IP specialist firm Armengaud Guerlain is the destination of choice for a number of major international brands, which value the firm’s expertise in handling cross-border trade mark disputes. The practice group has experience in handling infringement matters and IP ownership disputes, and is also well versed in handling IP due diligence and licensing matters. Leadership of the team is split between Stéphane Guerlain, noted for his contentious advice, licensing expert Catherine Mateu and Marguerite Higgons, who was made partner in May 2022 and focuses on soft IP litigation.
Intellectual property: Trade marks and designs in France
Armengaud Guerlain
Practice head(s):
Stéphane Guerlain; Catherine Mateu; Marguerite Higgons
Testimonials
‘Very good expertise in files and procedures.’
‘Excellent team, very involved with perfect knowledge of the file. Responsive and available.’
‘Not only are they excellent specialists, but they have never omitted the human aspect of our business, showing empathy, a notion that is not legal but essential for me. Stéphane Guerlain was unfailingly available, he handled this file himself from A to Z.’
Key clients
Studyrama
Castorama – Kingfisher
Bouygues
BRF
1906 Collins
Birkenstock
Virginie Taittinger
Ikea
Shanghai Panati Wine
Work highlights
- Represented Virginie Taittinger before the Appeals Court of Paris in a trade mark dispute with her cousins over ownership of the brand “Champagne Taittinger.”
- Represented Laboratoires M&L before the Court of Appeal of Aix-en-Provence in registering a trade mark previously rejected by INPI.
Baker McKenzie
Pharmaceuticals, luxury, retail, entertainment, technology and communications sector clients seek out Baker McKenzie‘s counsel in relation to both contentious and non-contentious IP matters, with the firm assisting with the management of global trade mark portfolios. The team handles multi-jurisdictional disputes, representing clients involved in infringement, validity and cancellation proceedings in France and around Europe. Portfolio management, prosecution and contractual advice also fall within the practice’s purview. Virginie Ulmann leads the team, handling disputes alongside Nathalie Marchand, who also provides support on the IP aspects of M&A deals. Pauline Celeyron is noted for her management of trade mark portfolios.
Practice head(s):
Virginie Ulmann
Other key lawyers:
Nathalie Marchand; Pauline Celeyron
Testimonials
‘Baker McKenzie’s understanding of business issues is the firm’s strength. We work very closely with all the members of the firm, mainly those based in France, but we sometimes seek the expertise of lawyers based abroad, on well-defined thematic subjects.’
‘Virginie Ulmann is the firm’s lawyer who stands out in our opinion. Indeed, this expert in intellectual property is widely appreciated and solicited by our members, with regard to the quality of her advice, and the positive feedback that the members of our association can give thanks to her work. Also, all the members of Ulmann’s team are also very good assets.’
Key clients
Moët-Hennessy and Société Jas Hennessy & Co.
HRA Pharma
Unilever
Kadine
British American Tobacco (BAT)
Calvin Klein
COSMOSTAR
Lancaster
Work highlights
- Assisted Moët-Hennessy on numerous issues regarding the protection and defence of Hennessy’s intellectual property rights.
- Representing Kadine in two cancellation actions initiated by Fear of God LLC.
- Assisted HRA Pharma with all of its trade mark work, including trade mark filings, oppositions and the implementation of a new trade mark strategy on a worldwide basis.
Bird & Bird
Bird & Bird is a strong place for IP litigation, handling trade mark infringement and unfair competition matters for clients from France and abroad, with strong focuses on the life sciences, technology, media, entertainment and sport sectors. The team is also active in supporting clients in their non-contentious endeavours, advising on trade mark prosecutions and wider brand management. The team is led by Anne-Charlotte Le Bihan, an experienced litigator who also advises on contractual matters, and Géraldine Arbant, who advises on the filing and registration of trade marks and models in addition to representing her clients involved in disputes. Yves Bizollon, primarily a patent specialist, handles contentious matters for clients in the pharmaceuticals, food, telecoms, energy, defence and automotive industries.
Practice head(s):
Anne-Charlotte Le Bihan; Géraldine Arbant
Other key lawyers:
Yves Bizollon
Testimonials
‘Expertise and professionalism.’
‘I consider this team as a true member of our in-house team. Their interest in our business has allowed them to gain a very accurate knowledge thereof, which enhances their quality of their advice.’
‘Yves Bizollon is a remarkable professional: very knowledgeable, excellent advice.’
‘Bird & Bird offers a high level of knowledge and experience in intellectual property. In addition, lawyers always have a pragmatic and concrete approach. In other words, our many requests are always resolved. We are therefore fully satisfied with their services.’
‘Géraldine Arbant is always listening to us as a client. Our requests are treated with great importance and professionalism. Géraldine has very good knowledge and experience in the field of intellectual property. She provides a customer-oriented service and has the ability to propose innovative solutions for more complicated requests.’
Key clients
Philip Morris
Genetec
RTE Réseau de transport d’électricité
SP Holding
Groupe Even
Consorzio Di Tutela Della Denominazione Di Origine Controllata Prosecco
SKF
Piasten & Lutti
CrossFit, Inc
Groupe Candy Hoover
Palladium
Kidiliz Group
Work highlights
- Advised Philip Morris International on IP portfolio management, including availability searches and sending cease and desist letters to third parties violating its rights.
- Represented Piasten’s distributor in a preliminary injunction procedure initiated by Mars to obtain the withdrawal of the new product “TREETS THE PEANUT COMPANY.”
- Assisted PALLADIUM in trade mark and registered design infringement claims against major wholesalers in France selling copies of the client’s shoes displaying similar marks.
De Gaulle Fleurance & Associés
De Gaulle Fleurance & Associés offers a wide range of trade mark services, representing clients in contentious matters before French and EU courts and IP offices, handling the full spectrum of soft IP matters, including trade mark clearance and licensing issues, and assisting clients with the IP aspects of M&A deals. The team also works closely with the firm’s tax, competition and employment practice’s to ensure their clients are best advised on the appropriate course of action. Louis de Gaulle and Georgie Courtois are known for their contentious expertise, appearing before civil and criminal courts, while Julien Horn handles transactional IP matters in addition to pleading cases. Francine Le Péchon-Joubert advises on contractual IP matters and disputes, including R&D and licensing agreements. Serge Lederman represents clients from the fashion, design, media and food sectors in trade mark litigation.
Practice head(s):
Louis de Gaulle; Georgie Courtois; Julien Horn; Francine Le Péchon-Joubert; Serge Lederman
Testimonials
‘Multidisciplinary, dynamic, agile, experienced.’
‘Julien Horn: attentive to subjects related to a public institution, offers an adapted solution.’
Key clients
Careventures Fund li Gp
Château de Versailles
Colgate Palmolive
Echosens
Energy Observer Developments
Epic Games
Fédération Française de Tennis
Haribo
Icade
Ile-de-France Mobilité (IDFM)
Interop’ Santé
Monte Carlo – Société des Bains de Mer
NBC UNIVERSAL
Opéra de Paris
Optic 2000
Palais des Thés
Pierre Fabre Dermo-Cosmétiques (PFDC)
Pure Laboratories
Fresenius
RH US, LLC.
Rival Boxing
Showroomprivé.com
Sire Spirits – 50C
Skechers
The Fragrance Designers
Twinings
Warner Bros
DLA Piper
DLA Piper is valued by clients for its skill in handling large trade mark portfolios for major clients, supporting on both contentious and commercial IP matters in France and the EU. The practice group assists with trade mark clearances and prosecutions, and advises on a variety of IP contracts and agreements, while also representing clients involved in infringement and moral rights violation claims, trade mark enforcements and royalties and transmission disputes. The team is led by Frank Valentin, an experienced litigator who specialises in international disputes, particularly those tied to the TMT space. Senior associate Cédric Meiller focuses on the defence and enhancement of industrial property.
Practice head(s):
Frank Valentin
Other key lawyers:
Cédric Meiller; Floriane Chartier-Chanot
Testimonials
‘The right advice at the right level given the challenges.’
Key clients
Akzo Nobel
Brooks Sports
Chubb Limited
Coravin
Cutting Edge Music
DJO Global Inc.
Edwards Lifesciences
Exacompta Clairefontaine
Fear of God
Microsoft Corporation
Mondelez Europe Services
Pine Ridge Winery
Richemont International Ltd.
Roku Inc.
Sanofi SA
Snap-On
Sodexo
Spin Master Toys UK Limited
Tribal Education Limited
Unga BV
Vocation Brewery
Gide Loyrette Nouel A.A.R.P.I.
Gide Loyrette Nouel A.A.R.P.I. offers French and foreign clients a leading IP litigation service, handling trade mark disputes before French and European courts and the EUIPO, with a particularly strong track record in the luxury and fashion industries. Infringement and parasitism cases form the base of the firm’s work in this area, with cancellation proceedings and invalidity actions rounding out the practice’s offering. Emmanuel Larere is an experienced trade mark litigator, while also assisting with the creation, filing and management of IP rights, and Raphaëlle Dequiré-Portier leads on contentious matters in France and Europe, focusing on the life sciences sector. Jean-Hyacinthe de Mitry advises technology companies on infringement disputes and technology transfer agreements.
Practice head(s):
Raphaëlle Dequiré-Portier; Emmanuel Larere; Jean-Hyacinthe de Mitry
Testimonials
‘Sound yet practical trade mark advice. Very quick turnover.’
