IP and IT in Luxembourg

Arendt & Medernach

The ‘very knowledgeable and responsive team’ at Arendt & Medernach has the strength-in-depth to handle a wide range of work, running the gamut from large-scale digitalisation projects and the IP due diligence associated with M&A mandates, through to advice on the commercialisation of IPR and unfair competition and product regulation. Data protection-related work remains a key driver for the practice, and aided by practitioners within the Arendt Regulatory and Consulting group (which bridges the gap between legal advice and its practical implementation), the firm has effectively been able to implement robust compliance procedures for clients. Astrid Wagner is ‘very impressive’ and co-heads the team alongside Sophie Wagner-Chartier.

Testimonials

‘It is a very knowledgeable and responsive team.’

The team is attentive and responsive.’

‘Astrid Wagner is very impressive.’

Key clients

Bain Capital

Volkswagen / Audi

Talkwalker

Made in Space

Spire

Generali

European Investment Bank

Microsoft

Skype

Spotify

Work highlights

  • Assisted a leading real estate investment management firm throughout the whole process of a complex cloud outsourcing project, involving multiple entities of the group contracting with global cloud service providers.
  • Advised an affiliate of a large European banking group being subject of diverse requests and inquiries concerning money laundering allegations and related matters from various US supervisory and law enforcement authorities, including information and documents relating to customers, employees and transactions, as well as information covered by banking secrecy and personal data.
  • Assisted a leading HR consulting firm on IPR infringements and cybersquatting by a direct competitor leading to acts of unfair competition and reputational and moral prejudice.

C law

Market-leading IP and IT boutique C law has vast experience among its four partners, all of whom, as well as their fee-earning work are also noted for their thought leadership and involvement in various professional organisations/commissions. The ‘superb‘ Katia Manhaeve is the latest addition to the team at a partner level and her arrival in May 2021, having spent many years heading up Allen & Overy Luxembourg‘s practice, adds further gravitas to the team, in light of her broad-ranging IP expertise. Cyril Pierre-Beausse is specialised in data protection and IT-related work and he continues to represent many financial services entities on their IT outsourcing arrangements. The team is rounded out at partner level by Claire Leonelli, whose wide-ranging practice includes a considerable amount of copyright-related work and large-scale digitisation projects, and Elisabeth Guissart, who is best-known for her data protection expertise. At an associate level, Claire Denoual is recommended.

DLA Piper

Although it remains a relative newcomer, the experience the constituent members of the team have across the spectrum of IT and IP-related work has ensured that DLA Piper has rapidly gained market visibility. Praised for its ‘global approach’ and ability to leverage vast international resources, the team is particularly effective at representing clients in multi-jurisdictional mandates, including on the exploitation and management of extensive IP portfolios (where clients also appreciate the ease with which they are able to use online IP toolkits). ‘Very knowledgeable and solutions-oriented’ team head Oliver Reisch is particularly effective at handling data protection matters for financial services clients. Counsel David Alexandre provides ‘real legal support in the field of IP law in an efficient way’, and as part of his broad-ranging expertise is particularly skilled at advising on trade mark prosecution and trade mark portfolio management.

Practice head(s):

Oliver Reisch

Testimonials

‘The Luxemburg team provides solid support to our IP strategy and portfolio management.’

‘Both Olivier Reisch and David Alexandre are experienced practitioners who specialise in IP, data protection and technology matters. They are both friendly individuals.’

David Alexandre is very professional, always responsive to client needs and displays a mastery in his field of work.’

Olivier Reisch – very practical approach, knows a lot about the industrial environment and challenges which not all lawyers do.’

‘David Alexandre’s talents in co-ordinating diverse counsel around the world ensured that we had a homogeneous top-quality experience even in exotic jurisdictions. We relied on his experience and practicality to suggest winning overall strategies on a complex playing field.’

‘Olivier Reisch is very knowledgeable and always looking to find a solution to the problems encountered.’

