Intellectual property in Italy

Studio Professionale Associato a Baker & McKenzie

Studio Professionale Associato a Baker & McKenzie has a wealth of experience in IP-related matters, covering trademarks, designs, patents, media and copyright assistance, both contentious and non-contentious, accompanied by a specialism in technology-driven IP transactional work and restructuring, as well as know-how protection. Lorenzo De Martinis is managing partner of the firm’s Italian offices and heads up the practice together with of counsel Carlo Demichelis. Typical clients come from the fashion, design and luxury sectors.

Practice head(s):

Lorenzo de Martinis; Carlo Demichelis

Key clients

Desigual

MHCS

Michael Kors

LVMH – CHRISTIAN DIOR COUTURE, PARFUMS CHRISTIAN DIOR

CASSINA

D.I.MAR

BIALETTI

POLTRONA FRAU

Moncler

Cerruti

Prada

Automobili Lamborghini Spa

Work highlights

  • Longstanding relationship with Desigual, for which the firm provides ongoing assistance in civil and criminal litigation involving trademark, copyright and fashion designs infringement throughout Italy.
  • Re-engineering of the overall anti-counterfeiting activity in Italy of MHCS.
  • Assisting CASSINA S.P.A. in design and copyright infringement actions (interim proceedings for seizure and injunction; actions in the merits of the case) concerning the violation of the client’s exclusive copyrights in the worldwide well-known Le Corbusier LC designs.

Bird & Bird

Bird & Bird is regarded as 'a benchmark in Italy' for patent litigation and more generally for the full range of IP matters. The team represents food, fashion, media and pharmaceutical companies in patent and trademark litigation, often of a cross-border nature, operating as an integrated part of the wider firm's top-rated international practice. Italy managing partner Giovanni Galimberti and firmwide chair Massimiliano Mostardini co-head the practice in Milan, alongside the much-praised Arturo Leone - described as 'an undisputed authority' - in Rome. Antonella De Gregori made partner in May 2019, while Claudia Ricciardi and Rita Tardiolo  were promoted to counsel. The team, which also includes senior counsel Fulvio Mellucci, was recently boosted by the arrival of Eleonora Rosati, who joined as of counsel in January 2019 and divides her time between Milan and London.

Practice head(s):

Massimiliano Mostardini; Giovanni Galimberti; Arturo Leone

Key clients

BBraun

Cargill

Consorzio del Formaggio Parmigiano-Reggiano

Consorzio di Tutela della Denominazione di Origine Controllata Prosecco

Dailymotion

Edwards Lifesciences

Hoepli

Loro Piana

Telecom Italia

Work highlights

  • Assistance to Consorzio di Tutela della Denominazione di Origine Controllata Prosecco in a dispute regarding the violation of the PDO in Germany.
  • Assistance to Loro Piana, among others, in the protection of a European patent concerning the characteristic opening system with elastic band implemented by its ankle boots.
  • Assistance to Telecom Italia S.p.A. before the Italian Authority of Self-Regulation on Advertising in relation to the cessation of an advertisement.

BonelliErede

BonelliErede's IP practice revolves around practice head and Giovanni Guglielmetti and partner Tommaso Faelli. The duo, backed up by a team of seven associates, are active in fields including trade secrets, unfair competition and patent protection - both from a transactional and contentious perspective. Faelli brings additional expertise in IT and data protection, advising on open data and privacy regulation, while Guglielmetti has a focus on healthcare and life sciences, luxury and sports.

Practice head(s):

Giovanni Guglielmetti

Testimonials

‘The team is always available.’

‘Profound competence, but above all, a willingness to deal at any time with every need.’

‘Harmony and absolute coordination – there is a certainty that the whole team is aligned.’

Key clients

Amplifon

Prada

RCS

SodaStream

Valentino

Work highlights

  • Assistance to Souroti, luxury mineral water company, in a case of trademark counterfeiting against its competitor Tŷ Nant.

Bresner Cammareri Intellectual Property – BCIP

Bresner Cammareri Intellectual Property – BCIP was founded in April 2018 by IP experts Davide Bresner and Emanuele Cammareri. Their team, which comprises five more lawyers, handles Italian and European trademark and design law (covering filings, prosecutions, negotiations, licences and agreements) as well as anti-counterfeiting strategies and enforcement. The firm's client portfolio includes both SMEs (especially in the technology and healthcare sectors) and high-profile international clients, including many luxury and fashion businesses.

Practice head(s):

Davide Bresner; Emanuele Cammareri

Testimonials

‘Know-how, availability and pragmatism.’

‘Davide Bresner is very pleasant to work and communicate with. Great availability. ‘

‘Excellent boutique with cutting-edge expertise in IP law and a modern, up-to-date approach. Communication with the firm is great, they are very responsive and their advice is always concise and on point.’

‘Davide Bresner always gives realistic estimates of the chances to succeed, and the costs involved. He always stays within agreed budgets.’

‘The team was brilliant in understanding our complex needs, including technical and ethical aspects. The certainty of delivery times and the right price were further important characteristics.’

‘Individuals have been respondent and professional.’

Key clients

Prada S.A.

Furla S.p.A.

Booking.com

Hummel S.A.

Fédération Internationale de Football Association (FIFA)

Nero Hotels S.r.l.

HeartWatch S.r.l.

GNR S.r.l.

Astoria S.r.l.

WEGA – Macchine per caffè S.r.l.

61.67 S.r.l.

Blastness S.r.l.

BWT S.r.l.

