IP boutique Armengaud Guerlain, which has an enviable client roster, is a leading name in trade mark litigation and is often involved in cases with an international element. Recent highlights included representing Virginie Taittinger before the Appeals Court of Paris, after a ruling from the Supreme Court regarding the use of the family name to sell champagne. Clients also turn to the firm for advice on trade mark registration and protection. Stéphane Guerlain jointly leads the team with Catherine Mateu. Clients include local start-ups, designers and non-profitable groups, as well as domestic and multinational corporates.
Intellectual property: Trade marks and designs in France
Armengaud Guerlain
Practice head(s):
Stéphane Guerlain; Catherine Mateu
Other key lawyers:
Marguerite Higgons
Key clients
Studyrama
Castorama – Kingfisher
L’Occitane
Bouygues
BRF
1906 Collins
Birkenstock
Virginie Taittinger
IKEA
Musidor
Grosfillex
Work highlights
- Representing Virginie Taittinger before the Appeals Court of Paris after a ruling from the Supreme Court regarding the use of the family name to sell champagne.
- Assisted Musidor in a trade mark infringement case over the Lip’n Tongue Logo.
- Assisted Laboratoires M&L (L’Occitane) in a trade mark registration case.
Baker McKenzie
Noted for its stellar trade mark portfolio management practice, Baker McKenzie provides ‘technically sound, strategic and practical’ advice to clients in the pharmaceuticals, biotech, luxury goods, retail, FMCG, entertainment and technology sectors. On account of its long-standing anti-counterfeiting capability, the team’s caseload includes infringement proceedings and international enforcement matters. Elsewhere, the group is able to leverage the expertise of the firm’s corporate practice when advising on the IP aspects of M&A and restructuring mandates, as well as licensing agreements. Practice head Virginie Ulmann and Nathalie Marchand have demonstrable experience in trade mark litigation, while Pauline Celeyron focuses on trade mark portfolio management.
Practice head(s):
Virginie Ulmann
Other key lawyers:
Nathalie Marchand; Pauline Celeyron
Testimonials
‘Excellent advice on brand issues. Technically sound, strategic and practical.’
Key clients
Moët-Hennessy and Société Jas Hennessy & Co.
HRA Pharma
British American Tobacco
SAP
Unilever
General Electric
General Motors
Work highlights
- Assisting Moët-Hennessy on an ongoing basis with the management of the global trademark and design portfolio of Société Jas Hennessy & Co.
- Assisting with the global management of HRA Pharma’s trade mark portfolios, notably oppositions, filings and the implementation of a new strategy.
- Managing BAT’s French trademark portfolio and assisting with availability searches, opposition proceedings and pre-contentious infringement matters, as well as clearance actions regarding the choice of new names or the design of new products.
Bird & Bird
Bird & Bird‘s client roster includes French and multinational companies in the life sciences and healthcare, manufacturing, technology, media, entertainment and sports industries. Its team excels in advising on trade mark protection and enforcement matters. Patent litigator Yves Bizollon leads the practice, which includes Anne-Charlotte Le-Bihan, who has experience of sensitive trade mark and design mandates. Géraldine Arbant focuses on brand management and litigation, as well as transactional IP matters. Key clients include Piasten & Lutti, CrossFit and Groupe Candy Hoover.
Practice head(s):
Yves Bizollon
Other key lawyers:
Anne-Charlotte Le Bihan; Géraldine Arbant; Floriane Chartier
Key clients
Piasten & Lutti
CrossFit, Inc
Palladium
Kidiliz Group
SKF
River Island
Candy Hoover
Work highlights
- Represented Piasten & Lutti’s distributor in a preliminary injunction procedure, initiated by MARS, on the ground of unfair competition and parasitism to obtain the withdrawal of their new “TREETS THE PEANUT COMPANY” candy.
- Defended Groupe Candy Hoover in a registration of designs case against Dyson.
- Acting for CrossFit in matters relating to enforcement of trademarks, including infringement applications.
De Gaulle Fleurance & Associés
De Gaulle Fleurance & Associés is a strong choice for advice on trade mark and design portfolio management and litigation, as well as corporate transactions involving IP assets. Francine Le Péchon-Joubert handles contractual matters and disputes. Serge Lederman acts for clients in the fashion, media and food sectors in trade mark disputes, while Julien Horn handles transactional work involving IP assets. Along with Louis de Gaulle, all named lawyers collectively lead the ‘dedicated team’.
Practice head(s):
Julien Horn; Francine Le Péchon-Joubert; Serge Lederman; Louis de Gaulle
Testimonials
‘The team is always available and responsive.’
‘The dedicated team, led by Julien Horn, shows great responsiveness, as well as a great ability to adapt to the files that we entrust to them. The team has also been able to deploy high quality and remarkably creative writings in litigation involving one of our key brands, thus obtaining a very good decision in our favour.’
Key clients
Colgate Palmolive
Dubos
Echosens
Epic Games
ETAM
Fédération Française de Tennis
Interop’ Santé
La Semelle Moderne
Monte Carlo – Société des Bains de Mer
Mango
Palais des Thés
Showroomprivé.com
Warner Bros
YETIGEL
My retail Box
Chateau de Versailles
Gide Loyrette Nouel A.A.R.P.I.
Gide Loyrette Nouel A.A.R.P.I. is particularly well-known for its strengths in IP litigation, particularly regarding patent and trade mark disputes. Raphaëlle Dequiré-Portier and Emmanuel Larere focus on French and European trade mark and patent disputes for clients in the life sciences, telecommunications, luxury goods, technology, and consumer goods industries, among others. Jean-Hyacinthe de Mitry has extensive expertise in national and multijurisdictional patent disputes. The team is also noted for its international trademark prosecution work. Elsewhere, trade mark filings and portfolio management are other key drivers of mandates.
Practice head(s):
Raphaëlle Dequiré-Portier; Emmanuel Larere; Jean-Hyacinthe de Mitry
Key clients
Renault
Magellan
H&M
Castel
Albéa Services
Experienced Capital Management
Corum
Adidas
Sushi Gourmet
Ann Taylor
Celine
Abercrombie
Levi Strauss
Valentino Couture
Christian Dior Couture
Belmond
Mnemo Therapeutics
Work highlights
- Represented Renault in the defence of its diamond trade mark against a competitor using a diamond/rhombus shape trade mark in the EU.
- Assisted Magellan in the protection of its Bonobo trademark portfolio against Bonobo Inc., a subsidiary of Walmart.
- Assisted H&M in strategic trademark matters before judicial courts and trademark office (EUIPO and INPI).
Herbert Smith Freehills LLP
The IP team at Herbert Smith Freehills LLP frequently represents major players in the technology industry before French and European courts and arbitration proceedings. It is also highly experienced in IP advisory work, regulatory advice and data protection. Based in Paris, IP/TMT practice head Alexandra Néri is noted for representing high-profile technology companies in disputes, as well as advising on cybercrime, privacy issues and dawn raids. She works alongside Sébastien Proust, a key contact regarding a broad range of IP matters, including applying trade mark law to advertising referencing, the legal status of video platforms and the digitalisation of books.
Practice head(s):
Alexandra Neri
Other key lawyers:
Sébastien Proust
Testimonials
‘They have ample experience of advising on tech and internet companies and are familiar with the industry practice. They have a very good collaboration within the firm and could provide full-services to clients.’
‘Alexandra Neri has done exceptional work over the past few years. She is incredibly professional, experienced and knowledgeable.’
Key clients
ALIBABA
Enterprise
Comptoir des Cotonniers
Work highlights
- Represented and assisted ALIBABA, a Chinese company which owns several online marketplaces, in a litigation case (preliminary injunctions proceedings (référé) as well as on the merits) against LAFUMA, which claims that ALIBABA infringed its trademarks and committed acts of unfair competition because of offers made by third people (vendors) reproducing without authorisation the LAFUMA sign on its Alibaba.com marketplace.
- Represented Enterprise rent a car in a litigation that started in 2013 against the French car rental company rent a car. Rent a car tried to stop Enterprise from using its name and mark, claiming that it was trademark infringement.
- Represented ready-to-wear retailer Comptoir des Cotonniers (CDC) in copyright and free-riding proceedings brought by its former supplier in relation to the sale by CDC of several dresses and shirts.
HOYNG ROKH MONÉGIER
HOYNG ROKH MONÉGIER is especially strong in cross-border IP litigation, with particular experience in European law matters. Its clients include companies in the automotive, electronic, video games, telecommunications and life sciences industries. The trade mark team covers enforcement and protection of trade marks, designs, and trade names, as well as geographic indications. Denis Monégier du Sorbier is a highly regarded IP litigator, with a focus on cross-border trade mark and patent litigation, while Sophie Micallef is experienced in IP litigation and pre-litigation, acting for claimants and defendants in both France and Europe. Marie Georges-Picot is a key resource in trade mark, design and copyright litigation.
