Industry focus: Luxury goods in Italy

BonelliErede

The team at BonelliErede assists world-leading luxury groups with a full range of matters including M&A, intellectual property, employment, real estate and recent novel matters that have arisen as a result of the Covid-19 crisis. The team is led by corporate compliance and antitrust specialist Francesco Anglani. Cairo-based Francesca Secondari, who has extensive experience in the luxury sector in Italy and internationally, is also noted for her 'efficient and pragmatic solutions'.

Practice head(s):

Francesco Anglani

Other key lawyers:

Francesca Secondari; Nicola Marchioro

Testimonials

‘I have worked with the BonelliErede luxury practice regularly over the course of the last 8 years. It is by far the best law firm in Italy for the luxury industry. This is due to a combination of the following attributes: breadth of expertise under the same roof, long and deep experience of the individuals in the practice, entrepreneurial mind-set, deep connections at all levels of the industry, and excellent and long track record of deals and projects.’

‘The partner in the luxury practice that stands out is Francesca Secondari. She has a very strong commercial and strategic approach on matters: bringing efficient and pragmatic solutions that are based on a solid legal knowledge and a keen understanding of all aspects of managing and developing luxury brands and operations. I have worked with her on extremely difficult negotiations that brought together very complex technical, political and human aspects. She was truly a business partner, bringing unwavering support in all circumstances with a great ability to think outside the box.’

‘Bonelli law firm is a guarantee for the quality of legal assistance provided and for the approach with the client. They provide a real tailor-made service for clients; all the elements of the teams (and not only partners) are committed and highly performing.’

‘Francesca Secondari is an outstanding lawyer with a thorough knowledge of the luxury sector and a wide international experience: conclusive, proactive, fully dedicated, a real partner of the client. ’

‘BonelliErede has the ability to ensure excellence in all sectors in which it offers services. The luxury team is a multidisciplinary team that knows the sector and always proposes itself in a very pro-active way. This multidisciplinary ability, managed in a coordinated manner, certainly makes it very suitable compared to other law firms.’

‘The reference partner is Francesca Secondari who stands out from all the other team members for her technical excellence combined with a very deep knowledge of the business. I have worked with Francesca for a long time and she has always been extremely helpful and brilliant in finding efficient solutions.’

‘The firm is also a strategic and authoritative resource in the management of complex transactions and negotiations also with international profiles due to its ability to create a climate of esteem and trust with counter-parties, to deal with the details without losing sight of the operation as a whole and to being able to express oneself with ease in different languages.’

‘Really leading in Italy’

‘The luxury goods team led by Francesca Secondari are always proactive and close to the customer’s needs.’

Key clients

Compagnie Financière Richemont

EssilorLuxottica

Kering Italia

Max Mara

Moncler

Prada

Tod’s

Herno

Ferragamo

Roger Vivier

Work highlights

  • Assisted Camera della Moda Italiana with the legal aspects connected to the launch of its first Digital Fashion Week.
  • Assisted Compagnie Financière Richemont with the acquisition of Buccellati Holding Italia.

Chiomenti

The team at Chiomenti assists high-profile luxury brands with the full scope of matters. Clients include globally recognised Italian brands such as Roberto Cavalli and Versace as well as international labels including Ralph Lauren. Led by employment law specialist, Emanuele Barberis, the team handles corporate and employment law matters, M&A and IP. Highlights included assisting Roberto Cavalli with all legal aspects of its move from Florence to Milan and advising both Erminegildo Zelda and Dolce and Gabbana in relation to restructuring processes.

Practice head(s):

Emanuele Barberis

Key clients

Dolce & Gabbana

Versace S.p.A.

Investindustrial LP

Lion Capital SGR

Sicis S.r.l.

QuattroR

Milano Investment Partners

Roberto Cavalli S.p.A.

Proenza Schouler

Ralph Lauren

Emenegildo Zegna

Sergio Rossi

Sitoy AT Holdings Company Limited

Nuo Capital

Preca Brummel S.p.A.

Work highlights

  • Advised Lion Capital on the acquisition of the entire corporate capital of Menghi Shoes & Co. s.r.l., Alemplast s.r.l. and Menghi Shoes s.r.l. from the Menghi family through a Newco.
  • Advised Roberto Cavalli on the decision to leave its historical office in Florence, where the company was founded and aggregate all the commercial and administrative functions to the Milan office moving the entire personnel (about 200 people) to such office.
  • Advised Etro on the management of a license agreement with Marchon Europe B.V., whereby Etro S.p.A. granted the former an exclusive, worldwide license on its trade marks for the purposes of manufacturing and marketing of eyewear products.

