Firms To Watch: Intellectual property

Spheriens is an IP boutique firm, focusing on trademark litigation and prosecution, both domestically and internationally. It also handles anti-counterfeiting programmes and proceedings before all of the Italian courts, the Court of Justice of the European Union, the Italian PTO and the EUIPO.

Intellectual property in Italy

ADVANT Nctm

ADVANT Nctm has both trademark and copyright as fields of excellence, whereby enforcement, clearance advice, prosecution and licensing are the main services. The team’s patent and design skills are also well known. Copyright expert Lorenzo Attolico leads the team and also assists clients on trademarks, patents and IP regulations. Paolo Lazzarino stands out for his litigation skills in connection to trademarks, patents, designs, copyright and unfair competition issues. Roberto Cesaro and Luca Guidobaldi were promoted to partners in May 2021.

Practice head(s):

Lorenzo Attolico

Testimonials

‘Dynamic and competent team. Perfect answers delivered in a short time.’

‘Paolo Lazzarino is always attentive, up-to-date and aware of the key subject in which the clients operate.’

‘NCTM guarantees high professional standards in different sectors and in relation to the different legal issues that may arise during a single operation. Among other things, the collaboration and constant intercommunication between the different teams allows the client to benefit from the various skills present in the studio. Great professionalism and experience, with a concrete vision and excellent knowledge of their reference sector.’

‘The IP team is characterized by a very pragmatic approach, great competence and availability. Paolo Lazzarino and his team are always quick in giving answers and providing solutions.’

‘Paolo Lazzarino – professionalism, precision, speed, flexibility.’

Key clients

Automobili Lamborghini S.p.A.

Sony Interactive Entertaiment Italia

Sky International AG

Mou Limited

Unieuro

Gucci

Sprayground

Canon Kabushiki Kaisha

Sanrio Limited

Acer Italy S.r.l.

Liu Jo

Vilebrequin

Futurebrand

Perfect Moment Limited

Under Armour Inc.

Nuovo IMIAE

Laps to Go Holding

Weetabix Limited

Automobili Lamborghini S.p.A.

Sony Interactive Entertaiment Italia

Sky International AG

Mou Limited

Unieuro

Gucci

Sprayground

Canon Kabushiki Kaisha

Sanrio Limited

Acer Italy S.r.l.

Liu Jo

Vilebrequin

Futurebrand

Perfect Moment Limited

Under Armour Inc.

Nuovo IMIAE

Laps to Go Holding

Weetabix Limited

Work highlights

  • Assisting Sony Interactive Entertaiment Italia in relation to the negotiation and the drafting of the relevant agreements, needed for the preparation, development and the execution of the commercial launch of Sony’s brand new “PlayStation 5” videogame console in Italy and for all the related brand promotion, licensing and sponsorship activities.
  • Assisting Brunello Cucinelli S.p.A. in relation to judicial proceedings started by Confezioni Peserico s.p.a., by which the latter aimed at ascertaining that its products did not infringe Cucinelli’s exclusive rights on certain unregistered designs covering items of clothing and accessories, nor the production, promotion and trade of the same amount to unfair competition.
  • Assisting Canon Inc. in relation to a preliminary injunction action brought before the IP Court of Turin against a parallel importer of cameras which sold products not destined to the EEA market through an e-commerce website.

Studio Professionale Associato a Baker & McKenzie

Studio Professionale Associato a Baker & McKenzie offers the full range of IP prosecution services in relation to trademarks, designs, patents in addition to assistance in  media and copyright matters. IP transactional work and trade secrets are also part of the offering. Lorenzo De Martinis leads the practice. Patrizio de’ Ferri is now with Jacobacci and Carlo Demichelis also left the firm.

Practice head(s):

Lorenzo de Martinis

Key clients

Sky Italia

Cassina

LVMH

Curasept

Discovery/Eurosport

Work highlights

  • Advised Christian Dior Couture and Parfums Christian Dior and successfully implemented a brand enforcement strategy specifically addressed to engage manufacturers of counterfeit goods, in Italy.
  • Advised MHCS on the protection of the shape of the Ruinart champagne bottle, and successfully filed a 3D trademark application in Italy for the shape of the bottle plus ellipsoidal label, without any wordings; the trademark application was published for opposition purposes and shall shortly become an issued trademark registration.

Bird & Bird

Bird & Bird has a global focus on IP. In Italy, this translates into great capabilities in high-value, cross-border IP disputes and arbitrations. The substantial team covers all IP matters and is particularly well known for acting in trademark and patent cases. In the former area, managing partner and practice head Massimiliano Mostardini is recommended: he focuses on the food sector and infringement disputes in connection to geographical indications and appellations of origin; in the latter area, patent lawyer Antonella De Gregori stands out. Of counsel Arturo Leone and Giovanni Galimberti handle a mix of IP, TMT and IT matters. Counsel Rita Tardiolo is also noted.

Practice head(s):

Giovanni Galimberti; Massimiliano Mostardini; Arturo Leone

Other key lawyers:

Rahul Kakkar; Antonella De Gregori; Rita Tardio

Testimonials

‘Great skills in various industry sectors.’

‘In addition to competence, the firm’s professionals are characterized by extreme availability towards the client’.

‘Immediate availability, seriousness and punctuality in the management of issues.’

‘Comprehensive reporting, availability for discussion, communicative clarity.’

‘Rahul Kakkar is extremely reliable and knowledgeable, has excellent negotiation skills and always manages to achieve the objectives set by the customer. Excellent.’

 

Key clients

Actavis (Teva Group)

BMW Group

Consorzio di Tutela della Denominazione di Origine Controllata Prosecco

Dieter Rams

Ferrero

Ferrovie dello Stato

Fondazione Telethon

La Rinascente

Lendlease

Lottomatica

Pirelli Foundation

Sisvel

Snaidero

TIM

Tommy Hilfiger Licensing

Work highlights

  • Advised Dieter Rams in connection with copyrights’ transfer on industrial design works.
  • Assisting La Rinascente in the launch of its first online store.
  • Assisting BMW Italy on advertising law.

BonelliErede

BonelliErede‘s IP department covers the whole spectrum of IP matters, with a particular focus on those deriving from transactions. The team’s skills in the fashion, healthcare and food sectors are widely recognised and were lately made use of in numerous international litigation cases, especially patent disputes. Tommaso Faelli combines his IP practice with a focus on IT and data protection and also acts as leader of the firm’s innovation and digital transformation focus team. Giovanni Guglielmetti concentrates on advertising and privacy. The duo jointly lead the practice.

Practice head(s):

Tommaso Faelli

Other key lawyers:

Giovanni Guglielmetti

Key clients

Camera della Moda

Valentino

Piaggio

Campari

Bresner Cammareri Intellectual Property – BCIP

Bresner Cammareri Intellectual Property – BCIP exclusively focuses on assisting clients during the creation, registration and protection of their intellectual property. Emanuele Cammareri concentrates on trademarks and design, while also advising on unfair competition and copyright. Davide Bresner assists Prada and other clients in the fashion industry with national and international IP protection and anti-counterfeiting activities.

Practice head(s):

Davide Bresner; Emanuele Cammareri

Testimonials

‘Davide Bresner and Emanuele Cammareri are exceptionally responsive and easy going, and they have a hard-working, experienced IP team. They particularly excel in trademark prosecution, litigation and enforcement issues.’

