Next Generation Partners

Intellectual property: Trade marks and designs in France

Armengaud Guerlain

Armengaud Guerlain remains a leading address for complex trade mark and design matters. The French boutique is among the most active litigation practices in the French market, scoring highly with its powerful contentious capability and its longstanding experience in negotiating agreements, both in court and in a commercial context. Practice heads Stéphane Guerlain and Catherine Mateu combine strong cross-border skills with in-depth knowledge of the French IP landscape, putting their comprehensive expertise in soft and hard IP at the disposition of major French and international companies, small and medium-sized enterprises and other law firms seeking counsel for IP matters.

Key clients

Studyrama

Castorama – Kingfisher

Bouygues

Andros – Bonne Maman

Subway

1906 Collins

Deepcube

Birkenstock

Virginie Taittinger

Shanghai Panati Wine

L’Occitane

Work highlights

  • Represented Virginie Taittinger before the Appeals Court of Paris after a ruling from the Supreme Court regarding a dispute with her cousins about the use of this famous family name to sell champagne.
  • Defended the client in a trade mark infringement action, having successfully obtained the cancellation of the patent covering an animal health blockbuster, securing dismissal of the opponent’s claims on the merits.
  • Representing the client, as plaintiff, in trade mark invalidity, infringement and unfair competition actions regarding the use of  the MONTROSE name for wines.

Baker McKenzie

At Baker McKenzie, the team of Virginie Ulmann and Nathalie Marchand stands out due to its prestigious trade mark portfolio management practice, trusted by an impressive string of multi-nationals. The firm's off-shoring offerings in Belfast and Manila and the firm's own technology platform, GIPM, support the Paris practice and its colleagues in foreign jurisdictions. On the contentious side, the group assists with national and international infringement proceedings as part of its anti-counterfeiting offering, an area in which it possesses longstanding experience. Given the firm's strength in corporate transactions, the practice is also an excellent choice for advisory work in the context of M&A and restructuring, in addition to excelling in advisory work on licensing agreements. Life sciences, pharmaceuticals, fashion, luxury goods, FMCG, entertainment and technology sectors all constitute core sectors for the practice.

Other key lawyers:

Pauline Celeyron

Testimonials

‘Excellent lawyers providing helpful strategic advice.’

‘Excellent lawyers – very practical and solution-oriented.’

‘For IP, and especially for trade mark, design and copyright matters, we have total confidence in the Baker McKenzie team.’

The advice, ability to listen, responsiveness and expertise of the team members are very appreciated by us and those we work with.

‘We very much appreciate the team’s sharp analytical skills and the team’s professionalism.’

Key clients

Moët-Hennessy / Société Jas Hennessy

Kadine

GE

British American Tobacco

Abbott

Résidétapes Développement

Unilever

SAP

HRA

Pierre & Vacances Center Parcs

Work highlights

  • Assisted Moët-Hennessy with numerous issues regarding the protection and defence of Hennessy’s intellectual property rights, including the management of the global trade mark and designs portfolio of Société Jas Hennessy & Co.
  • Assisted Belgian fashion company Kadine on the defence of its ESSENTIEL trade marks, notably in two pending cases before the EUIPO and the Paris Court of First Instance.
  • Assisted British American Tobacco (BAT) with numerous issues regarding the protection and the defence of BAT’s intellectual property rights including trade mark management and litigation, and licensing advice.

Bird & Bird

The practice at Bird & Bird focuses primarily on matters in the technology, telecommunication, life sciences, healthcare, media, and entertainment and sports industries, a mimicking of the wider firm's core sectors that allows the Paris practice to ensure its French clients receive in-depth sector knowledge both in France and abroad. Able to assist with advisory and contentious matters, the IP team of practice heads Yves Bizollon, Anne-Charlotte Le-Bihan and Géraldine Arbant (the key contact for brand management and litigation), regularly attracts the market's most challenging disputes and strategic trade mark and design development instructions.

Other key lawyers:

Estelle Henry-Mayer

Key clients

Groupe Candy Hoover

SEB-Groupe / SEB France

CrossFit

Kingfisher

Cosmos World

Piasten

SP Holding

Under Armour

Kidiliz Group

Palladium

Horizal

Aéroport de la côte d’Azur

Work highlights

  • Represented Piasten in a trade mark entitlement action against Mars.
  • Advised and represented Aéroports de la Côte d’Azur (‘ACA’) in ongoing litigations over the registration and enforcement of the European Union trade marks RIVIERA AIRPORT and RIVIERA AIRPORTS against the owner of an Italy-located airport claiming prior rights over the name Riviera Airport.
  • Advising Under Armour on the protection of its trade mark rights.

De Gaulle Fleurance & Associés

De Gaulle Fleurance & Associés assists with litigation, transactional work and trade mark and design portfolio development and management. With its wide sector offering and experience in advising French and international clients, the well-rounded practice -led by Louis de Gaulle, Francine Le Péchon-Joubert, Julien Horn and Serge Lederman- offers clients flexibility on the staffing of each case to ensure optimal outcomes. Additionally, the firm also offers an AI tool, LitiMark®, to assess the likely outcome of trade mark infringement proceedings before the French courts; similar tools are in the pipeline for design and patent infringement matters. The practice can also call on the expertise of colleagues across the firm's wider service offering on an as-required basis. However, Jean-Sébastien Mariez left in September 2020 to co-found Momentum.

Key clients

Cahors

ACL

Dassault group

Natilus

Novaform

OPPO Mobile

Prosol

Ythera

Yetigel

Fossil

Spot Me

Ile de France Mobilité (Paris Area Public Transportation)

Publicis

FFT (French Tennis Federation)

My retail box

Bergerat Monnoyer

Interop’Santé

Alstom

Château de Versailles

Colgate-Palmolive

Culligan

DreamWorks Animation/NBC Universal

Etam

GIP Paris 2024 (Organization Committee of the Paris 2024 Olympic Games)

Haribo

Hill’s Pet Nutrition

Interior’s

Les Amis de Delâge

Mango

National Football League

Nexity

Palais des Thés

Showroomprive.com

Skechers

UEFA

Yann Couvreur Pâtisserie

ICOM

@health

247 Films

Bibliothèque Nationale de France

BSA

CBS

CNC (Centre national du cinéma et de l’image animée)

Cegetec

Dassault Systems

Editions Xavier Barral

Epic Games

Fox21

Lavazza

No Money Productions

TF1

Ubi Bene

Yale University Press

Gide Loyrette Nouel A.A.R.P.I.

With a versatile team that offers both soft and hard IP skills, Gide Loyrette Nouel A.A.R.P.I. focuses primarily on contentious work. Arnaud Michel, Emmanuel Larere and Raphaëlle Dequiré-Portier all offer extensive experience in trade mark and patent disputes; while Grégoire Triet and Jean-Hyacinthe de Mitry concentrate on patent work. In addition to the strong litigation practice, the team also assists with trade mark prosecution services, including the filing of trade mark applications and representation in the corresponding proceedings before relevant intellectual property offices both in France and abroad. Moreover, as part of a full-service operation, the practice is able to leverage the firm's comprehensive legal offering when expertise in other practice areas is required. In addition, Gide 255, the firm's dedicated digital transformation offering, assists clients with the challenges and opportunities brought about by the on-going digitalisation of businesses.

Key clients

Aiwa Corporation

Magellan

Albéa Services

Christian Dior Couture

Renault

Adidas

Experienced Capital Management

Corum

Sushi Gourmet (Hana Group)

Celine

Château Prince Pierre Napoléon Bonaparte

Nemera

Klesia

Abercrombie

Paris Mutuel Urbain

Levis Strauss

Albea Services

Valentino Couture

Work highlights

  • Advised Aiwa on a trade mark cancellation action (for lack of use) launched against Sony and Aiwa in France, addressing the question of the revival of an old trade mark -unused for more than five years- by a third party with no link to the previous owner of said mark.
  • Assisted Magellan (Groupe Beaumanoir) with the protection of its trade mark portfolio against Walmart subsidiary Bonobos in the context of a  worldwide litigation regarding the use of the trade mark ‘BONOBO’ (or ‘BONOBOS’) worldwide, particularly in the EU, Asia and South-America; the team is coordinating the global dispute.
  • Assisted Christian Dior Couture with a major trade mark infringement case.

Herbert Smith Freehills LLP

The practice at Herbert Smith Freehills LLP is particularly well-known for its work with major internet and technology companies which the group assists not only with their IP matters, but also with their data privacy and regulatory needs. Adept at advisory work and litigation, the technologically savvy team is a good choice for clients seeking strength in cross-border matters, especially in the context of international anti-counterfeiting work. The caseload includes contentious INPI and EUIPO proceedings, preliminary injunction work for online market places, and infringement proceedings. Alexandra Neri directs the practice which also includes counsel Sébastien Proust, head of the electronic commerce practice.