Tous S.A.

Magma S.r.l.

SIR S.r.l. Società Italiana Resistor

Rocket Milano S.r.l.

Milano Dry Gin S.r.l.

Work highlights

  • Drafted a naming proposal for both HeartWatch S.r.l.’s new software and medical device, with the aim of reducing the odds of its trademark application meeting opposition during the registration proceeding.
  • Handled several trademarks filings and prosecutions and a surveillance watch service for several trademarks of GNR S.r.l..
  • Handled a complex negotiation with the Chinese distributor of CMA Macchine per Caffè S.r.l.  in order to arrange a licence, so as to allow the distributor to open an official online shop.

Carnelutti Studio Legale Associato

Carnelutti Studio Legale Associato's IP offering is led by the 'excellentMargherita Barié, an expert adviser and litigator for patent and trademark infringement, unfair competition and copyright-related matters. Her clients come from industries including beauty, education, food and fashion industries. Mark Bosshard joined the firm as of counsel in February 2019.

Practice head(s):

Margherita Barié

Key clients

Faram 1957 SpA

Luigi Fedeli & Figlio

International Nutrition Research Center Inc

Du Pareil au Meme

ENI

MIP

Honda

Dreamcos

B-Yacht

Aliante

Work highlights

  • Successfully represented Comepa, a manufacturer of electro-medical equipment, in interim proceedings against its exclusive distributor in Italy, before the Court of Milan.
  • Advising the Italian company Luigi Fedeli e Figlio S.r.l. in the drafting and closing of distribution agreements for the commercialization of its products in the Chinese, and US markets as well as in the protection of its IP assets against third parties unlawfully commercializing its products and/or infringing its IP assets in the said territory.
  • Assisted Italian jewellery company Muraro in a claim regarding a collection of jewellery for men by a competitor who challenges a slavish imitation of a product that he has long since marketed as a de facto trademark.

CBA Studio Legale e Tributario

CBA Studio Legale e Tributario's IP and IT team, which is spread across the firm's Padua, Milan and Munich offices, is coordinated by Mattia Dalla Costa, who advises clients from both jurisdictions. His cross-border Italian and German expertise has helped him earn a reputation for being innovative and 'very open minded.' In the two Italian offices, he is supported by Barbara Sartori. The majority of the firm's clients are international players with business interests in the Italian automotive, defence and aerospace sectors, seeking assistance in both 'soft IP' (franchising, due diligence, design), and 'hard IP' (trademarks, patent litigation).

Practice head(s):

Mattia Dalla Costa; Barbara Sartori

Testimonials

‘Great availability and ability to identify the problem immediately’

‘Mattia Dalla Costa holds unmatched expertise in dealing with cross-border IP topics within two different jurisdictions.’

Key clients

Pietro Rosa Tbm S.r.l.

Finmeccanica Leonardo S.p.a. / Airbus Helicopter/ Telespazio S.p.a. / Telespazio AG/ Egeos GmbH

Galileo Network S.p.a.

Wintex Italia S.r.l. (Sergio Tacchini)

Balich Worldwide Shows S.r.l.

Unismart Padova Enterprise S.r.l

Konica Minolta

Glaxo Smith Kline S.p.a. and Glaxo Smith Kline UK

Iren Mercato S.p.a.

20th Century Fox Inc. (US-California)

Infineon AG and Infineon Italia Srl

Canova Tech S.r.l.

Errebi S.p.a.

Festo AG and Festo Italy

Steelcase SA Inc.

Cmc GmbH & co. Kg Classic Model Cars

Knorr Bremse Systeme für Nutzfahrzeuge GmbH

Bang & Clean Technologies AG and Bang&Clean GmbH

Work highlights

  • Assisting Wintex Italia-Sergio Tacchini on trademark protection in the sports apparel field.
  • Assisted 20th Century Fox Inc. and the 20th Century Fox Group in the evaluation of the possibility to use two well-known trademarks of two renowned car companies in the title of an upcoming movie.
  • Provided assistance to Balich Worldwide Shows S.r.l. in the management of IP rights and royalties.

De Berti Jacchia Franchini Forlani

Full-service firm De Berti Jacchia Franchini Forlani has a strong record of work on patent disputes for clients in the pharmaceutical industry, and has particular expertise in conflict prevention strategies. The department is praised for being 'very thorough on patent matters.' Co-founding partner Roberto A. Jacchia, who is based in Milan, works with litigator and life sciences expert David Maria Santoro in Rome, who deals with product liability issues for pharma companies. The team, which also has clients in the luxury space, has an established relationship with the Russian IP law firm YUS.

Practice head(s):

Roberto A. Jacchia

Testimonials

The firm has an excellent IP team and the overall level of service is very good.’

‘Their service is first class and they are very competent, knowledgeable and very prompt in providing answers.’

‘A strong team with a wide range of legal expertise. Highly experienced in the vagaries of the Italian legal system and willing to challenge the status quo to achieve results.’

‘Roberto Jacchia is an intellectually astute lawyer who has wide experience of the Italian legal system. He is able to produce complex legal submissions effectively. He is ably assisted by the very capable Silvia Doria.’