‘Always punctual and accurate. The team is well organized.’

‘Clarity of presentation, competitive fees and an innovative business approach. Emaunuele Cammareri and Davide Bresner, as well as the whole team, are always available.’

‘The team is very active and proactive. Open to practical solutions. Communication is very good. Very efficient team.’

Key clients

Rocket Milano S.r.l.

Brofind S.p.A.

Isagro S.p.A.

Planet Farms Holding S.p.A.

Guarini Design S.r.l.

Prima Lab S.A.

Comand Tool S.r.l.

Become S.r.l.

GNR S.r.l.

Centrotecnica S.r.l.

Prada S.A.

Booking.com B.V. and Booking.com (Italia) S.r.l.

Nero Hotels S.r.l.

Milano Dry Gin S.r.l.

Fossil Group Europe GmbH

Rocket Milano S.r.l.

Magma S.p.A.

Tommy Hilfiger Licensing B.V.

Work highlights

  • Advisign Prada S.A. and handling all their anti-counterfeiting activities world-wide.
  • Advised Planet Farms Holding S.p.A. in widening its IP portfolio through filing trademark applications and resisting to actions brought by direct and indirect competitors.
  • Advised Guarini Design S.r.l. in building framework agreements with regard to the management of different IP rights in the context of the relationship among the various parties involved in the creation of entertainment products.

Carnelutti Studio Legale Associato

Carnelutti Studio Legale Associato‘s Margherita Barié heads the firm’s IP department and focuses on designs, patents, trademarks, trade secrets and unfair competition. She is also a highly regarded litigator and domestic arbitrator. Associate Giulia Panigazzi assists her.

Practice head(s):

Margherita Barié

Other key lawyers:

Giulia Panigazzi

Key clients

Aliante / Morato Pane S.p.A.

Bormioli Luigi S.p.A. and Bormioli Rocco S.p.A.

Cherry 106 S.p.A. and Cherry S.r.l.

Cimolai S.p.A.

Conbipel S.p.A.

Conforama Italia S.p.A.

Dreamcos International S.r.l.

Faram 1957 S.p.A.

Honda Motor Europe Ltd. Italia

International Nutrition Research Center Inc

Medifarma S.r.l.

MIP – Milano Politecnico School of Management

Sipcam Italia S.p.A.

Work highlights

  • Assisting the Italian company Faram 1957 S.p.A., a furniture production company, in managing the entire trademark portfolio of the group.
  • Assisted Conbipel, an Italian fashion brand, in two different proceedings, started by competitors for asserted counterfeiting of models of clothing.
  • Assisted Honda, a multinational corporation manufacturer of automobiles, motorcycles, and power equipment in various proceedings concerning the infringement, occurred in Italy, of Honda’s registered trademark and models of engines and succeeded in obtaining the cease of various illicit conducts.

CBA Studio Legale e Tributario

CBA Studio Legale e Tributario provides assistance in connection to Italian and German trademark, design and patent law. Mattia Dalla Costa is a dually qualified professional with strong expertise in industrial M&A related to IP matters and co-leads the department together with Barbara Sartori. The duo, who have experience of international commercial transactions and litigations, is particularly appreciated for managing IP strategies worldwide and drafting IP contracts for different jurisdictions.

Practice head(s):

Mattia Dalla Costa; Barbara Sartori

Testimonials

‘Deep national and international knowledge of intellectual property (e.g. between Germany and Italy), development of IP management and protection strategies – also in the context of litigation.’

‘Mattia Dalla Costa has great knowledge of trademarks, patents and their protection at national and international level and experience in international transactions in particular in the IT, telecommunications, aerospace and defence sectors.’

‘Mattia Dalla Costa is an excellent professional, an excellent connoisseur of the subject and very attentive to the customer’s needs. He has always shown great availability and care also in interpersonal relationships. Mattia is of exquisite company.’

‘The team was multifunctional and was able to deal with various aspects, for example also the fiscal one, thus bringing a very high added value.’

‘Mattia Dalla Costa – a very smart negotiator. Barbara Sartori – very persistent and assertive.’

‘Barbara Sartori is an excellent practitioner in IP matters’.

‘Mattia Dalla Costa is a well-known IP litigator operating both in Germany and Italy, with great pan-European expertise. His ability to operate in 4 languages makes him a clear asset to clients.’

‘The firm operates both in Italy and in Germany, thanks to Dalla Costa who is licensed in both jurisdictions. Alessia Ferraro offers valid and continuous support in Italy, in close contact with the lawyer.’

Key clients

Audi ag / audi sport gmbh

Glaxosmithkline spa and glaxosmithkline uk

Thyssen group ag

Hermes sellier s.a.s./ hermes international sa

Max mara srl

Alessi spa

Festo se & co. Kg

Schüko ag

Galileo network spa

Infineon technologies italia s.r.l. + infineon ag + infineon spa

Babolat va sas

Illycaffe’ spa

Patchai s.r.l.

Telespazio spa, leonardo helicopters spa and e-geos spa (italian companies of the leonardospa ’s group), telespazio ag and gaf ag

Iren mercato s.p.a.

Casa oturma

Cib unigas spa

Cmc gmbh & co. Kg classic model cars

Novomatic ag mbh

Bang & clean technologies ag and bang&clean gmbh

Alperia bartucci s.p.a.

Knorr bremse systeme für nutzfahrzeuge gmbh

Inkwell data italia s.r.l. / inkwell data ltd

Piron s.r.l.

Steelcase sa

Schott ag

Jacob maul gmbh

Skipsolabs s.r.l.

Nephi technology gmbh

Mediagraf s.p.a.

Konica minolta s.p.a.

Work highlights

  • Assisted Glaxo Smith Kline in the complex sale of its industrial site to two different pharmaceutical companies (Dobfar Spa and Aptuit Srl) and in the negotiations for the realisation of a new manufacturing site.
  • Assisting Iren Mercato S.p.A. in several electric-mobility projects having scored the sustainable mobility among the main objectives in the Iren Group Business Plan 2024.
  • Assisted Telespazio Spa and E-Geos Spa in the litigation proceeding against Egeos GmbH, concerning the infringement of Telespazio Spa and e-Geos Spa’s rights in trademark, domain name and company name as well as due to unfair competition  by the German competitor.

Chiomenti

Chiomenti‘s IP lawyers act from within the IP, TMT and data protection departments of the firm. IP specialist and of counsel Paolo Bertoni is the key figure in this area. He acts as co-head and has a focus on cross-border patent disputes. Counsel Anna Gardini and senior associate Sara Molina complete the team.

Practice head(s):

Paolo Bertoni

Other key lawyers:

Anna Gardini; Sara Molina

Testimonials

‘Excellent professional preparation, with knowledge both of the theoretical legal and practical aspects involved.’

‘Highly specialized and competent lawyers. Approach to problems with alternative solutions both at a strategic and legal level. Availability, speed of responses.’

‘Paolo Bertoni is extremely competent, reliable, dominates the matter and also helps from a commercial point of view.’

‘The team is characterized by excellent knowledge of the subject and the ability to meet the deadlines communicated on the customer side.’

‘Paolo Bertoni has a great ability to understand the reference market and consequently adapt the consultancy required to the specificities of the sector in which the client operates.’

‘The specialization in luxury makes this studio unique in the sector.’

‘Sara Molina stands out as a particular excellence within the team.’