‘Emmanuel Larere is a very strong litigator. Great pleasure to work with him. Emmanuel is very knowledgeable and can think of creative, innovative solutions. We can always reach out to him.’
‘Business-oriented; technically excellent; work capacity.’
Key clients
Carglass
Rouje
Schneebichler
Graco
BMW
Carven
Drouot
Façonnable
Gucci
Icicle
Klesia
LVMH
Pernod Ricard
Pompidou Museum
Renault
Work highlights
- Represented Louis Vuitton in an appeal lodged before the Court of Appeal in Paris in a case involving Van Cleef & Arpels, a French luxury jewellery company, and its distributor Cartier.
- Represented Heineken in a large trade mark dispute against Kronenbourg (Carlsberg group) in the context of the widely publicised launch, in Europe and the metaverse, of a variant of the famous Heineken beer.
Havard Duclos & Associés
Havard Duclos & Associés is an IP boutique founded in September 2022 by the former Laude Esquier Champey IP team, led by the highly experienced Sophie Havard Duclos, who is renowned for her litigation experience. The team handles trade mark disputes across Europe, appearing before courts and IP offices in France and the EU, where it represents a number of household names in infringement, unfair competition and parasitism cases. Pauline Casanova assists clients with the protection of intangible assets, while Constance Percevaux is noted for her handling of civil and criminal IP litigation.
Practice head(s):
Sophie Havard Duclos
Other key lawyers:
Pauline Casanova; Constance Percevaux
Testimonials
‘Sophie Havard Duclos and Constance Percevaux are wonderful.’
‘Sophie Havard Duclos is very responsive and thoughtful.’
‘Sophie Havard Duclos’ team is available, responsive, and attentive to our needs.’
Key clients
Christian Dior Couture
Danone
EUGENE PERMA
Corel
Work highlights
- Represented EUGENE PERMA France before the EU General Court in regard to the trade mark “Biovene.”
- Assisted Facebook and Instagram with several opposition and cancellation proceedings before the INPI.
- Assisted Corel with several opposition proceedings before the INPI.
Herbert Smith Freehills LLP
Herbert Smith Freehills LLP has a strong IP litigation practice, representing global names in the technology, IT and e-commerce fields in infringement proceedings before the French and European courts, while also providing arbitration support. The firm also offers advisory support, assisting clients with regulatory matters, data protection issues and the management and enforcement of trade mark portfolios. Team leader Alexandra Neri represents internet and technology clients in the full spectrum of IP litigation, in addition to handling cyber-crime issues, data privacy work and dawn raids. Sébastien Proust advises on the protection of IP rights and licensing work and is noted for his support on trade mark issues around advertising referencing and the right to be forgotten.
Practice head(s):
Alexandra Neri
Other key lawyers:
Sébastien Proust
Key clients
Alibaba
Enterprise
Work highlights
- Represented Alibaba in litigation against Lafuma, which claims that Alibaba infringed its trade marks and committed acts of unfair competition.
- Represented Alibaba in all French proceedings regarding its hosting provider status in relation to various issues such as IP infringement or online platform liability.
- Representing Enterprise Rent-a-Car in litigation against the French car rental company rent a car.
Hogan Lovells (Paris) LLP
Hogan Lovells (Paris) LLP‘s IP team is renowned for its international litigation practice, representing clients from the consumer goods, social media and technology sectors in trade mark disputes in addition to its work in the areas of design rights, domain names and copyrights. The practice is also regularly instructed to handle IP matters in conjunction with corporate transactions, in addition to conducting prior use searches, opposition proceedings and negotiating IP agreements. The leadership group consists of Marie-Aimée de Dampierre, an IP and unfair competition litigator; David Taylor, who is an expert in online IP matters and domain names; and Jane Seager, who assists clients with brand protection strategies. Olivia Bernardeau-Paupe departed the firm for Dechert LLP in January 2023.
Practice head(s):
Marie-Aimée de Dampierre; David Taylor; Jane Seager
Key clients
HOYNG ROKH MONÉGIER
HOYNG ROKH MONÉGIER places particular emphasis on cross-border IP litigation, representing clients from diverse sectors including the aeronautics, life sciences, telecoms and video game industries, in infringement, parasitism and unfair competition matters before French and European courts. Furthermore, the firm’s trade mark team also offers assistance with the enforcement, use and protection of IP rights, in addition to advising on brand management strategies. The team is headed up by litigator Sophie Micallef and Marie Georges-Picot, who specialises in IP contracts in addition to contentious work. Denis Monégier du Sorbier is renowned for his vast experience in handling European litigation.
Practice head(s):
Sophie Micallef; Marie Georges-Picot
Other key lawyers:
Denis Monégier du Sorbier; Marion Soulé
Testimonials
‘We were very pleased with the efficiency, pricing and how the communication back and forth was clear and straight forward. The outcome of the matter was beneficial to us.’
‘The responsible person in our case was Sophie Micallef who is very professional, experienced and knowledgeable. She is an “avocat” and the communication was straight forward and easy. She was also interested to learn our point of view and feed back into the communication with third parties so that we have covered everything. She also put time and effort into getting to know our diverse business.’
‘Very professional team, available, adaptable to the particularities of the customers.’
Key clients
Agrial
Benda Bili
Consejo Regulador del Tequila (CRT)
Cora
Essity
Etam
Katjes
Mobilux
Sage
Ticketbis
UBS/La Maison
undiz
Jones Day
Jones Day excels in representing wine and spirits and life sciences clients before French and European courts and IP offices, handling trade mark infringement proceedings, and cancellation and revocation actions. On the transactional front, the firm advises on complex licence agreements in addition to assisting clients with managing IP rights and carrying out due diligence in relation to M&A transactions and joint ventures. The practice is led by Emmanuel Baud, a litigator who also advises clients on matters concerning protected geographical indications and appellations of origin. Co-head Edouard Fortunet advises on brand strategies, IP creation and enforcement work, and IP matters relating to IPOs.
Practice head(s):
Emmanuel Baud; Edouard Fortunet
Other key lawyers:
Philippe Marchiset; Sarah Candelibes
Testimonials
‘Jones Day has very solid expertise in consulting and litigation in copyright and trade mark law. We have been successfully advised for trade mark revocation actions for non-use and for misleading use both before the INPI and before the EUIPO. Jones Day presented us with a clear and effective strategy with great seriousness and great responsiveness.’
‘Edouard Fortunet is a remarkable lawyer with very solid skills in copyright and trade mark law advice and litigation. He offers us innovative strategies with an overview of the options and associated risks, which comforts us in our procedural choices. Very determined, he provides very structured and precise answers to our requests in record time. To recommend without moderation.’
Key clients
Big Fish Game Inc.
Bolt Technology OU
Bureau National Interprofessionnel du Cognac (BNIC)
Comité Champs-Elysées
Culturespaces SA
Deezer SA
Hoshizaki
INAO (Institut National de l’Origine et de la Qualité)
JCDA SAS and Diffulice Sàrl, d/b/a BODY MINUTE
Jean-Charles de Castelbajac
Jeff Koons
Pierre Balmain
Schwa-Medico
Sofidy
Boxy
Voodoo SAS
Work highlights
- Assisted Bolt Technology OU with protecting its trade mark “Bolt.”
- Represented Jean-Charles de Castelbajac in various transactional and contentious matters.
- Represented Voodoo in several civil actions launched against foreign companies and developers with regard to their unlawful copies of several Voodoo games.
Allen & Overy LLP
The Allen & Overy LLP IP team covers the full spectrum of IP work, representing leading gaming and entertainment clients in trade mark, design and copyright litigation in addition to providing support on prosecutions, title clearances, rights licences and transfers. The practice has a notable track record in representing US and Japanese clients, working closely with the firm’s M&A, data privacy, consumer protection and banking and finance teams to provide all-encompassing support. Team leader Alexandre Rudoni represents clients involved in litigation, handling trade mark, design and copyright disputes, while also advising on trade mark portfolio management work. Andrea Dufaure, who is qualified in New York, handles contentious trade mark and copyright matters before the French courts.
Practice head(s):
Alexandre Rudoni
Other key lawyers:
Andrea Dufaure
Key clients
Fujifilm
Nintendo
Nikon
Café Joyeux
Reporters Sans Frontières
Epic Games
Riot Games
Focus Home Interactive
SPI Spirits
Sintra
Wolters Kluwer France
Work highlights
- Assisted Fujifilm in the context of high profile cross-border trade mark and free-riding litigation in relation to the white border square format used in photography.
- Assisted Nikon in relation to its customs activities, in particular seizures and customs training, as well as legal actions in relation to counterfeit Nikon products.
- Assisted Café Joyeux in summary proceedings before the President of the Paris First Instance Court regarding the use of the term “JOYEUX”. The procedure was initiated by Biscuit Joyeux.
ADVANT Altana
ADVANT Altana‘s international network allows the IP team to handle cross-border matters, both disputes and non-contentious matters, including trade mark clearances, domain name filings and portfolio management work. The team is equipped to handle complex litigation before French courts and the EUIPO, representing clients engaged in infringement matters and anti-counterfeiting actions in France, the EU and China. Litigator Pierre Lubet focuses his practice on the manufacturing and luxury goods sectors, and leads the practice alongside Jean-Guy de Ruffray, who represents clients in mandates at the crossroads of IP and IT law, supporting them through litigation and advising on digital law and related licences and contracts.