Practice head(s):
Denis Monégier du Sorbier; Sophie Micallef; Marie Georges-Picot
Testimonials
‘Knowledgeable, responsive, clear communication, experts.’
Key clients
Agrial
Benda Bili
Consejo Regulador del Tequila (CRT)
Cora
Essity
Etam
Katjes
Lancôme
Mobilux
Sage
Ticketbis
UBS / La Maison
undiz
Work highlights
- 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.
- Represented ETAM in unfair competition and infringement case where the team obtained an ex parte order and GIFI was condemned to withdraw all infringing products.
Jones Day
Jones Day provides full coverage to its clients on French and European trade mark disputes and litigation. Notably, the team has sector-specific knowledge in the wine and spirits industries and is able to advise on relevant IP matters such as licensing, marketing and regulatory issues, as well as the protection of brands that utilise the protected geographical indication system. Practice head Emmanuel Baud is experienced in representing clients in IP matters such as trade marks, designs, trade secrets and unfair competition, with a track record in assisting well-known food and beverage players with protected geographical indications. Edouard Fortunet, who made partner in January 2021, focuses on soft IP matters, with expertise in advising on IPOs and technology and wine and spirit industry clients.
Practice head(s):
Emmanuel Baud
Other key lawyers:
Edouard Fortunet
Testimonials
‘Sharp firm with great IP expertise.’
‘Emmanuel Baud has in-depth expertise and detailed analysis, great rigour and informed risk assessment.’
‘Jones Day clearly falls into the category of full service law firm with a strong and wide coverage of IP aspects, in France and at a worldwide level. Jones Day IP team is one step ahead in my view compared to its competitors given its IP transactional / IP litigation skills combination, its worldwide offices (with a very strong presence in the US and a presence in all countries that are relevant to our business) and its dedication to clients (strengthened by its partnership rules which makes the coordination very fluid and the ability to work with any offices worldwide very easy). 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 intellectual property law and has first-class experience in brand protection. In addition, Jones Day has developed a specific IP transactional practice, which is key in M&A and PE matters Tech companies such as Deezer are dealing with. Partners and associates have great availability, are top in their field 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 the process effectively, all with a dedication to the client. On the litigation front, we trust him with highlevel matters. Edouard Fortunet is smart, business-minded, responsive and reliable. He is my go-to person for all IP matters. Edouard has the requisite experience in the legal issues and risks that underpin our transactions, as well as a firm understanding of the underlying business such as commercial risk and reward elements. A top notch lawyer in my view who is a true business partner on a daily basis and knows how to develop an extremely strong relationship with his clients. A true role model for any junior partner’
‘Great responsiveness, attentive listening to customer needs, great rigor in the analysis of files and precise strategy proposed to the customer. Jones Day knows how to innovate by offering original solutions and being inventive in the face of complex legal issues in the context of litigation. Extensive expertise in copyright and trademark infringement litigation.’
‘Edouard Fortunet is very responsive, rigorous and human. He has extensive expertise both in copyright and trademark law litigation and in contractual matters. He always has a relevant analysis of cases and a precise legal strategy. He knows how to be daring and creative in the face of the challenges posed by a complex affair. Certain talent for the practice of advocacy.’
‘The network of the firm to connect issues from multiple jurisdictions in order to fit the customers need in complex contracts is unique.’
‘Edouard Fortunet is not only available at all times, but also manages to guide the client trough his network of collaborators within jones day.’
Key clients
Bolt Technology OU
Jean-Charles De Castelbajac
Voodoo SAS
Deezer SA
Les Heritiers Matisse
INAO (Institut National de l’Origine et de la Qualité)
JCDA SAS and Diffulice Sàrl, operating under the name “Body Minute”
Jeff Koons and Jeff Koons LLC
ENEDIS
Work highlights
- Represented Bolt Technology OU (formerly Taxify OU) to protect its trademark “Bolt”.
- Retained by Jean-Charles de Castelbajac to take over his representation in various litigation matters, including infringement, cancellation, and revocation actions pending before French and EU courts.
- Represented Voodoo in several civil actions launched against foreign companies and developers further to their unlawful copies of several Voodoo games.
Laude Esquier Champey
Laude Esquier Champey specialises in IP-related dispute resolution, both in France and internationally. IP practice head Sophie Havard Duclos is noted for her broad litigation experience, including representing clients in trade marks and design disputes. The firm's clients include French and international corporates and SMEs active in the fashion, cosmetics, luxury goods and technology industries.
Practice head(s):
Sophie Havard Duclos
Key clients
Christian Dior Couture
Danone
Engie
Accor
Leopold Croizet
Eugène Perma
Oxstal
Laboratoires Laurence Dumont
Corel
Work highlights
- Obtained the confirmation by the Douai Court on 17 June 2021 that the trademark “Danio” does not infringe upon Dagniaux’s former rights over two trademarks containing the name “Dagniaux”.
- Obtained a decision from the Paris Court on 28 May 2021 condemning Energy Green for the infringement of Engie and Engie Green’s former trademarks and trade names.
Allen & Overy LLP
The team at Allen & Overy LLP represents clients in the full range of IP disputes, including those concerning trade marks and design rights, as well as litigation over licensing and contracts, among other matters. It has particular sector-specific expertise representing major international brands active in the gaming, entertainment, consumer, technology and media industries, especially those based in the United States and Japan. IP practice head Alexandre Rudoni is a highly regarded IP litigator, particularly in relation to trade marks, designs and copyright mandates. Associate Andrea Dufaure acts for clients such as high-profile video game publishers and media service providers.
Practice head(s):
Alexandre Rudoni
Other key lawyers:
Andrea Dufaure
Testimonials
‘Operational team, efficient, fast and full of common sense. Perfectly masters the discipline.’
‘Great humanity of the interlocutors, beautiful and deep implication in the treated file.’
Key clients
Airbus
Cafe Joyeux
Darewise
Epic Games
Focus Home Interactive
Fujifilm
GSK
Homa Games
Imperial Brands & Fontem
MGM
Netflix
Nightbloomer
Nikon
Nintendo
Primark
Riot Games
SFL Interactive
Sintra
SPI Spirits
Valve
Webedia
Wolters Kluwer
Work highlights
- Assisted Netflix with the clearance of more than 90 clearances of new titles to be broadcasted in France.
- Assisted SINTRA before the Paris First Instance court in a trademark infringement counterclaim regarding the use of their trademark “PULSEUR”.
- Successfully represented Café Joyeux, a coffee-shop chain which employs disabled staff, in summary proceedings before the President of the Paris First Instance Court regarding the use of the term “JOYEUX”.
ADVANT Altana
The IP team at ADVANT Altana represents French and international clients in trade mark litigation and cross-border disputes. Its broad scope of IP work includes the protection and valuation of trade marks, domain names, and designs, as well as IP enforcement before places such as the French and European Trademark Offices. Additionally, the team is highly experienced in trade mark portfolio management, alternative dispute resolution methods, and commercial IP arbitration. Practice co-chair Pierre Lubet is a highly experienced IP/IT litigator and often acts for clients in the manufacturing and luxury brand industries. He works alongside co-chair Jean-Guy de Ruffray, a specialist in IP litigation. He also represents clients regarding data protection law, copyright law, and patent litigation.
Practice head(s):
Testimonials
‘Based on our experience with French firms in the field of IP, ALTANA has become our first choice. They are excellent both in terms of expertise and of value for money.’
Key clients
Moulin Rouge
ALDI
Herta
Ducati
Arenaire
Praised for its ‘impressive expertise in design matters’, Arenaire’s workload also includes anti-counterfeiting mandates, trade mark infringement litigation and regulatory work relating to the advertising of alcoholic beverages. The boutique firm counts multinational companies and SMEs in the technology, architectural and pharmaceutical sectors among its key clients. Founding partner and design expert Pierre Massot ‘gives a clear and objective picture of cases’ to furniture companies, high-profile designers and architects. He jointly leads the practice with Thibault Lentini, who is noted for his experience in customs litigation relating to counterfeiting.
Practice head(s):
Massot Pierre; Lentini Thibault
Other key lawyers:
Faustine Chaudon; Louis Louembe
Testimonials
‘Arenaire’s team is composed of young and very motivated professionals. While working with them, you get the feeling that they thoroughly discuss each aspect of the case, mix their expertise and share strategy and decisions. They are very well-organised, strict on deadlines and offer you continuous assistance, keeping you constantly updated on the case.’
‘Thibault Lentini is very attentive, available and pragmatic.’
‘The Arenaire team provides highly technical advice on difficult subjects with impressive expertise in design matters.’
‘Pierre Massot is an excellent lawyer, who combines technical expertise and an understanding of the expectations and constraints of his clients.’
‘Arenaire is a specialised firm in intellectual property, very professional and close to clients and their expectations.’