Key clients

Ali Spa

Alliance Laundry

Alma Lasers Italia srl

Ania

Baralan

Campagnola e fedeli

Cisalfa sport Spa

Comenda Ali Spa

Culligan Group

Culligan italiana Spa

C&f srl: 2013

Gewiss

Glaxosmithkline Group and Glaxo Smith Kline Italia

Ht srl

Ikn

Imerys

Lesaffre

Lor.ma srl

Merck Sharp & Dohme, Merck & co

Metaswitch Network

Openjobmetis Spa

Rivolta & Carmignani

Rizzani De Eccher

Rolex SA and Rolex Italia Spa

Samsung Electronics Italia

Site ground

Staedtler Mars GmbH & Co Kg

TAT Tessitura Automatica Tavernerio Spa

Werner & Mertz Professional srl

Werner & Mertz GmbH

Work highlights

  • Advising US big pharma multinational in enforcing its patents and defending its active principles in Italy, amongst others, in various contentious cases in the Rome and Milan IP courts.
  • Assisting and representing Culligan Zilio Environment, a subsidiary of the multinational Culligan Group, in proceedings for interim measure before the IP Court of Venice, for unfair competition and infringement of trademarks.
  • Advising Ali, a subsidiary of the international Ali Group, which designs and manufactures dishwashing equipment, in proceedings before the IP Court of Turin seeking the invalidation of a European patent filed by a German competitor.

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

Deloitte Legal Italy - Società tra Avvocati a r.l. launched an Italy IP department with the hire of Withers Studio Legale IP and techonology head Ida Palombella in July 2018. With fashion and luxury being her main focus, she is well-regarded by colleagues, clients and high-end brands alike. Her team, which includes key figure Federica Caretta, assist her in trademark counterfeiting actions, trusts, negotiations and infringements.

Practice head(s):

Ida Palombella

Testimonials

‘Top legal knowledge, prompt and detailed replies.’

‘In addition to having excellent legal preparation, Ida Palombella and Federica Caretta are always ready to provide adequate answers in reasonably short times.’

Key clients

Camera Nazionale della Moda Italiana (Italian Fashion Council)

Flos group (Design Lightening Company)

Balmain Group

CNMI Fashion Trust

10 Corso Como

Work highlights

  • Represented Camera Nazionale della Moda Italiana before the Italian Court of Milan in a trademark counterfeiting action.
  • Represented Balmain in the acquisition of the business going concern from Valentino.
  • Assistance in the protection of IP rights related to the opening of a new store and art gallery in New York with the concept of 10 Corso Como.

Dentons

Dentons's intellectual property practice was set up in April 2017 by practice head Giovanni Francesco Casucci. The offering is broadly divided into two service lines; the first covering traditional IP and contentious matters relating to brands, patents and designs; and the second focusing on IP issues in the TMT sector, including innovative cases involving technology transfers and technology agreements.

Practice head(s):

Giovanni Francesco Casucci

Testimonials

‘Innovative IP litigation’

‘Giovanni Casucci’s ability and effectiveness are of very high level’

Key clients

Danieli Group

Panotec S.p.A.

Terzani

Restech S.r.l.

Volkswagen Group

Thun

Fiam

H & M

Morellato

Sony Computer Interactive Entertainment Europe

Chapter 4 Supreme

Umberto Cesari srl

Malìparmi

La Martina

Work highlights

  • The firm provided successful legal assistance in a milestone design litigation case for Diesel.
  • Providing assistance to Chapter 4 Supreme in relation to several preliminary proceedings in major trademark cases in several jurisdictions worldwide.
  • Providing legal assistance to Danieli in a litigation over the infringement of two patents.

DLA Piper

DLA Piper's intellectual property team is increasingly active in many sectors, including telecoms, food & beverage, fashion, media, manufacturing and technology. The practice advises a range of companies, retailers, publishing houses, private equity and venture capital funds in relation to trademarks and patent infringement, negotiating and drafting agreements, advertising and social media communications. Roberto Valenti and Gualtiero Dragotti are the most senior members of the practice, with lawyer Laura Gastaldi being another key member of the team. The department was boosted by the lateral hire of Marco de Morpurgo from Allen & Overy LLP  in October 2018; he joined as global co-chair of the firm's life sciences sector group.

Practice head(s):

Gualtiero Dragotti

Testimonials

‘Roberto Valenti is professionally very well prepared, very up-to-date and provides practical advice.’

Key clients

Alpinestars

Franklin & Marshall S.r.l.

Arnoldo Mondadori Editore

Zambon

Assicurazioni Generali

Michael Page

Ingram Micro

Newell Rubbermaid

Mondelēz

Skyworth

Taishan

IllyCaffè

Yoop

Certilogo

Morando

Martini & Rossi

Bacardi

Elantas Europe

Michael Page

Work highlights

  • Representing Nikon in policing the overall presence of their products in the EU and Italian market, preventing infringement and unlawful parallel imports.
  • Acted on behalf of Elantas Srl, a company engaging in the production of insulating materials for the industry, in a dispute concerning violations of trade secrets by former employees.
  • Advised toy producer Spin Master on the enforcement of their model rights over Twisty Petz.

Gianni, Origoni, Grippo, Cappelli & Partners

The practice at Gianni, Origoni, Grippo, Cappelli & Partners, which advises both domestic and international clients on the full range of IP matters, has a strong and growing reputation for its work for high-profile clients across the sport, leisure and fashion, media and art sectors. The Milan-based Nino Di Bella is head of the IP, IT and e-commerce department; his team is involved not only in trademarks, copyright, advertising and unfair competition, but also software-related matters, new technologies and cybersecurity. In Rome, Massimo Sterpi handles both contentious and non-contentious matters and has a particular specialism in art law.

Practice head(s):

Nino Di Bella; Massimo Sterpi

Testimonials

‘Very professional lawyers who listen very carefully to the clients’ concerns and advise them to a very satisfying result.’