‘The continuous assistance and availability of the team and of partner Paolo Bertoni, accompanied by constant and precise updating (in the various jurisdictions), make Chiomenti unique. “

Key clients

Artemide S.p.A.

Automobili Lamborghini

Azienda Agricola Villa Sparina

Casoni Fabbricazione Liquori S.p.A.

Compagnie de Phalsbourg

Design Holding

Eagle Pictures S.p.A.

Ed. Mus. Acqua Azzurra s.r.l. in liquidazione

Firriato S.r.l.

Henkel Italia S.r.l.

Mediobanca Banca di Credito Finanziario S.p.A.

Nanotech

Nock Nock S.r.l.

Nove25

Pomellato S.p.A.

Re-Company SA

Toyota Motor Italia

Work highlights

  • Advising Henkel Italia S.r.l. in the legal proceedings commenced by Dhaze Materiaux Service S.r.l. before the Court of Milan, claiming copyright infringement, unfair competition and damages compensation.
  • Advising Design Holding S.p.A. in the framework of a complex extraordinary operation aimed at establishing a joint venture company with Fendi S.r.l., the internationally renowned fashion house. The assistance is also involving a complex license agreement regarding Fendi’s IP rights in order to allow the JVCo to manufacture and market furniture to be branded “Fendi Casa”.
  • Advising Ed. Mus. Acqua Azzurra s.r.l. in liquidazione in numerous proceedings originating as a result of a pending litigation between the company and Sony Music Entertainment Italy S.p.A.

De Berti Jacchia Franchini Forlani

De Berti Jacchia Franchini Forlani had a busy year with patent infringement cases, especially for clients in the pharma sector, while IP advice is often provided in connection to M&A and technology transactions, due diligence and compliance. Practice head Roberto A. Jacchia, together with Silvia Doria , has been assisting top players in different sectors, including entertainment, media, IT, construction, automotive and luxury goods for several years. Associate Giulia Beneduci also stands out.

Practice head(s):

Roberto Jacchia

Other key lawyers:

Silvia Doria; Giulia Beneduci

Testimonials

‘A knowledgeable team of lawyers who are creative in their approach and are up to the challenges of Italian litigation.’

‘Roberto Jacchia is an expert lawyer, careful, precise and able to generate positive results from complex cases. He is ably assisted by Silvia Doria.’

‘Roberto Jacchia is very clear in his advice and understands client’s needs.’

‘Extremely prepared and proactive, with a team approach to intellectual property and effective interaction even on a technical level.’

‘Roberto Jacchia and Giulia Beneduci are professionals with a global vision on IP and an extreme ability to understand customer needs and use legal tools to fine-tune the optimal protection or defence strategy.’

‘Professional and efficient approach. They are always available and continuously advise on developments. Their service is first class, and they are very competent and capable. They are very knowledgeable and very prompt in providing answers.’

Key clients

Alma lasers Italia srl

Ania

Baralan

Culligan group

Gewiss

Glaxosmithkline Group and Glaxo Smith Kline Italia

Imerys

Lesaffre

Lor.ma srl

Merck Sharp & Dohme, Merck & co

Rivolta & Carmignani

Rizzani de Eccher

Rolex sa and Rolex Italia spa

Seci srl

Site ground

Staedtler Mars GmbH & co kg

Werner & Mertz gmbh

Sts oberholz GmbH

Work highlights

  • Enforcing Merck Sharp and Dohme’s patents and defending its active principles in Italy, in various contentious cases in the Rome and Milan IP Courts.
  • Representing Rolex in enforcing its renowned trademark and watches against infringements, counterfeiting and unfair competition, as well as defending the integrity of its selective distribution network in Italy.
  • Assisted Novo Nordisk SpA, in devising a strategy of protection of patented last generation insulin analogues against the future entry of biosimilars, and related regulatory, pricing and public reimbursement issues.

DLA Piper

DLA Piper has a widely recognised IP group, which is particularly known for its focus on patent litigation and innovation protection. Practice head Gualtiero Dragotti provides senior expertise in these areas. Roberto Valenti manages soft-IP and commercial issues with an emphasis on clients in the life sciences sector, who also receive related regulatory advice. ‘Highly valued’ associate Elena Varese concentrates on consumer goods, food, and retail. Trademark management, filing and prosecution complete the offering. Laura Gastaldi is also highlighted.

Practice head(s):

Gualtiero Dragotti

Other key lawyers:

Elena Varese; Roberto ValentiLaura Gastaldi

Testimonials

‘The team has an excellent knowledge of the market and stands out from the crowd for its high-quality advice, flexibility and business-oriented approach. The firm provides a wide arrays of technological tools to clients (e.g. NFTs services, automated tools for migration of data and compiling of documents). DLA Piper acts as a trusted advisor by providing ad-hoc fee structures, secondment programs and trainings.’

‘Elena Varese has an unmatched knowledge and experience in IP and advertising matters. She always provides added value to her work and is able to anticipate the company’s needs. She is always available and capable of conveying trust and enthusiasm also in the most challenging situations. Tailored advice and capacity to think outside the box make Elena one of the youngest market leaders in the field.’

‘DLA Piper has great competence, accompanied by continuous updating and the ability to understand the customer’s needs, without ever forgetting the human dimension of the relationship.’

‘The firm covers various business areas, has enormous flexibility and ability to adapt to the different needs of the business.’

‘DLA professionals are distinguished by the preparation and ability to effectively manage complex cases by finding immediate solutions. There is a constant and timely alignment of the client with regard to judicial developments, accompanied by considerations and suggestions on subsequent actions. The rates applied are in line with the excellent professionalism guaranteed.’

‘Elena Varese distinguishes herself particularly from other professionals for her excellent preparation, for her empathy, for her ability to find immediate solutions and for her ability to succeed. Varese is a highly valued professional.’

Key clients

Alpinestars

Franklin & Marshall S.r.l.

Montenegro

Zambon

Assicurazioni Generali

Wind Tre

Elisabetta Dami

Pernod Ricard

Lamborghini

Nikon

Mondadori

Manolo Blahnik

Tecnica Group

Converse

Duracell

EPO Fashion

Twitter

Twitch

Bacardi

Work highlights

  • Assisted multiple clients in establishing and refining the appropriate remedies to prevent and cure the trade secret misappropriation often carried out by leaving employees.
  • Assisted the pharmaceutical company Sifi Group in the agreement with the Chinese biopharmaceutical company AffaMed Therapeutics for a strategic joint venture in China aimed at developing, producing and marketing intraocular lenses and other surgical devices for the treatment of eye diseases in South East Asia, in the markets of China, Taiwan, Macao and Hong Kong.

EY TAX & LAW ITALY

EY TAX & LAW ITALY has been active in the IP market since the arrival in April 2019 of a team of lawyers from CREA Avvocati Associati, including key figures Daniele Caneva and Elena Carpani. In July 2021, they were joined at the headship of the practice by Giovanni Francesco Casucci, a recognised lawyer formerly at Dentons. Advertising law is among the specialisms in the team.

Practice head(s):

Daniele Caneva; Elena Carpani; Giovanni Casucci

Testimonials

‘Availability and promptness in giving answers.’

‘Elena Carpani provides very effective advice.’

‘Giovanni Casucci acts in a professional and cohesive team.’

‘Giovanni Casucci represents an excellence among IP lawyers in Italy. He has the ability to synthesize, has a strategic vision on matters and knows how to organize disputes in transnational contexts. Business-oriented approach aimed at finding and promoting agreements and transactions between the parties.’