Practice head(s):

Alexandra Neri

Other key lawyers:

Sébastien Proust

Testimonials

‘Alexandra Neri at HSF in Paris is very competent, on point, efficient and delivered the desired results.’

Key clients

Google

Twitter

Hogan Lovells (Paris) LLP

The trade mark and design practice at Hogan Lovells (Paris) LLP is an integral part of the office's wider IPMT team, making the group a firm of choice for matters requiring soft IP expertise in addition to media and technology law knowledge. On the contentious side, the team is especially sought after for multi-jurisdictional matters because of its dedicated international IP set-up. The arbitration, mediation and customs-retention experience of the group ensure informed strategic decisions for each individual case. On the advisory side, the group is active in transactional matters, including audits and due diligence, but also assists with brand management issues. The experienced domain name practice, the offering of which includes the dedicated domain-name tool Anchovy®, is another asset. Marie-Aimée de Dampierre, David Taylor and Jane Seager are at the helm of the practice. Counsel Olivia Bernardeau-Paupe provides key support.

Other key lawyers:

Olivia Bernardeau-Paupe

Testimonials

‘Expertise, approachability.’

‘Hogan Lovells’ large global footprint makes it an excellent firm to work with.’

‘The Hogan Lovells France team were excellent. I felt very confident in the legal advice they provided.’

‘We worked closely with Marie-Aimee de Dampierre and her team, and found them to be incredibly responsive, intelligent, and efficient. We really appreciated Marie-Aimee’s counsel on this case.’

Key clients

Facebook

CIVC, CNAOC, EFOW (alongside the European Commission and the French government)

Work highlights

  • Regularly assisted Facebook with the recuperation of domain names.

HOYNG ROKH MONÉGIER

IP giant HOYNG ROKH MONÉGIER excels in cross-border disputes thanks to its experienced team of litigators not only in France but also the firm's other European offices in the Netherlands, Belgium, Spain and Germany (the firm also has anestablished network of international partner firms in other jurisdictions). The trade mark and design practice revolves primarily around the cosmetics, fashion, luxury goods, and food and beverage sectors, which, along with a sprinkling of mandates from other industry areas, allows for the in-depth sector knowledge required for a successful litigation practice and the group's prosecution caseload. The lead trio consists of Denis Monégier du Sorbier Sophie Micallef and Marie Georges-Picot. Patent, trade mark, design and plant breeder's right expert Caroline Levesque joined the partnership in 2020.

Testimonials

‘Practical approach. Knowledgeable. An eye for the client wishes. Hard-working. ’

‘HRM had a joined-up approach between its various offices, which meant that the work was completed efficiently and cost effectively.’

‘Sophie Micallef and Charlotte Cuny of HRM’s Paris office were both extremely responsive, helpful and effective. They did not over-engineer the matter, the work was of a high standard and completed in good time, and they were friendly and very easy to work with. They kept us up to date with developments and adopted a very pragmatic approach, which was exactly what was needed in the circumstances.’

Key clients

Agrial

Benda Bili

Bodum

Capri-Sun

Cavius Apps

Consejo Regulador del Tequila (CRT)

Cora

Essity

Etam

Katjes

La Cerise sur le Chapeau

Lancôme

Sage

Savencia Group

StubHub

Ticketbis

UBS / La Maison

Windy Gates

Yves Saint Laurent

Work highlights

  • Regularly advice to Signify on various trade mark issues in France, including litigation before the national courts and trade mark opposition proceedings before the EUIPO and INPI.
  • Advised and represented Etam Lingerie, as claimant, and defendant in two parallel litigations pending before the Paris commercial court, involving unfair competition and parasitism issues with respect to i) underwear designs, ii) advertising campaigns and iii) market positioning.

Jones Day

Jones Day demonstrates particular strength in French and pan-European trade mark litigation and transactional matters. With the firm's presence in six European jurisdictions, the Paris practice is able to assist with cross-border disputes, including customs seizures, smoothly. A stand-out feature is the team's specialisation in the wine and spirit sectors where the strength in trade mark matters interlocks productively with the group's experience in geographical indications, regulatory matters, distribution issues and licensing agreements. Emmanuel Baud directs the team. Edouard Fortunet was promoted to of counsel in 2020.

Practice head(s):

Emmanuel Baud

Other key lawyers:

Edouard Fortunet

Testimonials

‘Jones Day clearly falls into the category of full-service law firm with strong and wide coverage of IP aspects, in France and at a worldwide level. Their premier intellectual property team in Paris provides high-profile advice across all key pillars of IP protection.’

The team offers comprehensive national and cross-border coverage of IP law and has 1st class experience in brand protection. In addition, Jones Day has developed a specific IP transaction practice, which is key in M&A matters.

Partners and associates have great availability, are top in their fields and demonstrate excellent relationship management skills.

‘Emmanuel Baud is committed to his clients and passionate about his work. He is able to navigate and manage processes effectively, all with dedication to the client. On the litigation front, we trust him with high-level matters.’

Edouard Fortunet is smart, business-minded, responsive and reliable. He is a top-notch litigation lawyer and, on the IP transactional front, a go-to person.

‘The IP practice at Jones Day Paris has demonstrated impeccable competency in complex international matters. The team has a proactive and strategic approach.’

‘Both Emmanuel Baud and Edouard Fortunet have extensive knowledge of and expertise in relation to intellectual property matters. As a team, they can easily navigate through court proceedings by making sure all procedural requirements are met while still keeping their focus on substantive issues.’

Key clients

Jeff Koons / Jeff Koons LLC

Bolt Technology OU (formerly Taxify OU)

Madbox

Syndicat des Côtes de Provence

BodyMinute

Voodoo

BNIC – Bureau National Interprofessionnel du Cognac

Work highlights

  • Represented Taxify OU in expedite adversarial proceedings to prohibit Bolt Mobility Corporation and B Mobility Services from using the sign ‘Bolt’ in relation to the commercialisation of their scooter-sharing services in France.
  • Assisted Voodoo with several civil actions launched against foreign companies and developers further to their unlawful copies of several Voodoo games.
  • Represented JCDA and Diffulice, operating under the name ‘Body Minute’, in a dispute with Beiersdorf, which has involved numerous administrative and judicial proceedings.

Laude Esquier Champey

At Laude Esquier Champey, practice head Sophie Havard Duclos runs one of the country's most successful litigation practices. The long client list of major French and international corporations and prestigious small and medium-sized enterprises that frequently seek the team's assistance attests to the group's strength in domestic and international disputes. The fashion, luxury goods, hospitality, cosmetics, social media and beverage sector account for a very significant part of the caseload.

Practice head(s):

Sophie Havard Duclos

Testimonials

‘Maître Havard Duclos’ team has a very strong expertise in IP and is an essential ally in negotiations, pre-litigation and litigation. Their analysis of the strengths and weaknesses of the parties and of the case law is always excellent.’

‘Their expertise, their listening skills, their knowledge of the sector, their prices, their efficiency. Satisfactory results in the negotiations.’

‘Delivers hands-on advice and strategy without any fuss. Understands what  practical, but thorough advice looks like. ’

‘Sophie Havard Duclos – very responsive and open, clear communication. Doesn’t just simply follow instructions but proactively thinks with clients to see how goals can be achieved as good and efficient as possible. ’

‘The IP team of Cabinet Laude Esquier Champey is clearly positioned as a major and reputable player in the sector in France.’

‘Sophie Havard Duclos is distinguished by her responsiveness, her availability, the quality of her advice and her sense of strategy based both on a great knowledge of the rules of procedure and the principles of intellectual property rights and on a marked with pragmatism. Cutting-edge advice, both legal and operational. Sophie is a very great professional.’

Key clients

Christian Dior Couture

Danone

Jack Daniels

Engie

Nike

Accor

Work highlights

  • Secured a landmark decision for for Eugène Perma at the General Court of the European Union ruling that the marks ‘NATURALIUM’ and ‘NATURANOVE’ are not confusingly similar, despite two adverse prior decisions rendered by the Opposition Division and the fourth Board of Appeal of the EUIPO.
  • Obtained a successful decision from the Paris Court of Appeal, condemning an outlet company for the infringement of the trade mark ‘Versace’.
  • Provided regular assistance to Instagram regarding trade mark issues.

Allen & Overy LLP

Allen & Overy LLP is particularly active for foreign companies -especially those from the US and Asia- seeking trade mark advice in France. The practice's key stand-out feature is its extensive experience in advising clients from the gaming and entertainment sectors. Alexandre Rudoni and his team assist with contentious work, including anti-piracy matters, commercial matters (licence and transfer agreements, for example), and prosecution matters, starting with title clearing work and extending to the development and implementation of trade mark filing strategies. The firm's sizeable geographical footprint and full-service offering are additional assets in complex cross-border mandates.