‘Admirable social skills, legal know-how and language skills.’

Key clients

Hasbro

Adidas

Sky Italia

Facebook

Philip Morris

Dsquared2

De Agostini

Pernod Ricard

Costa Crociere

Fondazione Modena Arti Visive

Netflix

Gruppo Hoval

Medac GmbH

Solomon R. Guggenheim Foundation

Gallerie degli Uffizi

Laura Biagiotti

Fondazione Arnaldo Pomodoro

Work highlights

  • Assistance in civil proceedings against Fendi Spa for the declaration of the infringement of the design of an iconic shirt designed by Felipe Oliveira Baptista.
  • Continuous assistance to adidas regarding: (i) sponsorships, endorsement contracts, franchising agreements and retail activities; and (i) brand protection, including judicial proceedings for infringement of the famous three stripes trademark.
  • Assistance to Entertainment One on issues concerning the ownership of the economic exploitation rights relating to the PJ Masks characters.

Greenberg Traurig Santa Maria

Greenberg Traurig Santa Maria is the result of the combination of Milan boutique Santa Maria and US giant Greenberg Traurig, LLP, a deal which came into force in July 2019 after a long alliance between the two firms. The IP unit is headed up by Luigi Fontanesi, who works alongside senior associate Paola Furiosi, advising both domestic and international clients on a wide range of work, including an expanding workload of matters relating to trademarks, designs, marketing and patents.

Practice head(s):

Luigi Fontanesi

Key clients

Bracco

Sonepar Italy

Siffra

Mirato

Acetum

Villa d’Este

Room Seven

Fimmetal

Lumenis

Fondazione Bracco

APT

Work highlights

  • Representation of Sonepar, a leading French company in the electronical sector, in the acquisition of Sacchi.
  • Representation of Siffra in a trademark litigation.
  • Advising Mirato in the licensing of the trademark portfolio in the Middle East.

Herbert Smith Freehills

Herbert Smith Freehills made significant inroads in the Italian IP and life sciences markets in early 2018 with the hire of the highly regarded Laura Orlando, who joined as EMEA life sciences co-head. She and her 'trustworthy, pragmatic and innovative' team handle a broad range of matters including trademarks, copyrights, patents and licensing for clients across the technology, media, industrials and, notably, the life sciences sector. The practice, which draws on the firm's strong international capacities, is also recognized for its work on large patent litigation cases.

Practice head(s):

Laura Orlando

Testimonials

‘The team comprises skilled lawyers, providing a full spectrum of assistance in the IP field, both contentious and advisory.’

‘Laura Orlando is the key practitioner, being an outstanding litigator and an excellent business lawyer. Pietro Pouchet is a rising star in the field and younger Spartak Kodra and Giulia Maienza will soon be noticed in the market.’

‘Outstanding IP outfit with a truly international approach’

‘Laura Orlando is the best IP lawyer of the young generation. She is capable of handling the most complex litigation. The team combine their skills in dealing with domestic issues with excellent cross-border capabilities.’

Key clients

BAT

Casio

Chevron

Zambon

Eli Lilly

Gilead

JC Bamford Excavators Ltd

FederfarmaCo

Takeda

Trussardi

Sanofi

DoveVivo

Lundbeck

Work highlights

  • Represented the Gilead group in patent litigation, including providing regulatory assistance in relation to blockbuster anti-HIV drugs containing the active ingredient tenofovir disoproxil, against pharmaceutical companies planning to market generics in Italy.
  • Providing Italy’s largest cooperation of pharmacies Federfarma.CO with strategic advice on all IP matters.
  • Assisting JC Bamford Excavators Ltd with key patent litigation.

Hogan Lovells International LLP

Hogan Lovells International LLP's practice handles the full range of IP matters for international clients, and is lauded for its 'great knowledge' of IP and regulatory issues in the pharmaceutical sector, as well as its proficiency in coordinating IP litigation across different jurisdictions. The team advises companies in relation to patents, trademark negotiations and enforcement proceedings across the life sciences, food and beverage, luxury goods and technology sectors, working in tandem with the international firm's strong bench of technology, media and telecoms lawyers. The team is led by the hugely experienced duo of Luigi Mansani and Giovanni Ghirardi.

Practice head(s):

Luigi Mansani; Giovanni Ghirardi

Testimonials

‘Hogan Lovells’ intellectual property department is one of the best in Italy in terms of availability and quality of the legal advice provided.’

‘Giovanni Ghirardi deserves special mention due to his availability, quick turnaround times and the quality of legal advice.’

‘The lawyers are very attentive while dealing with legal and technical matters, both in written procedures and during oral hearings before the courts.’

Key clients

Eli Lilly

Starbucks

Kering

Hauni

Gruppo Cassina (Poltrona Frau)

Bottega Veneta

Gucci

Work highlights

  • Assisting Starbucks in trademark matters against Italian infringers which file or use trademarks which are similar to Starbucks, as well as in devising new branding strategies

IP Law Galli

Milan-based boutique IP Law Galli is active across the full spectrum of IP matters for an impressive list of Italian and international clients, advising on strategies, contracts and M&A  as well as handling trademark, advertising and copyright disputes. The firm has a particular focus on the pharmaceutical and chemical sectors, especially in relation to patent litigation - a principal focus of both firm founder Cesare Galli and practice co-head Mariangela Bogni. Galli is recommended for his 'distinguished assistance' and 'impressive experience'.