‘Pierre Massot has a great capability of listening and understanding the needs and objectives of the client. He gives a clear and objective picture of cases and explains the practical risks for the business. He has a great expertise in IP matters, is proactive and professional and offers you full and prompt assistance.’
‘We can wholeheartedly recommend Arenaire, which is highly specialised in design and always works to a consistently high quality. The team is always on the ball regarding all the latest in French and EU case law and we feel they are totally trustworthy when it comes to providing sound and well considered advice.’
‘Pierre Massot and Faustine Chaudon are creative thinkers, very good in design cases, knowledgeable, responsive and a pleasure to work with.’
Key clients
Maisons du Monde
Teva Santé
Technicolor
Lina Ghotmeh Architecture
Pernod Ricard
Martell Mumm Perrier-Jouët
Groupe Roullier
Zentiva
Balenciaga
Aéma Groupe
Wilmotte
Proludic
Ferragamo
Bardehle Pagenberg
With offices throughout Europe, the IP specialist team at Bardehle Pagenberg is highly active in representing clients in trade marks and designs enforcement, prosecution and litigation. Its clients include multinationals and big-name brands active in sectors such as fashion, pharmaceuticals, and media and entertainment. Practice co-heads Rebecca Delorey and Axel Munier are both experienced in representing clients before French courts over complex trade mark and design disputes. Marie-Claude Pellegrini made partner in January 2021, while Lionel Vial joined from Universite Paris-Saclay in June 2021.
Practice head(s):
Rebecca Delorey; Axel Munier
Other key lawyers:
Marie-Claude Pellegrini; Lionel Vial
Testimonials
‘The Bardhele team is very attentive to its customers and does not hesitate to offer innovative solutions to difficulties that sometimes seem inextricable.’
‘Axel Munier is an excellent lawyer specializing in intellectual property. He combines technical skills and a good understanding of the constraints and expectations of his customers.’
‘Very good legal knowledge and commercial understanding to solve disputes.’
‘Highly responsive, cost-effective and understanding of how the “Anglo-Saxon” legal profession works – i.e. they understand UK and US practices and ways of working.’
‘I have been working with Rebecca Delorey for many years. she has US and French qualifications, which means she can understand principles of IP in common law jurisdictions very easily. This makes the working relationship very efficient. Rebecca is very responsive and very commercial.’
Key clients
BMW
H&M
Diesel
Springer Nature Group
Red.com
Van’s
Virgin Enterprises Limited
Ferring Pharmaceuticals
easyGroup Ltd
Nintendo
Work highlights
- Assisted BMW in multiple trademark 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.
- Assisted H&M in various non-contentious and contentious trade mark, copyright, design and unfair competition matters in France.
- Assisted and represented Ferring Pharmaceuticals in a wide range of trademark matters, including strategic advice, pre-contentious work, and opposition proceedings before the French IP Office.
BCTG Avocats
BCTG Avocats covers all areas of IP law, particularly in relation to trade marks and designs. The team provides strategic advice and handles litigation for French and international clients, such as those active in the retail, sports, pharmaceuticals, cosmetics and software industries. It also is active handling unfair competition matters, parasitism and ambush marketing issues. The head of the IP department is Gaëlle Bloret-Pucci, who is an expert in both advisory and contentious IP matters, with a particular focus on trade marks and designs, brand protection, marketing, and parasitism. Consumer law and competition law specialist François Dauba was promoted to partner in January 2021. He frequently represents major players in the health and food sectors.
Practice head(s):
Gaëlle Bloret-Pucci
Other key lawyers:
François Dauba
Key clients
Nike/Converse Inc./All Star C.V.
Stada Arzneimittel/EG Labo
Uber/Uber Eats
Acast
Work highlights
- Assisted and represented both NIKE, LVMH and LACOSTE in the elaboration of 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 counterfeit retailers in the close suburb of Paris.
Candé Blanchard Ducamp
Candé Blanchard Ducamp is a well-known name among French and international companies active in the luxury brands, pharmaceuticals, insurance, technology and banking industries. Clients turn to the firm for advice on IP infringement and unfair competition actions, as well as customs and arbitration proceedings. The team is frequently active in both French and European courts. Founding partners Claire Herissay-Ducamp, Patrice de Candé and Julien Blanchard are each highly experienced IP litigators and advisors, often active before civil, criminal and community courts. Associates Clarisse Tourneux and Anna Revidi are also noted for their IP experience.
Practice head(s):
Claire Herissay-Ducamp; Patrice de Candé; Julien Blanchard
Other key lawyers:
Clarisse Tourneux; Anna Revidi
Casalonga
With offices in France and across Europe, Casalonga is well-placed to provide a full IP service to international clients, including mandates involving trade marks, patents, designs and copyright. Caroline Casalonga, who leads the trade mark and design team, frequently acts for French clients active in the life sciences, beverage, electronics and media industries. She works with Arnaud Casalonga and Marianne Gabriel as joint heads of the trade mark and design litigation practice. Karina Dimidjian-Lecomte is dual-qualified in New York and France and advises on trade mark and design matters, as well as portfolio management.
Practice head(s):
Other key lawyers:
Caroline Casalonga; Karina Dimidjian-Lecomte; Marianne Gabriel
Testimonials
‘Cabinet Casalonga has real experience and a very good network which allows it to efficiently manage international portfolios of brands and models. The firm has also developed IT tools which allow it to give its clients direct access to their portfolio and to consult the brands and models held according to various relevant criteria.’
‘The team is strong in wine law/the wine sector.’
‘Truly business-oriented employees. Very good knowledge of our specificities.’
‘Casalonga had perfectly understood the specificity of our needs regarding the protection of our trademarks. Besides the quality of their legal advice, Casalonga’s team had proven their capacity to take into account the nature of our association and its activities and to provide an adequate and personalized legal support in defining global strategy or managing cases.’
‘The team dedicated to our account had shown remarkable support, over the years, with efficiency and availability while providing legal counsel or representing us in regard to the protection of our trademarks.’
Key clients
Adeo
Altarea
A.P.C.
Auchan
BBG HYLINE Building Systems
Berliner
Biogaran
Blue Cross Blue Shield Association
Champagne de Telmont
Crédit Mutuel Arkéa
Eram Group
Essity
Gillardeau
Groupe France Thermes
Hasbro
Heineken
INAO
Kodak
La Chablisienne
Lalique
Lidl
Matsui
Médecins sans frontières
Moulin Rouge
Pandora
Samsung
Saint Gobain
Sanofi
Sky
VF
ViacomCBS
V33
Work highlights
- Litigated for the cancellation of French and EU trademarks for Crédit Mutuel Arkéa and engaged in trade mark infringement and unfair and parasitic competition cases.
- Assisted CBS Studios Inc. with filing an opposition against a trademark application claiming protection for Class 34.
- Defending Pandora in design litigation before the Paris court.
Dentons
Dentons‘ trade mark and designs practice is gaining momentum under the stewardship of new practice head Loïc Lemercier, who joined in March 2021 from Clifford Chance. Working with the very experienced senior counsel Isabelle Leroux, Lemercier handles a mix of litigation, counselling and transactional matters; the work often has an international component, with the firm’s global reach making it a popular choice for multijurisdictional matters. The technology, life sciences, fashion and luxury goods sectors are core sectors of the practice, in line with the firm’s general positioning.
Practice head(s):
Lemercier Loïc
Other key lawyers:
Isabelle Leroux
Testimonials
‘I’m very satisfied that Loïc Lemercier and his team have handled the matters with consummate professionalism and great care.’
‘Technical competence, availability, responsiveness.’
Key clients
Fontaine Limited
Merial/Boehringer Ingelheim Animal Health France
MG Freesites Ltd, MindGreek
Mobility Trader Holding
Mr Puffs Franchises
Olivier Lapidus
Polaroid/PLR IP Holdings, LLC
Polo Club
Schneider Electric
XNT Ltd.
Work highlights
- Defended MG Freesites Ltd and MindGreek in a legal action concerning alleged trade mark and copyright infringement before the Paris Court.
- Representing Schneider Electric Global in a trade mark infringement case against Euro-Négoce, for parallel importation of products of Schneider Electric trademark from outside of the EEA, without authorisation.
- Represented Merial (now Boehringer Ingelheim Animal Health France) in an eight year trade mark case.
DLA Piper
DLA Piper hired Frank Valentin from ADVANT Altana in February 2021 as global co-chair for media, sport and entertainment. Since his arrival, the very experienced litigator (whose expertise also includes patent and copyright matters) has built on the team’s strong track record in international disputes. In addition to its forensic practice, the group also assists with licensing matters, frequently in the context of wider contracting strategies, and acts on trade mark and design clearance and prosecution matters. The practice is particularly active in the media and entertainment, IT, e-commerce and life sciences sectors.