Practice head(s):

Alexandre Rudoni

Other key lawyers:

Andrea Dufaure

Testimonials

‘Allen & Overy France have become invaluable advisors. Andrea Dufaure and Alexandre Rudoni routinely provide great practical insight and astute legal guidance in a holistic manner. Notably, they also bring a creative approach in handling significant and complex matters. Moreover, they are diligent in their approach and very responsive to our inquiries. They proactively communicate about matters, help manage our title clearance and try to resolve any issues that arise expeditiously. Finally, they are receptive to our guidance and collaborative in their approach with us.’

Key clients

Nintendo

Netflix

Primark

Epic Games

Imperial Brands & Fontem

Airbus

Darewise

Nikon

Riot Games

SFL Interactive

Focus Home Interactive

SPI Spirits

Sintra

Wolters Kluwer

Nightbloomer

Webedia

Cafe Joyeux

Work highlights

  • Assisted Netflix with clearance work and regular trade mark and copyright advice.
  • Assisted Fujifilm in the context of a high profile cross-border trade mark and free-riding litigation in relation to the white border square format used in photography.
  • Assisted Spirits International, the owner of well-known trade marks for vodka, in a cross-border dispute against the Russian state-owned company FKP.

Altana

Altana offers a combined litigation and transactional practice, with complex disputes -including infringement, cancellation, opposition and invalidity proceedings- as the team's most visible strength. Experienced practice heads Pierre Lubet and Jean-Guy de Ruffray also excel in the development and implementation of anti-counterfeiting programmes, including assistance with the necessary customs aspects. With additional experience in alternative dispute resolution methods; a proven track record of successful trade mark portfolio management; and a busy audit, licensing and due diligence practice, as well as expertise in domain name-related matters, the group impresses with its comprehensive skill set. It also demonstrates in-depth knowledge of cross-border matters. The firm's other departments, most notably the corporate, tax and white-collar groups bring additional breadth to the practice's remit. Frank Valentin and counsel Charlotte Hébert-Salomon joined DLA Piper in February 2021.

Key clients

Aldi

Ducati

Moulin Rouge

Work highlights

  • Assisted US company Coravin in a sensitive, extensive and multi-jurisdictional trade mark dispute against the French and Belgian companies Cora and Delfipar, owners of numerous CORA-formative trade marks.
  • Assisted several companies of the international luxury group Richemont with obtaining the shutdown of various websites that offered counterfeit luxury watches, involving the question of the applicability of article 6.I.8 of the LCEN to trade marks.
  • Assisted Coravin with a trade mark dispute against Spanish company Voravins, involving several word and semi-figurative EU marks, developing and implementing a defence strategy aimed at securing registration of the trade mark by challenging the validity of a trade mark registrered in Spain for Voravins.

Bardehle Pagenberg

IP boutique Bardehle Pagenberg combines an experienced prosecution practice with a powerful litigation team that regularly secures headline-grabbing victories for its clients, both in France and in the firm's other locations in Germany, Spain and Italy. Additionally, a cooperation agreement with Singapore firm Yusarn Audrey, gives the firm strong ties to markets in Asia. Primarily focused on the automotive, fashion, retail, pharmaceutical, and media and entertainment sectors, the practice has seen a number of prestigious French, British and US clients join its client roster over the course of the last year, further attesting to the group's quality. The team is co-led by Rebecca Delorey and Axel Munier.

Practice head(s):

Rebecca Delorey; Axel Munier

Testimonials

‘Axel Munier is an excellent technician who listens to his customers and is very sensitive to their constraints.’

‘Axel de Munier is a connoisseur of intellectual property matters. He perfectly masters the technique of this material with a resolutely pragmatic spirit. He is an excellent lawyer.’

‘They possess extremely good knowledge about procedural law. Excellent defence lawyers. They’re also very experienced and have great industry knowledge.’

‘Quick feedback, attention to details, customized opinions.’

‘Great attention to the client needs, in-depth analysis of legal issues, rapid definition of the strategy and legal tools available to the client.’

‘We feel like the team understands and appreciates the sometimes unique style and needs of American in-house clients.’

‘We love working with Rebecca Delorey. She understands our needs and provides us the exact type of service/work product we are looking for. She has a very practical approach to advocacy and is very efficient in helping us to resolve matters without unnecessary fuss.’

‘Practical and commercial with an ability to understand the Anglo-Saxon mentality and way of working’

‘Rebecca Delorey leads a very good trade mark and IP team. Efficient, cost-effective, technically excellent and very commercial. Understands working with US and UK clients very well.’

Key clients

BMW

H&M

Diesel

Springer Nature Group

Red.com

Van’s

Virgin Enterprises

Ferring Pharmaceuticals

easyGroup

Work highlights

  • Assisting the automotive industry mainstay in multiple trade mark and design matters, including strategic advice, pre-contentious work and opposition proceedings before the French IP Office, as well as court proceedings before EU and French jurisdictions.
  • Assisting the Swedish fashion leader in various non-contentious and contentious trade mark, copyright, design and unfair competition matters in France.
  • Assisting and representing the Dutch pharma group in a wide range of trade mark matters, including strategic advice, pre-contentious work, and opposition proceedings before the French IP Office.

BCTG Avocats

At BCTG Avocats, practice head Gaëlle Bloret-Pucci leads on advisory and contentious work across a broad array of sectors, with retail sports, fashion, food, life sciences, pharmaceuticals and software all core components of the practice's caseload. Bloret-Pucci's complementary expertise in unfair competition law, parasitism issues and marketing matters is particularly advantageous for retail and sports clients. A member of 'Alliance for Nike', an ad hoc network of law firms based in EMEA that assist the client, as well as a member of a global alliance of law firms that act for G-STAR, the French practice also is well versed in international matters.

Practice head(s):

Gaëlle Bloret-Pucci

Testimonials

‘BCTG is our go-to firm for IP.’

‘Excellent communication and customer service.’

Key clients

Nike / Converse / All Star

Stada Arzneimittel / EG Labo

Uber

Work highlights

  • Assistance and representation of Nike and LVMH in the elaboration of a joint strategy to carry out brand protection measures against the operators of the flea-market in Saint-Ouen; implementation of a strategy to trigger the liability of the landlords of the shops as intermediaries who facilitate trade mark infringement.
  • Daily assistance and representation of Nike in the context of customs seizures of  goods likely to involve trade mark infringement and counterfeiting; filing of criminal complaints and follow-up of such criminal proceedings from the investigations to the hearings before the criminal courts.
  • Assistance and representation of Uber in the frame of the negotiation of the terms and conditions of a partnership agreement with the National Ligue of Professional Football  in order for the trade mark UBER EATS to be the title sponsor and official partner of Ligue 1 for the 3 years to come.

Candé Blanchard Ducamp

With a broad sector scope including luxury goods, pharmaceuticals, construction, financial services, insurance and IT, Candé Blanchard Ducamp enjoys an excellent reputation in the market. The French IP boutique fields a strong team that is primarily focused on litigation, with founding trio Claire Herissay-Ducamp, Patrice de Candé and Julien Blanchard, ably supported by key associates Clarisse Tourneux and Anna Revidi. For cross-border matters the practice relies on its tried-and-trusted network of foreign partner firms.

Testimonials

‘Excellent mix of senior and junior lawyers who give comprehensive, commercial advice. ’

‘Lead partner is Claire DuCamp has outstanding expertise and unparalleled experience.’

Casalonga

Casalonga is known for its comprehensive trade mark and design offering, made possible through the combination of lawyers and trade mark attorneys in the practice group. Managing partner Caroline Casalonga and her team form one of France's deepest benches, with multiple offices in France in addition to outposts in Spain and Germany. The team's strategic set-up enables comprehensive assistance with soft IP matters, including complex and high-stakes infringement disputes, advisory work and prosecution services. The practice is particularly visible in trade mark disputes, especially in the life sciences, but also in the beverage, electronics, and media sectors.

Practice head(s):

Caroline Casalonga

Other key lawyers:

Arnaud Casalonga; Floriane Codevelle; Marianne Gabriel; Karina Dimidijan-Lecomte

Key clients

Biogaran

Hasbro

Sky

Pandora

ERAM Group

ADEO (Leroy Merlin)

Samsung

Heineken

Credit Muuel Arkea

V33

Denel

Saint Gobain

Médecins Sans Frontières

Moulin Rouge

Lalique

Auchan

Work highlights

  • Represented the client in litigation for the cancellation of French and EU trade marks before both national jurisdictions and European offices and courts (TEU and CJEU), in addition to litigation in trade mark infringement and unfair and parasitic competition, and strategic support in all matters relating to trade mark law and unfair competition.
  • Represented V33 against the company Initiatives Décoration in a case of trade mark infringement and unfair and parasitic competition.
  • Represented the client in a dispute concerning the infringement of the trademark ‘ARGUS’ belonging to claimant Sneep, with proceedings going up to the Cour de Cassation following successful decisions for the client.