‘I would like to highlight David Alexandre who provides real legal support in the field of IP law in a significantly efficient way.’

Key clients

Fareva

Claire’s Accessories

Middle Game Ventures

Teqball

Nintendo

Sodexo

ATR (aircraft manufacturer – a subsidiary of AIRBUS)

CONAIR BABYLISS

Nomura

Max Planck Institute Foundation Luxembourg

Harbert

Axa

Harrison Street

Generali Real Estate

Work highlights

  • Advising Teqball, a new sport, in securing IP protection globally on specific sport equipment, providing tailor made advice in various jurisdictions around the globe.
  • Advising various investment fund clients on GDPR compliance for existing or newly set up investment fund structures.
  • Advising Fareva, one of the leading global groups manufacturing pharmaceutical and cosmetic goods headquartered in Luxembourg, on the global protection strategy of its IP assets.

Elvinger Hoss Prussen

The ‘highly experienced and skilled’ team at Elvinger Hoss Prussen remains best-known for the ‘pragmatic approach’ it provides to financial services and insurance clients on IT-related contractual matters. The ‘very responsive and skilled’ Gary Cywie is pivotal to this work, including in the context of IT outsourcing agreements. Cywie is also very well-versed on data protection/privacy mandates, in addition to fintech-related matters, including as it relates to blockchain and virtual currencies. Linda Funck co-heads the team alongside Cywie and is particularly well-regarded for her advice on technology-related M&A transactions.

Practice head(s):

Linda Funck; Gary Cywie

Other key lawyers:

Emmanuèle de Dampierre

Testimonials

‘The firm provides an excellent pragmatic approach combined with a high level of expertise.’

‘The value and attention to detail received is undeniable.’

‘Gary Cywie is a very responsive and skilled professional.’

‘Gary Cywie is very accessible and has a hands-on approach to files. He nailed the assignment we gave him by providing 100% what we expected to receive while being able to meet the deadline.’

Key clients

Advanzia Bank S.A.

Cogent Europe S.àr.l.

Cleversoft GmbH

Losch Services S.àr.l.

Maana Electric S.A.

RSS-HYDRO S.àr.l.-s

Seqvoia S.A.

Work highlights

  • Advised RegTech provider for financial services, Cleversoft, backed by Main Capital, on the acquisition of software and data provider for AML and KYC solutions CDDS.
  • Advised Alter Domus in relation to regulatory requirements for outsourcing in the financial sector.
  • Advised a multinational asset management company present in 32 jurisdictions on GDPR matters, including questions on the appointment of a data protection officer and on the determination of their lead supervisory authority for cross-border personal data processing activities.

NautaDutilh

The ‘knowledgeable, pragmatic and customer-focused’ team at NautaDutilh has excellent overarching knowledge across a myriad of IP and IT-related matters, including as it relates to trade mark litigation, commercial contracts and copyright matters. Team head Vincent Wellens encapsulates the firm’s wide-ranging expertise and provides ‘creative and practical’ advice to a range of clients including end-users and vendors in relation to IT outsourcing. 

Practice head(s):

Vincent Wellens

Testimonials

‘The team is very responsive and available for the clients.’

The team is knowledgeable, pragmatic and customer-focused.’

‘NautaDutilh is a very nice law firm to work with. The lawyers are knowledgeable, open minded and customer oriented.’

‘Vincent Wellens is very knowledgeable about the areas of the law he practises in (IP, IT, competition law, data protection). He knows exactly what to do and plays with concepts like an artist juggler, without ever dropping the balls.’

‘Vincent Wellens is a pleasure to work with. He quickly understands the issues at stake and is very approachable and open for discussions. He has a good knowledge of IT matters and of the FSI Luxembourg sector.’