Practice head(s):
Testimonials
‘A stable, reactive and very attentive team. Strong ability to understand the issues in our sector of activity.’
Key clients
Aldi
Ducati West Europe
Guo Pei
Herta
Moulin Rouge
NIO
Arenaire
Arenaire‘s team represents major international brands and SMEs in the design, architectural, luxury and food and beverages sectors, supporting on trade mark and design protection, anti-counterfeiting and copyright matters. The team is also active on the IP litigation front, with experience in pleading cases pertaining to customs litigation. The practice group is headed up by Pierre Massot, who advises clients from the fashion and furniture sectors, and Thibault Lentini, whose practice centres on trade mark litigation and the associated criminal and customs matters.
Practice head(s):
Pierre Massot; Thibault Lentini
Other key lawyers:
Louis Louembé; Faustine Chaudon
Testimonials
‘Arenaire’s team is composed of young, serious and very motivated professionals. While working with them, you get the feeling that they thoroughly discuss each aspect of the case together, mix their expertise and share strategy and decisions. They are very well organised and strict on deadlines and offer you continuous assistance, keeping you constantly updated on the case.’
‘The founding partner, Pierre Massot, is the go-to guy for complex IP cases in France, especially those dealing with copyright, trade marks, designs and unfair competition.’
‘Thibault Lentini demonstrates excellent knowledge of cases, perfect technicality, commitment and pugnacity that are particularly important to me, especially on long cases. Furthermore, the quality of Lentini’s writings is particularly appreciable. His conclusions are clear, effective, and particularly precise and substantiated.’
Key clients
Maisons du Monde
Pernod Ricard
Mumm Martell Perrier-Jouët
Richemont
Balenciaga
Ferragamo
Technicolor
Teva Sante
MACIF/Aéma
Université PSL
Wilmotte
Lina Ghotmeh Architecture
Groupe Roullier
Proludic
Work highlights
- Advised Maisons du Monde on all IP aspects of its business.
- Represented Pernod Ricard in trade mark revocation and invalidity actions, product validation matters and advertising campaign validations.
- Advised MACIF/Aéma on the IP aspects of its business, particularly trade mark matters and advertising campaigns.
BCTG Avocats
Focusing on trade marks and designs, BCTG Avocats' IP team advises clients on contentious and non-contentious IP matters, with a growing focus on IT-related mandates. The team is equipped to handle large-scale infringement, unfair competition and parasitism litigation before the French courts and EUIPO, acting for well-known French and foreign clients in, among others, the retail, luxury and sports sectors. Practice head Gaëlle Bloret-Pucci advises clients involved in litigation and anti-counterfeiting actions and supports them in transactional matters on all areas of IP, including contracts and author’s rights work.
Practice head(s):
Gaëlle Bloret-Pucci
Testimonials
‘The BCTG team combines a very strong expertise in intellectual & industrial property with a very good apprehension and understanding of the strategic issues of its clients’ files. BCTG always takes care to constitute a team of lawyers adapted to each case (in terms of experience and hourly cost).’
‘Gaëlle Bloret-Pucci stands out within the team by her expertise, her involvement in cases and her availability. She offers solutions adapted to the specific challenges of each case, whether legal or business-oriented.’
Key clients
Nike/Converse INC./All Star C.V.
STADA Arzneimittel AG/EG LABO
Uber/Uber Eats
Acast
Work highlights
- Represented Nike, LVMH and Lacoste in a joint strategy to carry out brand protection measures against the operators of the flea-market in Saint-Ouen, which is a hot spot for counterfeiters.
Casalonga
Casalonga‘s international presence positions the group favourably in respect of cross-border trade mark matters, with the firm regularly taking instructions that cover Europe, the US and Canada, China and South America. The team advises on trade mark and design prosecutions and assists clients with the management of their IP portfolios. The practice’s main focus is on trade mark litigation, where the firm is renowned for its prowess in handling multi-jurisdictional infringement cases, in addition to validity and opposition matters. Caroline Casalonga leads the trade mark and design prosecution and counselling team, supporting electronics, pharmaceuticals and consumer products clients. The New York-qualified Karina Dimidjian-Lecomte is responsible for foreign clients, advising them on the management of their IP portfolios. Arnaud Casalonga and Marianne Gabriel lead the firm’s litigation team.
Practice head(s):
Other key lawyers:
Karina Dimidjian-Lecomte; Cristina Bercial-Chaumier; Théodore Georgopoulos
Testimonials
‘I think Casalonga is excellent in responsiveness and quality. An especially great capability I want to bring forward, as a non-French speaking client, is that the English communication is excellent and that EU communication is handled in English.’
‘Karina Dimidjian-Lecomte is my main point of contact. She is responsive, direct and formal but yet highly personal, which I appreciate. Her English skills are excellent and her overall experience in TM and design law and practice shines through in all communication, with clear and precise recommendations, a high success rate and good client understanding.’
‘The Casalonga team has very strong knowledge on designs and can provide very clear and efficient advice on litigation strategy, design rights and copyrights. The team is very easy to work with.’
‘The individuals show great attendance to details and they have a unique understanding of IP in a design context.’
Key clients
Adeo (Leroy Merlin)
Altarea
APC
Auchan
BBG Hyline Building Systems & Hyline Building Systems France SAS
Berliner
Biogaran
Blue Cross Blue Shield Association
Champagne de Telmont
Crédit Mutuel Arkéa
ERAM Group
Essity Hygiene and Health AB
Gillardeau
Groupe France Thermes (La Compagnie de Vichy)
Hasbro
Heineken
INAO (French National Institute of Designation of Origin)
Kodak
La Chablisienne
Lalique Group
Lidl
Matsui
Médecins Sans Frontières (MSF) International
Moulin Rouge
Pandora
Saint Gobain
Samsung
Sanofi
SKY International AG
V33
VF (Eastpak, North-Face)
ViacomCBS
Work highlights
- Represented Crédit Mutuel Arkéa in litigation aiming to cancel French and EU trade marks in national jurisdictions, European offices and courts.
- Defended Pandora against design and copyright infringement, unfair competition and parasitism claims made by Van Cleef & Arpels against three types of ring before the Paris court.
- Managed Moulin Rouge’s worldwide domain names portfolio, most notably obtained a UDRP decision issued by WIPO and the transfer of the domain names moulinrouge.nagoya and moulinrouge.store.
Dentons
The IP team at Dentons advises major French and foreign clients on a broad range of trade mark matters, taking on both contentious and non-contentious work. Application filings with the French and EU trade mark offices are a particular strength of the practice group, which works hand in hand with its offices across Europe to handle clients’ IP matters. Practice head Loïc Lemercier represents clients from the pharmaceuticals and telecoms industries in infringement litigation, in addition to assisting with R&D and licensing contracts. Senior counsel Isabelle Leroux has a wealth of experience in assisting luxury, fashion, food and beverage and internet clients on issues of industrial, artistic and literary property, in addition to performing IP due diligence checks and audits.
Practice head(s):
Loïc Lemercier
Other key lawyers:
Isabelle Leroux; Chen Gu
Testimonials
‘I find the team to be very responsive and clear in their advice.’
‘Isabelle Leroux is one of the most remarkable experts in trade marks and designs in France. She has an extreme ability to identify the problems and most appropriate solutions. High level professional!’
Key clients
SRAM LLC
TomTom International
Casablanca
Eviosys
New York Cosmos
Groupe Lactalis
Olivier Lapidus
Polaroid (PLR IP Holdings LLC)
Schneider Electric USA, INC./Schneider Electric SA
Supreme
The Coca-Cola Company
CLT-UFA/RTL Television GmbH/RTL Group
FONTAINE LIMITED (CREED)
Ideat Editions
Meije SAS
Merial/Boehringer Ingelheim Animal Health France
MG Freesites LTD
Mr. Puffs Franchise
XNT LTD
Work highlights
- Representing Supreme in more than five disputes in several French courts defending its iconic “Supreme” trade mark against major international infringers.
- Represented Groupe Lactalis in a fast-track free-riding action before the Paris Commercial Court against Candia.
- Represented RTL Group against an Italian radio station that has been using its registered trade mark (“RTL 102.5”) in the context of a pan-European injunction in Italy.
DTMV & Associés
IP litigation forms the basis of DTMV & Associés‘ work, specialising in representing clients from the entertainment, publishing, food, energy and travel industries before the French and European courts and trade mark offices. Non-contentious aspects of the firm’s offering includes prosecutions, clearance matters, and IP licence agreements. Thierry Mollet-Viéville, Pascal Lefort, Eléonore Gaspar, Thomas Cuche, Laurine Janin-Reynaud and Grimaud Valat, who joined the firm in February 2022, form the core of the team, acting across a range of trade mark matters for a number of household names. They are also able to marshal expertise in designs, copyrights and patents to advise clients on their entire IP portfolios. Julien Grosslerner left the team in April 2022.
Practice head(s):
Thierry Mollet-Viéville; Pascal Lefort; Eléonore Gaspar; Thomas Cuche; Laurine Janin-Reynaud; Grimaud Valat
Testimonials
‘A competent, available and responsive team that conscientiously monitors cases. Extensive cross-functional experience on brand topics.’