CMS

CMS' addition of a trade mark and design portfolio-management practice to its established litigation practice has considerably broadened the Paris-office IP offering. The firm approaches the market by industry sector -notably, cosmetics, automotive manufacture, healthcare, media and hospitality- ensures the team possesses in-depth knowledge of the frameworks within which its clients operate, allowing for tailored solutions. With Chinese, German and African desks underlining the team's international outlook, clients also benefit from the practice's experience in the restructuring of IP portfolios as part of wider corporate restructurings on which the IP team joins forces with its bankruptcy, corporate and tax colleagues, among others. Counsel Sabine Rigaud is the key contact for the trade mark and design practice, in turn part of the broader IP and technology department led by Anne-Laure Villedieu.

Key clients

McCain

Advance Publications

CTS Eventim (leading company in the field of events and ticketing)

Hotel George V

Work highlights

  • Our firm assisted McCain in the context of a broad design litigation before the Paris Court and the EUIPO.
  • Regular adviser to American press group Advance Publications on the protection of its trade marks.
  • Advised European ticketing company  CTS Eventim, on  its partnership with the Fnac Darty group, as well as on aspects of the deal concerning trade marks and domain names.

Dechert LLP

At Dechert LLP, practice head Marie Fillon is especially active on behalf of life sciences clients, but also handles a busy caseload in the financial services, fashion and luxury-goods sectors. The trade mark practice includes advisory, transactional and litigation work, with the IP aspects of international transactions and antitrust matters as clear areas of strength. Honouring the firm's US roots, the practice is well versed in assisting US clients with their soft IP needs in France. Fillon also offers expertise in hard IP.

Practice head(s):

Marie Fillon

Testimonials

‘They were quick and thorough in the analysis of different options with associated risks from different perspectives, including commercial, IP law, etc.’

‘Marie Fillon has been very efficient and responsive. She quickly identified all necessary competencies (outside her own) within Dechert Paris to provide appropriate support for a complex deal. ’

Key clients

ArchiMed – Polyplus Transfection

Sifi / Gifrer

Astorg Partners – HRA Pharma / Mederma

Work highlights

  • Advised healthcare-focused European investemnt company ArchiMed on key intellectual property-related agreements in connection with the partial sale of Polyplus-Transfection, and its reinvestment -alongside Warburg Pincus- in the Polyplus group.
  • Advised Italian ophthalmic company Sifi on the intellectual property aspects of its acquisition of the Dacudoses® and Novoptine® brands and business from French Laboratoire Gifrer.
  • Advised Astorg Partners (and its subsidiary Laboratoire HRA Pharma) on key trade mark license agreements in connection with the acquisition by HRA of all assets related to the Mederma brand from Merz Pharma.

FTPA

FTPA impresses with a comprehensive soft IP practice that includes a strong trade mark and design offering. Under the lead of Boriana Guimberteau and Antoine Gautier-Sauvignac, the team acts as strategic advisor on the IP aspects of its clients' projects and has developed an impressive and substantial track record in the fashion, perfume and cosmetics sectors; it also has extensive litigation experience, and advises on both domestic and cross-border disputes. Commercial IP work, including assignments, coexistence agreements, settlement and licence agreements, also constitute part of the practice's typical caseload. Guimberteau initiated the firm's blockchain offering in 2019, so as to better assists clients with the protection of their assets, for example through recording designs, creation dates and contracts.

Other key lawyers:

Hélène Huet

Testimonials

‘The team has adapted very quickly to our way of working and understands how to strike a balance between preserving our rights and doing so in a cost-and time-efficient manner.’

‘Boriana Guimberteau – expert knowledge, timely replies, efficient.’

Gowling WLG

Gowling WLG knows how to leverage the firm's international footprint to the benefit of its clients. The Paris team of practice heads Céline Bey and Philippe Rousseau is experienced in contentious and non-contentious work across a broad sector spread and demonstrates particular strength in cross-border litigation, in parts thanks to its established trade mark practices in Canada and the UK with whom the Parisian group frequently collaborate. Advisory work includes portfolio management and commercial matters, especially licencing negotiations and agreements. The firm's life sciences group, focusing on biotechnology and pharmaceutical companies, and the dedicated luxury goods group that focuses on brand enforcement issues are both set up across borders and a notable benefit for clients of the French practice.

Practice head(s):

Céline Bey; Philippe Rousseau

Other key lawyers:

Clémence Lapôtre

Key clients

STIL

CW Children Worldwide Fashion

Work highlights

  • Represented luxury children’s clothing brands CWF in a trade mark litigation relating to the design, fabrication and distribution of Zadig & Voltaire products.

Hoffman

The practice at French IP boutique Hoffman combines both an advisory and a litigation offering. In disputes the team is especially visible in the fashion, perfume, arts, publishing and culture sectors, and brings to bear its complementary expertise in unfair competition and commercial law to its clients' advantage. Additionally, the practice has also launched -in collaboration with a bailiff's office- a blockchain offering through which clients can register their creations. Under the lead of practice co-head Ingrid Zafrani, the group is also developing a comprehensive programme to guide clients through the different life stages of their goods or services, from inception and their establishment in the market through to their imitation and anti-counterfeiting measures. Name partners Emmanuelle Hoffman and Pierre Hoffman are the other practice co-heads.

Key clients

Guess

Delvaux

Chaumet International

Repetto

Messika

Etam

Maison Chateau Rouge

Marine Serre

L et M ‘Bombers’

Zapa

Barbara Bui

Groupe Vendôme

Inter Parfums

MediaTransports

O Lapidus

Yannick Alleno

Chopard

Anne Fontaine

Lansay

Lancaster

Tara Jarmon

Work highlights

  • Represented Olivier Lapidus in trade mark litigation against Ted Lapidus regarding the registration of two semi-figurative trade marks, involving questions of forfeiture of trade marks for lack of exploitation.
  • Represented O’Tacos in trade mark infringement and unfair competition litigation against a company in Orléons, involving questions regarding the client’s trade marks and visual identity.
  • Successfully represented the client in INPI opposition proceedings brougt by G-Star Raw regarding the registration of two French trade marks.

Kern & Weyl

Kern & Weyl stands out for its strong experience in representing foreign companies -especially from Italy, Spain and the US- in trade mark and design disputes, frequently of a complex and cross-border nature. In 2020 the practice bolstered its already powerful international expertise with the establishment of a strategic partnership with Franco-Italian firm CastaldiPartners which complements the existent Italian desk, headed by Giulia Cortesi. Active in a wide range of sectors, the practice group -led by Tania Kern- attracts a healthy combination of multinationals, small and medium-sized enterprises (SMEs), and start-ups.

Practice head(s):

Tania Kern

Other key lawyers:

Florence Houisse; Claire Weyl

Key clients

PSA Group (Citroën Peugeot)

Desigual

Calvin Klein

Tommy Hilfinger

Golden Goose

Work highlights

  • Represented Desigual in several pending litigations for designs, copyright and related trade mark issues, as part of our assistance with the client’s anti-counterfeiting programme.
  • Successfully represented the client in a case before the Luxembourg Court of Justice to defend the owner’s trade mark rights during the first five-year period after the registration.

Osborne Clarke

With a particularly busy practice for advertising-sector clients, Osborne Clarke's service offering combines portfolio management, licencing and litigation services with a team structured so to provide clients with additional, complementary expertise. As the practice group's lead trio, Claire Bouchenard, Xavier Pican and Béatrice Delmas-Linel offer not only partner-level soft IP expertise, but also IT and data privacy experience and expertise in commercial law. Influencer agreements, the review of marketing campaigns and assistance with sponsorship agreements are other busy lines of work. Other key sectors include the fashion, technology, electronics, and food and beverage industries.

Other key lawyers:

Laurène Zaggia; Julia Darcel

Testimonials

‘The team is very open to communication and is very responsive. They are very friendly in their communications, which makes everything easier. I like that they are not formalistic which also eases the cooperation. It makes it different from big international law firms which are very formalistic in their approach to the clients which as a result makes everything longer (i.e. needless administration/formal etiquette etc.).’

‘Associate- Julia Darcel is very open in communication and has a very practical approach. She truly informs the client about advantages and disadvantages of the case and looks for a right solution. She is very cooperative and open to discussions.’