DLA Piper

The team at DLA Piper assists with the full spectrum of work for clients in the luxury sector. Areas of expertise include M&A, e-commerce and advertising law and commercial litigation. It has worked on numerous Covid-19-related matters including negotiations over lease agreements for the flagship stores of several fashion brands and has assisted in the legal aspects of converting manufacturers to produce PPE. Elena Varese and IT expert Davide Rossetti head the team.

Practice head(s):

Davide Rossetti; Elena Varese

Testimonials

‘DLA Piper has always demonstrated great business knowledge, efficiency and the ability to manage complex situations, in a collaborative and transparent environment.’

‘In the field of intellectual property and advertising, I have been collaborating for several years with Elena Varese and her team. Elena has in-depth knowledge of the subject and of our business. She always manages to add value to her work and anticipates our requests. She can clearly convey complex concepts even to people without a legal background. She is fast in replying, always available, attentive to detail and focused on results both in litigation and in opinion and negotiation activities. She has the ability to think outside the box and to convey confidence and enthusiasm.’

‘In the Luxury and Fashion sector Elena is particularly active with university teachings, seminars and constant updates, which make her a real point of reference for the market.’

Key clients

Valentino

Tecnica

Prada

Nike

Hugo Boss

Golden Goose

Dolce Gabbana

Loro Piana

Ermenegildo Zegna

Poltrona Frau

La Rinascente

Manolo Blahnik

Henry Cotton’s

Marina Yachting

MCS

Zanotti

Bally

Calzedonia

Missoni

Percassi Retail

Burberry

Converse

Shedyr

Agnona

Pavia e Ansaldo

The cross-practice group at Pavia e Ansaldo advises on M&A, private equity, technology-related issues, insolvency and dispute resolution. The team also benefits from a bench of native Japanese and Russian lawyers which makes it a popular choice for luxury brands operating in two of the world’s largest markets for western luxury goods. It has recently been instructed by Christie's to handle administrative, tax and criminal procedures arising from the import and export of paintings and other high-end artworks. Gian Paolo Di Santo heads the practice.

Practice head(s):

Gian Paolo Di Santo

Key clients

Alice & Olivia Inc.

Calvin Klein Inc.

Calzedonia S.p.A.

Christie’s

E. Marinella S.r.l.

Elie Tahari

Fast Retailing USA, Inc.

GGR S.r.l.

Haeres Equita S.r.l.

Herno SpA

IKOI S.r.l.

La Prairie S.p.A.

PRL – Polo Ralph Lauren

The Sonnabend Collection Foundation

Cosmei srl

Omnicos Group srl

REGI Laboratories srl

YNH Srl

Work highlights

  • Advised Christie’s on administrative, tax and criminal issues arising from the import and export of paintings and other high-end artworks.
  • Represented  Polo Ralph Lauren in IP litigation arising from infringement of its iconic “polo player on horse” logo and in major anti-parallel import procedures.
  • Advised the shareholders of Menghi Shoes and Alemplast on the completion of the sale of leading luxury Italian footwear brand Menghi Shoes to UK private equity house Lion Capital.

Deloitte Legal Italy -Società tra Avvocati a r.l.

The practice at Deloitte Legal Italy -Società tra Avvocati a r.l. is experienced in all areas of IP. The team is led by Ida Palombella, an IP specialist who is experienced in the fashion, design and luxury goods fields and is actively involved with the Italian Fashion Chamber. Clients include fashion brands, designers as well as prominent fashion associations. Senior manager Federica Caretta is also noted.

Practice head(s):

Ida Palombella

Other key lawyers:

Federica Caretta

Hogan Lovells International LLP

The team at Hogan Lovells International LLP assists with corporate work for luxury clients and is also active in IP. It assists fashion brands and designers with business restructuring, compliance, advertising and operations as well as M&A deals. Antonio Di PasqualeLuca Picone and Marco Rota Candiani are key names when it comes to corporate transactions; Giovanni Ghirardi and Luigi Mansani are experienced patent litigators. Andrea Atteritano, who made partner in 2020, has handled corporate arbitration matters within the fashion industry. Counsel Maria Luce Piattelli is also noted.

Practice head(s):

Antonio Di Pasquale; Giovanni Ghirardi; Luigi Mansani; Luca Picone; Marco Rota Candiani

Other key lawyers:

Andrea Atteritano; Maria Luce Piattelli

Key clients

Bally Schuhfabriken AG

Il Bisonte

Bottega Veneta

Ermanno Scervino

Arper

Gebrüder Thonet

Philippe Model

Moleskine

Estee Lauder

Gente Roma

Richard Ginori

Adler

Issey Miyake

Antonio Marras

Calzaturificio Marini

Orsingher Ortu – Avvocati Associati

The team at Orsingher Ortu – Avvocati Associati is active for its luxury goods clients in all of its core practice areas, and handles M&A deals, brand protection and anti-counterfeiting, competition and regulatory work, litigation, financing, and labour and employment matters. In recent work, the group has has handled several 3D trade mark disputes for high-end brands. The team is led by Pierfrancesco Giustiniani. IP expert Ludovico Anselmi was recently promoted to the partnership.