Practice head(s):
Key clients
Akzo Nobel
Amazon.com
Brooks Sports
Coravin
Edwards Lifesciences
Exacompta
Clairefontaine
Fear of God
Microsoft Corporation
Richemont International Ltd.
Unga BV
Work highlights
- Acted for defendant Coravin in a multijurisdictional trade mark dispute against the French and Belgian companies Cora and Delfipar regarding the registration of the trade mark Coravin, involving multiple opposition proceedings against the EU trade mark, cancellation actions and infringement proceedings on the claimants’ side as well as several revocation claims and a cancellation action for fraudulent filing brought by Coravin.
DTMV & Associés
DTMV & Associés is particularly well known for its strength in litigation, although the practice is broader and encompasses prosecutions, clearances and licensing matters. The boutique firm is able to offer clients access to a deep bench of partners, including Thierry Mollet-Viéville, Pascal Lefort, Thomas Cuche, Eléonore Gaspar, Laurine Janin-Reynaud and Julien Grosslerner. It is particularly experienced in matters connected with the luxury goods sector, but also frequently acts on matters involving the media, publishing and travel industries. In addition to its trade mark and designs expertise, the practice is also well versed in patent, copyright, trade secrets and unfair competition matters.
Practice head(s):
Thierry Mollet-Viéville; Pascal Lefort; Thomas Cuche; Eléonore Gaspar; Laurine Janin-Reynaud; Julien Grosslerner
Testimonials
‘The team is very friendly and good to work with, responsive and knowledgeable.’
‘Thomas Cuche was my key contact. He handled the matter very competently, and was easy to communicate with, making the whole process smoother.’
Fiducial
Fiducial Legal by Lamy's practice, which is led by Karine Disdier-Mikus, acts on contentious, transactional and advisory IP matters. The firm has a particularly strong reputation for international strategic branding matters, including the management and development of trade mark portfolios. The firm is part of the global network Terralex through which it can draw on the expertise of trade mark and design specialists across a number of foreign jurisdictions.
Practice head(s):
Karine Disdier-Mikus
Key clients
MCDONALD’S CORPORATION
CITY OF DEAUVILLE
POINT S
IRO
HAIER
B&B HOTELS
CITEO (formerly ECO-EMBALLAGE)
EMILE HENRY/JARS
Work highlights
- Advising McDonald’s on the availability of any new brand contemplated on their products and services in France, including advising the client on the best approach to dismiss or mitigate the risks generated by prior trade mark rights.
- Advising B&B Hotels on its brand strategy worldwide, including on conducting clearance searches in multiple jurisdictions, as well as conducting online IP enforcement including ‘notice and take down’ action and filing oppositions worldwide.
- Defending IRO brand in multi-jurisdiction disputes against another clothing similar brand from Taiwan.
FTPA
The team at FTPA covers the full gamut of IP matters, including trade marks, designs, copyright, and patents, as well as appellations of origin and disputes involving patronymic names. Additionally, it is highly experienced in search clearances and IP litigation before French and European courts, as well as related non-contentious matters such as data privacy, IT issues, and data protection. The team is particularly strong advising clients active in luxury brands, media and entertainment, fashion, and the perfumery and cosmetic industries. Antoine Gautier-Sauvagnac specialises in IP and media law, both within France and internationally. Counsel Hélène Huet frequently litigates before French and European courts and is also experienced in IP contract drafting and negotiations. Boriana Guimberteau left the firm.
Practice head(s):
Antoine Gautier-Sauvagnac
Other key lawyers:
Hélène Huet
Testimonials
‘The team is very solid and very advanced in the knowledge and use of new technologies. Great efficiency in understanding files and above all the service provided is very efficient and extremely business-oriented.’
‘Antoine Gauthier-Sauvagnac is not only an extremely effective leader and very attentive but he is very business-oriented, which makes his opinions very concrete. His responsiveness is remarkable and he is very approachable.’
‘Antoine Gautier-Sauvagnac greatly supports us on trademark litigation cases involving also trade dress and unfair competition aspects. He has a lot of knowledge about the trademark, trade dress and unfair competition scene in France and we always received fast and easy to understand advice.’
Gowling WLG
Gowling WLG‘s broad IP experience includes both contentious and non-contentious mandates involving trade marks, patents and design matters. The team is particularly strong in IP litigation and disputes, negotiation of operating contracts and management of IP rights. It frequently acts for French and international clients active in the cosmetics, food and drink, science and technology, and pharmaceutical industries, among others. IP head Céline Bey is experienced in French and pan-European trade mark and patent litigation and disputes, as well as trade mark clearance, oppositions and settlement agreements. Philippe Rousseau is a highly regarded commercial litigator. He also specialises in dispute resolution and international arbitration. IT/IP specialist and principal associate Clémence Lapôtre advises on copyright, trade marks and designs.
Practice head(s):
Céline Bey
Other key lawyers:
Philippe Rousseau; Clémence Lapôtre
Testimonials
‘Céline Bey is excellent in litigation and demonstrates great rigor, agility and availability for the client as well as a great ability to transcribe the necessary pragmatic approach into legal terms.’
‘I have been working for several years with Céline Bey, who is in charge of most of the Group’s major litigation cases in the area of trademark law and unfair competition. She is always available, has an acute understanding of business issues while being excellent in the legal and judicial approach to cases.’
Hoffman
Hoffman is noted for its advice on strategic IP issues, and also its strong litigation offering. It often acts for high-profile clients in sectors such as fashion, the arts and publishing. The team also addresses related issues in commercial law and unfair competition law, as well as IT matters involving personal data protection. Emmanuelle Hoffman, who is dual-qualified in France and Quebec, handles cross-border IP work. Pierre Hoffman acts on matters involving the intersection of criminal law and IP law. Ingrid Zafrani departed in January 2021.
Practice head(s):
Emmanuelle Hoffman; Pierre Hoffman
Key clients
Guess
Delvaux
Chalet International
Repetto
Etam
Maison Chateau Rouge
Marine Serre
L et M “Bombers”
Zapa
Barbara Bui
Groupe Vendome
Mediatransports
Olivier Lapidus
Mersea
Rock the Kasbah
Un Jour Ailleurs
Tianhai Lace
Lancaster
Sprintex
Zadig et Voltaire
Chalet International
Mathilde M
Groupe Cargo
Lexon
Mobiliere de France
Forestier
Platex
Ligne de Front
Trust
Publicis
Isermatic Systemes
Visuapose
Media Vision
MGA
Domaine Chateau Tour-Fourthon
L’Atelier du Vin
SNC Evok Hotels Collection
Woolip
Saint Tropez
Happn
Creacard
Airmat
Fooding Company
Hogan Lovells (Paris) LLP
The specialist IP, media and technology team at Hogan Lovells (Paris) LLP frequently advises clients active in the consumer goods, technology and media industries. Its work on trade marks and designs is part of a broader practice that encompasses patents and copyright issues. The dispute resolution team covers international litigation, mediation and arbitration matters before the French courts and the French IP office. Practice heads Marie-Aimée de Dampierre, David Taylor and Jane Seager collectively deal with major IP disputes and brand protection. Counsel Olivia Bernardeau-Paupe focuses on IP transactions, prosecutions and IP litigation.
Practice head(s):
Marie Aimée de Dampierre; David Taylor; Jane Seager
Other key lawyers:
Olivia Bernardeau-Paupe
Key clients
Work highlights
- Acted as a key outside counsel for Facebook regarding the recuperation of domain names and security issues.
Kern & Weyl
The boutique IP team at Kern & Weyl is led by founding partners Tania Kern and Claire Weyl, who primarily advise US, Italian and Spanish clients on IP rights and anti-counterfeiting measures, as well as the enforcement of trade marks, designs, and patents through litigation before European courts. Clients are often active in the fashion, luxury goods, wine and spirits, and cosmetics industries. Associate Florence Houisse focuses on both IP protection and defence. The team is also highly experienced in negotiating and drafting IP agreements.
Practice head(s):
Tania Kern
Other key lawyers:
Claire Weyl; Florence Houisse
Testimonials
‘Excellent team, great responsiveness and professionalism’
‘Claire Weyl is very involved in these files and always available for her clients.’
Key clients
PSA Group – Citroën Peugeot
Desigual
Calvin Klein
Tommy Hilfinger
Golden Goose
Danone
Osborne Clarke
Osborne Clarke has longstanding experience in IP litigation and IP asset management, particularly in relation to trade marks. The team frequently advises clients in advertising and other industries on internet IP content licensing, as well as IP enforcement, and has related experience in trade secrets. Claire Bouchenard focuses on trade marks and design-related advice and litigation, while Xavier Pican specialises in IP litigation and data protection, especially for clients in the energy, defence and telecoms industries. Béatrice Delmas-Linel covers IP and IT-related matters, such as regulatory and data privacy law, online distribution and cloud services for clients in the financial services and health sectors.