Key clients

This Sign

PopSockets

Bolt Mobiity

WW France

Wirecard

Filatures de Lion

Esprit Europe Services

Palais des Thés

JOM Car Parts & CAT HiFi

Work highlights

  • Defended the client in strategic litigation aimed at limiting the exhaustion of trade mark rights in the European market
  • Advised Palais des Thés on trade marks, distribution agreements, franchising concept stores, litigation and pre-litigation in relation to its international development.
  • Defended the client in a strategic dispute aimed at preventing the arrival of a new competitor on the scooter market.

Pinsent Masons LLP

Pinsent Masons LLP unites longstanding litigation experience with a clear sector focus on the construction, life sciences, retail and technology sectors. As an integral part of an international firm, the Paris practice is well suited to cross-border disputes and is frequently involved in litigation requiring experience in Germany and the UK, both jurisdictions where the firm has offices. Paris practice head Emmanuel Gougé and legal director Virginia de Freitas form a long-established duo.

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

  • Successfully represented food-industry player Griesson de Beukelaer, as defendant, in infringement and parasistism litigation regarding a three-dimensional trade mark; brought by Générale Biscuit Glico France and Mondelēz Europe & France, the case involved the ‘Mikado’ chocolate biscuit stick.

Schmidt Brunet Litzler

Schmidt Brunet Litzler scores highly with its well-rounded trade mark and design offering, which handles matters ranging from advisory work to contentious issues - including customs and emergency proceedings, infringement and validity proceedings, and unfair competition claims. The advisory-side caseload spans assignment and licensing agreements (including assistance with the preceding negotiations), clearing services and portfolio management, as well as audits and due diligence work. Delphine Brunet-Stoclet head's a practice that has established a reputation for it tenacious approach to disputes.

Practice head(s):

Delphine Brunet-Stoclet

Other key lawyers:

Marie-André Nivet

Testimonials

‘Very prompt and thorough.’

‘Delphine Brunet-Stoclet and her team have a great expertise in trade mark law and a great capacity to understand business issues and find out win-win solutions. ’

‘Availability, pragmatism and transparency are some of the qualities of Delphine Brunet-Stoclet.’

‘ A very strong expertise on industrial property matters which allows us to respond efficiently, responsively and rigorously to different projects.’

‘Expertise, understanding of customer expectations, responsiveness.’

‘The lawyers react quickly and proactively. The response/opinions are very good.’

‘Small IP boutique with lawyers that are interested in understanding clients business and able to provide practical solutions proactively. Importantly, for non French-lawyers, they’re able to explain the particularities of French legal procedures well.’

‘Delphine Brunet is knowledgeable about our industry and supported us successfully in different design, copyright and counterfeit cases in France.’

‘The team is made up of excellent lawyers who not only have an excellent knowledge of IP, but also a business-oriented approach that allows cases to be dealt with in a pragmatic manner and in line with our internal strategy. Delphine Brunet Stoclet is an excellent lawyer who is very well supported by Marion Bombard and Félix Bertrand (the above comment about the team really applies to all three).’

Key clients

JJA

Vitry Frères

Swarovski

Amanresorts

APRR

Generik

So press

Lagardère Active

Alteo

Amélie Pichard

Morgan Motors

Eugene Riconneaus

Artenova

Vasgos – Oddo

Dermatologic Skincare Solutions

Circénomi

Bastille Day

Concept Footwear Solutions

Crossline

Econocom

Sarah Lavoine

Nasco

Butler Industries

Noerden

Meyer

WEB Industries

Val d’Opies

Skeat

CMI Media

ESP Consulting

Westland

Precious

Edmond de Rothschild

Control Films

Piaton

Carmen Busquets

Jakob Maul

Covivio

Kobalt

Orchestra

Cyria

Marie Poniatowski

Moyersoen

Sogetrel

Circenomi

Isalt

Fonds Stratégique de participations

Artora

Actually

Etex

OVD

Le Piton de Sancerre

L’Ameublement Francais

Simmons & Simmons

Simmons & Simmons frequently receives litigation instructions directly from its client's headquarters abroad, attesting to the team's high-standing internationally, both for strategic advisory matters and disputes. The group is able to assist clients from a wide spectrum of sectors, but is especially active in life sciences and in the wine-and-spirits segment, on both French and international mandates. In Sarah Bailey, who is dual-qualified (France / England and Wales), and Marina Cousté, whose specialisms include geographical indications, the team has two highly-experienced practitioners at the helm.

Practice head(s):

Sarah Bailey; Marina Cousté

Other key lawyers:

Frédérique Potin

Key clients

Metro-Goldwyn-Mayer

Chateau Lafite Rothschild

Domaine Romanée-Conti

@MakeSense

Ticket for Change

Work highlights

  • Assisted a French incubator MakeSense on a pro bono basis with the worldwide protection and defence of its name and new visual identity.

Taylor Wessing

Taylor Wessing's team stands out for its specialisation in matters at the intersection of soft IP with cybersecurity and data protection. Practice head Marc Schuler is experienced in both litigation and transactional work, as well as in brand management matters, which fits in well with the firm's wider international offering that facilitates wide-ranging geographical coverage. The group has multiple analytic tools at its disposal to assist clients through the challenges they face with the protection of their assets, both in France and abroad.

Practice head(s):

Marc Schuler

Other key lawyers:

Inès Tribouillet

Key clients

Orange

Banijay Group

Square

Fox Channels

RATP

Airbus

American Airlines

DailyMotion

The North Face

Hiscox

Farfetch

Webedia

Comcast

Work highlights

  • Represented Orange in a trade mark suit initiated by Intel Corporation regarding its trade marks INTEL INSIDE and unfair trade practice regarding the use of the brand HUMAN INSIDE.
  • Assisted American Airlines with brand management matters.
  • Assisted Airbus group with the definition of its trade mark protection and licensing policies.

Aramis

Aramis is highly experienced in complex cross-border matters from a variety of sectors, including pharmaceuticals, food and retail. Infringement proceedings account for the bulk of the caseload, but practice head Benjamin May and his team are also active in cancellation and invalidity proceedings and seizures. Additionally, the practice assists with licensing matters, for example in the context of distribution contracts, and also has experience advising on portfolio management. Louis Jestaz was promoted to counsel in 2020.

Practice head(s):

Benjamin May

Other key lawyers:

Louis Jestaz

Testimonials

‘For me the standout feature of this firm is their understanding of the needs of Anglo-Saxon clients for efficiency, speed and straightforward advice. This is why they are my number one choice for IP litigation in France.’

‘I use Benjamin May as my primary point of contact as he is excellent at not only doing the work but also matching his team to the client’s needs. Very responsive. Great with clients and contacts. The stand-out counsel is Louis Jestaz, particularly in trade mark litigation work.’

‘The team is very pragmatic in their advice and quick to respond. They have been providing us with very sound intellectual property advice. ’

‘Louis Jestaz is very quick to respond, proactive and pragmatic in his advice. ’

Key clients

Allergan (litigation)

Verweij Fashion

Lidl

Spie Industries

Unique Heritage

National Fitness Campaign

Byredo

MF Distribution

Constellation Brand

Sarepta Therapeutics

Maison des Fleurs

Halal Supply

Eiffage Construction / Eiffage Immobilier

Gaillard Rondino

Work highlights

  • Assisted Allergan with a complex, worldwide trade mark case.
  • Advised ready-to-wear company, Verweij Fashion, on a pan-EU cross-border litigation regarding revocation for non-use actions against several trade marks of the Hong-Kong-based Giordano group.
  • Assisted Lidl France with cross-border litigation regarding a trade mark infringement and unfair competition action initiated by Lindt Chocoladefabriken Lindt & Sprungli relating to several trade marks – including its 3D trade mark- which were subject to ECJ decisions.

Arenaire

Arenaire distinguishes itself with its dedicated design practice (the clients of which include architects, designers and furniture companies), its longstanding experience in anti-counterfeiting matters (including a strong track record in corresponding customs litigation), and its in-depth knowledge of the wine and spirits sector, including the regulatory framework for advertising matters. The practice's varied client list features large multinationals alongside small and medium-sized enterprises, along with public bodies, such as museums and academic institutions. Its track record of securing victories in high-stakes trade mark infringement litigation further adds to the team's reputation. Pierre Massot and Thibault Lentini direct the practice.

Practice head(s):

Pierre Massot; Thibault Lentini

Other key lawyers:

Julie Bernaud; Faustine Chaudon

Testimonials

‘A team with a very strong experience of large files, but which puts this experience at the service of all. They have a very pragmatic vision and you don’t waste time with insignificant details like in other competing firms’

‘Thibault Lentini is remarkable for his kindness, patience, professionalism and expertise, especially in customs cases.’

‘Pierre Massot and his team master the subject of designs perfectly and know how to provide wise recommendations to their clients, taking into account existing practical difficulties.’