Practice head(s):

Cesare Galli; Mariangela Bogni

Testimonials

‘The team is always available and responsive. It has a deep knowledge of IP law and offers valuable and helpful support. Flexibility and a methodological approach are its strengths. ‘

‘Cesare Galli is always very available and keen to provide his view in relation to the legal issues assigned to the firm.’

‘Cesare Galli is the best lawyer in Italy regarding IP issues.’

Key clients

Ambrosetti Partecipazioni S.r.l.

Aruba

Assos of Switzerland

Astellas

Atlas Copco

Biomet

Bulgari

Cama

DOC Generici

Dover

EG

Emmegi

Emmentaler Consortium

Endo Ventures

Everlight

FIS

Galbusera

Itas

IVAR

Japan Tobacco

Lima Corporate

LG

Magnolia Spa

Max Moda

Mazars

Flou

Menarini

Mouser Electronics

Open Fiber

Pedrali

Pirelli

Sandoz

Sinelec

Sisley

Safilo

Teva

Tecnimed

Vittoria Assicurazioni

Vorwerk

Work highlights

  • Succesfully assisted Sisley in a selective distribution agreement violation case against Amazon before the Court of Milan.
  • Successfully assisted Fabbrica Italiana Sintetici in avoiding the application of an international rogatory pre-trial measure.
  • Assisting Cama 1 in a dispute relating to patent infringement and unfair competition.

Jacobacci

Fabrizio Jacobacci is founding partner of specialist intellectual property law firm Jacobacci, which has offices in Turin, Milan, Rome, Paris and Madrid. He specializes in competition and IP law and leads his team in patent and trademark litigation cases, design and anti-counterfeiting actions. The firm has special desks dedicated to Russia and Latin America.

LCA Studio Legale

LCA Studio Legale's team, which is led by Gianluca De Cristofaro, handles a range of IP matters encompassing design infringement and unfair competition, the drafting and negotiation of IP-related and licence agreements as well as marketing and promotional campaigns. The firm, which has a focus on innovation and technology, offers a blockchain-based service for the management and protection of trademarks.

Practice head(s):

Gianluca De Cristofaro

Key clients

Andrea Bocelli Foundation

HUGO BOSS

Save the Duck S.p.A.

Parma Calcio Football Club

Editoriale Domus S.p.A. (“Quattroruote”, “Domus”, “The Silver Spoon”)

Ars Rei (“Unode50”)

Marcegaglia Group

Mandarina Duck S.p.A.

Coccinelle S.p.A.

Dude Srl

Esprinet S.p.A.

Ermenegildo Zegna S.p.A.

Pirelli Group

Froneri Italy S.r.l.

Work highlights

  • Assisting Esprinet S.p.A. in reacting to a claim of (alleged) infringement regarding hoverboards labelled Nilox.
  • Assisting Save the Duck S.p.A. in ordinary proceedings and urgent proceedings for trademark infringement and unfair competition against a competitor.
  • Assisting ARS REI S.r.l. and S.L., owner of the trademark Unode50, against a former Italian distributor for community design infringement and unfair competition for slavish imitation.

Legance - Avvocati Associati

Legance - Avvocati Associati's IP department is now co-led by Paolo Marzano and former Clifford Chance Italy IP head Monica Riva, who was one of a number of new additions to the team during 2019. The recent hires have significantly strengthened the firm's offering, which now covers patents, trademarks, copyright, design, know-how and trade secrets, unfair competition and misleading advertising as well as IT, e-commerce and franchise matters.

Practice head(s):

Paolo Marzano

Other key lawyers:

Monica Riva

Key clients

Amplifon S.p.A.

3d Produzioni

Feudi di San Gregorio

Zelig Media

Work highlights

  • Day-to-day assistance to hotel group Delphina in relation to the protection of its brands against imitations made by third parties in the hotel industry.
  • Ongoing assistance to Avia International in relation to the protection of its own brand against imitations made by third parties and aimed at taking unfair advantage of the reputation of the corporate group.
  • Day by day assistance to the well-known company Camomilla Italia, active at national and international level in the clothing sector, in the management and enhancement of the brand portfolio owned by the same.

LGV Avvocati Studio Legale

LGV Avvocati Studio Legale's IP department deals with a wide and varied portfolio of work relating to patents and trademarks, copyright and design matters, among others. Founding partners Simona Lavagnini and Luigi Goglia work together with Tankred Thiem and Margherita Stucchi on niche matters such as copyright applied to new technologies (including impressive disputes before the Italian Supreme Court representing global web services companies), as well as lobbying (for example in the e-sports and videogame industry) and advertising.

Practice head(s):

Simona Lavagnini; Luigi Goglia

Testimonials

‘On time delivery and result-driven’

‘Simona Lavagnini is a go-to lawyer in Italy for copyright matters. She has very solid industry knowledge and is very attuned to the priorities and objectives of her clients. Her advice is cutting edge as well as clear and practical. She also gets involved in the technical and logistical aspects of preparing a case, which can be quite complex in piracy cases.’

‘The team is incredibly client-focused and solution-oriented. The team members are fantastic at keeping their clients up-to-date and informed of all developments in cases.’

Key clients

BSA – Business Software Alliance

AESVI

IBF (International brand firm)

Empsol

Ofy Milano S.r.l.

H&H Sports Protection Group

HSD S.p.a.

Value +

Ode S.r.l.

Sky Italia S.r.l.

Microsoft Corp.