‘Eléonore Gaspar, a partner in the firm, has been my privileged contact for several years. She is distinguished by her pragmatism in her legal analyses which are of high quality.’
Fiducial Legal by Lamy
Karine Disdier-Mikus leads the IP team at Fiducial Legal by Lamy, which advises on the full spectrum of trade marks, designs, patents and copyrights, assisting with non-contentious matters pertaining to brand management, licensing, R&D and franchising agreements. On the contentious front, the team handles infringement issues and unfair competition matters, in addition to supporting clients in regard to domain names. As a member of the TerraLex network, the firm is well-placed to support clients with the management of their global IP portfolios.
Practice head(s):
Karine Disdier-Mikus
Key clients
B&B HOTELS
IRO
McDonald’s Corporation, McDonald’s Europe, McDonald’s France
Haier
City of Deauville
Point S
CITEO
IKEA
COFREND
Work highlights
- Advised McDonald’s Corporation on the availability of any new brands being considered in France, including advising the client on the best approach to dismiss or mitigate the risks generated by prior trade mark rights.
- Advised B&B HOTELS on its brand strategy worldwide, including conducting clearance searches in multiple jurisdictions and conducting online IP enforcement.
- Defended IRO brand in multi-jurisdictional litigation against another clothing similar brand from Taiwan, and assisting the brand in tackling trade mark and copyright infringement on the internet.
Gowling WLG
Gowling WLG‘s IP practice is able to handle a broad range of matters centred on trade marks and patents, advising clients on the management of portfolios and representing them before the French courts and the EUIPO. The team, led by the highly experienced litigator Céline Bey, advises on infringements of French and EU IP, in addition to validity and nullity actions. Trade mark clearances, risk assessments and opposition motions form the core of the firm’s non-contentious work. Philippe Rousseau handles commercial litigation, including contract negotiations and the termination of commercial relationships. Clémence Lapôtre left the firm in October 2022.
Practice head(s):
Céline Bey
Other key lawyers:
Philippe Rousseau
Testimonials
‘We work with Gowling on IP litigation and are extremely satisfied: highest expertise, excellence in drafting conclusions, good understanding of the client’s business issues.’
‘Céline Bey is excellent in her IP practice: very strong expertise, close to the client and very good understanding and analysis of business issues.’
Kern & Weyl
The team at Kern & Weyl represents clients from a varied range of sectors including the fashion, luxury goods and automotive fields, acting in infringement and anti-counterfeiting disputes in France and across Europe, with particularly strong ties to Italy, Spain and Germany in addition to the US. Out-of-court settlement negotiations and arbitration services also form part of the firm’s offering, which further includes contractual and licensing support. The team is led by founding partners Tania Kern, who is an IP litigation specialist, and Claire Weyl, who advises clients on the management and defence of their trade mark, design and domain portfolios. Giulia Cortesi is noted for her knowledge of the Italian IP market, while Florence Houisse advises on the management of IP rights and infringement matters.
Practice head(s):
Tania Kern
Other key lawyers:
Claire Weyl; Giulia Cortesi; Florence Houisse
Testimonials
‘The Team is very well functioning and has a high quality at partner and associate level. They provide very good quality for reasonable prices.’
‘Tania Kern and Claire Weyl are both great. They are different personalities with different strengths and supplement each other very well.’
Key clients
Automobiles Citroën
Calvin Klein
Tommy Hilfinger
Golden Goose
Osborne Clarke
IP litigation and portfolio management are the key pillars of Osborne Clarke‘s trade mark practice, with the firm handling opposition proceedings, infringement cases and unfair competition issues. The team is also able to assist clients with negotiating coexistence, partnership and reseller agreements, with further expertise in handling the IP aspects of corporate transactions and joint ventures. The team is jointly led by Claire Bouchenard, who offers advice to a wide range of clients on contracts and carries out audits in addition to her contentious practice; and Xavier Pican, who supports clients engaged in litigation and negotiations revolving around trade mark, data licensing and technology transfer matters. Béatrice Delmas-Linel left the firm in January 2022 to take up an in-house post.
Practice head(s):
Claire Bouchenard; Xavier Pican
Other key lawyers:
Julie Darcel
Testimonials
‘The team is super skilled, very helpful in multiple ways and I’m very pleased working together with them. They have offered us great support.’
Key clients
Esprit International
Filatures Du Lion
MT La Fonciere Numerique
Palais des Thés
Wirecard
Work highlights
- Assisted Esprit International with the protection of its trade marks in French territory.
- Assisted Filatures Du Lion with the sending of formal notices to applicants with identical or similar trade marks and in initiating opposition proceedings if necessary.
- Drafted and negotiated distribution agreements, franchise, partnership, convention unique and reseller agreements for Palais des Thés.
Pinsent Masons LLP
The Pinsent Masons LLP IP team offers its clients a strong cross-border practice, with strong ties to the German and UK markets. The firm is specialised in advising construction, engineering, life sciences, retail and technology sector clients on trade mark infringement, parasitism and unfair competition mandates. Team leader Emmanuel Gougé, who is also qualified in England and Wales, is an experienced soft IP litigator and adept at handling international disputes. Virginia De Freitas represents clients involved in IP disputes and also assists with R&D and collaboration agreements.
Practice head(s):
Emmanuel Gougé
Other key lawyers:
Virginia De Freitas
Key clients
Griesson de Beukelaer
Accord Healthcare
Teva Pharmaceuticals
France Brevets
UHU
Work highlights
- Advised Griesson de Beukelaer on a three-dimensional trade mark infringement and parasitism action against Générale Biscuit Glico France and Mondelēz Europe & France, in connection with the “Mikado” chocolate biscuit stick.
Simmons & Simmons
Simmons & Simmons' IP practice is noted for its international network, with the Paris team fostering strong links across Europe, Asia and the Middle East. The practice group handles international trade mark and design disputes for sectors as varied as the pharmaceuticals and wine industries, leading on infringement and enforcement mandates in addition to domain name matters. Branding, design and trade mark strategies are also part of the firm’s offering, which further assists with trade mark clearances and prosecutions. Soft IP specialist Sarah Bailey, who is also qualified in England and Wales, and Marina Cousté, who handles disputes, lead the team.
Practice head(s):
Sarah Bailey; Marina Cousté
Other key lawyers:
Frédérique Potin
Testimonials
‘The Simmons & Simmons Intellectual Property team is very competent, responsive, adaptable, anticipates subjects and deadlines well and is attentive. We are easily guided by their explanations on all subjects, even the most technical. They make proposals, with several options and know how to adapt without problem to all necessities, whether known or new, to any change of strategy, etc.’
‘My main contact is Frédérique Potin. She and her team have been assisting us for several years in protecting our brand with skill, know-how, attention, adaptability and responsiveness. Frédérique always makes herself available to discuss by telephone if necessary. The emails received from Frédérique and her team are clear, often include several options with costing, which allows the right decision to be made quickly. Frédérique’s contacts with agencies around the world are a great help.’
Key clients
Cooper Consumer Health
@MakeSense
Ticket for Change
Taliens
Focusing on cross-border matters, the Taliens team is adept at handling complex trade mark issues, working with the firm’s teams in Munich and Madrid to support clients in major litigation and prosecution cases, and assisting global luxury brands in both bringing and defending trade mark violation claims before the courts. The team is also adept at handling international portfolio management and transactions, supporting clients with the registering of trade marks and drafting of commercial contracts. The leadership team of Jean-Frédéric Gaultier, who works on soft IP matters, and Clara Steinitz, who handles disputes for clients in the luxury goods, film and TV, food and beverage and art sectors, was strengthened by the arrival of experienced litigator Grégoire Triet in January 2022.
Practice head(s):
Clara Steinitz; Jean-Frédéric Gaultier; Grégoire Triet
Testimonials
‘Top team, dynamic and very well organised firm. An essential high-end boutique on the market in Paris.’
‘The team is quite simply remarkable for its efficiency and mastery of the subject. Taliens has “got your back” in all circumstances and constantly defends your interests.’
‘Clara Steinitz is brilliant in her mastery of concepts and the depth of her reasoning. Her strategy is not to be outdone and she excels before the courts.’
Key clients
Red Bull
Burger King
Richemont
Comme Des Garçons
Dolce & Gabbana
Valentino
Ann Taylor
Kyndryl
Corum Group
Sky International
Silverlit
Work highlights
- Assisted Red Bull in achieving recognition of a trade mark before the French IP Office for the first time.
- Represented Van Cleef & Arpels and Cartier in cancellation actions against two trade marks relating to “Vendôme”, filed by the town of Vendôme and acquired by LVMH.
- Defended Valentino against claims of EU non-registered designs, unfair competition, and parasitic behaviour.
Taylor Wessing
The Taylor Wessing IP and IT team handles a wide variety of trade mark transactions and disputes, advising international clients on the management and exploitation of their trade marks, while also defending clients before the courts. The team is adept at handling contentious matters with a digital aspect, with team leader Marc Schuler having experience handling infringement matters for clients in the technology and media sectors; he also advises clients on brand management and IP transactions. Inès Tribouillet is recommended for her soft IP skills, assisting clients with trade mark clearances, oppositions and renewal actions.