‘Pierre Massot is an excellent lawyer specialising in design law and more generally in intellectual property law. He masters the technical aspects of this material perfectly and has a good knowledge of the sector.’

‘A small team specializing in intellectual property, Arenaire is distinguished by high technicality, strong adaptability to demand, and pricing that does not match the fees charged by other large Parisian firms.’

‘Pierre Massot is a true expert in his field. He is always available, has excellent negotiation skills, and the exchanges he can have with his clients are always very pleasant.’

Key clients

Maisons du Monde

Teva Sante

Technicolor

Lina Ghotmeh Architecture

Pernod Ricard

Mumm Martel Perrier-Jouët

Groupe Roullier

Macif

Work highlights

  • Advised Maisons du Monde in a dispute against a discount company that had used e-commerce website communication features and codes that were identical or similar to the features of the client’s visual identity and editorial line; including assistance with the negotiating process and the conclusion of an amicable settlement.
  • Represented Technicolor before IP Offices in a dispute against a company providing software solutions and regarding the defence of its trade marks in different countries and regions.
  • Regularly advised Pernod Ricard-subsidiary, Mumm Martel Perrier-Jouët,  on all the IP aspects of its ‘Loi Evin’ business, notably, packaging validation, product sheet validation, product validation, advertising campaign validation, drafting contracts with agencies and suppliers, letter of formal notice and pre-litigation against potential opponents.

August Debouzy

August Debouzy offers a comprehensive trade mark and design practice, ranging from litigation, prosecution and portfolio management work though to transactional assistance such as audits and due diligence. Indeed, other firms frequently rely on the team for the IP aspects of major international transactions, while the group's experience in customs litigation is a strong complement to the practice offering. The team co-led by Grégoire Desrousseaux and counsel Véronique Dahan also includes several members with extensive in-house experience. With fashion, retail and IT particularly prominent in the caseload, the team is also active in areas including food and beverages, automotive manufacture, entertainment and consumer goods.

Other key lawyers:

Laure Arnon-Duquesnoy

Key clients

Artnet Worldwide Corporation

Voodoo

Société Bic

Work highlights

  • Assisted Artnet Worldwide Corporation with trade mark and domain name litigation.
  • Assisted Voodoo with its brand strategy and the registration of multimedia trade marks.
  • Advised Bic on the analysis and valuation of Djeep’s trade marks and designs in the context of acquisition of the company’s shares.

Benoliel Avocats

Benoliel Avocats impresses with its litigation experience. Practice head Sylvie Benoliel-Claux and her team combine engagement in the sector across a broad range of sectors, with the high IP specialisation of a dedicated boutique. The group's track record reveals strong experience in the automotive, pharmaceutical, fashion and beverage sectors, among many others, as well as a long string of successes in French courts and before the French and European intellectual property offices. Benoliel-Claux's role as one of the vice-presidents of Association of Trade Mark and Design Law Practitioners attests to her strong standing in the market.

Practice head(s):

Sylvie Benoliel-Claux

Other key lawyers:

Anne-Sophie Leroi; Clara Viguié

Testimonials

‘Compact size, but covers the full range of IP/trade mark work. Exceptional litigation and anti-counterfeiting skills, in-depth knowledge of the law.’

‘Partner Sylvie Beloniel takes charge of our cases herself. We can always contact her about our cases directly. She is always on top of things. We value direct partner contact a lot.’

‘Expertise, availability, reactivity. Strong proposals and recommendations.’

The firm offers a very flexible, adaptable and responsive team that is close to its clients to meet their needs in IP disputes.’

‘Maître Benoliel’s great expertise, especially in design law, is very valuable.’

Work highlights

  • Defended the client in complex trade mark infringement proceedings (involving a preliminary CJEU ruling), before Paris’ first instance and appeals court, and the French Supreme Court.
  • Represented the client before the Versailles Court of Appeal in an strategic appeal procedure against an opposition decision of the French office in, securing a successful outcome for the client.
  • Successfully defended the client against allegations of unfair competition and parasitism regarding the use of eleven models of glasses.

Dentons

The Dentons team is particularly well suited to multi-jurisdictional disputes. Former Clifford Chance counsel Loïc Lemercier took over as practice head from David Masson, who left for an in-house position at the end of February 2021, and is now the key name in the practice alongside senior counsel Isabelle Leroux, a seasoned trade mark expert and litigator. The duo's sector range includes the life sciences, pharmaceuticals, automotive, fashion, electronics and publishing sectors, with the client list consisting of major French and international companies, but also of small companies and inventors. As the firm has grown its European capabilities since 2018, the Paris practice has gained greater cross-border clout across the continent while also offering strong teams based in Asia, the Americas and Australia. Given the wide geographical range of the teams and the matters they cover, Dentons Direct, the firm's online 24/7 collaborative platform is a useful tool for clients to keep track of their matters.

Practice head(s):

Loïc Lemercier

Other key lawyers:

Isabelle Leroux

Key clients

Novartis

Merial

CNRS

Polaroid

Lactalis

Mr John Galliano

The Coca Cola Company

CLT UFA (RTL)

ExpanScience

Ideat edition

Schneider Electric

J Walter Thompson

Peugeot

Mitsubishi

Work highlights

  • Representing John Galliano in a trade mark and copyright dispute against John Galliano SA and in another litigation against Christian Dior Couture and Christian Dior Perfumes relating to the nullity of the mark ‘John Galliano’, owned by John Galliano SA.
  • Advising Mitsubishi on its trade mark protection in the Middle East.
  • Representing MERIAL against VIRBAC in a long and complex trade mark infringement action based on its French and then European trade mark registration and renowned mark ‘FRONTLINE’ after having successfully represented the client before the first instance, court of appeal and Cour de cassation based on Merial’s national French trade mark.

DTMV & Associés

Boutique firm DTMV & Associés is particularly well known for its trade mark and design litigation practice, thanks to its frequent representation of prestigious clients from the entertainment, luxury goods, media, publishing, energy and travel sectors. The practice assists with name clearing matters in France and abroad, is very well versed in proceedings before the French and European intellectual property offices, and also assists with customs matters.  The key soft IP contacts are Eléonore Gaspar, Laurine Janin-Reynaud and Thomas Cuche; with Pascal Lefort, Thierry Mollet-Viéville and digital entertainment law specialist Julien Grosslerner (who joined the practice from his own firm in October 2019), as the firm's other experienced practitioners.

Testimonials

Eléonore Gaspar unites great technical skills with pragmatism and efficiency. She has a perfect mastery of the law and the subtleties of the different IP rights and knows how to pick the right strategy to solve our problems, both in prevention matters and in litigation, and for matters as claimant or defendant. We also appreciate the easy communication and her responsiveness.

I know that Eléonore Gaspar is always on top of the latest legal developments, particularly because of her involvement with professional associations. It is always a pleasure to ask her questions and to discuss the best solution. We can only attest to the good mood in her team and its always warm atmosphere. Never any unnecessary aggressiveness in negotiations.

Eversheds Sutherland (France) LLP

At Eversheds Sutherland (France) LLP, practice head Gaëtan Cordier and his team have a strong focus on the luxury-goods sector, acting for an impressive list of French and international players in an advisory function, or representing them in contentious proceedings. The group's international positioning is particularly visible due to Cordier's role as the head of the firmwide luxury-goods practice.

Practice head(s):

Gaetan Cordier

Féral-Schuhl/Sainte-Marie

With members admitted to the Paris and Québec bars and its alliance with a Tokyo law firm, Féral-Schuhl/Sainte-Marie stands out for its expertise in French, Canadian and Japanese law.  Contentious work forms the heart of the practice, ranging from infringement litigation to anti-counterfeiting matters, both in court and customs proceedings, and including mediation and participative procedures as alternative dispute resolution methods. On the advisory side, the group is active in commercial and transactional matters -such as licencing agreements- in the context of distribution networks, franchising and e-commerce. Bruno Grégoire Sainte Marie, Christiane Féral-Schuhl, Richard Willemant and Olivier de Courcel form the quartet who direct the practice.

Work highlights

  • Assisted one of the leaders in credit insurance with respect to multiple challenges on the internet, including trade mark infringement, especially on social networks.
  • Assisted a famous French chef with the negotiation of a licence agreement (trade marks, know-how, names, etc).
  • Management of several companies’ trade mark portfolio, file oppositions and infringement lawsuits, and the drafting and negotiation of trade mark related agreements (coexistence, licence, assignments etc).

Harlay Avocats

At Harlay Avocats, practice head trio Sabine Lipovetsky, Fabrice Perbost and Dominique Mallo shoulder a substantial trade mark and design portfolio practice, as well as advising on the IP aspects of transactions and assisting with litigation and pre-litigation matters. The firm's expertise in the life sciences and information technology serves the team well on the numerous mandates requiring intersectional advice. Clients are predominantly private companies, ranging from start-ups to major corporations, but the team is increasingly attracting instructions from public entities.