Work highlights

  • Successfully commenced urgent precautionary proceedings against several infringers for GPQ S.r.l. for the seizure of infringing products and the prevention of their further commercialisation.
  • Handling know-how patent litigation for HSD.
  • Trademark registration policies and advice in relation to licensing and provision contracts for Value + S.r.l.

Martini Manna Avvocati

Specialising in trademarks, copyright issues and patents, Martini Manna Avvocati's IP department handles both contentious and non-contentious work across sectors including automotive, consumer products and new media. The lawyers in the team are also well versed in TMT matters and assist, among others, online platforms with licence agreements or anti-piracy strategies. Luigi Manna and Elena Martini are the key lawyers.

Practice head(s):

Elena Martini; Luigi Manna

Testimonials

‘The lawyers have a deep knowledge of IP law and are extremely efficient and business-oriented. Their work exceeds the standards of the biggest international firms.’

‘Elena Martini is always on-hand, extremely fast and accurate in the assistance she provides. ‘

Key clients

Candice Cooper AG

Invicta Watch Company of America Inc and Glycine Watch S.A.

Frette s.r.l.

Cefriel S.c.a.r.l.

Jeunesse group

STM Technologies s.r.l.

Everis Italia S.p.A.

Perform Group (DAZN)

Micro-vett s.r.l.

PHI Fund

Aste Giudiziarie In Linea S.p.a.

Zanuso s.r.l.

Work highlights

  • Assisted Invicta Watch Company of America Inc and Glycine Watch in trademark infringement proceedings commenced against them before the Milan IP Court by Giorgio Armani.
  • Represented Landoll Italia s.r.l. in preliminary injunction proceedings against a retailer not belonging to the client’s distribution network.
  • Assisting Jeunesse Global Holding and Jeunesse Italy in trademark infringement case against a former distributor.

milalegal - Mina Lanfranconi & Associati

With combined experience in entertainment law - covering cinema, TV, advertising, internet and new media - and intellectual and industrial property, milalegal - Mina Lanfranconi & Associati is a firm of choice for media companies, research centres, fashion and luxury brands, as well as other law firms seeking IP advice. Founding partners Elisabetta Mina and Marina Lanfranconi lead the practice, which handles the management and protection of trademark portfolios, as well as IP issues deriving from M&A transactions, and which was recently joined by five newcomers at associate level.

Practice head(s):

Elisabetta Mina; Marina Lanfranconi

Key clients

Adler Entertainment S.r.l.

Latham&Watkins Law Firm

Compagnia Italiana Lubrificanti S.p.a.

Indiana Production Company S.r.l.

Rivolta Carmignani S.p.A.

Italian Converter S.r.l.

3 Marys Entertainment S.r.l.

Meteo Operations Italia S.p.A.

Università degli Studi di Ferrara

Work highlights

  • Legal advice to Adler Entertainment S.r.l. on an ongoing basis related to copyright, cinema and media issues.
  • Advised Niccolò Biddau/ Photo Publisher S.a.s. di Niccolò Biddau before the IP Court of Milan in a copyright dispute concerning the infringement by the publisher (defendant) of the client’s copyright on its photographs.
  • Provided legal support to 3 MARYS ENTERTAINMENT S.R.L. for the negotiations and drafting of the agreements concerning the associate production of a number of movies and TV series.

Mondini Rusconi Studio Legale

Mondini Rusconi Studio Legale boasts a well-established team of IP experts with a strong focus on copyright matters. The team assists companies in the food, music, telecommunications and media space (including the Italian national broadcasting service), in cases of patent infringement, trademark litigation and advertising campaigns. Practice head Giorgio Mondini represents large Italian players and works for foreign media companies in transactional and contentious work, while Giacomo Bonelli also covers antitrust and new technologies.

Practice head(s):

Giorgio Mondini

Key clients

Salvatore Ferragamo S.p.a.

Gio Ponti’s Heirs

Banco BPM S.p.a

RAI Radiotelevisione Italiana S.p.a.

Lottomatica S.p.a.

Univideo

Vanini S.A.

Velux Italia S.p.a.

Facco S.p.a.

Show Bees S.r.l.

Work highlights

  • Advising Ferragamo S.p.a. with regard to the protection of its shoe models.
  • Assisted the heirs of architect and designer Gio Ponti in proceedings aimed at protecting under copyright law a series of décors of tiles, named Blu Ponti, designed by Gio Ponti for the Hotel Parco dei Principi in Sorrento.
  • Advising Italy’s Banco BPM on IP related matters.

Nctm Studio Legale

The team at Nctm Studio Legale has expertise in a wide variety of IP matters. The practice is co-led by Paolo Lazzarino, who covers matters ranging from intellectual and industrial property to unfair competition, IT and e-commerce issues. Co-head Lorenzo Attolico deals with mark registration, labelling and advertising as well as trademark enforcement, both contentious and non-contentious, for clients in the fashion, energy, and new technology and virtual reality industries.

Practice head(s):

Lorenzo Attolico; Paolo Lazzarino

Testimonials

‘The team understand clients’ business concerns and addresses their issues in a timely and personalised manner.

Key clients

Chapter 4 Corp. d.b.a. Supreme

Belmond UK Ltd

Amer Sports Oyj

Anheuser-Busch InBev Italia S.p.A.

TBL Licensing LLC

Bulgari S.p.A.

Morellato S.p.A.

Sky International AG

Acqua Minerale San Benedetto S.p.A.

Seiko Holdings Kabushiki Kaisha

BMW Italia S.p.A.