Practice head(s):
Claire Bouchenard; Xavier Pican; Béatrice Delmas-Linel
Key clients
This.Sign
PopSockets®
Bolt Mobility
RTE
Wirecard
Filatures du Lion
Esprit Europe Services
Palais des Thés
Poilâne
Richard Orlinski
Neoen
AutoDoc
Bren-Tronics, Inc.
Danone
GRTgaz
HanesBrands
HID
Médiamétrie
WW – Marque
Work highlights
- Defended This.Sign in a litigation case aimed at limiting the exhaustion of trademark rights on the European market.
- Advised Palais des Thés on its international development, including trademarks, distribution agreements, franchising concept stores, litigation and pre-litigation.
- Defended Bolt Mobility in a dispute preventing the arrival on the scooter market of a new economic player.
Pinsent Masons LLP
The IP team at Pinsent Masons LLP is highly experienced in trade marks and designs, copyright and patents. Its team has expertise in cross-border issues involving France, Germany, and the United Kingdom. Clients are often active in the construction and engineering, life sciences, retail, and technology industries. Practice head Emmanuel Gougé, who is dual-qualified in England and Wales and France, specialises in cross-border soft IP litigation, while legal director of the Paris team Virginia de Freitas is noted for her pan-European IP litigation experience on behalf of clients in a wide range of industries.
Practice head(s):
Emmanuel Gougé
Other key lawyers:
Virginia de Freitas
Testimonials
‘Personal contact. Clear guidance’
Key clients
Griesson de Beukelaer
Accord Healthcare
Teva Pharmaceuticals
France Brevets
UHU
Work highlights
- Successfully advised Griesson de Beukelaer, a major player in the food industry, in defence on a three-dimensional trademark infringement and action against Générale Biscuit Glico France and Mondelēz Europe & France, in connection with the “Mikado” chocolate biscuit stick.
Simmons & Simmons
Simmons & Simmons‘ team, which is led by Marina Cousté and Sarah Bailey, stands out for its integrated international network of specialists in contentious, transactional and advisory IP matters. Bailey, who is dual-qualified in France and England/Wales, leads the firm’s cross-border brands team, which regularly examines client development projects and changes to local case law and legislation. Another standout aspect of the group is its depth of knowledge in specific sectors such as pharmaceuticals and wine & spirits.
Practice head(s):
Sarah Bailey; Marina Cousté
Other key lawyers:
François Jonquères
Testimonials
‘The team assists us in an integrated and extremely pragmatic way, taking into account the needs of the business. It offers innovative solutions tailored to each case in both operational and financial terms.’
‘They are accessible and possess an unwavering involvement with a real desire to support the company’s projects and to ensure the best possible legal security while keeping in mind the need to preserve and support the business.’
Key clients
Metro-Goldwyn-Mayer
Chateau Lafite Rothschild
Domaine Romanée-Conti
Ticket for change
@Makesense
Taylor Wessing
Taylor Wessing‘s team, which is 'very knowledgeable and well-respected', has particular expertise in matters where soft IP issues, cybersecurity and data protection cross over. Soft IP is an area in which associate Inès Tribouillet often acts both as a counsel and as a litigator. The team is led by experienced practitioner Marc Schuler, who concentrates on the technology and media industries. The offering to clients covers filing strategy and trademark protection, as well as infringements and reputational risk to clients in the digital communication age.
Practice head(s):
Marc Schuler
Other key lawyers:
Inès Tribouillet
Testimonials
‘True experts in their field and very helpful.’
‘Very knowledgeable and well-respected.’
Key clients
Orange
Banijay Group
Square
Fox Channels
RATP
Airbus
American Airlines
Dailymotion
The North Face
Hiscox
Farfetch
Webedia
Comcast
Tik Tok
Spotify
Gallup
Festicket
Maison Lejaby
Woolworths
Hacker-Pschorr
Work highlights
- Representing Orange in a lawsuit initiated by Intel Corporation on the grounds of the infringement of its trade mark INTEL INSIDE and unfair trade practice regarding the use of the brand HUMAN INSIDE.
- Managing Banijay Group’s trade mark portfolio and assisting in its title clearance program.
- Assisting Tik Tok with anti-counterfeit actions relating to the import and marketing of various infringing products reproducing its trade mark.
UGGC Avocats
UGGC Avocats‘s trade mark and design practice is a core part of the broader IP offering at the firm. The team has expertise in the development and implementation of domestic and international portfolio strategies, as well as commercial contracts, including agreements for marketing, merchandising and franchising purposes. Contentious matters are also a key driver of work, including anti-counterfeiting matters, opposition, revocation and infringement proceedings. Elsewhere, domain name matters, including cybersquatting cases, and alternative dispute resolution matters are other areas of strength. The group's wide sector expertise includes the fashion and luxury goods, pharmaceutical and cosmetics, consumer goods, publishing and IT industries. Elisabeth Logeais, Corinne Khayat and Anne-Marie Pecoraro lead the practice. Consultant Rodolphe Boissau provides key support.
Practice head(s):
Elisabeth Logeais; Corinne Khayat; Anne-Marie Pecoraro
Other key lawyers:
Rodolphe Boisseau
Testimonials
‘Anne Marie Pecoraro has the qualities of a great lawyer (agile intelligence and formidable strategist) and is an individual of action, strong in her expertise and convictions. She knows how to pursue her client’s objective with extraordinary diligence and combine an iron fist with great negotiating and diplomatic skills. Rodolphe Boissau is excellent. They are remarkable lawyers.’
‘A trusted team, who are always on top and available 24/7.’
‘Anne-Marie Pecoraro is Europe’s best IP lawyer, by far.’
‘An outstanding trade mark practice.’
Key clients
Crédit Agricole Immobilier
Colas
Girardin Benoît
Divine Paris
Solinest
Enalean SAS
Musée d’Art et d’Histoire du Judaïsme
Gustavo Lins
Licensing international (ex LIMA) https://licensinginternational.org/)
Zahia Dehar
Moundir Zoughari
Quartana
Bouderbala
Archikonsol
Luxuvince ECI
Michel klein / marques SEMK- DINGO
MAS de So
Luc Bellier
Work highlights
- Advised Divine Paris on the management of its trade mark portfolio.
- Advised Gustavo Lins on the protection of his brand and creations across the globe.
Aramis
Benjamin May's team at Aramis is experiencing a rapid growth in mandates in the cosmetics, biotech and life sciences sectors. It was particularly focused on anti-counterfeiting and IP portfolio management issues in 2021. The group benefits from the firm’s wider partnerships with large international firms, enabling collaboration on worldwide disputes. The team is assisting with an infringement claim for Molo Design against Chanel companies, which is pending in Germany and Italy. Senior associate Florent Mattern is praised for his ‘creative solutions.’
Practice head(s):
Benjamin May
Other key lawyers:
Florent Mattern
Testimonials
‘Aramis has an excellent, highly qualified and responsive team. We have worked with them in a number of high profile matters in and out of court and they have performed well in all instances. They have shown in-depth knowledge in all IP issues.’
‘Benjamin May is a seasoned practitioner and very experienced. Florent Mattern has creative solutions.’
Key clients
Molo Design
Allergan/AbbVie
Verweij Fashion
Lidl
Eiffage
National Fitness Campaign
Qonto
Work highlights
- Represented Molo Design Ltd in a worldwide dispute related to the infringement of its internationally renowned industrial designs against Chanel and its suppliers.
- Assisted Allergan with a complex and worldwide trade mark case.
- Assisted Lidl France with several litigations for various IP-related issues.
Benoliel Avocats
Benoliel Avocats remains one of France’s go-to firms for complex trade mark and design disputes. Under the lead of founding partner Sylvie Benoliel-Claux, the team shoulders a busy caseload of litigation before French and EU courts, with clients including prestigious French and international companies from the automotive, media, food, design, fashion and pharmaceutical sectors. Since 2022, Benoliel-Claux is the president of the French Association of Trade Mark and Design Law Practitioners.
Practice head(s):
Sylvie Benoliel-Claux
Testimonials
‘Sylvie Benoliel-Claux is very clear, provides to-the-point recommendations, is quick to respond, provides a high service-level and is fun to work with.’
‘A small, good-level team (who is attentive to its clients and available) led by Me Benoliel-Claux, whose expertise in intellectual property, and in particular in designs, is recognised.’
Key clients
Etablissements Gabriel Boudier
Societe Hotel Majestic Immobiliere et d’Exploitation
Lola James Harper
Cabinet Bouchara Avocats
Vanessa Bouchara is the main contact at Cabinet Bouchara Avocats. She has expertise in trade marks and industrial design rights, as part of a broader IP practice. Her work encompasses filings, oppositions and administrative proceedings, as well as cancellation actions and infringement matters.
Testimonials
‘The whole team is extremely good from a technical point of view, and is also very pragmatic. We appreciate the proactive and intelligent solutions offered to us. We love working with this firm.’
