The Legal 500 > Europe, Middle East & Africa > France > Intellectual property: Trade marks and designs

Known to clients as 'the perfect balance between theory and practice', the intellectual property team at Bird & Bird distinguishes itself through its 'pragmatic approach' and ability to 'emphasise the pros to reduce the impact of the cons'. Anne-Charlotte Le-Bihan continues to assist CrossFit with a host of actions for the enforcement of its trade marks, while Lyon-based Géraldine Arbant is representing Groupe SEB before the EU Intellectual Property Office in its opposition to the EU trade mark application for the 'foodle' logo by an Armenian company. Yves Bizollon is also a key name alongside associate and trade mark attorney Estelle Henry-Mayer, who is based in the Lyon office and specialises in the intellectual property aspects of marketing campaigns. Other noteworthy clients include Electrolux, Sodebo, Petit Bateau and GO Sport.

Candé Blanchard Ducamp exclusively acts on contentious intellectual property matters under the leadership of Patrice De Candé, Julien Blanchard and Claire Herissay-Ducamp. Noted for its 'in-depth knowledge of the French landscape' and its 'commercially focused and astute' advice, the team recently acted for high-profile names in the luxury sector in anti-counterfeiting litigation. On the junior side, associates Alix Phiquepal d’Arusmont and Margaux Nègre-Carillon also play a key role within the practice.

At Dentons, the intellectual property team recently gained Marianne Schaffner and her team, who arrived from Dechert LLP, as well as several new clients including Sandoz. Associate Clémence Boland - who arrived with Schaffner and Pierre-Olivier Ally - recently acted for Square in several trade mark infringement cases in the French and European courts, and senior counsel Isabelle Leroux is currently representing Merial in litigation against Virbac arising from the defendant's registration of the European 'Frontline' mark. David Masson leads the practice and recently collaborated with counsel Clément Monnet to assist Polaroid with the protection and enforcement of all of its European assets, including R&D arrangements. Other key clients include Wavestone, CGI, Delta Air Lines and Lactalis.

Gide Loyrette Nouel A.A.R.P.I.'s intellectual property team is currently assisting a subsidiary of Dior in litigation against its founder, John Galliano, pertaining to his demand to forfeit all trade marks and uses of his name for corporate purposes. The recently promoted Jean-Hyacinthe de Mitry is currently representing Klesia in a trade mark infringement case brought by Ecclesia Versicherungsdienste in France and before the European courts. Also notable are Raphaëlle Dequiré-Portier, who advised a major fashion brand on all intellectual property issues arising from the bankruptcy of a licensee; Arnaud Michel, who continues to protect the brand of a well-known TV show; and Emmanuel Larere, who acts for clients such as Adidas and Guerlain.

The dedicated intellectual property and media technology team at Hogan Lovells (Paris) LLP fields a specialist domain names offering jointly headed by Jane Seager and David Taylor. Counsel Olivia Bernardeau-Paupe is currently leading the advice to a heavyweight global restaurant chain on the protection of its intangible assets and image rights in France, while Marie-Aimée de Dampierre continues to represent Lego in all the contentious and advisory aspects of the management of its intellectual property portfolio, particularly pertaining to customs seizures. Facebook is also a key client and regularly benefits from Seager and Taylor's counsel on the recovery of domain names.

The intellectual property team at Jones Day 'is always available to provide valuable and comprehensive advice'; 'even though it is a worldwide firm, its strength lies in its ability to advise so well locally', according to one client. Emmanuel Baud leads the department with a particular focus on the wine and spirits industry, where clients instruct him to advise on issues arising from marketing, regulations, disputes and contractual matters. In recent highlights, Baud acted for a number of French administrative entities responsible for the protection of geographical indications and labelling rights in a number of disputes pertaining to the unauthorised use or registration of protected terms as trade marks by competitors. The group also obtained cancellations of European trade marks.