Practice head(s):
Marc Schuler
Other key lawyers:
Inès Tribouillet
Testimonials
‘Marc Schuler’s team has excellent technical expertise with pragmatic listening and response to the difficulties encountered.’
‘Marc Schuler and Inès Tribouillet are excellent trade mark and copyright lawyers. They have very specialised expertise and provide concrete and pragmatic solutions on sometimes complex and new subjects.’
‘Very knowledgeable and thorough.’
‘Based on their experience and expertise, feels like you are in good hands.’
‘The Taylor Wessing team was available, proactive and very responsive from the start of our collaboration. Since then, with each new file, we can count on their support and experience to offer us a high quality service that adapts perfectly to our needs.’
Key clients
Orange
Banijay Group (Zodiak Media)
TikTok
Balenciaga
Adobe
American Airlines
Maison Lejaby
RATP
Corsearch
Gallup
Dailymotion
City of Cannes
Product of the Year
Cérélia
Festicket
Woolworths
Hacker-Pschorr
BUZZMAN
Work highlights
- Assisted Balenciaga with a Web3/NFT project with the purpose of launching and commercialising its branded NFT products.
- Assisted TikTok with anti-counterfeiting actions in relation to the import and marketing of various infringing products reproducing the TikTok trade mark.
- Assisted the City of Cannes in negotiating a trade mark and copyright license agreement for the purpose of creating and selling of NFTs of emblematic buildings/locations in the city, as well as the use of the Cannes trade mark.
UGGC Avocats
UGGC Avocats‘s trade mark offering encompasses a broad spectrum of commercial and contentious work, including the registration and protection of trade marks within France and the EU, searches and analysis and due diligence when handling the IP aspects of corporate transactions. On the contentious front, the firm is active in initiating anti-counterfeiting measures, and handling infringement, cybersquatting and unfair competition cases. The team, led by litigators Anne-Marie Pecoraro and Corinne Khayat, and licensing specialist Elisabeth Logeais, also offers arbitration and mediation services. Rodolphe Boissau is noted for his experience handling contentious trade mark matters.
Practice head(s):
Anne-Marie Pecoraro; Elisabeth Logeais; Corinne Khayat
Other key lawyers:
Rodolphe Boissau
Testimonials
‘This year UGGC has registered trade marks for NFT projects which have gone very well, and worked on smart contracts for this purpose. I regularly strongly recommend to the companies for which and with whom I work, this exceptional team which combines expertise in the client sectors/businesses and methodological qualities.’
‘Anne-Marie Pecoraro is unquestionably “Grand Lawyer of the market” in this matter. She has the qualities of a great lawyer (agile intelligence, formidable strategist, etc.) and is a woman of action, strong in her expertise and convictions.’
‘Rodolphe Boissau is excellent, and of the highest level: personal qualities, technical qualities. They are remarkable lawyers whom I recommend. I appreciate a rare level of expertise, knowing perfectly the roots of the law and practices applicable to the sector, and new trends.’
‘I entrusted Anne-Marie Pecoraro with an advisory mission on a business provider contract. When I was about to accept the contract and just wanted to check in principle, Anne Marie raised key points in my negotiation with my client that led me to completely review my position. Although being, I think, a small file for the firm, Anne Marie showed great availability.’
‘Very professional.’
‘Very hands-on and experienced.’
‘UGGC Avocats has successfully represented my company’s intellectual property needs for almost a decade. Their personalised attention to detail is what makes them excellent, particularly for smaller, specialised clients such as myself.’
‘Anne-Marie Pecoraro goes above and beyond the call of duty for any given mission. Case in point, she helped me come up with names after a trade mark name check yielded less than positive results. It’s that kind of service that makes them great.’
Key clients
Paris 2024
MHD Moët Hennessy Diageo
Orveda
Crédit Agricole Immobilier
Colas
Divine Paris
Mood Media
Rafe Production
Solinest
Arthurimmo.com
Enalean SAS
Musée d’Art et d’Histoire du Judaïsme
Thierry Mugler
Licensing international
Moundir Zoughari
SIX SCENTS/QUARTANA Perfums
Archikonsol
Luxuvince ECI
Work highlights
- Assisted Orveda with the negotiation of a licensing agreement with the international group Coty.
- Assisted Musée d’Art et d’Histoire du Judaïsme with trade mark protection matters under heritage trade mark law.
- Defended the brands of the MOOD MEDIA group in various jurisdictions, dealing with cross applications for nullity and revocation.
Aramis
Aramis‘s IP team handles trade mark litigation before the French and European courts, representing clients from the cosmetics, biotech and life sciences sectors in infringement and unfair competition proceedings. The firm maintains ties with a number of counterparts across Europe and the US, allowing it to support clients engaged in global disputes. Benjamin May leads the team, focusing on contentious trade mark issues and also advising on contractual matters. Florent Mattern is noted for his litigation experience, while Louis Jestaz is adept at handling cross-border trade mark cases.
Practice head(s):
Benjamin May
Other key lawyers:
Florent Mattern; Louis Jestaz
Testimonials
‘The team works nimbly and effectively to review legal matters, gathering all necessary facts and conducting thorough research to provide the best possible guidance to their clients. Through collaborative efforts they help clients achieve the best possible outcome.’
‘Benjamin May has provided excellent service with regard to trade mark prosecution matters, as well as trade mark clearance searches, and negotiating trade mark agreements with third parties. He is diligent, thorough, and efficient.’
‘Aramis is extremely responsive, client-focused and excellent litigators.’
‘Benjamin May – extremely easy to work with and provides sound commercial advice.’
‘The Aramis team are experts in intellectual property litigation. They have been able to digest and organise large amounts of data, collaborate with multiple teams, and quickly respond to legal issues. Most importantly, they have formulated and executed effective legal strategy in view of complex scenarios. The Aramis team also stands out because of their clear and timely client communication.’
‘Benjamin May, Louis Jestaz and Florent Mattern form a strong and cohesive team, complimenting each other’s skills in strategy, drafting, and evidence analysis.’
Key clients
Molo Design
Allergan/AbbVie
Lidl (HelloBody + Carré Blanc + Lindt + Clos de Caille)
Verweij Fashion
For Goodness Sake
Eiffage
Qonto
Maison des Fleurs
Work highlights
- Representing Molo Design Ltd. in a worldwide dispute related to the infringement of its internationally renowned industrial designs, against Chanel and its suppliers.
- Represented Allergan (members of AbbVie) in a complex worldwide trade mark case.
- Representing Lidl France in cross-border litigation versus Lindt & Sprüngli AG for trade mark infringement, including its 3D trade mark consisting of a gold chocolate rabbit.
Benoliel Avocats
Benoliel Avocats specialises in handling trade mark litigation, representing clients in infringement proceedings before the French and European courts. Sylvie Benoliel-Claux has extensive experience in trade mark disputes and advises clients from the automotive, audiovisual media, food, jewellery, fashion and pharmaceuticals industries. The practice also offers strategic trade mark portfolio advice.
Practice head(s):
Sylvie Benoliel-Claux
Other key lawyers:
Anne-Sophie Leroi
Testimonials
‘Very fast and responsive, briefs are to the point.’
‘I appreciate the firm’s pragmatic approach and the relevance of their opinions, which are always clear and structured.’
Key clients
Lola James Harper
Groupe Auchan
Etablissements Gabriel Boudier
Cabinet Bouchara Avocats
Cabinet Bouchara Avocats assists major French and international clients, particularly those in the fashion industry, with the protection of their trade marks. Under the leadership of Vanessa Bouchara, the firm is able to represent clients in contentious issues such as infringement, parasitism and unfair competition cases, while also advising on trade mark registrations and the drafting and negotiation of IP contracts.
Practice head(s):
Vanessa Bouchara
Testimonials
‘Great firm in the trade mark area. They are experts, they are responsive, they are efficient. They are a joy to work with and they are both diverse and collaborative.’
‘Vanessa Bouchara – efficient, strategic, very bright, very organised and hardworking.’
‘Vanessa Bouchara is our interlocutor: she is very rigorous. Files are perfectly managed and our interests are defended.’
‘We have been working with Cabinet Bouchara for many years, for their responsiveness as well as their knowledge and availability. We are always on the lookout for novelties and the collaborators as well as Vanessa Bouchara are always aware of the latest news in the profession, something that we do not find in other firms.’
‘Vanessa Bouchara as well as all the collaborators are always available for information.’
Key clients
IN-N-OUT Burgers
Kanye West
Beiersdorf (Nivea)
Nicolas Ghesquière
ba&sh
IKKS Group
Christian Lacroix
La Prairie
Respire
Western Digital Technology
Attijariwafa Bank
JT Global
SOFRANE (PAUL & JOE)
ELEVENPARIS
Stella Forest
BERENICE
Des Petits Hauts
BYLI/VY
Valege
Creaddict (Redline)
Les Montres Suisses
Feed
Deux Magots
Biocoop
WITRADIS (CAVAVIN)
BENOIT VALERIE CALVET
CHÂTEAU PEYRAT FOURTHON
La Française des Jeux
NetBet
ALTAVIA Group
Maisons France Confort
Technitoit
Camif Habitat
Guy Hoquet
Laforêt
Everoad
Levest
Gigafit
Laboratoires DIETETIQUE ET SANTE (Vitaflor)
Kingsley Coman
Sophie Ferjani
CMS Francis Lefebvre
The IP team at CMS Francis Lefebvre handles contentious trade mark work, ranging from infringement cases to cancellation, revocation and opposition actions, while also managing client’s IP portfolios and assisting with IP rights licenses and assignments. Companies from the cosmetics, automotive, pharmaceuticals, media and leisure industries rely on the firm for trade mark advice. Anne-Laure Villedieu and Jean-Baptiste Thiénot head up the firm’s IP team, with Sabine Rigaud leading the trade mark and designs sub-team.