‘Vanessa Bouchara is truly remarkable and brilliant, both for the quality of her work and for the cohesion with her team. We have unparalleled follow-up and love to work with each member of the firm.’
‘One of the firms I rely on in France for trademark protection issues. Very responsive and top-notch expertise.’
‘The main person we work with is Vanessa Bouchara, who we appreciate and is a brilliant and very resourceful lawyer. She always offers us practical solutions, in which she mixes her perfect knowledge of our company and legal principles.’
‘A very determined firm and team, hardworking and passionate about their profession. It is a pleasure to work with people who have this passion. All our needs are anticipated and we are really very satisfied.’
‘While I have worked with most of the lawyers, my go-to person is Vanessa Bouchara. She is smart, has the experience needed and is responsive.’
Key clients
In-N-Out Burger
Beiersdorf
Nicolas Ghesquière
Ba&sh
IKKS Group
Christian Lacroix
La Prairie
Caudalie
Respire
Western Digital Technology
Attijariwafa Bank
JT Global
Sofrane (Paul & Joe)
Eleven Paris
Stella Forest
Berenice
Des Petits Hauts
Byli Vy
Valege
Creaddict (Redline)
Les Montres Suisses
Feed
Deux Magots
Biocoop
Witradis (Cavavin)
Benoit Valérie Calvet
Château Peyrat-Fourthon
La Française des Jeux
Netbet
Altavia Group
Maisons France Confort
Technitoit
Camif Habitat
Guy Hoquet
Laforêt
Eeveroad
Levest
Gigafit
Tonipharm
Laboratoires Diététique et Santé (Vitaflor)
Kingsley Coman
Sophie Ferjani
CMS
CMS continues to grow its trade mark and design portfolio practice to complement its strong litigation practice. Practice heads Anne-Laure Villedieu and Jean-Baptiste Thiénot specialise in the perfume and cosmetics, automotive, healthcare, media, hotel and leisure and fashion industries. Clients benefit from the firm's international presence and the Paris office’s other departments. Counsel Sabine Rigaud is also recommended.
Practice head(s):
Anne-Laure Villedieu; Jean-Baptiste Thiénot
Other key lawyers:
Anaïs Arnal; Sabine Rigaud
Testimonials
‘The CMS team is remarkable from all points of view. Responsiveness, pragmatism and finesse of analysis. They know how to create links with their clients and deliver high-quality services within sometimes tight deadlines.’
‘Anne-Laure Villedieu is very available and a good IP practitioner.’
‘Anne-Laure Villedieu, the partner who leads the team, is approachable and talented. She relies, in particular, on Anaïs Arnal, a lawyer whom I appreciate working with because of her speed in identifying our issues and her finesse of analysis.’
Key clients
Biogroup
Advance Publications
Champagne André Clouet
Wexford France
Des chiffres et des lettres
Hotel George V
Caval
Work highlights
- Assisting Advance Publications with the protection of its trade marks.
- Representing Champagne Andre Clouet in trade mark infringement proceedings abroad.
- Managing the trade mark portfolio of hotel George V.
DS Avocats
DS Avocats impresses with its expertise in commercial contracts, contentious matters and prosecutions. The licensing practice covers matters such as distribution and technology transfer contracts, research and development contracts and contracts relating to artistic performances and productions. Contentious work includes French and cross-border disputes, spanning infringement, opposition, revocation, invalidation and cancellation actions. Disputes before the European courts and the EUIPO as well as domain name disputes are also handled. Catherine Verneret is the head of the practice.
Practice head(s):
Catherine Verneret
Key clients
EDF
Enedis
Société de Gestion Pierre Cardin
Bazarchic
O’Tacos
Carrefour
Le Louvre
Afnic
Joseph Duclos
YEGO Urban Mobility
Work highlights
- Advising EDF on its partnership with the Olympic Committee for the 2024 Olympics.
- Advising Société de Gestion Pierre Cardin regarding issues raised in the context of testamentary succession of Pierre Cardin and the continuity of the protection of its trade marks.
- Managing Groupe O’Tacos’s trade mark portfolio worldwide.
Eversheds Sutherland (France) LLP
Eversheds Sutherland (France) LLP stands out through its clear focus on the luxury goods sector. Paris-based practice head Gaetan Cordier also leads the firm’s global luxury goods practice group, which is highly active in multijurisdictional matters. In addition to handling advisory work, the team excels in a wide range of contentious matters, with anti-counterfeiting cases and infringement proceedings accounting for a significant portion of the caseload.
Practice head(s):
Gaëtan Cordier
Fieldfisher
Fieldfisher is particularly renowned for its strong litigation practice, both before French and European courts. The team is also a very good choice for non-contentious matters, such as the management and development of sizeable trade mark portfolios. Practice head Nathalie Hadjadj-Cazier and her team are also well versed in unfair competition and trade secret matters. Domain name disputes are also handled, including through alternative dispute resolution methods UDPR and Syreli. The French practice is an integral part of the firm’s international IP offering and frequently joins forces with colleagues abroad to cover multi-jurisdictional matters.
Practice head(s):
Nathalie Hadjadj-Cazier
Other key lawyers:
Mathilde Razou
Testimonials
‘This firm has strength and expertise in trade marks, both in France and other Western European countries. They are responsive, efficient, and have performed well.’
‘I rely on Nathalie Hadjadj-Cazier as my go-to partner. She is smart, has great expertise, is pragmatic and great with clients.’
‘FF Paris is handling a good number of opposition, invalidation and cancellation proceedings. They have a very knowledgeable and professional team and it is a joy to work with them.’
‘Of counsel Mathilde Razou is very thorough and responsive. Nathalie Hadjadj-Cazier is the lead partner and she is always there if needed.’
Key clients
Digital Classifieds France (SeLoger)
Tricotage des Vosges
Wolf Lingerie
Petits Frères des Pauvres
Main dans la Main
Giordano Enterprises
6000 Rebonds
Recordati Europe
Take Two Interactive
EY
FRAMA
Hager Electro SAS and subsidiaries (Hager Group)
Chateau Talbot
KNT Limited
Hager
Champagne Billecart Salmon
Hema France
Purally
Crocs
Work highlights
- Assisting Hager Group with a case involving an infringement action before the Paris Court of First Instance, against the Schneider Electric Group, which had counterfeited the design of a switch.
- Acting for Group Giordano against the Dutch company Verweij Fashion in three pending non-use invalidation actions and in proceedings before the French Supreme Court (Cour de Cassation), the Court of Appeal and the INPI (revocation actions).
- Defending Recordati Rare Diseases (RRD) and Recordati Orphan Drugs (ROD), two pharmaceutical companies member of the Recordati group notably specialized in research and development of orphan medicinal products, in litigation brought by one of its former medicine boxes’ supplier, the French company ALIAS before the Paris Court and an invalidation action filed before the EUIPO.
Féral
Féral acts on transactional and litigation matters involving trade marks and designs. The team of practice head Richard Willemant is well-versed in multijurisdictional disputes, with a particular focus on Europe, Canada and Japan. Anti-counterfeiting proceedings and alternative dispute resolution methods feature in the caseload. The practice also assists with the development and implementation of brand protection strategies, often involving multiple jurisdictions. The group’s expertise in software-related IP and due diligence experience are further assets. Farid Bouguettaya joined from Artemont.
Practice head(s):
Richard Willemant
Other key lawyers:
Farid Bouguettaya
Testimonials
‘Richard Willemant is one of the most gifted lawyers of his generation. His expertise in intellectual property is impressive. He is one of the best strategists in France in disputes.’
‘The team has excellent knowledge of its subjects.’
‘FÉRAL is truly an exceptional intellectual property law firm, because they have a practice that covers both litigation and advice, including the filing of trade marks, designs and copyright. They are also very experienced on the international scene, whether for an international infringement dispute or, in terms of advice, to define and implement a strategy for the protection of a brand internationally.’
Work highlights
- Managing a client’s trade marks portfolio, file oppositions and infringement lawsuits.
- Assisting a French industrial client with respect to its trade mark applications in South America.
- Assisting a French company with its trade mark strategy across the EU, including management of risks involved by earlier trade mark rights, management of the client’s trade mark portfolio, drafting of trade mark-related agreements and assisting in pre-contentious matters.
Joffe & Associés
Joffe & Associés launched its IP practice with the arrival of Véronique Dahan (formerly counsel at August Debouzy) in November 2020. Dahan’s practice includes strategic portfolio development and prosecution, litigation and commercial contracts. Investigations and interim measures are areas of particular strength. Customs proceedings, IP valuing and audits also frequently feature in the caseload. UDPR proceedings are also handled. Dahan’s specialisation in the luxury goods sector fits very well with the firm’s existing client roster of luxury goods clients.