Key clients

Reporters Economiques Associes (REA)

IonisX

Sonya Rykiel

Société d’exploitation de la tour Eiffel (SETE)

Laboratoires Thea

Isigny Sainte-Mère

Tereos

Lanson

Osmose

Handling matters from multinationals and small and medium-sized companies, practice heads Alexandra Le Corroncq and Alexis Vichnievsky co-lead the practice at Osmose. The combination of the team's broad industry focus -including the food and beverage, IT, luxury goods, healthcare and automotive sectors- and its versatility on mandates ranging from advisory work on portfolio development and management (often on an on-going basis), to contentious matters, attracts an impressive number of prestigious clients. The group's additional experience in transaction-related issues also appeals.

Testimonials

‘Good knowledge of copyright law and jurisprudence. Relevant reasoning. Reactivity. Availability. Business approach.’

‘Good legal analysis. In the context of pre-litigation, Alexis Vichnievsky does not hesitate to develop a combative legal argument.’

‘I had the opportunity to work more particularly with Alexis Vichniesky, who is available, calm and knows how to take a step back on matters.’

Key clients

Coca-Coca European Partners

Sony Interactive Entertainment France (Playstation)

Picard Surgelés

Saupiquet (Bolton Food)

Takasago Europe Perfumery Laboratory

Schmidt Groupe

Cité de la musique –Philharmonie de Paris

OGF

CEF-Yesss Electrique

Work highlights

  • Trade mark portfolio management (involving research, filing, registration, renewal, watching); the negotiation of design-related licenses, and sponsorship and partnership agreements; and assistance with pre-litigation strategies.
  • Day-to-day assistance with trade mark matters, including the management of the trade mark portfolio (monitoring, C&D letters, coexistence agreements, registrations and renewals, license agreements, enforcement of trade mark rights, and opposition proceedings before IP offices).
  • Represented the client in litigation regarding infringement of the trade mark ‘PICARD SURGELÉS’ (and associated design), by several non-authorised distributors (with proceedings before IP Offices and French courts), including a criminal complaint for counterfeiting and identity theft. Additional day-to-day assistance with trade mark and design law, and advice on the negotiation and formulation of contracts (coexistence agreement, advertising agreement etc).

Taliens

Taliens' set-up as a European IP boutique makes the team an excellent choice for cross-border work, both for advisory matters and disputes. The practice enjoysa very good reputation for its strength in litigation as well as for its transactional work, including due diligence, but is also active in less visible trade mark and design prosecution matters, including portfolio development and management, clearing searches and the representation in proceedings before the INPI and the EUIPO. Clara Steinitz and Jean-Frédéric Gaultier lead the team.

Key clients

Fruit of the Loom

Richemont

TCL

Banque de Neuflize

Sky

Stella Mc Cartney

Burger King France

ODDO BHF

Goodwin Procter

Red Bull

Work highlights

  • Advised on TCL’s worldwide (except US) portfolio with respect to the ALCATEL ONE TOUCH portfolio: strategic management of all legal processes ranging from filing, registration and maintenance to complete protection in the desired jurisdictions; monitoring of the maintenance strategy and/or advice on the internationalisation of those trade marks; adoption of measures to provide them with maximum protection (objections, opposition, cancellation and nullity).
  • Management of the worldwide trade mark and domain names portfolio: conducting trade mark availability searches, advising on trade mark filing strategy and filing trade mark applications.
  • Successfully represented the client as claimant in trade mark infringement and domain name misappropriation proceedings brought against a retailer.

UGGC Avocats

At UGGC Avocats, the July-2020 merger with Aturquoise brought the arrival of the renowned IP experts Anne-Marie Pecoraro and senior counsel Rodolphe Boissau, significantly strengthening the firm's trade mark capacities. The practice impresses with its combination of IP, IT and entertainment law and with its experience in cross-border matters, including work for clients from the Americas and Africa. Complex litigation mandates are as much part of the group's portfolio as transactional work and strategic portfolio development matters. The experience in anti-counterfeiting work is another asset. Pecoraro joined Elisabeth Logeais and Corinne Khayat as practice head.

Other key lawyers:

Rodolphe Boissau

Testimonials

‘I am used to working with the team of Anne-Marie Pecoraro and Rodolphe Boissau who support me as experts in both copyright and industrial property rights. I have always known them as a highly-qualified niche firm, widely recognised for their performance in trade mark law, and I am glad that they are currently merging with the large business law firm UGGC which is expanding its trade mark capacity. I am sure that this will not change anything in our working conditions, responsiveness etc. I have the luxury service of great experts, at local conditions, while it is indisputable in France that they are in the best, advice, protection, as litigation.’

‘Rodolphe Boissau is very popular, very appreciated. Excellent lawyer, fine analyst, he explains, presents and expounds very well, very clearly – we are proud to be represented by them. Writing skills, negotiation, structuring. I have the right team for all the needs in my market. Anne-Marie Pecoraro is a force of nature, made up entirely of convictions and determination. It all starts with a high quality of listening, she seeks to understand the objectives and feelings to support by putting the best means at the service.’

‘Great team, hands-on, solution-driven, very good lawyers.’

‘Anne-Marie Pecoraro: Great to work with. Very experienced. Deep knowledge of IP law. Internationally connected.’

Key clients

Crédit Agricole Immobilier

Michel Klein – Mimi Liberte

Christophe Gernigon Studio

Sophie Djerlal

Bouderbala

Frédéric Lyphoudt Archikonsol Project

Concert d’Astrée d’Emmanuelle HAIM

Lesondesvilles

Mas de So

Nakuna

Incopro

Quartana

Luc Bellier

Michino

Work highlights

  • Assisted Dragone with all legal aspects related to the protection of their IP and brand, notably providing strategic advice on licensing and merchandising.
  • Advised Gustavo Lins on the protection of his patronymic name, used to sign his creation, and leading legal actions to enable him to use it and to licence his brand in Asia, to a Chinese licensee.
  • Advised Chloe Saada on her relation with producers, editors and publishers and the protection of her intellectual property rights, notably her trade mark.

VARET & PRÈS AVOCATS

The former Passa Varet Avocats split in autumn 2020, with Jérôme Passa exiting to establish Cabinet Passa Avocats, while Vincent Varet has associated with Xavier Près (formerly of De Gaulle Fleurance & Associés), to establish VARET & PRÈS AVOCATS, which opened its doors in November. The boutique focuses on IP, media and IT law, with an IP focus on trade mark, design and copyright matters. The caseload includes advisory work, particularly as regards licencing agreements, as well as litigation, with the firm drawing clients from a broad range of sectors including luxury goods, publishing, culture and -increasingly- the cinema and radio sectors, as well as sports and IT.

Practice head(s):

Vincent Varet; Xavier Près

Testimonials

‘A team that is available, attentive and very responsive. A high level of legal competence which makes the service reassuring and efficient.’

‘Maître Vincent Varet is distinguished by his legal competence and his clarity in the strategies offered to his client for files and brand management at national and international levels. His responsiveness and constant rigour are greatly appreciated for the follow-up of trade mark law cases that we have entrusted to him; and which have been successful for our company. We have worked with him for 12 years and he is one of our most reliable advisers who we recommend without reservation.’

‘Specialists in intellectual property, we use the team more particularly in trade mark law for ad hoc advice or as part of the monitoring and protection of our brands.’

‘Maître Varet is very responsive and available.’

Practice head(s):

Nathalie de Quatrebarbes

Testimonials

Human-sized team that is available, professional and knows how to listen.

Cabinet Bouchara Avocats

Practice head(s):

Vanessa Bouchara

Key clients

BA & SH

Nicolas Ghesquiere

IKKS Group (IKKS, One Step, I Code)

Sofrane (Paul & joe)

Eleveln Paris

Stella Forest

Berenice

Des Petits Hauts

Kidiliz Group

BYLI/VY

Valege

Creaddict (Redline)

Christian Lacroix

Les Montres Suisses

Beiersdorf (Nivea)

La Prairie

Caudalie

Feed

In n Out

Deux Magots

BioCoop

Witradis (Cavavin)

Benoit Valerie Calvet

Chateu Peyrat Fourthon

La Franciaise des Jeux

Altavia Group

Maison France Confort

Technitoit

Camif Habitat

Attijariwafa Bank

Guy Hoquet

La Forêt

Western Digital Technology

Everoad

Levest

Gigafit

Tonipharm

Laboratoire Dietetique et Sante (Vitaflor)

Kingsley Coman

Sophie Ferjani

Work highlights

  • Represented the client in litigation against Marketluck regarding unfair competition and passing off acts committed through the reproduction of components of the Loto and Euromillions games; strategic actions to obtain cancellations of competing trade marks.
  • Represented the client in trade mark opposition proceedings brought against an application for the registration of the trade mark THINK POSITIVE by Think Schuhwerk.
  • Defended the client in trade mark, unfair competition and parasitism proceedings brought by Good Morning Tel Aviv, securing dismissal of the claims and the payment of €10,000.