Abercrombie&Fitch Europe SA

Fondazione Telethon

Opocrin S.p.A.

Under Armour Inc.

Mou Limited

Manolo Blahnik International Limited

Canon Kabushiki Kaisha

GUCCI S.p.A.

Weetabix Limited

Work highlights

  • Assisting Canon Inc. in the set-up of an efficient enforcement and pre-litigation strategy aimed at protecting the integrity of Canon’s distribution network for cameras in Italy against Italian sellers of parallel import products.
  • Assisting Manolo Blahnik in several design and trademark out-of-court matter as well as in a litigation before the Court of Naples in relation to the enforcement of the world-famous Manolo trademark.
  • Advising GUCCI on confidential naming and trademark clearance matters in relation to the reproduction or elaboration of third-party names, signs, marks, logos and designs.

Orsingher Ortu – Avvocati Associati

The team at Orsingher Ortu – Avvocati Associati is particularly active in the media space, advising prestigious clients in the entertainment industry, as well as luxury businesses in the automotive and fashion sectors. Brand protection, design, copyright as well as piracy and anti-counterfeiting activities are among the key areas of focus for the department, which is led by firm founder Matteo Orsingher. He works in tandem with Fabrizio Sanna, who co-founded the firm with Orsingher in 2007 as a boutique focusing on IP and TMT matters; it has since expanded to cover a range of other practice areas, and co-operates with a network of trusted independent firms in other jurisdictions around Europe and the US.

Practice head(s):

Matteo Orsingher

Testimonials

‘The firm guarantees efficient legal advice, both out-of-court and judicial, on everything concerning intellectual property. The firm has the ability to deal with all legal issues with a broad perspective, demonstrating an in-depth knowledge of the subject and extensive experience in the sector. ‘

‘Exceptional quality of partners, excellent knowledge of our company sector and relevant specific criticisms (in particular linked to digital advertising). Efficiency in delivering the legal product.’

Key clients

Ferrari

Yahoo!

TBWA

ITV Global Entertainment Limited

Farfetch

LVMH

Fujitsu

Tagetik (software house belonging to Wolters Kluwer group)

Morellato

Twentieth Century Fox

Diesel (Italian fashion house)

Baumer Electric

HSD

Joyetech

Work highlights

  • Brand protection assistance for Ferrari.
  • Assisting the companies belonging to the fashion group Only the Brave on a number of contentious matters for infringement of their 3D trademarks and designs
  • Representing Amazon on projects and litigation of IP nature including copyright, design and trademark infringement proceedings

Osborne Clarke

Osborne Clarke's IP team is led by Federico Ferrara, who has specialist experience in the music and entertainment industry. In particular, clients turn to him and his team for advice on trademark and copyright disputes, licensing agreements and testimonial contracts. The department also has expertise in the sports sector.

Practice head(s):

Federico Ferrara

Testimonials

‘The lawyers act very promptly; they are aware of business needs and work towards the best possible outcome.’

‘Ability to assist in both national and international cases.’

‘Federico Ferrara, Marialaura Boni and Alessandra Corigliano make up a very valuable team.’

‘Osborne Clarke is able to offer a team of specialists who are well prepared in a wide range of matters. Great expertise and high availability.’

Key clients

Sony Music Entertainment Italy S.p.A

SM Publishing (Italy) S.r.l.

Mina Mazzini

PDU Music & Productions S.A.

Havas Milan S.r.l

Binda Italia S.r.l

APA – Associazione Produttori Audiovisivi

Lisa Pigato

MSC Cruises S.A.

Bluvacanze S.p.A

Going .Sr.l.

Christian Vieri

Work highlights

  • Representing Sony Music in litigation over its rights to the catalogue of musical works written by singer-songwriter Lucio Battisti, which Sony claims have been significantly harmed by the actions of four defendants.
  • Represented SM Publishing (Italy) S.r.l. in litigation regarding the issue of synchronization.
  • Advised Binda Italia, a leading watch manufacturer, on drafting of key licensing agreements, including for the use of material owned by the Disney Corporation.

Pavia e Ansaldo

The Milan-based practice at Pavia e Ansaldo handles an impressive range of patent litigation, copyright infringement and trade secrets matters for life sciences giants, pharmaceutical groups and high-profile international fashion brands. Gian Paolo Di Santo, recognised across the board for his extensive expertise, leads a team of four lawyers that is well regarded for its 'high expertise and professionalism.'

Practice head(s):

Gian Paolo Di Santo

Key clients

Accord / Intas group

Aristo Pharma Group

CID S.p.A.

Genentech

Hörmann group

IKOI S.r.l.

Lectra Group

Micron Group

Polo Ralph Lauren

Synchronoss Technologies

Techdow Pharma Italy s.r.l.

Trime S.p.A.

Work highlights

  • Representing life sciences giant Genentech Inc. in precedent-setting IP litigation with huge implications for cross-border actions.
  • Acting for iconic fashion brand Polo Ralph Lauren in successful trade mark infringement actions and enforcement.
  • Representing US IT giant Synchronoss Technologies, Inc. in copyright and trade secrets action with parallel Californian proceedings.

Portolano Cavallo

Portolano Cavallo offers a wide range of IP services, with the main areas of focus for the practice including trademarks, patents, design and copyright. The team takes up intellectual and industrial property cases too, both from an IP and IT perspective. The practice is led by Lydia MendolaMicael Montinari handles commercial, business and intellectual property disputes, while Giulio Novellini, who has an interest in privacy and data protection matters, was promoted to counsel in January 2019.