Practice head(s):
Véronique Dahan
Testimonials
‘The arrival of Véronique Dahan is a significant development. She brings huge experience and knowledge of IP protection and exploitation, particularly in fashion.‘
‘Véronique Dahan is clever, strategic with incomparable industry knowledge. And a delight to work with.’
‘My interaction with Véronique Dahan has allowed me to appreciate her listening skills, her proactive attitude to propose solutions not just in a legal context. Her extensive experience gave me the pleasant impression that her solutions are tried and trusted.’
Key clients
ADP (Aéroports de Paris)
Bpifrance Innovation – Large Venture
LES CORPOGRAPHES
Work highlights
- Advised Aéroports de Paris on its project to acquire the entire capital of BTA SAS France, in cooperation with the firm’s other departments.
- Advised Bpifrance Innovation – Large Venture on the IP aspects of its investment in Cubyn, in cooperation with the other departments of the firm.
- Assisted Les Corpographes with trade mark and image right matters for its clients’ advertising campaigns, including research of prior trade mark registrations, filing and prosecution of trade mark applications, and strategic advice.
Momentum Avocats
Momentum Avocats was created in September 2020 by Julien Canlorbe (formerly at Meridian), Jean-Sébastien Mariez and Julie Carel (both formerly at De Gaulle Fleurance & Associés). The young independent firm has already made name for itself in the market, notably for its high-profile litigation practice. The advisory work on the structuring of IP portfolios and their valuing in the context of audits or commercial contracts also deserves a mention. The luxury goods, fashion and publishing sectors are mainstays of the firm, but the team offers wide-ranging sector expertise. Companies from the digital economy, including e-commerce platforms and artificial intelligence players, also turn to the firm for strategic advice.
Practice head(s):
Julien Canlorbe, Jean-Sébastien Mariez; Julie Carel
Osmose
Osmose acts for mid-sized companies and international players, primarily from the consumer goods, food and beverage, luxury goods, financial services, entertainment, automotive and healthcare sectors. Jointly led by Alexandra Le Corroncq and Alexis Vichnievsky, the team acts for clients in contentious matters, notably in counterfeiting and unfair competition proceedings, as well as on non-contentious work, including the management and development of trade mark portfolios. Transactional work is also handled.
Practice head(s):
Alexandra Le Corroncq; Alexis Vichnievsky
Testimonials
‘We appreciate the availability of the lawyers and their level of intellectual property knowledge. They are good extension workers and their work is of high quality.’
‘They know how to give clear and complete information, allowing the management of the disputes entrusted to them. They highlight the essential pillars of the file, to allow it to succeed favourably and then indicate the secondary elements that can consolidate the procedure.’
Key clients
Coca-Coca European Partners
Sony Interactive Entertainment France
Picard Surgelés
Saupiquet (Bolton Food)
Takasago Europe Perfumery Laboratory
Schmidt Groupe
Cité de la musique – Philharmonie de Paris
OGF
CEF-Yesss Electrique
Orveda
Grevin et compagnie
Jack Morton (IPG Group)
Bel
Havas Voyages
Agir pour l’environnement
Utel Fastlight
DST
Anne & Valentin
Sogetrel
Schmidt Brunet Litzler
Schmidt Brunet Litzler demonstrates strengths in both advisory and contentious matters. Founder Delphine Brunet-Stoclet frequently acts on strategic portfolio development matters, particularly in France and at European level before the EUIPO. Commercial contracts and co-existence agreements complement the prosecution practice well. The team’s litigation strength comes to the fore before French and European courts, as well as in opposition proceedings before the respective intellectual property offices. Custom proceedings and emergency measures such as interim measures and seizures also feature in the caseload. The group’s wide-ranging sector expertise includes the luxury goods and cosmetics, commodities and food and beverage sectors.
Practice head(s):
Delphine Brunet-Stoclet
Testimonials
‘The team is fantastic. They showed great pedagogy. They offered us excellent advice in order to work on a robust strategy adapted to our needs in order to protect our brand in France and abroad. In addition, they have done and still show a lot of flexibility throughout the process.’
‘I have the chance to work a lot with Delphine Brunet-Stoclet. Not only did Delphine’s advice prove to be precise and fair but Delphine went above and beyond the matter at hand.’
‘Very responsive, with helpful and practical advice.’
‘Delphine Brunet is a very strong lawyer, hands-on, strategically, and also commercially. She is a pleasure to work with!’
‘Small team with a pragmatic business-oriented approach to legal matters.’
‘Delphine Brunet-Stoclet is very pragmatic and comes up with outside the box solutions.’
Key clients
Amélie Pichard
Marquisat de Sainte Marie
Eugene Riconneaus
Artenova
Vasgos – Oddo
Dermatologic Skincare Solutions
Freemium
Stim Media
Bastille Day
Concept Footwear Solutions
Crossline
Yaheer E-sense of Bue
Beauty Disrupted
MBXCH
Econocom
Nasco
BUTLER Industries
Noerden
MEYER
WEB Industries
Val d’Opies
Skeat
CMI Media
ESP Consulting
Westland
Precious
Edmond de Rothschild
Piaton
Carmen Busquets
Covivio
Web Industries
Cyria
Marie Poniatowski
Le Piton de Sancerre
Isalt
Fonds Stratégique de participations
Artora
Actually
ETEX
OVD
L’Ameublement français
Work highlights
- Advising Dermatologic Skin Care Solutions on trade mark infringement and unfair competition proceedings against its former distributor.
- Assisting CYRIA with the management of a European designs portfolio and license agreements, and defending its European design rights.
- Advising So Press on its trade mark So Foot.
Squire Patton Boggs
Squire Patton Boggs' Paris practice has developed well since the arrival of practice head Catherine Muyl (formerly at Foley Hoag) in June 2020, not least thanks to the team’s close ties to the firm’s international offices. Under Muyl’s lead the practice focuses on advising international corporations from the electronics, pharmaceutical, aerospace and energy sectors as well as companies from service industries such as the media, telecommunications and research sectors. The caseload mainly includes licensing agreements and other commercial contracts as well as contentious matters.
Practice head(s):
Catherine Muyl
Key clients
Rimac Automobili
Work highlights
- Advised Rimac Automobili on all French IP issues relating to its combination with iconic French automotive brand Bugatti Automobiles.
Taliens
European IP boutique Taliens offers the full range of trade mark and design services, spanning prosecution, litigation and transactional matters. With offices in France, Germany and Spain, the practice is an excellent choice for European cross-border matters. Lead duo Jean-Frederic Gaultier and Clara Steinitz are especially renowned for their strengths in litigation and experience of advising on complex transactional work, including due diligence matters.
Practice head(s):
Clara Steinitz; Jean-Frédéric Gaultier
Testimonials
‘Outstanding in IP litigation cases, especially on an international level.’
‘Jean-Frédéric Gaultier is professional and experienced.’
‘Solid assessment of the cases, great communication skills, high percentage of success on solving disputes.’
‘The employees are very sharp, efficient and fully meet our expectations in order to respond to requests often formulated within tight deadlines.’
‘Jean-Frédéric Gauthier knows his subject remarkably well. It is a great help in quickly identifying important topics and making the right decisions.’
‘Clara Steinitz has been exceptional in her assistance. She has been able to deliver excellent responses in very little time and to achieve great results for our company. I would also like to give special mention to the exceptionally good command of the English language.’
‘Very hands-on and practical, fast and successful.’
‘The team provides a solid assessment and is able to deliver the expected results. The team is especially useful to find extra-judicial solutions.’
Key clients
Fruit of the Loom
Richemont
TCL
Banque de Neuflize
Burger King France
ODDO BHF
Goodwin Procter
Red Bull
Stella Mc Cartney
Work highlights
- Advising Red Bull on a regular basis in the defence of its trade mark portfolio in France and acting as French Customs point of contact for trade mark infringement matters.
- Advising Burger King on risks assessments in relation to the launch of new products or promotional operations, in view of its competitors’ rights and operations.
- Managing TCL’s trade mark portfolio.
VARET PRÈS KILLY
VARET PRÈS KILLY is a boutique firm focusing on intellectual property, media and information technology matters. Practice heads Vincent Varet and Xavier Près have longstanding experience of undertaking both advisory and contentious matters across a wide range of sectors, including luxury goods, publishing, culture, sports and IT.
Practice head(s):
Vincent Varet; Xavier Près
Testimonials
‘Varet & Près is at the forefront of all matters relating to intellectual property, in particular with regard to digital technology.’
‘Vincent Varet is exceptionally available, responsive and efficient.’
‘Vincent Varet has been able to adapt to our business. We appreciate his strategic vision of brands, which does not systematically lead us to litigation.’
Key clients
Ville de Vichy
Work highlights
- Assisted and advised the City of Vichy in the framework of the historic agreement signed with the French State regarding the transfer of the Vichy Spa and the related trade marks and domain names portfolio (VICHY, VICHY CELESTINS, PASTILLE DE VICHY, VICHY SPA HOTELS, VICHY DETOX, THERMALIA, CLINIQUE DES CELESTINS, etc.).