Practice head(s):
Anne-Laure Villedieu; Jean-Baptiste Thiénot; Sabine Rigaud
Other key lawyers:
Anaïs Arnal
Testimonials
‘Anaïs Arnal is very pragmatic and reactive. The answers provided are clear and concise. Good management of files and good follow-up.’
Key clients
Advance Publications
SEMMARIS (marché de Rungis)
Hotel George V B.V.
Michelin
De Pardieu Brocas Maffei
De Pardieu Brocas Maffei assists clients with defending trade marks before the French courts and representing them in infringement and unfair competition proceedings. Under the leadership of Barbara Levy, the team advises French and foreign companies, in addition to government bodies, on trade mark disputes, applications and portfolio management issues. The firm regularly oversees the IP aspects of major M&A transactions, supporting both private companies and governments with IP due diligence and global licence agreements. Associate Barbara Epstein offers dispute resolution assistance.
Practice head(s):
Barbara Levy
Other key lawyers:
Barbara Epstein
Key clients
Valeo
French State
Graniti Fiandre
Timberland Group
VF Corporation
Totes Isotoner
Vans
CNIM
Napajiri
Blackberry
Victoria’s Secret
Siemens Healthcare
LMNEXT
Robert Bosch
Work highlights
- Advised the French State on the proposed sale of part of GE Steam Power’s nuclear business to EDF, focusing on the IP rights relating to the turbines.
- Represented Blackberry in complex IP litigation.
- Represented Victoria’s Secret in connection with a dispute regarding IP infringement and unfair competition.
DS Avocats
Acting at the crossroads of IP, digital technology and data law, DS Avocats assists clients with the creation, management and protection of trade mark portfolios. Partnership, licence, distribution and R&D agreements are all part of the firm’s commercial IP offering. Catherine Verneret, who advises distributors, fashion and perfume brands, and industrial design clients among others, is frequently instructed on contentious matters revolving around trade mark infringements and misuse of domain names, pleading cases before the French and European courts.
Practice head(s):
Catherine Verneret
Other key lawyers:
Jean-Baptiste Micard
Key clients
EDF
Enedis
Société de Gestion Pierre Cardin
Bazarchic
O’Tacos
Carrefour
Le Louvre
AFNIC
Manufacture Joseph Duclos
YEGO Urban Mobility
Decathlon
Optimum Automotive
Institut Français de la Mode
Groupe BEL
Work highlights
- Advised EDF on its partnership with the Olympic Committee for the 2024 Olympics.
- Advised Le Louvre Museum on the protection of LOUVRE trade marks worldwide.
- Represented Carrefour in trade mark litigation proceedings before the General Court of the European Union relating to the validity of a three-dimensional trade mark.
Fieldfisher
Fieldfisher‘s IP team is known for its litigation expertise, working alongside the firm’s offices across Europe to represent multinational clients before French and European courts and IP offices in regard to infringement proceedings, customs controls and domain names. In addition to litigation before the courts, the firm is experienced in UDRP and SYRELI dispute resolution proceedings. The practice group also manages clients’ IP portfolios on a day-to-day basis, assisting with the drafting of licensing, franchising and merchandising contracts. Nathalie Hadjadj-Cazier heads up the practice, handling both contentious matters and advising on the use and commercialisation of trade marks.
Practice head(s):
Nathalie Hadjadj-Cazier
Other key lawyers:
Mathilde Razou
Testimonials
‘They are very strong throughout Europe; my contact at the firm has helped me get the right people in France, Belgium, Italy, and the UK. They are great lawyers and have the necessary expertise to help my clients.’
‘Nathalie Hadjadj-Cazier has been my go-to lawyer in France on complex trade mark matters for 25 years. She is responsive, strategic, an expert, and knows who to call at her firm.’
Key clients
Giordano Enterprises
Recordati
Take Two Interactive Software Inc.
EY
Hager Electro SAS and subsidiaries (Hager Group)
Oscaro.com/Oscaro holding
Champagne Billecart-Salmon
Owkin, Inc.
Playboy Enterprises, Inc.
Biogaran
Work highlights
- Advised Champagne Billecart-Salmon on the management of its international brand portfolio and domain names, and acted in a trade mark infringement against Domaine Slapsak.
- Advised Franco-American medical AI company Owkin, Inc. on its global trade mark strategy.
- Advised a French producer of wine on a trade mark and label infringement matter against several French companies which exported several containers of bottles of wine bearing its trade mark.
Féral
Féral‘s ties to the Canadian and Japanese markets allows the firm to assist clients with the management of their global trade mark portfolios, covering both transactional, advisory and contentious matters. Richard Willemant advises clients in the technology, media and fashion sectors among others, on the day-to-day management of their portfolios and represents them before both criminal and civil courts.
Other key lawyers:
Richard Willemant
Work highlights
- Represented a large group in managing and defending its trade marks and domain name worldwide.
- Advised a French plastic packaging, waste collection, recycling and upcycling company with operations across the EU on the management of its trade mark strategy.
- Advised a Singaporean luxury hotel operator on the management of its French and EU trade marks.
Jacobacci
Jacobacci has significant experience in assisting clients with trade mark infringement claims before French and EU courts, acting both for plaintiffs and defendants. The team also provides online and offline brand protection advice and is active in dealing with customs surveillance and counterfeiting matters. The team is headed up by Jean-Mathieu Bertho, who specialises in trade mark enforcement and litigation; registered design expert Olympe Vanner and Alexia de Maulde, who manages the firm’s anti-counterfeiting team.
Practice head(s):
Jean-Mathieu Bertho; Olympe Vanner; Alexia de Maulde
Testimonials
‘The team is excellent and established throughout the years. It has an extremely good reputation in the market.’
‘Olympe Vanner – highly collaborative and flexible; strong client management and alignment with business needs.’
‘I am working with Jean-Mathieu Bertho and he has again shown he has an extremely good eye for strategic enforcement of IP as well as being super easy and nice to work with.’
‘Jacobacci Avocats is a leading firm in brand protection and represents some of the world’s biggest corporations. They employ innovative solutions, work diligently and are very proactive. Our cooperation with the firm’s professionals has always been very pleasant and professional.’
‘Jean-Mathieu Bertho is a very experienced and knowledgeable IP professional. Alexia de Maulde is an accomplished brand protection expert.’
‘Excellent team led with intelligence and efficiency by Jean-Mathieu Bertho. Olympe Vanner and Alexia de Maulde are also excellent lawyers.’
‘Availability, efficiency, high quality work.’
Joffe & Associés
Joffe & Associés has continued to grow its IP practice, with Emilie de Vaucresson, who advises on the protection of IP and intangible assets and leads on contentious matters, joining Véronique Dahan‘s team after EDV Advocats merged with the firm in March 2022. The team conducts trade mark audits for clients and assists with the drafting of contracts, including licence, coexistence and assignment agreements. On the contentious front, the practice group handles mass trade mark infringement disputes and seizures in addition to UDRP proceedings.
Practice head(s):
Véronique Dahan; Emilie de Vaucresson
Linklaters
The group at Linklaters has extensive experience in handling the IP aspects of M&A transactions, ensuring the smooth handover of trade mark portfolios. In addition, the team is also able to advise on a variety of non-contentious IP matters, including strategic partnerships, licensing deals and franchising matters. The firm also represents clients involved in cross-border trade mark disputes, with practice head Pauline Debré frequently representing healthcare and telecoms clients before the French and European courts. Jean-François Merdrignac advises clients from the pharmaceuticals and electronics industries.
Practice head(s):
Pauline Debré
Other key lawyers:
Jean-François Merdrignac
Key clients
Merck & Co Inc
Bel
ITM
Plastic Omnium
Carlyle
EIC Fund
EureKing (SPAC)
TDR Capital
Work highlights
- Advised Merck & Co Inc on issues regarding the online worldwide use of the name “MERCK.”
- Advised Plastic Omnium on the IP aspects of its acquisition of the automotive lamps business from Indian group Varroc.
- Advised Carlyle on the acquisition of AutoForm from Astorg and the founder of the group.
Momentum Avocats
Momentum Avocats is noted for handling complex trade mark litigation, with particular expertise in the fashion and luxury sectors. On the non-contentious front, the firm assists with the registration of new trade marks, management of IP portfolios and marketing arrangements. The practice leadership is shared between Julien Canlorbe, who represents listed companies, start-ups and designers in trade mark disputes; Julie Carel, who advises clients on the structuring of their IP portfolios; and Jean-Sébastien Mariez, who supports IT, media and gaming sector clients in trade mark litigation.
