Next Generation Partners

Firms To Watch: Intellectual property: Trade marks and designs

Boriana Guimberteau leads the newly formed Stephenson Harwood IP team, which offers clients advice on IP contracts and agreements in addition to representing them before the French and European courts and IP offices.

Firms in the Spotlight Intellectual property: Trade marks and designs

CHASSANY WATRELOT & ASSOCIES

CHASSANY WATRELOT & ASSOCIES logo

A FULL-EXPERTISE HUMAN RESOURCES LAW FIRM   Founded in 1987, Chassany Watrelot & Associés (CWA) is one of the main French law firms whose activity is exclusively dedicated to employment law and all other legal areas related to human resources management (insurance law, tax law…).

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Vivien & Associés

Vivien & Associés logo

Vivien & Associés offers competitive legal services and representation across a broad range of key practice areas:

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Intellectual property: Trade marks and designs in France

Armengaud Guerlain

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.

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 & Associés 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


Facebook


Instagram


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

Facebook


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.

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.

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):

Sandra Strittmatter


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

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

McDermott Will & Emery AARPI

Practice head(s):

Laura Morelli


Other key lawyers:

Charles de Raignac


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.’