‘Innovative, proactive and decisive approach.’

‘Elena Carpani is strong and someone who is relatable but efficient at the same time.’

Key clients

Asak

Cesari Umberto

Danieli

Geico

FIam

Minottti

Moscot

Numero 8

Restech

Panotec

Tecnidro

Terzani

Thun

Work highlights

  • Assisting Danieli in preliminary cross-border search order proceedings before the Court of Trieste in relation to a supposed infringement of software.
  • Assisting Numero 8 in preliminary procedure proceedings before the Court of Milan in relation to a supposed infringement of trademark
  • Assisting Moscot in relation to copyright law and potential infringement of a trademark and vertical agreements on production distribution in Europe.

Franzosi Dal Negro Setti

Boutique IP firm Franzosi Dal Negro Setti houses greatly recognised founding partner Mario Franzosi, who is widely known for his practice and the contribution to the Italian jurisprudence in the field of patent defence. He, together with Vincenzo Jandoli and Federica Santonocito, leads a team which focuses on high-level patent disputes, including across different jurisdictions, as well as trademarks, domains, designs and copyright.

Practice head(s):

Mario Franzosi; Vincenzo Jandoli; Federica Santonocito

Gattai, Minoli, Partners

Gattai, Minoli, Partners‘ IP and IT law department was founded in 2015 and has been steadily growing since then. The IP offering integrates traditional industrial property rights, including advisory and contentious work on patents, designs and trademarks as well as expertise in connection to tech platforms and software. Trade secrets are also a key specialism. Licia Garotti  is the key figure and is, among others, an appreciated fintech lawyer, who founded the firm’s fintech taskforce.

Practice head(s):

Licia Garotti

Key clients

Global Thinking Foundation

Verisure Italy S.r.l.

Virgin Active S.p.A.

General Medical Merate S.p.A.

LPE S.p.A.

Bancomat S.p.A.

Consorzio AbiLab

IO.T Solutions S.p.A.

Chili S.p.A.

ITsART S.p.A.

Boschetti Alimentare S.p.A.

Sadepan Chimica S.r.l.

IQVIA Solutions Italy S.r.l.

SIFI S.p.a.

LB Officine Meccaniche S.p.A.

Carton Pack s.r.l.

TMP Group IT S.r.l.

U-Earth Biotech LtdYes

Team System S.p.a.

Amissima Vita S.p.A.

Work highlights

  • Assisted Bancomat S.p.A in the signing of a memorandum of understanding with SIA, a hi-tech subsidiary of CDP Equity and active at European level in the field of infrastructures and technological services in the field of card & merchant solutions, digital payment solutions and capital market & network solutions.
  • Assisted Banca Generali S.p.A. in the acquisition of a minority stake interest in Conio, one of the largest national cryptocurrency exchanges.
  • Assisted Chili S.p.A., an Italian over-the-top platform providing video on demand services, in the drafting and negotiating a set of agreements (including license agreements for audio-visual and cinematographic contents and technology outsourcing agreements) for the implementation and management of a new over-the-top platform.

Gianni & Origoni

Gianni & Origoni‘s IP department provides expert advice and representation to domestic and international clients in the full spectrum of IP matters, as well as those with aspects of TMT and cybersecurity law. The group’s engagement in the arts field is particularly recognised and appreciated, both in contentious and transactional contexts, while IT and media are also among the team’s areas of specialism. The department is jointly led by Nino Di Bella and Massimo Sterpi, and it includes Vanessa Franchini. IP, TMT and cybersecurity expert Stefano Mele joined in April 2021 from Carnelutti.

Practice head(s):

Nino Di Bella; Massimo Sterpi

Other key lawyers:

Vanessa Franchini; Stefano Mele

Testimonials

‘Vanessa Franchini is a knowledgable lawyer who perfectly understands the client’s needs. She is flexible to adapt to the client’s strategy and looks for the most realistic and practical approach. She is firm and assertive in the courtroom, too.’

‘Competence, timing and ability to understand business dynamics and work with the various business components at all levels.’

‘Nino di Bella and Raffaello Stefano De Marco are highly experienced professionals and have the ability to interact with every level of the company.’

‘Massimo Sterpi is intelligent, innovative and responsive.’

‘Ability to make accurate strategic evaluations, weighing in an analytical way the pros and cons of each problem, and then suggesting the most suitable synthetic solution in the light of the analysis carried out.’

‘Nino Di Bella: accuracy of his evaluations and considerable experience in negotiation techniques and strategies. Carmine Di Benedetto: multi-practice approach to problems and constant professional updating.’

‘Gianni & Origoni focuses strongly on advocating for the client’s position, developing practical and effective strategies to advance the client’s interest, and obtaining satisfactory results.’

‘Massimo Sterpi is extremely competent as a lawyer, and a pleasure to deal with as a person.’

Key clients

Hasbro

Adidas

Sky Italia

Facebook

Lega Calcio Professionisti Serie A (Italian Football League)

Technogym

Fendi

Goupon

Roberto Cavalli

Diesel

Wind Tre

TBS Crew S.r.l.

Ferretti Yachts Group

UniCredit

Philip Morris

Dsquared2

Costa Crociere

De Agostini

Work highlights

  • Assistance to the Italian Football League (Serie A) with reference to the IP issues related to the sale of a 10% stake in a proposed TV rights newco to a consortium made up by CVC, Advent and FSI.
  • Assisting Global Art Exhibition Inc in criminal proceedings concerning allegedly fake Modigliani artworks.
  • Assisting TBS Crew S.r.l. in relation to licensing, brand protection, advertising and joint venture agreements.

Greenberg Traurig Santa Maria

Greenberg Traurig Santa Maria‘s IP team works in connection with the firm’s global practice but also maintains a strong position in the local Milanese market of the former boutique Santa Maria. The team’s core expertise lies in trademarks, patents and copyright, both on contractual and judicial matters. Practice head Luigi Fontanesi specialises in the fashion, food, life sciences, pharmaceutical, manufacturing and TMT sectors. Paola Furiosi  is now with PwC TLS Avvocati e Commercialisti.

Practice head(s):

Luigi Fontanesi

Other key lawyers:

Camilla di Fonzo

Testimonials

‘Luigi Fontanesi is an esteemed professional, able to respond quickly to all matters relating to intellectual property. His passion and attention to detail make him the perfect partner.’

Key clients

Hotel Villa d’Este S.p.A.

Room Seven

Art Partner

Ironman

IP Soft

Bracco Foundation

Gruppo Cimbali S.p.A.

Dnd Martinelli Srl

Linaire Srl

Gabbanelli Accordions & Imports, LLC

Transpar3nt

Siirtec Nigi

Azienda Farmacie Comunali Lodi s.r.l.

Work highlights

  • Advising Cimbali as strategic IP counsel, including in various IP agreements regarding supply, advertisement and distribution.
  • Representing Villa d’Este S.p.A. against an attempt by Galileo S.p.A. to overcome a previous settlement agreement among the parties by pleading that “Villa d’Este” trademarks were lapsed for lack of use in some classes.
  • Representing accordion company Gabbanelli in a number of  proceedings.