August Debouzy
Practice head(s):
Mahasti Razavi; Grégoire Desrousseaux
Other key lawyers:
Laure Arnon-Duquesnoy
Testimonials
‘The team takes a pragmatic and innovative approach to subjects. They have a desire to understand the project and propose the most appropriate solution. They think outside the box and are not confined to an obvious solution.’
‘Grégoire Desrousseaux and Laure Arnon-Duquesnoy are available, pragmatic, efficient and innovative.’
Key clients
Maytronics France
Château Beauséjour HDL
Deepgray Vision
Voodoo
Work highlights
- Assisting Voodoo with its brand strategy its registration of multi-media TMs.
- Advised Maytronics on the best strategy to implement, in order to carry out a verification prior to the filing of a French and EU design.
- Assisted Château Beauséjour HDL with the management of its IP portfolio, in accordance with the provisions relating to wine law and Grand Cru Classé appellations.
Bignon Lebray
Practice head(s):
Nicolas Moreau
Work highlights
- Advised Agence Nationale pour la Cohésion des Territoires, the French national urban planning public agency in protecting its trademark portfolio.
De Pardieu Brocas Maffei
Practice head(s):
Barbara Levy
Key clients
Valeo
Exor
Timberland Group
VF Corporation
Totes Isotoner
Vans
The North Face
CNIM
Napapijri
Blackberry
Victoria’s Secret
Siemens Healthcare
Robert Bosch
Work highlights
- Advising Exor on the IP aspects of its acquisition of Christian Louboutin group.
- Representing Blackberry in an IP litigation case.
- Advising SAIPEM on the IP aspects of its acquisition of Naval Energies’ floating wind business.
Deprez Guignot Associés
Practice head(s):
Vincent Fauchoux; Frédéric Dumont; Jean-Daniel Bouhenic
Key clients
L’Oreal
Fédération française de la Couture
Polaroid
M6
Work highlights
- Co-founded with BLOCKCHAINYOURIP of a time-stamping solution using blockchain technology to protect creations and innovations which been used by several large luxury houses.
- Acted as counsel for L’OREAL in litigation regarding the launch of new eco-friendly products.
- Litigated on behalf of Polaroid against Fujifilm for the protection of the iconic ‘square format’ of photography, historically proposed by Polaroid.
EBL Lexington Avocats
Practice head(s):
Laurent Levy; Michaël Piquet-Fraysse
Testimonials
‘The firm is able to respond quickly and efficiently.’
‘Michaël Piquet-Fraysse’s ability to offer alternatives and innovative solutions.’
Key clients
SPA
J.M. Weston
Bonpoint
Piper-Heidsieck
Charles Heidsieck
Gas Bijoux
Normalu
Mackage
Sartore & Compagnie
Bonneval Waters
Duclot
Malt
Codage
Go on Media
Audi
Volkswagen
Morganne Bello
Petrus
Work highlights
- Advised Pétrus in pre-litigation, opposition and invalidity proceedings against Gordon Ramsay, who tried to acquire trade mark rights on the Pétrus name.
- Representing SPA in an action against the association La Manif Pour Tous and the Fondation Jérôme Lejeune for parasitism.
- Representing J.M. Weston in an action against Amazon Europe Core for trade mark counterfeiting and misleading commercial practices.
FIDAL
Practice head(s):
Laurence Dreyfuss Bechmann; Natalia Moya-Fernandez
Key clients
Puma SE
Jardins de Gaia (SARL MAKA)
Dopff et Irion
Clipso
Badiff / Bagelstein
Top Tex / Kariban
TOURCOM
BAYARD PRESSE
AEW Europe
Académie des Beaux Arts
Fondation Alliance Française
Work highlights
- Represented Puma SE in several proceedings before different jurisdictions linked to the infringement of designs and trademarks of the international sportswear company PUMA in the sector of shoes and garments.
- Managed the IP assets and enforced IP for Bayard Presse.
- Acted for Clipso regarding trademark infringement and unfair competition before the judicial court of Nancy.
Franklin
Practice head(s):
Sandra Strittmatter
Other key lawyers:
Erwan Prely (Associate)
Testimonials
‘I highly recommend the qualities of Sandra Strittmatter, who knows how to take into account business and marketing aspects of matters and has an excellent knowledge of the law. She has extensive experience in issues related to alcohol advertising, a rare specialty that few lawyers master.’
‘Erwan Prely is a fine jurist and a very good lawyer.’
‘Sandra Strittmatter started this team very recently, but the evolution is amazing. Very fast turnaround, excellent level of English. Sandra is young and works for her clients with 100% energy and commitment.’
Key clients
Martell & Co
Champagne Perrier-Jouët
Airwair International Limited
Siemens SAS
Work highlights
- Assisted Martell & Co and Champagne Perrier-Jouët with contract and IP law in the context of marketing and communication related agreements on a regular basis.
- Advising Airwair International Limited on the protection and enforcement of its IP rights in France.
- Advising Siemens SAS on a regular basis in relation to IP law.
Harlay Avocats
Practice head(s):
Sabine Lipovetsky; Fabrice Perbost; Dominique Mallo
Key clients
Société d’Exploitation de la Tour Eiffel
IonisX
Laboratoires Thea
Isigny Sainte-Mère
Tereos
Lanson
Sipromad
Made4aWoman
Organisation Mondiale du Prix Versailles
Herald Avocats
Practice head(s):
Richard Milchior; Jérémy Cardenas
Testimonials
‘Efficient team who are attentive and available.’
‘Jérémy Cardenas stands out with his deep knowledge, swift way of thinking and always gets to the heart of things.’
‘The team anticipates client needs and gets to the point quickly.’
‘Jérémy Cardenas and Camille de Perthuis are efficient in handling cases.’
Key clients
OVHcloud
Champagne Lanson
Champagne Chanoine Frères depuis 1730
Maison Burtin/Lanson-BCC
Région Bourgogne-Franche-Comté
Mutuelle de l’Industrie du Pétrole
Conticini Franchise
Vegan Diners Limited
Financial Planning Standards Board Ltd.
Jacobacci
Practice head(s):
Jean-Mathieu Bertho; Olympe Vanner
Other key lawyers:
Alexia de Maulde
Testimonials
‘Jacobacci is a very good firm with great expertise in intellectual property law and innovative measures to capture its clientele.’
‘Jean-Mathieu Bertho and his team are excellent lawyers specializing in trademark law. Bertho demonstrates impeccable professionalism in the management of his practice.’
‘The trademark team of Jacobacci Paris provides great, pragmatic advice. Olympe Vanner combines excellent legal knowledge with lots of business acumen and a fantastic can-do approach. She’s highly responsive and a great strategical partner when things get difficult. Also clear on invoicing matters and value for money. Highly recommended!’
‘They have always a very direct approach to the issues bearing in mind the interest of the client.’
‘They are very client oriented and always demonstrate deep knowledge of the business environment that surround the legal issue at stake, in order to propose effective and efficient as well as practical solutions.’
‘Jean-Matheiu Bertho is very good. The team is also very good, diligent, available and highly specialized in trademark and copyright law, as well as in design and model law and in unfair competition law.’
Klein Wenner
Practice head(s):
Laurent Badaine; Matthieu Bourgeois
Testimonials
‘Very professional team, which cares about the details and is very solution oriented. Files are handled quickly by a dedicated team.’
‘Laurent Badaine was very efficient. His recommendations were very relevant.’
Key clients
Agence du Numérique en Santé
Time Bomb Record Label
Spot
Archery SAS
Artizans of Photo Video Background Editor App
Orlade
Work highlights
- Advised Agence du Numérique en Santé’s IT and health department on filing a collective trade mark.
- Represented Raidlight in IP and unfair competition proceedings rights against one of its competitors and its European retailers.
- Assisted Time Bomb with IP, unfair competition and parasitism proceedings against a publishing house, before the Paris Judicial Court.
Lext Avocats
Practice head(s):
Anne Bourdu; Gaëlle Leroy; Pierre-Lucas Thirion
Testimonials
‘Great listening, quality of advice and exceptional responsiveness.’
‘We work with Anne Bourdu, who is both available and advise us with seriousness and efficiency.’
‘Very good, proactive follow-up of files. The client feels surrounded and supported by the team.’
LPA-CGR
Practice head(s):
Prudence Cadio
Other key lawyers:
Romain Viret (Counsel)
Testimonials
‘The team is business friendly, not just giving legal objections but looking for alternatives.’
‘Our main contact at LPA CGR is Romain Viret, who has been our trusted IP advisor for many years and fully understands our critical business issues. Romain Viret is always available, very business minded and has the ability to explain very complex IP issues in a straightforward way. He is also a very pragmatic IP litigator, who always tries to find the best solution for our company.’