Practice head(s):
Julien Canlorbe; Julie Carel; Jean-Sébastien Mariez
Other key lawyers:
Laura Godfrin; Léa Jousse
Osmose
Osmose advises mid-sized companies and international businesses, ranging from the luxury goods and food and beverage industries to the entertainment and automotive sectors on the spectrum of trade mark issues. The team is able to monitor portfolios, draft contracts and advise on IP developments including licensing and commercial contracts. The team, led by Alexandra Le Corroncq and Alexis Vichnievsky, is also instructed on contentious issues, representing clients in unfair competition and counterfeiting matters before the French courts and IP office.
Practice head(s):
Alexandra Le Corroncq; Alexis Vichnievsky
Testimonials
‘Very good advice, availability and responsiveness.’
‘A very knowledgeable team in its fields and on a human scale.’
‘Availability, responsiveness, relevant advice, good strategist and communication.’
Key clients
Coca-Coca European Partners
Sony Interactive Entertainment France (Playstation)
Picard Surgelés
Renault
Takasago Europe Perfumery Laboratory
Schmidt Groupe
Moët Hennessy
Saupiquet (Bolton Food)
Cité de la musique –Philharmonie de Paris
OGF
CEF-Yesss Electrique
Orveda
Grevin et compagnie
Bel Group
Havas Voyages
Agir pour l’environnement
Utel Fastlight
DST
Anne & Valentin
Sogetrel
Grand Frais/Prosol
DST Production
TV5 Monde
Work highlights
- Advised Cité de la musique – Philharmonie de Paris on its trade mark strategy.
- Assisted Sony Interactive Entertainment/Playstation on trade mark and design litigation.
Schmidt Brunet Litzler
Schmidt Brunet Litzler supports fashion, media and e-commerce clients and increasingly helps start-ups with the management of their trade mark portfolios, assisting with the drafting of coexistence, licence and distribution agreements in addition to registering new trade marks with the French and EU IP offices. The firm is also frequently instructed to defend trade marks before the French courts and the ECJ, where it represents clients seeking to put a stop to ongoing infringements. The team is led by Delphine Brunet-Stoclet, a well-versed litigator who also advises on the development of clients’ trade mark strategies, and Marie André-Nivet, who heads up the firm’s trade mark prosecution practice and manages worldwide IP portfolios. She also leads the firm’s Marseille office, which opened in January 2022.
Practice head(s):
Delphine Brunet-Stoclet; Marie André-Nivet
Other key lawyers:
Felix Bertrand
Testimonials
‘Ever since we contacted this firm to work with, they provided me and my team with absolute confidence in the way they communicated their expertise and guidance to us. We had a lot of questions, and they were very keen on answering each and every one of them promptly, as well as recommending what they thought was better with their know-how and experience.’
‘We worked with Marie André-Nivet, who we could rely on 24/7. She would answer our emails immediately and suggested to our company all that things she thought would prepare us best for the future. We cannot put into words what that means, especially as a start-up company, because everything seems new to us. With her knowledge and advice, we have been able to feel confident. We want to keep on working with her and her team future and would recommend them to anyone who would ask me for legal advice.’
‘The advice given is adapted to the size and level of development of the company. The language is clear and suitable for a beginner audience. The firm seeks to protect and defend the rights of its clients with immense responsiveness and excellent availability.’
Key clients
JJA
Vitry Frères
Swarovski
Amanresorts Limited -AMAN Group
APRR
Nasco
Generik
Beauty Disrupted
OVD
Vasgos – Oddo Vins et Domaines
Pearson
So press
JAKOB MAUL GmbH
Alteo
Amélie Pichard
Marquisat de Sainte Marie
Eugene Riconneaus
Artenova
Dermatologic Skincare Solutions
Freemium
Stim Media
Bastille Day
Concept Footwear Solutions
Crossline
Yaheer E-sense of Bue
MBXCH
Econocom
BUTLER Industries
Noerden
MEYER
WEB Industries
Val d’Opies
Skeat
CMI Media
ESP CONSULTING
WESTLAND
Precious
Edmond de Rothschild
Piaton
Carmen Busquets
COVIVIO
WEB INDUSTRIE
Cyria
Marie Poniatowski
Pascalis
Isalt
Fonds Stratégique de participations
Artora
Actually
ETEX
L’AMEUBLEMENT FRANCAIS
Work highlights
- Represented SYNDICAT INTERPROFESSIONNEL DE DEFENSE DU FROMAGE MORBIER before the Paris Court of Appeal in a dispute concerning infringements of the Appellations of Origin of Morbier cheese before the Paris Court of Appeal.
- Performed an audit of Nasco Insurance Group’s IP portfolio and initiated litigation to stop infringements.
- Filed trade mark applications in France and the EU for APRR’s new service station brand.
VARET PRÈS KILLY
The January 2022 merger with Rhadamès Killy‘s firm allowed VARET PRÈS KILLY to expand its trade mark practice, adding an experienced sports IP practitioner to the firm’s established IP, IT and media specialisms. Xavier Pres and Vincent Varet are experienced in assisting publishers, luxury goods companies and cultural institutions with both transactional and contentious matters.
Practice head(s):
Xavier Pres; Vincent Varet; Rhadamès Killy
Testimonials
‘Vincent Varet: speed, responsiveness, availability, humour, patience, benevolence, clarity of comments and explanations, great precision, reliability of analyses, recommendations and advice, transparency and excellent consideration of the business needs of the company.’
‘Xavier Pres is always very good at advising on tourism law and intellectual property. His judicious and effective advice is a invaluable asset for us.’
Key clients
Ville de Vichy
Sports Events 365
On air
Game Polo
Voyages confidentiels
Alerion
Practice head(s):
Corinne Thiérache
Other key lawyers:
Carole Bui
Testimonials
‘Alerion’s team has excellent skills and knowledge in intellectual property and is highly solution-oriented for its clients. They concentrate on the relevant topics and take your issues as they would be their own. They are easy to communicate with, effective, and always provide good results. They also have the necessary robustness to deal with counterparts and conflicts in a complex and challenging scenario.’
‘Corinne Thiérache is an excellent lawyer, business-minded, proactive and capable of coming up with solutions which address the fundamental issues the client has. She is used to representing clients in complex dispute resolution and litigation proceedings.’
‘Caroline Bui is a highly conscientious and quick-minded lawyer. She is very efficient and able to maintain a good and professional work atmosphere during stressful phases of the case.’
Key clients
Tragopan
Audiozen
Essentiel Notaires
Groupe KORUS
ETHERNALHORIZONS
Extia
L’Agence Fiedler & Rosner
Moovert
Avandis Consulting
Work highlights
- Assisted to Tragopan with the registration of its French and international trade marks in addition to strategic advice concerning the protection of the intellectual assets.
- Assisted ETHERNALHORIZONS with the drafting and negotiation of services agreements with the authors and developers of the MECHACHAIN video game.
- Assisted Audiozen with the registration of French and international designs and the monitoring of the different registration procedures.
August Debouzy
Practice head(s):
Mahasti Razavi; Grégoire Desrousseaux
Key clients
Château Beauséjour HDL – Courtin
Altarea
Deepgray Vision
Voodoo
Dassault Aviation
Maytronics France
SNCF
Editions Bionnay
Work highlights
- Advised Maytronics on strategy and carried out a verification prior to the filing of a French and EU design.
- Assisted Voodoo with its brand strategy and the registration of trade marks.
Bersay
Practice head(s):
Claire Poirson; Frédéric Lecomte
Key clients
Frédéric Jousset and the Quadia fund
Antares Vision SPA
Work highlights
- Advised Frédéric Jousset and the Quadia fund on the acquisition of a stake in Bio Conquête, carrying out due diligence in relation to IP rights.
- Advised Antares Vision SpA on the acquisition of assets relating to IP rights and commercial agreements regarding its software.
Bignon Lebray
Practice head(s):
Nicolas Moreau
Other key lawyers:
Benjamin Mourot
Testimonials
‘Great responsiveness and efficiency, recognised skills.’
‘United team, more fluid than the competition. Available by video, telephone, physical appointment, whatever the moment.’
Key clients
Agence Nationale pour la Cohésion des Territoires
Work highlights
- Advised the French national urban planning agency in regard to protecting its trade mark portfolio.
Deprez Guignot Associés
Practice head(s):
Vincent Fauchoux; Frédéric Dumont; Jean-Daniel Bouhénic
Key clients
Richemont
Puig
Fédération française de la couture
Cartier
M6
Van Cleef & Arpels
Shiseido
Chanel
L’Oreal
Pierre Cardin
Work highlights
- Represented Polaroid in litigation against Fujifilm concerning the protection of the iconic “square format” of instant photography developed by Polaroid.
- Advised M6 on a number of trade mark infringement cases revolving around the unauthorised reproduction of logos and signs linked to its channels.
EBL Lexington Avocats
Practice head(s):
Laurent Levy; Michaël Piquet-Fraysse
Testimonials
‘The team is very present, available and attentive. She offers a personalised and targeted approach, educational when necessary, and extremely effective.’
‘Michaël Piquet-Fraysse is an excellent technician who enriches his practice with a great strategic understanding, both in advice and in litigation. He pays great attention to the client, is available and pleasant. He inspires great confidence and the results are there. Great efficiency.’
‘Ability to offer innovative solutions and proximity to customer needs.’
‘Responsiveness and enthusiasm – special mention to Michael Piquet-Fraysse.’
‘Very attentive, proactive reactions to the market, permanently searching for new solutions. Very strategic and highly competent team.’
