Intellectual property: Trade marks and designs in France
Armengaud Guerlain's Stéphane Guerlain and Catherine Mateu recently acted on a variety of mandates such as the filing of trade marks, the protection of cross-border intangible assets and the revocation of decisions of the national intellectual property office of France (INPI). Dolce & Gabbana recently instructed the team to coordinate a series of seizure proceedings against an entity manufacturing and selling counterfeit clothing, and associate Axelle Collin supported Mateu in her work for a major international car manufacturer regarding the negotiation of a co-existence agreement. The practice's enviable client roster includes names such as L'Oréal, Castorama, Hyundai and Subway.
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.
Herbert Smith Freehills LLP
Alexandra Néri and of counsel Sébastien Proust are the main names to note for intellectual property at Herbert Smith Freehills LLP. The pair continue to represent a global technology giant in a host of trade mark disputes, and recently acted for an American manufacturer on a trade mark cancellation for non-use action in the context of a complex multi-jurisdictional dispute. Other key names to note include associates Samira Anfi and Laure Cardinet.
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.
HOYNG ROKH MONEGIER
Denis Monégier du Sorbier, Sophie Micallef and Marie Georges-Picot are the partner names to note within HOYNG ROKH MONEGIER's trade marks and design offering. Groupe Savencia appointed the team to act on unfair competition and parasitism proceedings arising from trade mark infringement allegations, and a major telecom player instructed Georges-Picot and associate Pierre Pérot to handle a trade mark cancellation claim. Other key clients include Canal+, Chanel, Etam and Lancôme. Following its merger with Véron & Associés, the team was bolstered by the addition of Sabine Agé, Amandine Métier and Florence Jacquand.
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.
Allen & Overy LLP
Allen & Overy LLP sets itself apart from the competition through its 'great responsiveness, great familiarity with the client's industry and ability to provide actionable input'. Clients especially value the 'responsiveness and connectivity' of Alexandre Rudoni, who heads the brands practice in Paris and continues to represent Nintendo in all aspects of its anti-piracy campaign in France. Also notable is associate Andrea Dufaure, who recently assisted Rudoni with a number of high-profile cross-border trade mark litigation actions, including Vemedia's defence against a number of claimants seeking damages in the Paris Court of Appeal for the client's use of the Oenobiol brand.
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.
The intellectual property lawyers at boutique firm Bardehle Pagenberg are 'genuinely skilled in their craft' and field 'the right mix of young talent and experience' to provide 'hands-on and commercial counsel'. Headed by the highly recommended Rebecca Delorey, the team recently witnessed the promotion to partner of the 'highly regarded and highly knowledgeable' Axel Munier. BMW recently instructed the group to advise on a number of trade mark and design litigation actions, and Munier represented a heavyweight fashion client in a number of infringement claims as well as non-contentious mandates. Other key clients include Pandora, H&M, Diesel and EasyGroup.
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.
Casalonga's Karina Dimidjian-Lecomte has a strong track record of acting for clients in the audiovisual space on the protection of high-profile trade marks such as the Star Trek property. Other key names include Arnaud Casalonga, Marianne Gabriel and Caroline Casalonga, who also regularly handle cross-border intellectual property litigation.
Cléry - Avocats
Alain Cléry's team at Cléry - Avocats covers the full gamut of intellectual property work but is especially noted for its work in the contentious space. It has a strong track record of advising on infringement and counterfeit claims as well as the filing of technical trade marks. Also notable is Coralie Devernay.
Cousin & Associés
Intellectual property litigation boutique firm Cousin & Associés fields 'a small team of highly experienced lawyers' which provides 'clear and quick solutions, outstanding expertise in the field and experience in negotiations'. Clients especially value the input of 'highly talented litigator' Myriam Moatty, who 'understands the real commercial implications of every case' and 'focuses on the result rather than the process'. She continues to defend the registered 'Lamzac' design on behalf of Fatboy, and is currently collaborating with Sandrine Bouvier-Ravon to file and defend infringement and unfair competition claims across a wide variety of sectors.
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.
The full-service offering at Hoffman advises on all areas of intellectual property as well as adjacent antitrust and commercial law issues. Jointly headed by Emmanuelle Hoffman, Pierre Hoffman and Ingrid Zafrani, the practice is currently representing Domaine Château Tour Fourthon in a challenge to the Court of Appeal's decision to overturn a decision by the French office of intellectual property which directly affected the peaceful co-existence between the client and a competitor. Associate Laure Bouchard collaborated with Pierre Hoffman to defend Simco Cash in an infringement action brought by Laguiole alleging the client's use of the 'laguiole' trade mark was void and deceptive and grounds for unfair competition practice charges. Clients in the fashion, luxury and technology sectors also feature on the team's enviable client roster.
Arenaire 'has strong technical legal skills and brings a tactical strength that is above the norm'. The team, led by founding partner and 'superb lawyer' Pierre Massot and Thibault Lentini, showcases 'creative thinking which is a real advantage in disputes'. In recent highlights, Lentini acted for Pernod Ricard in a trade mark cancellation action, and Massot successfully advised Maisons du Monde on its dispute with a competitor which used a trade mark similar to the client's old one. Associate and 'rising star' Louis Louembe also impressed clients with his 'excellent communication, risk management and decision-making skills'; 'he goes above and beyond to consider creative solutions to problems'.
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.
DS Avocats provides day-to-day advice to the Louvre regarding the management of its brand portfolio, and recently acted for Électricité Réseau Distribution France (ERDF) on the trade mark issues arising from its name change to Enedis. In other highlights, Catherine Verneret assisted a major French retailer with three litigations pertaining to the revocation of an expired trade mark, and Frisquet appointed the group to advise on infringement proceedings. Other key names include Thierry Granturco and associate Mathieu Salvia.
DTMV & Associés
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.
The intellectual property team at Harlay Avocats covers the full gamut of contentious and advisory work including portfolio management and transactions. Its client roster is mainly composed of high-profile names in the biotech and healthcare space but also spans industry sectors such as tourism, media and technology. The key names to note are Sabine Lipovetsky, Dominique Mallo and Fabrice Perbost.
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.
Osborne Clarke's Claire Bouchenard is currently advising Wirecard in trademark litigation proceedings brought by GIE, and continues to provide brand protection and enforcement to Innocent. Xavier Pican is also an intellectual property and IT expert; he has deep experience in the field of software contracts and the protection of intangible assets including patents and copyright.
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.
PASSA VARET Avocats
The 'focused, cautious, deeply knowledgeable and client-minded' intellectual property practitioners at PASSA VARET Avocats provide 'expert step-by-step advice'. Jérôme Passa is currently acting for an individual in trade mark litigation pertaining to a law firm's use of his name, and is also representing a major French automotive manufacturer in arbitration proceedings brought by a family bearing the same name, challenging the client's right to use the name. On the non-contentious side, the firm advises on the registration of trade marks and portfolio management. Other key names include Vincent Varet and associate Camille Bertin.
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.
Schmidt Brunet Litzler
Schmidt Brunet Litzler acted for Swarovski on the preparation and co-ordination of two seizures of counterfeit materials infringing the client's community registered design and associated proceedings against importers and wholesaler distributors in France. The main name to note is Delphine Brunet-Stoclet, who handled sensitive and high-stakes litigation on behalf of well-known clients and assisted them with issues surrounding the filing of new trade marks. Marie André-Nivet was recently promoted to senior associate and is also notable.
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.