Clients can be 'fully confident of finding professional skills, an analytical approach and outstanding quality of advice' at business litigation boutique Laude Esquier Champey. The main name to note is Sophie Havard Duclos, who 'clearly listens to the needs of her clients and always provides added value to any case'. The firm's steady flow of trade mark infringement cases occasionally spread to the criminal courts, but the mainstay of Havard Duclos' work is the unlawful abuse of trade mark law and the associated competition issues. Associates Pauline Casanova and Sophie Genet are also key contacts within the team.

Altana's intellectual property team acts for its French and international clients on the protection, enforcement and commercialisation of their intangible assets. Frank Valentin and recently promoted counsel Charlotte Hébert-Salomon 'spend time learning the ins and outs of their clients' business cultures' and 'take feedback to constantly adapt and improve their service'. Along with sensitive and high-profile trade mark and design infringement litigation proceedings, the team also advised on the renegotiation of licence and coexistence agreements and the setting up of exclusive distribution networks. Other key names to note include Pierre Lubet, Armand Aviges, senior associate Cédric Meiller and Jean-Guy de Ruffray, who was recently promoted to partner.

Baker McKenzie's intellectual property offering covers the full spectrum of patents, trade marks, designs and models matters under the leadership of Virginie Ulmann. In recent highlights, Nathalie Marchand advised on the trade mark aspects of Servier's acquisition of Shire's oncology business, and Intel, as part of a group of defendants, instructed a team led by Ulmann to handle an infringement case arising from its use of the 'Ultrabook' trade mark. The practice provides regular advice to major companies such as Moët Hennessy, Orient Express and Unilever in connection to the protection, management and administration of their intellectual property portfolios and brands.

BCTG Avocats fields a 'high-level team which is hyper involved and focused on the real concerns of its clients'. This is personified by counsel François-Xavier Boulin, who 'always guarantees matters will be treated efficiently and professionally through his experience and skills'. Practice head Gaëlle Bloret-Pucci recently represented Converse in civil and criminal proceedings against a recurring defendant pertaining to the latter's importation and sale of counterfeit shoes, and Nike continues to entrust the day-to-day oversight of its brand protection strategies to the practice, which recently advised on the seizure of counterfeit football jerseys imported into the European market in light of the FIFA World Cup. Associates Jessica Sandowski and Georgina van der Heijden are also key names.

De Gaulle Fleurance & Associés' client roster includes enviable names such as Château de Versailles, which recently instructed a team led by Julien Horn to oversee the administration, licensing and prosecution of its worldwide trade mark portfolio, as well as a dispute with an ex-licensee on the grounds of the fraudulent registration of trade marks. Other notable names include Louis de Gaulle, Francine Le Péchon-Joubert and Serge Lederman, who is currently representing Mango in separate copyright, unregistered designs and models infringement proceedings brought by Chloé and Gas Bijoux. The arrival of Sandra Strittmatter from LMBE significantly strengthened the offering following Philippe Moncorps' arrival from TF1 in 2017. Palais des Thés, Skechers, Haribo and Etam are also names to note among the practice's blue-chip clients.

Dechert LLP's Paris office fields intellectual property expert Marie Fillon, who was recently joined by associates Louis de Chezelles and Guillaume Bensussan from HOYNG ROKH MONEGIER and DTMV & Associés, respectively. She recently secured a full victory for Elior in the Court of Appeal in its trade mark litigation against Enterprise Holdings, and acted as part of a cross-office multi-disciplinary team to advise on the intellectual property aspects of HRA Pharma's takeover of the Compeed brand from a subsidiary of Johnson & Johnson. Another notable client is Ekkio Capital, which appointed Fillon's team to advise on the intellectual property elements of its acquisition of FX Solutions. Marianne Schaffner departed to join Dentons.

