne-Marie Pecoraro lead the practice. Consultant Rodolphe Boissau provides key support.

Benjamin May's team at Aramis is experiencing a rapid growth in mandates in the cosmetics, biotech and life sciences sectors. It was particularly focused on anti-counterfeiting and IP portfolio management issues in 2021. The group benefits from the firm’s wider partnerships with large international firms, enabling collaboration on worldwide disputes. The team is assisting with an infringement claim for Molo Design against Chanel companies, which is pending in Germany and Italy. Senior associate Florent Mattern is praised for his ‘creative solutions.’

Vanessa Bouchara is the main contact at Cabinet Bouchara Avocats. She has expertise in trade marks and industrial design rights, as part of a broader IP practice. Her work encompasses filings, oppositions and administrative proceedings, as well as cancellation actions and infringement matters.

CMS continues to grow its trade mark and design portfolio practice to complement its strong litigation practice. Practice heads Anne-Laure Villedieu and Jean-Baptiste Thiénot specialise in the perfume and cosmetics, automotive, healthcare, media, hotel and leisure and fashion industries. Clients benefit from the firm's international presence and the Paris office’s other departments. Counsel Sabine Rigaud is also recommended.

DS Avocats impresses with its expertise in commercial contracts, contentious matters and prosecutions. The licensing practice covers matters such as distribution and technology transfer contracts, research and development contracts and contracts relating to artistic performances and productions. Contentious work includes French and cross-border disputes, spanning infringement, opposition, revocation, invalidation and cancellation actions. Disputes before the European courts and the EUIPO as well as domain name disputes are also handled. Catherine Verneret is the head of the practice.

Eversheds Sutherland (France) LLP stands out through its clear focus on the luxury goods sector. Paris-based practice head Gaetan Cordier also leads the firm’s global luxury goods practice group, which is highly active in multijurisdictional matters. In addition to handling advisory work, the team excels in a wide range of contentious matters, with anti-counterfeiting cases and infringement proceedings accounting for a significant portion of the caseload.

Fieldfisher is particularly renowned for its strong litigation practice, both before French and European courts. The team is also a very good choice for non-contentious matters, such as the management and development of sizeable trade mark portfolios. Practice head Nathalie Hadjadj-Cazier and her team are also well versed in unfair competition and trade secret matters. Domain name disputes are also handled, including through alternative dispute resolution methods UDPR and Syreli. The French practice is an integral part of the firm’s international IP offering and frequently joins forces with colleagues abroad to cover multi-jurisdictional matters.

Joffe & Associés launched its IP practice with the arrival of Véronique Dahan (formerly counsel at August Debouzy) in November 2020. Dahan’s practice includes strategic portfolio development and prosecution, litigation and commercial contracts. Investigations and interim measures are areas of particular strength. Customs proceedings, IP valuing and audits also frequently feature in the caseload. UDPR proceedings are also handled. Dahan’s specialisation in the luxury goods sector fits very well with the firm’s existing client roster of luxury goods clients.

Momentum Avocats was created in September 2020 by Julien Canlorbe (formerly at Meridian), Jean-Sébastien Mariez and Julie Carel (both formerly at De Gaulle Fleurance & Associés). The young independent firm has already made name for itself in the market, notably for its high-profile litigation practice. The advisory work on the structuring of IP portfolios and their valuing in the context of audits or commercial contracts also deserves a mention. The luxury goods, fashion and publishing sectors are mainstays of the firm, but the team offers wide-ranging sector expertise. Companies from the digital economy, including e-commerce platforms and artificial intelligence players, also turn to the firm for strategic advice.

Squire Patton Boggs' Paris practice has developed well since the arrival of practice head Catherine Muyl (formerly at Foley Hoag) in June 2020, not least thanks to the team’s close ties to the firm’s international offices. Under Muyl’s lead the practice focuses on advising international corporations from the electronics, pharmaceutical, aerospace and energy sectors as well as companies from service industries such as the media, telecommunications and research sectors. The caseload mainly includes licensing agreements and other commercial contracts as well as contentious matters.

European IP boutique Taliens offers the full range of trade mark and design services, spanning prosecution, litigation and transactional matters. With offices in France, Germany and Spain, the practice is an excellent choice for European cross-border matters. Lead duo Jean-Frederic Gaultier and Clara Steinitz are especially renowned for their strengths in litigation and experience of advising on complex transactional work, including due diligence matters.

VARET PRÈS KILLY is a boutique firm focusing on intellectual property, media and information technology matters. Practice heads Vincent Varet and Xavier Près have longstanding experience of undertaking both advisory and contentious matters across a wide range of sectors, including luxury goods, publishing, culture, sports and IT.

Franklin

LPA-CGR avocats