Herbert Smith Freehills

Herbert Smith Freehills has outstanding IP expertise and is strongly recommended for cross-border disputes in the life sciences sector. Practice head Laura Orlando is praised for her ‘undisputed expertise’ in this field, and her ‘good’ team ‘benefits from her leadership’. Pietro Pouché, who was promoted to partner in May 2021, is described as ‘the best lawyer to entrust with cases in the telecommunications, mechanical and technological sectors.’ 

Practice head(s):

Laura Orlando; Pietro Pouché

Testimonials

‘The team is good and benefits from the leadership and undisputed expertise of Laura Orlando.’

‘Laura Orlando is an extremely helpful and punctual managing partner in defining legal solutions suitable for the business context.’

‘Very fast, user-friendly, and at the same time very prepared and creative. Real business partners. It’s a great team, well-structured, but at the same time the partners are really present and attentive to everything, even billing.’

‘Laura Orlando and Pietro Pouché: attention and understanding of clients’ needs, and transparency in billing. No surprise fees.’

‘Laura Orlando stands out for her depth of knowledge and business acumen.’

‘Laura Orlando is outstanding’

‘The team is always very responsive and accurate in every suggestion and action and this is highly appreciated by the end customer.’

‘Laura Orlando and Pietro Pouchè are excellent professionals with an excellent ability to manage even complex technical problems – a fundamental skill in the management of patent cases. Laura Orlando is the best attorney to turn to for cases in the life science industry. Pietro Pouchè is the best lawyer to entrust with cases in the telecommunications, mechanical and technological sectors.’

Key clients

Gilead Sciences, Inc

Millennium Pharmaceuticals

AMA

Novaliq GmbH

Bormioli Rocco S.p.A..

DoveVivo SpA

Zagato

Achilles Vaccines

De Beers

Treasury Wine Estates

Work highlights

  • Representing Gilead in relation to one of the pharmaceuticals sector’s largest ever patent cases, most recently also in the appeal proceedings started by Gilead against Mylan before the Supreme Court in Rome.
  • Assisted Novaliq against an Italian competitor which had started an online denigration campaign against Novaliq.
  • Assisted Treasury Wine Estates achieving a major victory in complex preliminary injunction proceedings brought before the Court of Florence by the local wine consortium Consorzio Colline del Monferrato Casalese.

Hogan Lovells International LLP

Hogan Lovells International LLP's highly reputed IP department provides assistance and in-court representation in the full spectrum of IP law matters. The team provides an especially comprehensive trademark offering, which stands out for its ability to secure and maintain trademark registrations globally, thanks to the full integration in the firm’s world-wide IP network. Luigi Mansani is widely known for his publications in the fields of patent litigation and Giovanni Ghirardi handles patent disputes. The duo head the practice. Maria Luce Piattelli is noted.

Practice head(s):

Luigi Mansani; Giovanni Ghirardi

Other key lawyers:

Maria Luce Piattelli

Testimonials

‘The firm provides a good service, and they are very committed to their tasks.’

‘The team is very professional and is always available in case of queries. Giovanni Ghirardi is an excellent lawyer.’

Key clients

Adler

Antonio Marras

Arper

Bally Schuhfabriken AG

Eli Lilly

Ermanno Scervino

Gebrüder Thonet Vienna

Molteni & C.

Novamont

Recordati

Richard Ginori

Starbucks

LCA Studio Legale

LCA Studio Legale‘s IP team houses a number of professionals licensed at the Patent and Trademark Offices of Italy and also the European Union. As a result, the department is able to assist clients during the filing of IP papplications, related prosecutions and internet anti-counterfeiting activities not only in Italy, but also at the international level. Gianluca De Cristofaro heads up the group. The department also distinguishes itself through its innovation, as it makes use of a blockchain platform for the management and protection of trademarks.

Practice head(s):

Gianluca De Cristofaro

Testimonials

‘Excellent client-oriented law firm with an extraordinary problem-solving approach. Extraordinary in identifying tailor made solutions with excellent response times.’

‘Gianluca De Cristoforo and Federica Furlan are excellent professionals in terms of preparation and technical skills. Availability, speed and effectiveness.’

‘The team provides high quality advice. Technical skills are combined with the ability to understand the customer they face and the specific needs they have. Very fast response times.’

‘Gianluca De Cristofaro and Francesco de Rugeriis are both excellent lawyers. In particular, they have the ability to make complex concepts easily understandable even for those who are not experts in law.’

Key clients

Hugo Boss AG and Hugo Boss Italia S.r.l.

Save the Duck S.p.A.

Ermenegildo Zegna S.p.A.

E.Land Italy S.p.A. (Coccinelle and Mandarina Duck)

Andrea Bocelli Foundation

Mitsubishi Italy

Vision Group S.p.A.

Golden Goose S.p.A.

Marni Group S.p.A. (Only the Brave – OTB Group)

Smemoranda Group S.p.A.

Microsoft Italia S.p.A.

We Are Social S.r.l.

Max Mara

Pirelli S.p.A. and Pirelli Hangar Bicocca (Art) Foundation

Mandarina Duck S.p.A.

Mondadori Libri S.p.A.

Bonduelle Italia S.r.l.

Mitsubishi Italy

Janssen S.p.A. – Johnson & Johnson

Audemars Piguet Italia S.p.A.

Edizioni musicali Acqua azzurra S.r.l. in liquidazione

Pikdare S.r.l.

Work highlights

  • Assisting Edizioni musicali Acqua azzurra S.r.l. in liquidazione to free itself from Ricordi musical editions, which up to that moment held the copyrights on Battisti’s and Mogol’s, the two founders’, music.
  • Assisting Golden Goose S.p.A. in several Uniform Dispute Resolution Proceedings to obtain the transfer of 5 domain names registered, without authorization, by third parties.
  • Assisting Coccinelle S.p.A. in drafting a cease and desist letter enforcing a registered EU Design (an iconic bag lock) and in the negotiation of the related settlement agreement, in order to block the online sale of the counterfeit goods.

Legance - Avvocati Associati

Legance – Avvocati Associati provides advice in connection to both intellectual and industrial property rights, especially during M&A transactions. Trademark filings and prosecutions, brand and design protection and  patent matters combine into a broad service portfolio, which also includes copyright licensing. The fashion and luxury industry, healthcare and pharmaceutical, software and the entertainment sector are key focuses for the team, which is led by Paolo Marzano. Monica Riva was promoted to partner in June 2021.

Practice head(s):

Paolo Marzano; Monica Riva

Testimonials

‘Great professionalism and availability. Paolo Marzano is able to understand and compose the different points of view and needs of the company departments concerned by synthesizing them, and to find intelligent solutions in line with the customer’s wishes. Maximum availability, efficiency and professionalism (the result of great experience in the sector) in providing support to the company structures in the preparation, in particular, of complex trademark licence agreements and in identifying and sharing the best strategy for the negotiation.’

‘Francesca Cordova is an extremely cordial and serious person. She is extremely dedicated.’

‘Ability to build and maintain the relationship with the customer and always know how to grasp the real needs.’

‘Competence, precision and ability to manage potential conflicts.’

Key clients

Alviero Martini

Apax Partners

Arvedi Group

Assicura Agenzia S.r.l.

Camst S.p.A.

Committee on Legal Affairs (JURI) of the European Parliament

Dai Optical S.r.l

Elie Saab

Emerson Electric

Eusphera S.R.L.

italGB Pharma Spa

Gioelleria Luigi Verga

Hippocrates Holding Spa

Interactive Advertising Bureau Italia – Iab

Mariotti

Marino Bus

Mezzacorona S.c.a.