FTPA 'provides a very responsive and excellent overall service' through practitioners like joint practice heads Boriana Guimberteau and Antoine Gautier-Sauvignac: 'two outstanding individuals who always provide superlative advice that is easily accessible to all clients'. In addition to several high-profile and sensitive trade mark infringement and cancellation proceedings, the team is handling advisory and pre-litigation matters related to the launch of new brands in the luxury sector. On the non-contentious side, the group also advising on the filing of trade marks and the negotiation of licence agreements.

Gowling WLG fields a three-partner team consisting of Céline Bey, Philippe Rousseau and Julien Monsenego. Along with several contentious infringement matters, the team acted for a luxury fashion brand in a worldwide action as a defence to invalidity proceedings filed by a competitor in several countries; Rousseau represented a luxury group in pre-litigation pertaining to a threat by a competitor to terminate a licence granted for the sale and manufacturing of perfume. On the non-contentious side, Bey assisted a major cosmetics brand and its subsidiary with the liability and intellectual property aspects of the proposed launch of a new cosmetics range.

Benoliel Avocats' Sylvie Benoliel-Claux represents clients in the luxury and other sectors in non-use cases and infringement claims. The team also advises on cross-border anti-counterfeiting programmes and assists clients with the protection of their intangible assets internationally.

Anne-Laure Villedieu heads the trade marks offering at CMS with the support of counsel José Monteiro. The team specialises in the luxury, cosmetics and food sectors and recently advised Bolton Solitaire on the intellectual property aspects of the launch of a new product line. On the contentious front, Body Minute appointed Villedieu's group to handle a trade mark litigation against an international competitor, while recent advisory work includes the management of several high-profile international brands, the negotiation of licensing agreements and the restructuring of intangible assets. Litigation specialist and associate Sabine Rigaud is also a name to note.

With clients such as Decathlon, Truffaut and Vivarte, Guillemin Flichy acts for both defendants and claimants in infringement and revocation cases under the leadership of Alexis Guillemin. Fauré Le Page recently appointed the group to handle infringement proceedings filed by leather retailer Goyard on the grounds of alleged counterfeiting, as well as in its own countersuit against Goyard for denigration and illicit commercial practices.

Meridian is noted for its intellectual property work, especially in the luxury space where the team advises on competition and commercial law issues arising from trade mark and design infringements. The partner names to note are Vincent Vilchien and Julien Canlorbe; they regularly handle pre-litigation and litigation proceedings for clients in the fashion, food and beverage, telecom and media technology sectors.

In recent highlights, Osmose acted for high-profile clients such as Total, Schmidt and Picard Surgelés in trade mark infringement litigation. On the non-contentious side, Antoine Gendreau and Alexandra Le Corroncq advised Coca-Cola on the negotiation of licensing agreements and continue to provide day-to-day assistance with brand management and intellectual property law to clients such as Sony and Saupiquet. Alexis Vichnievsky is also a partner name to note.

Pinsent Masons LLP regularly represents clients in trade mark and design infringement litigation and assists them with branding and international marketing strategies. Emmanuel Gougé and associate Virginia de Freitas are currently defending Griesson - de Beukelaer in trade mark infringement and parasitic business practice proceedings brought by Générale Biscuit Glico France and Mondelēz regarding the alleged violation of the "mikado" biscuit trade mark. Also notable is associate Léonore Isnard.

Sarah Bailey's intellectual property team at Simmons & Simmons was recently bolstered by the arrival of Marina Cousté and François Jonquères, as well as Frédérique Potin and Romain Viret (both counsel) and Mickaël da Costa and Sarah Madi (both associates), from Reed Smith. In addition to advising a number of heavyweight global conglomerates on day-to-day trade mark portfolio management, Cousté and Bailey handled high-profile and sensitive infringement proceedings. Recently, this included one criminal charge on the grounds of the attempted theft of a confidential prototype by a senior manager of a competitor group. On the non-contentious side, clients instruct the team to negotiate co-existence agreements and brand management on social media.