Practice head(s):

Lydia Mendola

Simmons & Simmons

Simmons & Simmons recruited a new IP team in Italy in late 2018 with the hires of 'very experienced IP litigators' Stefania Bergia and Giulio Enrico Sironi from Studio Legale Vanzetti e Associati along with well-regarded senior associate Anna Colmano. With this set-up, the firm now offers non-contentious and contentious advice to clients in the healthcare and life sciences, luxury, food and industrials sectors, with a focus on trademark, patent, copyright, designs and advertising matters.

Practice head(s):

Stefania Bergia; Giulio Enrico Sironi

Testimonials

‘The team is very close-knit and has longstanding experience, so the work is very well organized and structured. The final product is the result of considerable insights into all aspects, so it is possible to predict any hidden risks in advance.’

‘Giulio Enrico Sironi is a very competent professional.’

‘100% dedication and quality.’

‘Stefania Bergia and Giulio Sironi are very experienced IP litigators who often outperform opposing counsel.’

‘Proactive, coordinated.’

‘Giulio Sironi is capable of listening to customer needs and finding the most appropriate solutions. Competent and a true expert on the subject.’

Key clients

Samsung Bioepis Co. Ltd

Tornato Prado Avvocati

Tornato Prado Avvocati is the result of a merger between two longstanding intellectual and industrial property practices, Tornato Avvocati and Prado&Prado, with the combined firm's expertise covering patent filing and protection (including ownership and infringement litigation), unfair competition, trademarks and digital business models. Practice head Alberto Tornato is praised for his 'outstanding knowledge' of IP litigation procedures, both in Italian and European courts.

Practice head(s):

Alberto Tornato

Testimonials

‘Incredibly deep knowledge and experiences in contentious and non-contentious IP matters; well connected in the Italian market.’

‘Alberto Tornato is the grand seigneur and mastermind of the firm’s trademark practice.’

‘The team has strong expertise in the intellectual property field and IP litigation.’

Trevisan & Cuonzo

Trevisan & Cuonzo receives high praise as a boutique with 'considerable' experience in life sciences patent litigation and for its knowledge of the Italian healthcare system, which allows the team to provide sector-specific and commercially relevant patent litigation assistance. The firm's lawyers advise on cases involving trade secrets, unfair competition, patent infringement or revocation matters. Co-founder Gabriel Cuonzo has decades of court experience and enjoys a 'strong reputation', while fellow co-founder Luca Trevisan is a 'seasoned star.' Julia Holden is jointly qualified as an English solicitor and Italian attorney, while Giulia Affer is also well regarded.

Practice head(s):

Luca Trevisan; Gabriel Cuonzo; Julia Holden

Testimonials

‘The firm is very responsive and always acknowledges requests promptly.’

‘The firm has a deep knowledge of Italian patent law, which allows it to provide extensive advice as well as set out appropriate steps to mitigate potential risks.’

‘Gabriel Cuonzo is a senior individual in the practice with significant long-standing experience in IP matters’

‘Trevisan & Cuonzo appears to be the firm of choice for pharmaceutical multinational companies in patent infringement or revocation matters.’

‘This firm is one of the leading innovator pharmaceutical litigation firms in Italy. They possess a wealth of experience in this sector, and have extremely knowledgeable senior partners, supported by talented partners and associates. They possess a wealth of first hand knowledge of the interplay between generics and branded pharmaceuticals in their market.’

‘Donatella Capelli is a partner in the firm, an excellent advocate and is incredibly thorough and detail orientated. She also possesses a wealth of experience in this sector’

‘Deep knowledge in all matters concerning intellectual property.’

‘Luca Trevisan is a technical expert, particularly concerning patents.’

Key clients

OMP

Seven

3M Company

Golden Lady Company SpA

Beiersdorf AG

Mundipharma

All Star – Converse

Jaguar Land Rover

Superdry

Planitalia

Agride’

Heraeus Medical GMBH and Heraeus S.p.A. / Biomet

Work highlights

  • Representing Heraeus Medical GmbH and Heraeus S.p.A. – world leaders in the field of bone cements and biomaterials – in Italian proceedings against two subsidiaries of a multinational group, which is the other market leader in the same field.
  • Assisting the Italian company Planitalia S.r.l. in proceedings before the Court of Potenza for the protection of the trademark Candonga.
  • Advising American multinational corporation 3M on a broad enforcement programme to actively protect 3M’s trademark rights in Italy.

Withers Studio Legale

Special counsel Jacopo Liguori joined Withers Studio Legale from BonelliErede in August 2018; he now leads a growing team which is active across a range of matters within the IP spectrum. The department, which handles brand registration, licensing, distribution and franchising, has a growing focus on pre-contentious and contentious matters and national and international brand protection. Clients are drawn from sectors including manufacturing, food and luxury.

Practice head(s):

Jacopo Liguori

Testimonials

‘An extremely competent and proactive team, focused on business needs and flexible regarding deadlines.’

‘It is really a pleasure to work with Jacopo Liguori. A very good listener and always available, he ensures immediate responsiveness.’

‘I have never met a professional more accurate, committed and passionate than Jacopo Ronchi.’

Key clients

Capgemini

Work highlights

  • Day-to-day assistance to a car manufacturer on various IT, privacy and commercial matters.
  • Day-to-day assistance in connection with several matters relating to e-commerce, IP and wine labelling.
  • Day-to-day assistance to one of the world’s best-known fashion brands.