MyInvenio s.r.l.

Ne.me.s.ys

Nosio S.p.a.

Ostinelli Seta

OT Group S.r.l.

Quadrivio – Made in Italy Fund

Riva Del Garda Fierecongressi S.p.A.

Rock Jam Production

Uga Nutraceutical S.r.l.

LGV Avvocati Studio Legale

LGV Avvocati Studio Legale has a well-reputed IP practice, with an offering ranging from patents to trademarks, and additional expertise in IP matters in the technology field. Founding partner Simona Lavagnini is a recognised copyright lawyer. Co-founder Luigi Goglia is a very active litigator and concentrates on licensing, distribution and contractual disputes. Dually qualified Tankred Thiem is admitted at the German and Italian bars and completes the team at partner level. Alessandro Bura is also noted.

Practice head(s):

Simona Lavagnini; Luigi Goglia; Tankred Thiem

Other key lawyers:

Alessandro Bura

Testimonials

‘Luigi Goglia and Tankred Thiem are very competent and reliable partners in patent litigation matters. Tankred Thiem’s admittance to both the German and the Italian bar makes him invaluable in cross-border matters. Their input in working out complex strategies is always helpful and to the point.’

‘This firm has expertise in copyright law and the latest Italian/EU jurisprudence, particularly as it relates to the creative sectors. They provide seamless service throughout the pandemic via email and Zoom.’

‘The team members are all fluent in English, both written and spoken. Their technical knowledge is excellent, and they also deliver very thoughtful, practical advice. They are an absolute pleasure to work with.’

‘Simona Lavagnini, an exceptional professional. Always available and ready to support us for any eventuality. During the years of consultancy, an excellent relationship has been established both with the lawyer.’

‘The LGV team is unique in its ability to support us on a daily basis on the most varied issues of international law.’

‘The professionalism and precision with which Simona Lavagnini and Margherita Stucchi assist and support us are commendable. They have the ability to involve us and inform us through an appropriate language but understandable to the layman.’

‘It is a boutique that – precisely because of its characteristics and dimensions – is able to devote particular attention to the customer. Professionals are always prepared on the needs of the company that they follow step by step and of which they know the business and dynamics.’

Key clients

SKY Italia Srl

IIDEA

Keywords

HSD S.p.A.

GPQ Srl

BSA

FPM

Value+ S.r.l.

SKY Italia Srl

IIDEA

Keywords

HSD S.p.A.

GPQ Srl

BSA

FPM

Value+ S.r.l.

Work highlights

  • Assisting Sky Italia in relation to its exclusive rights for the broadcasting of the Italian football championship.
  • Advised GPQ, holder of various patents in the field of cosmetics and medical device, in setting up enforcement campaign and IP value – building strategy.
  • Assisting the Software Alliance since 2003 in enforcing exclusive rights on software.

Martini Manna Avvocati

Martini Manna Avvocati is a small IP boutique with a growing profile in the market. It distinguishes itself for its engagement in quality trademark and copyright protection cases, patent infringement cases in the pharmaceutical industry, and database and know-how infringement cases. Elena Martini is noted for ‘establishing herself as a true authority in the market’. She leads the department together with Luigi Manna.

Practice head(s):

Elena Martini; Luigi Manna

Testimonials

‘Very close-knit and competent team, taking great care in the preparation of cases and their development’.

‘Luigi Manna follows cases very professionally, anticipating the problems one could encounter and always proposing a course of action which proves to be successful.’

‘Truly unique team. Online documentation always available for viewing, great transparency on the count of hours billed and great support.’

‘Elena Martini: great professionalism, dedication. She puts love into her profession and fundamental attention to customer care. She has great experience and an extraordinary capacity for synthesis.’

‘Speed in identifying the problem and, above all, its solution, with a pragmatic and in any case sophisticated approach from a technical point of view.’

‘Elena Martini is a virtuous example of firmness, determination and credibility. Despite her young age, she was able to capitalise on her experience to the maximum, establishing herself as a true credible authority on the market.’

‘The compact, versatile team acts very agile. Responsiveness and solution-based approach.’

‘Elena Martini is a skilful and always well-prepared IP professional. Her assessments are to the point and insightful.’

Key clients

Alma Biotech s.r.l.

Spotify AB

Candice Cooper AG

Wahl GmbH and Wahl Italy s.r.l.

Pharmagest Italia Srl – Pharmagest Interactive SA

Cefriel S.c.a.r.l.

Frette s.r.l.

PHI Industrial Acquisitions

Gallucci S.p.A.

DAZN Group

MIPU Predictive Hub s.r.l.

Aste Giudiziarie In Linea S.p.a.

Anna Virgili S.r.l.

Consorzio Kiwi Passion S.c.r.l.

Jessica Joelle Alexander

SCHOTT AG

MATERYA S.r.l.

Linea Azzurra S.r.l.

Work highlights

  • Assisted DAZN Ltd in drafting and negotiating, amongst others, the agreements for the production of the Serie A football matches and those for the licence of archive rights by several Serie A teams.
  • Assisting Luxury Cosmetics d.o.o. in commencing trademark infringement proceedings against an Italian competitor.
  • Assisting Aste Giudiziarie Inlinea S.p.a. in submitting a preliminary injunction application for trademark infringement and free-riding before the Brescia IP Court.

Mondini Bonora Ginevra Studio Legale

MONDINI BONORA GINEVRA Studio Legale was established after the former entities Mondini Rusconi, Bonora e Associati and Rapisardi e Ginevra Avvocati Associati joined forces in early 2021. Both firms were active in the IP field: the former with a focus on copyright, trademarks and competition, the latter on patents and related disputes. The newly formed team is jointly led by Giorgio Mondini and Carlo Ginevra and combines the two areas of specialisms in a single department. Giacomo Bonelli is a recognised team member with specialism in copyrighted industrial design, models and trademarks. Fabio Ghiretti stands out for assisting clients in the music, entertainment, and fashion industries.

Practice head(s):

Giorgio Mondini; Carlo Ginevra

Other key lawyers:

Giacomo Bonelli; Fabio Ghiretti

Testimonials

‘The lawyers are very knowledgeable and responsive, practical and with a good attitude. Reasonable rates. They are capable to handle very complex matters.’

‘Giacomo Bonelli is the perfect contact person for any question concerning copyright and always leads to successful outcomes.’

‘Professionalism, dynamism, precision and punctuality.’

‘Great competence in patent litigation, and great attention to the customer.’

‘Carlo Ginevra: ability to manage legal issues related to complex technologies by effectively focusing on the relevant aspects.’

Key clients

Warner Chappell Music Italiana S.r.l.

Wise Music Group

Telecom Italia (TIM) S.p.a.

Ferrero Spa

Kiko S.p.a.

Feltrinelli

Colgate – Palmolive Commerciale Srl

Rinah S.p.a.

Momo S.r.l.

Kerakoll S.p.A.

Mediasoft S.p.a.

Olimpia Splendid S.p.a.

Laboratories Filorga Cosmetiques Italia

Istituto Ricerche Farmacologiche Mario Negri

Work highlights

  • Assisted Premiere Music, a Paris-based music publisher, with a plagiarism claim involving a very popular song written by the French musician Gilbert Montagné, called “On va’ saimer,” and published by Universal Group.
  • Assisted Momo S.p.A. in obtaining a cross border provisional injunction before the Milan Court to stop using the trademark and domain name towards a Dutch non-official distributor.