De Pardieu Brocas Maffei

Practice head(s):

Barbara Levy

Testimonials

‘Extensive knowledge of IP laws in France and the EU. Long history with the brand. They know us and take care of us.’

‘Barbara Levy. She takes good care of us. Through busy and slow times, she always makes us feel like her number one client. She’s very responsive, upfront and honest.’

‘I especially worked with Maître Barbara Levy, whom I  appreciate for her skills, her availability, her always exhaustive legal analyses and her problem solving attitude.’

Key clients

Timberland

VF Corporation

Totes Isotoner

Vans

The North Face

Napapijri

Blackberry

BA Healthcare

Victoria’s Secret

Work highlights

  • Representing Blackberry in trade mark litigation.
  • Advising Victoria’s Secret in connection with French trade marks.
  • Advising footwear company Vans on various IP matters for design and trade marks.

DS Avocats

DS Avocats

Practice head(s):

Catherine Verneret

Key clients

Musée du Louvre

EDF

Enedis

Carrefour

AFNIC

Solocal Group (Yellow Pages / Mappy)

Francaise des Jeux

O’Tacos

Orange

Work highlights

  • Advised the Musée du Louvre on all intellectual property issues, notably in regard to the management of its brand portfolio.
  • Litigation against Lectiel before the Cour de Cassation regarding the copyright and protection of the database of France Telecom.
  • Advised EDF in the context of the negotiations of partnership agreements with FIFA irelated to the football World Cup.

EBL Lexington Avocats

Practice head(s):

Laurent Levy

Other key lawyers:

Michaël Piquet-Fraysse

Testimonials

‘An exceptional team. Very available, very professional, the Lexington team is exceptionally efficient.’

‘To their high level of skills are added benevolence, patience and responsiveness.’

‘Excellent team specialised in IP.’

‘Laurent Lévy, Michael Piquet-Fraisse and Christophe Glénat: good knowledge of trade mark law and strategy.’

‘ Undeniable technical knowledge – know how to reason with agility, to study cases in an innovative way and on the solutions proposed, how to present the gains and the risks. A real business sense, know how to live in the real world of the company. Good use of the international network in order to seek expertise.’

‘Business sense. Broad skills. Availability. Responsiveness and energy.’

‘In terms of intellectual property, and more particularly the treatment of issues relating to trade marks, designs and copyright, Lexington is a firm in which we have complete confidence. The advice, listening, responsiveness and expertise of the firm’s employees are greatly appreciated.’

‘The Lexington firm is distinguished mainly by listening, availability but also the business vision (associated with the law) of its employees.’

Key clients

Petrus

JM Weston

Bonpoint

Piper-Heidsieck

Charles Heidsieck

Gas Bijoux

Normalu

Mackage

Sartore & Compagnie

Bonneval Waters

Duclot

Société protectrice des animaux

Malt

Codage

Les Graphiquants

Go On Media

Artclair

Air Austral

Woodoo

Work highlights

  • Represented JM Weston in an action against The Frye Company for trade mark counterfeiting.
  • Represented Bonpoint in an action against Webedia for deceptive commercial practices and unfair competition.
  • Represented the client, as defendant, in a trade mark revocation action brought by Société du Tour de France and Amaury Sport Organisation regarding two trade marks alleged to damage the reputation of the trade mark ‘Tour de France’, succeeding in significantly lowering the compensation amount for the client.  

EBL Lexington Avocats

EBL Lexington Avocats

Testimonials

An exceptional team. Very available, very professional, the Lexington team is exceptionally efficient.’

‘To their high level of skills are added benevolence, patience and responsiveness.’

‘Excellent team specialised in IP.’

‘Laurent Lévy, Michael Piquet-Fraisse and Christophe Glénat: good knowledge of trade mark law and strategy.’

‘ Undeniable technical knowledge – know how to reason with agility, to study cases in an innovative way and on the solutions proposed, how to present the gains and the risks. A real business sense, know how to live in the real world of the company. Good use of the international network in order to seek expertise.’

‘Business sense. Broad skills. Availability. Responsiveness and energy.’

‘In terms of intellectual property, and more particularly the treatment of issues relating to trade marks, designs and copyright, Lexington is a firm in which we have complete confidence. The advice, listening, responsiveness and expertise of the firm’s employees are greatly appreciated.’

‘The Lexington firm is distinguished mainly by listening, availability but also the business vision (associated with the law) of its employees.’

Key clients

Petrus JM Weston Bonpoint Piper-Heidsieck Charles Heidsieck Gas Bijoux Normalu Mackage Sartore & Compagnie Bonneval Waters Duclot Société protectrice des animaux Malt Codage Les Graphiquants Go On Media Artclair Air Austral Woodoo

Work highlights

  • Represented JM Weston in an action against The Frye Company for trade mark counterfeiting.
  • Represented Bonpoint in an action against Webedia for deceptive commercial practices and unfair competition.
  • Represented the client, as defendant, in a trade mark revocation action brought by Société du Tour de France and Amaury Sport Organisation regarding two trade marks alleged to damage the reputation of the trade mark ‘Tour de France’, succeeding in significantly lowering the compensation amount for the client.  

Fieldfisher

Key clients

KNT

Hager

Champagne Billecart Salmon

Château Talbot

Giordano Enterprises

Hema France

Orange

Petits Frères des Pauvres –  (Pro Bono)

SeLoger

Tricotage des Vosges

Wolf Lingerie

Yacco

Work highlights

  • Advising Group Giordano against Dutch company Verweij Fashion in three pending non-use invalidation actions filed against our client”s GIORDANO trade marks (in France), before the Paris Courts (1st instance tribunal, court of appeal and supreme court); in addition to filing an invalidation action based on the client’s prior rights before the INPI against Verweij Fashion’s own GIORDANO French trade mark.
  • Advising Hager Group on seeking a declaration of invalidity before the EUIPO against Schneider Electrics, which has filed the exact same shape for an electric device (switch); also advising client on an infringement action against Schneider Electrics before the first instance Paris Courts.
  • Regularly advised Take-Two on the defence of its trade mark rights in the French market, handling several opposition proceedings and negotiations with third parties.

Herald Avocats

Practice head(s):

Richard Milchior; Anne Cousin

Key clients

OVHcloud

Financial Planning Standards Board

Champagne Lanson

Work highlights

  • Management of OVHcloud’s worldwide trade mark portfolio involving clearance searches, trade mark filings, monitoring, filing oppositions and representing OVH in trade mark infringement proceedings.
  • Advised the client on the totality of its European trade mark portfolio and enforcing its trade mark rights in Europe.
  • Assisted Kochergina Svetlana Petrovan, a Russian company, with proceedings before the INPI.

Klein Wenner

Key clients

Archery Incorporated

Artizans App

Antoinette Poisson

Noura

Asip santé (Agence Numérique en Santé)

Work highlights

  • Assisted the client with multiple Issues, including a worldwide prior trade marks search, trade mark prosecution, litigation and assistance in the context of several cross-border claims.
  • Advice and representation regarding a fraudulent trade mark registration issue raised before Paris High Court of Justice and Paris Court of Appeal by Institut du Monde Arabe.
  • Advice and assistance to a company specializing in design activities on its brand protection strategy and defence in IP litigation.

Lext Avocats

Testimonials

‘It is a very professional and very available team.’

‘Maître Gaëlle Leroy is very pedagogical and very competent. Taking into account the specificity of the field involved, we would never have been able to succeed in our project without her help. She showed unfailing availability and responsiveness, just like the rest of her associates with whom we have been in contact.’

LPA-CGR

Practice head(s):

Prudence Cadio

Key clients

EnBW

Atlantic Media

VFP France

Versicolor Partners

Straumann

Brough Superior Motorcycles

Equipmag

Groupe Casino

Work highlights

  • Advised EnBW Energie Baden-Württemberg on the acquisition of the French developer and operator of wind and solar farms, VALECO, particularly with regards to the management of the company’s trade mark portfolio and with a pre-litigation relating to its trade mark.
  • Advised Calcium Capital on its €5m investment in transport optimisation consultancy BP2R, with a particular focus on the analysis and strengthening of the company’s brand portfolio; intervening on specific issues related to the brand and domain portfolios (protection of the logotypes used by BP2R, regularisations, etc.), as well as the licensing of the strategic IT platform.
  • Assistance with trade mark filing strategy, which included negotiating a trade mark coexistence agreement with a large US telecom company.

Pierrat & Associés