‘Laurent Levy is an accomplished professional with high performance. Michaël Piquet-Fraysse gives very good advice.’
Key clients
Petrus
Volkswagen
Audi
Barrière/Fouquet’s
Yamaha
Normalu
Jimmy Fairly
JumboDiset
Bonpoint
Piper-Heidsieck
Charles Heidsieck
SPA
J.M. Weston
360Learning
Gas Bijoux
Morganne Bello
Mackage
Sartore & Compagnie
Bonneval Waters
Duclot
Malt
Codage
Go on Media
Work highlights
- Advised Petrus on NFT/Metaverse-related trade mark matters.
- Represented the Barrière/Fouquet’s Group in UDRP proceedings aimed at getting back the ownership of the www.fouquets.com domain name, which was fraudulently reserved by a third party.
- Represented Mackage and obtained a favourable decision in a sensitive copyright litigation.
Eversheds Sutherland (France) LLP
Practice head(s):
Gaëtan Cordier
Testimonials
‘I’ve worked with Eversheds Intellectual Property Dept for a long time. They are very efficient and responsive, they know the luxury industry very well and quickly understand the client’s needs. They are also able to assist with many different jurisdictions and the level of the service they provide is generally very high in all the jurisdictions.’
‘I would like to mention Gaëtan Cordier. He is always available, very efficient and client oriented. He has great professional competences, he is innovative and always able to find adequate solutions.’
FIDAL
Practice head(s):
Laurence Dreyfuss Bechmann; Juliette Robin Vernay; Karine Etienne
Testimonials
‘Very professional team, always following up on open matters.’
‘Our main contact is very responsive and always available, highly professional approach, great clarification also in more complex cases.’
Key clients
Puma SE
Dopff & Irion
Clipso
NDS Enterprise
Optikid
Top Tex/Kariban
Badiff/Bagelstein
Work highlights
- Assisted Puma SE with 100 civil and criminal proceedings, and coordinated infringement proceedings throughout with the customs authorities throughout 2021/2022.
- Obtained a favourable judgement for Dopff & Irion, issued by the Paris court of first instance, in the course of a 13 year-long conflict against a competitor in the wine sector.
- Represented Clipso in trade mark infringement proceedings before the court of first instance in Nancy, opposing two companies operating in the field of stretch ceilings.
Franklin
Practice head(s):
Testimonials
‘Sandra Strittmatter is an excellent lawyer. She always has the “business” aspect in mind in the issues she examines. In her practice as a lawyer, Sandra Strittmatter is thus a real “business partner”, she knows how to take into account all aspects to deliver an appropriate service. Finally, Sandra Strittmatter is perfectly at ease in transnational cases (especially with the US, the UK, Germany and Italy).’
‘Good balance between experience and youthful energy. The team is neither too young/inexperienced, nor too old and saturated. Modern, fast, good communication in key languages.’
‘Sandra Strittmatter stands out due to her high energy approach. She really turns clients’ matters into her own matters, investing a lot of personal energy. She is particularly knowledgeable in anti-counterfeiting matters. Excellent command of both the English and the German language.’
‘Versatile team and very involved in the files.’
Key clients
Martell & Co
Champagne Perrier-Jouët
Airwair International Limited
Siemens SAS
Work highlights
- Advised Martell & Co and Champagne Perrier-Jouët on contract and IP law in the context of marketing and communication-related agreements.
- Advising Airwair International Limited on the protection and enforcement of its IP rights in France.
- Advising Siemens SAS in relation to IP law.
Harlay Avocats
Practice head(s):
Sabine Lipovetsky; Fabrice Perbost; Dominique Mallo
Key clients
Cooperative Isigny Sainte Mere
IonisX
Isigny Sainte-Mère
J.M. WESTON
Laboratoires Théa
Lanson
Made4aWoman
SETE – Société d’Exploitation de la Tour Eiffel
Sipromad
Tereos
Herald Avocats
Practice head(s):
Richard Milchior; Jérémy Cardenas
Testimonials
‘The team around Jérémy Cardenas was very available and had real expertise, both legal and pragmatic.’
Key clients
OVHcloud
20 Minutes France
Sciences Po (Paris)
La Voix du Nord
Tata Consultancy Services Switzerland Ltd. (Tata Group)
BlackRock, Inc.
Champagne Lanson/LANSON-BCC group
Champagne Chanoine Frères depuis 1730/LANSON-BCC group
Maison Burtin/LANSON-BCC group
Région Bourgogne-Franche-Comté
Mip – L’Entreprise Santé
Conticini Franchise
Vegan diners limited
Financial Planning Standards Board Ltd.
Work highlights
- Represented Sciences Po (Paris) in trade mark infringement and unfair competition proceedings before the Paris court of first instance.
- Advised 20 Minutes France on securing new trade mark rights regarding new activities.
- Advised Champagne Lanson regarding the launch of a new brand.
K&L Gates LLP
Practice head(s):
Claude-Etienne Armingaud
Key clients
American Express Global Business Travel/Klee Data System
AR24
Enigma Software
Genesis
Guccio Gucci
Kookai
Mölnlycke Health Care AB
POC Sweden AB
Priska Pasquer
Robin Layton
Securitas
Sloclap
Stratus Technologies
TripAdvisor/The Fork
TuSimple, Inc
World Organisation for Animal Health
Yoplait
Work highlights
- Advised Sloclap on various aspects of the development, financing and publishing of the video game Sifu, including the management of its global trade mark portfolio.
- Assisted a French catholic university with the management of its trade mark portfolio, notably to take into account the changes in its activities, including online learning (MooC), and geographical expansion.
- Assisted a global sportswear brand in the defence of its eco-friendly line of products under the “NEXT NATURE” trade mark, against Next Retail.
Klein Wenner
Practice head(s):
Laurent Badiane; Matthieu Bourgeois
Testimonials
‘An experienced and innovative team on brand protection on the internet.’
Key clients
Agence du Numerique en Sante
Groupement des Industries Françaises aéronautiques et spatiales (GIFAS)
RG2 LLC/Thread Collective
Archery SAS
Spot
Artizans
Amaury Leveaux
Orlade
CEWE
ZEturf
Work highlights
- Assisted the IT and health department of the Agence du Numerique en Sante with its strategy to file a collective trade mark for the assignment of a device owned by the Délégation Ministérielle au Numérique en Santé.
- Assisted GIFAS in concluding a coexistence agreement with an Italian company and filings in the EU and UK and with the realisation of a trade mark search.
- Assistance and representation of RG2 LLC/Thread Collective in the context of an ex officio procedure to detain 38,297 infringing goods, as well as preparation of an application for intervention and management of POA issues.
Lext Avocats
Practice head(s):
Anne Bourdu; Gaëlle Leroy; Pierre-Lucas Thirion
Testimonials
‘I have known this firm for many years and, in particular, I have been able to appreciate in nearly twenty years of knowledge the skills of Anne Bourdu. With technical expertise, the firm carries values that make relationships between partners and young lawyers stimulating and productive.’
‘Anne Bourdu is a tireless lawyer, competent, attentive and always available.’
LPA-CGR
Practice head(s):
Prudence Cadio
Other key lawyers:
Romain Viret
McDermott Will & Emery AARPI
Practice head(s):
Other key lawyers:
Key clients
Almas CHP SA (Caviar House & Prunier)
Kowa Pharmaceutical Europe AG
Les Tropeziennes par M. Belarbi
Accenture
Assur Immeuble
MentorShow
Iome Bio SA
Alltech, Inc.
SilkRoad Technology, Inc.
Tampico Beverages
Umiami SAS
Argos Wityu SAS
Tiller System
Work highlights
- Advising Almas CHP SA (Caviar House & Prunier), on the client’s trade mark and domain name portfolios, that include respectively about 300 trade marks and 75 domain names and advise the group on its entire IP strategy and defense of IP rights in multiple jurisdictions.
- Advising one of our major long-standing clients Les Tropeziennes par M. Belarbi on transactional matters, including advising on the global renegotiation of the terms of two trade mark license agreements.
- Defending Alltech, Inc.’s French trade mark registrations against confusingly similar trade mark applications filed by third parties, in opposition proceedings before the French trade mark office (INPI).
Norton Rose Fulbright
Practice head(s):
Nadège Martin
Other key lawyers:
Clément Monnet
Key clients
Arval Service Lease SA
BNP Paribas SA
Compagnie Cherifienne de Chocolaterie (CCC)
Electronic Arts
Energizer
Entoma
ERA-CO Holdings Pty Ltd
Indeed
Koh Australia Pty Ltd
MaxCyte Inc
Nickel (FINANCIÈRE DES PAIEMENTS ÉLECTRONIQUES)
University of Arizona
Crédit Agricole SA
Work highlights
- Advised BNP Paribas SA on all its pre-contentious and contentious issues related to trade mark issues and assisted regarding brand protection and filing strategies.
- Represented Energizer in the EU, handling prosecution work including various EUIPO oppositions and cancellation proceedings.
- Advised MaxCyte on all of its IP issues in France, including pre-litigation, opposition matters and collaboration agreements.
Reed Smith
Practice head(s):
Marianne Schaffner; Thierry Lautier
Testimonials
‘Excellent knowledge in the telecommunications market and a very good team integrating technical skills with legal knowledge.’