Nunziante Magrone

Nunziante Magrone has ample local representation though its three offices in Milan, Rome and Bologna, which are led by Niccolò Ferretti, Pietro Ilardi and Luca Ferrari, respectively. Each team works independently in different sectors. Notably, the firm gained a significant Italian client in the fashion industry, but activity is also growing in the furniture, healthcare and automotive industries. Trademarks, patents, copyright and designs belong are its main areas of expertise.

Practice head(s):

Niccolò Ferretti; Pietro Ilardi; Luca Ferrari

Testimonials

‘The industrial property team at Nunziante Magrone is faster and more efficient in responding than the other top Milanese law firms that deal with the same subject. This leads to positive outcomes in many disputes.’

‘Niccolò Ferretti has entrepreneurial vision and supports the entrepreneur in an appropriate way on intellectual property and to industrial design issues.’

‘The practice is extremely well run.’

‘Niccolò Ferretti is exceptional. He understands difficult issues and identifies ways to settle matters very efficiently.’

‘Niccolo Ferretti is of incredible (and even vital) value to clients. He is extremely well-equipped to handle the most complex legal situations regarding IP law. Whether for national (Italian) issues or European matters, he has proven to be knowledgeable, communicative and very reliable.’

‘Ability, experience, professionalism, prompt response and a tailor made service make the IP team of Nunziante Magrone particularly appreciated’.

Key clients

Croce Rossa Italiana ADV

Skylab Studios S.r.l.

Trillytech S.r.l.

Medinaction S.r.l.

Road to Green – Ass. No Profit

IMAC S.p.A.

Teo.Rema S.r.l.

Eufoton S.r.l.

Axel Weinbrecht GmbH

Bonacina 1889

Lambretta

Sildeha

International Brand Consulting IBC

Morgan Tecnica

Work highlights

  • Advised Eufoton in a precendent-setting case which established that once a patent limitation has been exercised, it will no longer be allowed to return to the original extension of patent protection.
  • Assisting the Italian Red Cross on five judicial procedures in order to prevent the use of counterfeiting trademarks used by competitors.

Orsingher Ortu – Avvocati Associati

IP and TMT boutique Orsingher Ortu – Avvocati Associati houses professionals with a high degree of specialisation in  all IP areas, especially in connection to contractual advice, transactions and due diligence. Co-practice heads Matteo Orsingher and ‘pragmatic’ Fabrizio Sanna stand out in these areas. Litigation, mostly regarding patents, trademarks and copyright, as well as arbitration, is also a key element in the firm’s offering.

Practice head(s):

Matteo Orsingher; Fabrizio Sanna

Testimonials

‘Responsiveness and great value.’

‘Fabrizio Sanna is very pleasant to deal with and pragmatic.’

Key clients

Amazon

Condé Nast

Ferrari

ItaliaOnline

Lastminute.com

LVMH

New Wave Group

SKY

The Walt Disney Company

Twentieth Century Fox

Yahoo!

Work highlights

  • Advised Pollini / Alberta Ferretti Fashion Group on the proceedings pending before the EU Court of Justice for the confirmation of the decision of the EUIPO board of appeal which rejected the application for registration of the EU trademark filed by a competitor.
  • Advised ITV on the proceedings before the Italian supreme court against the decision of the court of appeal of Milan in a complex trademark case.
  • Successfully represented New Wave Group, both in the first degree and appeal interlocutory proceedings, in a litigation against Puma and the Italian Football Federation for trademark infringement.

Osborne Clarke

Osborne Clarke‘s IP practice stands out for its expertise in the music sector. Its client base in the industry includes independent music companies, individual musicians and top players such as Sony Music Entertainment. They all turn to the practice for advice in connection to copyright matters, advertising and marketing and cross-practice work with competition law elements. Practice head Federico Ferrara is ‘very effective in negotiations and especially in litigation.’

Practice head(s):

Federico Ferrara

Other key lawyers:

Marialaura Boni; Alessandra Corigliano

Testimonials

‘Marialaura Boni and Gianluigi Marino are very well-prepared with maximum availability and flexibility.’

‘The team works with a super professional, flexible and productive approach.’

‘Federico Ferrara, Marialaura Boni and Alessandra Corigliano are very knowledgeable, quick and creative in the field also with regard to the production of ad hoc contracts.’

‘MariaLaura Boni: prepared and available, extremely punctual in scheduled commitments and with consulting skills that extend beyond the specific issues to be addressed.’

‘Osborne Clarke’s team is always very helpful. Humility, competence and professionalism are always the keywords. The IP team also has direct experience in many business sectors and is very knowledgeable on the subject.’

‘Federico Ferrara: proactive and very operational in the field. Always prepared and available. Very effective in negotiations and especially in litigation. Alessandra Corigliano: young professional, but already of a high level. Very capable in ordinary advice and diligent in every request.’

‘The team boasts the presence of extremely qualified professionals, with a rare and very high degree of specialization in the areas of expertise.’

Key clients

APA – Associazione Produttori Audiovisivi

Sony Music Entertainment Italy S.p.A

SM Publishing (Italy) S.r.l.

ENGIE (Stellantis Group)

Opera Co-Pro Ltd.

Grifols Italia S.p.A

Havas Milan S.r.l

PDU Music & Productions S.A. and Il Volatore Edizioni Musicali S.r.l.

Re-Forme S.r.l.

Cinica S.r.l

Binda Italia S.r.l

Work highlights

  • Advising Sony Music in a copyright lawsuit against Edizioni Musicali Acqua Azzurra and three other defendants, connected with alleged unlawful actions relating to the valuable catalogue of leading Italian singer-songwriter and composer, Lucio Battisti, which, our client claims, have jeopardised its ability to exploit its IP rights in these original recordings – a complex and highly important dispute since the case relates to the use in digital channels of tracks covered by old contracts that never anticipated this form of use.
  • Advising APA, an Italian association that brings together 47 of the country’s leading independent television production companies, on a range of matters, including discussions with the Italian Ministry of Cultural Heritage Activities and Tourism over updating private copying levies, as well as representing it in connection with a potential infringement by a Belgian third party of APA’s registered EC trademark.
  • Representing Opera Co-Pro, a UK company that commissions new operas and manages co-production projects, on a range of initiatives that have arisen through its online platform, including cross-border IP advice on its relations with performing arts companies, artists, composers and publishers.

Pavia e Ansaldo

Pavia e Ansaldo has a longstanding track record in IP matters. Concentrating mainly on highly regulated sectors, the team also handles IP elements of M&A transactions and social media work. Practice head Gian Paolo Di Santo stands out for his activity in the life science and fashion sectors. Counsels Gabriele Girardello and Arianna Paternicò complete the team.

Practice head(s):

Gian Paolo Di Santo

Key clients

Genentech

Accord / Intas group

Polo Ralph Lauren

Synchronoss Technologies

Ethypharm group

Lectra Group

IKOI S.r.l.

GPI S.p.A.

Hörmann group

Micron Group

Techdow Pharma Italy s.r.l.

Trime S.p.A.

Work highlights

  • Representing Proras before the Italian Supreme Court, which ruled in its favour in a long-running and highly complex counterfeiting case.
  • Representing Genentech Inc in a cross-border action.
  • Acting for Polo Ralph Lauren in infringement proceedings related to its iconic “polo player on horse” logo.