Practice head(s):

Pierfrancesco Giustiniani

Other key lawyers:

Ludovico Anselmi; Domenico Colella; Alessandro De Palma

Testimonials

‘Orsingher Ortu has a team with great knowledge of the luxury industry. All the professionals who advised us, albeit with different levels of seniority, demonstrated not only technical capacity, but also an integrated approach to the problem.’

‘We collaborated with the partners Domenico Colella and Alessandro De Palma: constantly available, with a pragmatic approach. In general, the whole team that followed us has always been quick to give us answers and solutions. The firm’s professionals go straight to solving the problem.’

Key clients

Ferrari

Michael Kors

TBWA

Farfetch

LVMH

Morellato

Diesel

Davide Oldani

Blanc Mariclo

Moschino

Douglas GmbH

Condé Nast

Work highlights

  • Acted for Ferrari in the litigation against Philipp Plein, obtaining two landmark decisions on the protection of well-known trade marks (against the use of them on social networks in order to promote other products).
  • Advised Design Research, the owner of the luxury design brand Tom Dixon on its expansion to the Italian market.
  • Advised listed company AEFFE on corporate governance and regulatory aspects.

Bird & Bird

The team at Bird & Bird is particularly strong when it comes to handling IP as well as in competition and matters concerning the distribution systems of luxury clients. The practice is led by IP experts Massimiliano Mostardini and Giovanni Galimberti and corporate lawyer, Stefano Silvestri. Clients include fashion brands and luxury car manufacturers.

Practice head(s):

Massimiliano Mostardini; Giovanni Galimberti; Stefano Silvestri

Key clients

BMW Group

Loro Piana

Luxottica

Morellato

Renè Caovilla

Tomorrow London

Work highlights

  • Advised Loro Piana on the protection of a European patent.
  • Advised Morellato on the protection of its selective distribution system.
  • Advised Tomorrow London on a further equity investment by PE fund Three Hills Capital Partners.

Nctm Studio Legale

The team at Nctm Studio Legale is experienced in assisting Italian and international luxury brands. Led by IP specialists Lorenzo Attolico and Paolo Lazzarino, and employment expert Michele Bignami, the team handles IP, M&A and employment matters. Clients include fashion brands, jewellery companies and luxury automotive manufacturers.

Practice head(s):

Lorenzo Attolico; Michele Bignami; Paolo Lazzarino

Key clients

Automobili Lamborghini S.p.A.

GUCCI

Poltrona Frau S.p.A.

Bulgari

Manolo Blahnik

Mou Limited

Parosh S.p.A.

Mazzucchelli 1849 S.p.A.

Brunello Cucinelli

Calligaris

EXA S.r.l.

Supreme NY

Belmond UK Ltd.

B&B Italia

Work highlights

  • Acted for Automobili Lamborghini in obtaining an interim injunction (not appealed) against Jorge Antonio Fernandez Garcia who claims since the ‘90s to be the exclusive licensee of Automobili Lamborghini S.p.A.’s registered trade marks (also for the production of vehicles) in Latin America.
  • Assisted Manolo Blahnik in design and trade mark out-of-court matters in Italy, and acted for the client before a court in Naples in a trade mark enforcement case.
  • Assisted the Equinox III fund with the creation of an Italian hub for the manufacture of jewellery through the acquisition of control of Villa Pedemonte Atelier and Lombardi.

Trevisan & Cuonzo

The team at Trevisan & Cuonzo is experienced in trade mark and design litigation. It also advises clients on commercial contracts with a particular focus on distribution systems. The team is led by experienced IP lawyers Julia Holden and Lia Puntieri.

Practice head(s):

Julia Holden; Lia Puntieri

Key clients

Luciano Barbera Srl

Tessilform SpA (Patrizia Pepe)

Withers Studio Legale

The key names in the luxury goods practice at Withers Studio Legale are corporate lawyers Anthony Indaimo and Sharon Whitehouse, and IP expert Jacopo Liguori. The team has worked on transactions for luxury automotive clients; assisted fashion brands with IP and data protection matters as well as negotiated lease and succession plans for high-end designers.

Practice head(s):

Anthony Indaimo

Other key lawyers:

Sharon Whitehouse; Jacopo Liguori

Work highlights

  • Advised Haeres Equita on the planning and implementation of its corporate data privacy compliance worldwide.
  • Advised Lawrence Stroll (+consortium) and bid vehicle Yew Tree Overseas on a placing for Yew Tree with a follow-on open offer and rights issue raising a total of £536m.
  • Assisting Pagani Automobili with commercial and corporate matters, which has included advising on dealership agreements and helicopter and super yacht design projects.