Portolano Cavallo

Portolano Cavallo has a strong specialisation in TMT and digital matters in addition to a focus on the life sciences and fashion sectors. The practice is also highly skilled in dealing with IP issues with an emphasis on litigation, licensing, patents, copyright, software and music, in connections to media and entertainment. Practice head Lydia Mendola is a member of ChIPs - Chiefs in Intellectual Property, an organisation that aims to advance women in IP law.

Practice head(s):

Lydia Mendola

Testimonials

‘Always prompt, clear and pragmatic. They work within tough deadlines and never fail to provide us and our clients with pragmatic advice.’

‘Great ability to work in a team. Excellent timeliness in providing feedback.’

‘The team is solid and very prepared, while always remaining very close to the customers and their needs.’

‘Lydia Mendola is a very prepared professional.’

Simmons & Simmons

Simmons & Simmons has widely recognised skills in patent litigation and especially in the chemical, pharma and life sciences sector. Practice heads Stefania Bergia and Giulio Sironi are widely recognised for their ‘assiduous and constant commitment’ in contentious and non-contentious matters of international relevance. Both lawyers handle patents, trademarks and trade secrets, among other matters. Anna Colmano is noted.

Practice head(s):

Stefania Bergia; Giulio Enrico Sironi

Other key lawyers:

Anna Colmano

Testimonials

‘Stefania Bergia, Giulio Sironi and Anna Colmano are serious, competent and friendly.’

‘The department has a highly specialized and multidisciplinary approach. Prompt support is also offered with regard to the interpretation of contracts and relationships governed by foreign laws. Full cooperation also in dealing with emergencies.’

‘Giulio Sironi and Stefania Bergia are very helpful, precise and competent.’

‘The partners Stefania Bergia and Giulio Sironi and their collaborators Anna Colmano and Stefano Vignati are competent, flexible and easy-going professionals, able to validly lend their assistance in the IP field in the most various sectors of technology. Their ability to work as a team is much appreciated.’

‘Stefania Bergia and Giulio Sironi have great ability to understand the problems of the clients.’

‘Stefania Bergia combines a deep knowledge and mastery of the subject with an excellent ability to relate both with the customer and with colleagues from other sectors.’

‘Giulio Sironi stands out for the availability and accuracy of the work.’

‘Great professionalism, excellent preparation, ability to work on complex problems based on the needs of the client. In particular, Giulio Sironi and Anna Colmano truly commit to the matters assigned to them.’

Tornato Prado Avvocati

Tornato Prado Avvocati  has longstanding experience in IP, competition, contracts, copyright and advertising law. Out-of-court advice is paired with strong capacities in the disputes arena, including cases fought before the Italian Supreme Court and the European Court of Justice. Alberto Tornato is described as ‘an exceptional IP lawyer’ with ‘decades of legal expertise’ in all types of IP-related issues. Jakob Engl Bisignano is also highlighted.

Practice head(s):

Alberto Tornato

Other key lawyers:

Roberta Comola; Jakob Engl Bisignano

Testimonials

‘They respond with energy and interest, work very well in partnership with the client, and act creatively and proactively.’

‘Highly responsive IP practice with experienced litigators supported by a close-knit team.’

‘Alberto Tornato is very experienced and knowledgeable with a key sense of strategy and how best to deliver results on a cost-effective basis.’

‘Roberta Comola is extremely good, fast and responsive. Jakob Engl Bisignano: outstanding IP litigator who thinks out of the box. Quick, effective team. Pragmatic approach.’

‘Tornato Prado combines the professionalism of large firms with the advantages of smaller companies in terms of costs and availability. In addition to professionalism, they are characterised by promptness and a constant availability, which is fundamental in the initial stages of disputes, even out of court.’

‘The firm has high-level professionals. Roberta Comola is a point of reference. Alberto Tornato: knowledge of languages, especially German, can be very useful.’

‘Alberto Tornato is an exceptional IP lawyer with broad expertise in any IP-related issues and decades of legal expertise. Alberto is not only a sound litigator, but also an exceptional negotiator.’

‘Jakob Engl Bisignano is a rising star with exceptional IP knowledge and outstanding performance.’

Trevisan & Cuonzo

Trevisan & Cuonzo is considered to be ‘one of the most sophisticated Italian patent boutiques’. The ‘excellent’ team has noted expertise in multi-jurisdictional patent cases, with a ‘well-deserved reputation’ for dealing with complex IP cases and a great grasp of the life sciences market. Luca Trevisan and Gabriel Cuonzo jointly lead the team, which comprises a number of widely recognised professionals, including highly appreciated Daniela Ampollini, who is noted for her ‘tireless work and dedication’ and is particularly well known for her work in the pharma sector.

Practice head(s):

Luca Trevisan; Gabriel Cuonzo

Testimonials

‘Top-tier patent litigation and regulatory team in Italy. Decades of experience on leading cases, but with excellent younger partners also emerging in the team.’

‘Daniella Ampollini is a star. She is an absolute delight to work with and thoroughly knowledgeable. Not only does she have the full picture in Italy, but she is able to grasp how the strategy needs to fit with parallel litigation in multiple other jurisdictions. Gabriel Cuonzo has also been impressive for many years, often working in conjunction with Daniela.’

‘Gabriel Cuonzo is very well known. Donatella Capelli is discrete but provides very good work, comes up with her own understanding of the case to adapt the arguments the most to the Italian judges. Lorenzo Battarino is very active too.’

‘Trevisan & Cuonzo deserve their reputation as a go-to firm for IP in Italy. They provide good strategic direction and thinking and have seen and done it all before.’

‘Gabriel Cuonzo brings great gravitas and nuanced strategic thinking to the table, drawing from his vast experience. Daniela Ampollini is noted for her tireless work and dedication, and is particularly well known for her pharmaceutical work for innovator companies.’

‘Leading firm in the Italian IP scene. Has a very well-deserved reputation for dealing with the most complex and ground-breaking IP cases – and they deliver. Unparalleled breadth and depth from life sciences to tech fields, and also from partner and down the associate ranks.’

‘Gabriele Cuonzo – leading light in the field with unparalleled experience and expertise. He has very good instincts. He is one step ahead of adversaries and a charming advocate in court.

‘Daniela Ampollini is excellent. She can assess the situation correctly, make an appropriate strategy, has a network with other capable experts, makes a thorough research and is a reliable negotiator. Gabriel Cuonzo is also excellent. He has a precise insight, foresee an outcome accurately and is a tough negotiator.’

 

Key clients

3M Company

Boehringer Ingelheim

Novartis

Heraeus Medical GMBH and Heraeus S.p.A.

OPPO Guangdong Mobile Communications Co. Ltd

Xiaomi Inc

Arm Limited

Sicasov

Tessilform (Patrizia Pepe)

California Table Grape Commission (CTGC)

Work highlights

  • Assisting 3M on a broad and successful enforcement program to actively protect 3M’s trademark rights in Italy.
  • Successfully represented Boehringer Ingelheim before the Court of Appeal of Milan for patent rights covering the active ingredient of a blockbuster product for respiratory diseases.
  • Assisting Heraeus Medical GMBH and Heraeus S.p.a. in Italian proceedings against his main competitor in a case concerning a violation of valuable trade secrets and involving a number of complex international private law, unfair competition law and international res judicata issues.