Key clients

Aperam

Auto1

BMW

Canal+

ENGIE

Facebook

Fedex

Fendi

Goodyear

Johnson & Johnson

Luxair

Luxembourg State (CTIE) Luxembourg State (Ministry of Defence) Luxembourg State (Ministry for Interior security) Luxembourg State (Ministry for mobility)

O’Neill

POST Luxembourg

RTL

Samsonite

University of Luxembourg

Work highlights

  • Assisting the French and Belgian associations of accidental Americans in several procedures to stop international transfers of personal data to the US tax authorities under the FATCA agreements between the individual EU member states and the US.
  • Drafted a vast report for the Luxembourg State on how the latter can still roll out solutions in the cloud after the Schrems II judgment of the CJEU.
  • Assisted on broadcasting regulations in the context of the envisaged JV between the Dutch broadcasting business of RTL and Talpa.

Allen & Overy Luxembourg

Although the team has less capability on the IP front, particularly in light of the departure at the end of 2020 of Katia Manhaeve to C law, it remains ‘very strong‘ in relation to IT and data protection, and handles a range of work, from GDPR compliance, through to complex IT outsourcing contracts. Team head Catherine Di Lorenzo is pivotal to the firm’s success in the area and as well as her formidable track record on the fee-earning side, is also highly visible in the wider Luxembourg market through her involvement in numerous technical working groups and associations, including APDL (the Luxembourg association for data protection).

Practice head(s):

Catherine Di Lorenzo

 

Testimonials

 

 

Emmanuelle Ragot Lawyers & Associates DELETE

Formerly head of Wildgen‘s IP/IT offering, Emmanuelle Ragot has vast experience across a myriad of work in the space and her establishment at the beginning of 2021 of Emmanuelle Ragot Lawyers & Associates has rapidly translated into tangible deal flow, both directly from clients, as well as in the context of law firm referral work. In addition to advising on pure Luxembourg matters, Ragot has an international sensibility and is therefore well-placed to advise on cross-border mandates from an advisory perspective (including on data protection projects) as well as to represent clients in IP disputes, not just in the national courts but also before the European Court of Justice.

Practice head(s):

Emmanuelle Ragot

Work highlights

  • Advising the Luxembourg Stock Exchange on data protection/GDPR matters.

LG Avocats

Independent domestic boutique LG Avocats has carved out a successful niche for itself handling an array of media, telecoms and privacy work. As well as direct instructions from clients, the team, which is headed by Hervé Wolff receives a regular flow of referral work from international law firms without a presence in Luxembourg.

Practice head(s):

Hervé Wolff

Work highlights

  • Advised a multinational technology company on an e-privacy and data retention project.
  • Advised a major American film studio on a TV show shot in Luxembourg on health protocols during Covid-19.
  • Advised a leading provider of telecommunications by providing a full regulatory analysis, and notification of services to the regulator.

MOLITOR Avocats à la Cour SARL

While it does handle some conventional IP and IT work, as well as a considerable volume of data protection mandates, MOLITOR Avocats à la Cour SARL particularly stands out as being ‘one of the few firms in Luxembourg with a distinguished expertise in consumer law’. ‘Committed and trustworthy‘ team head Virginie Liebermann has been pivotal to the firm’s success in the area and has an excellent understanding of consumer matters, including from the perspective of advertising law.

Testimonials

‘One of the few firms in Luxembourg with a distinguished expertise in consumer law.’

Virginie Liebermann: Extremely committed, she has a great sense of organisation of her team. She is very competent in particular in the concrete implementation of the law on data protection.’

‘Virginie Liebermann is a committed and trustworthy lawyer with a solid expertise and a global perspective which is definitely an asset when dealing with topics involving products sold worldwide.’

PwC Legal Luxembourg

Led by Audrey Rustichelli, PwC Legal Luxembourg is particularly adept at advising on ITC-related commercial contract work, including as it relates to outsourcing agreements and cloud computing. Rustichelli also has a strong pedigree in relation to data privacy matters and continues to handle a considerable flow of work for corporates on GDPR compliance.

Practice head(s):

Audrey Rustichelli

Other key lawyers:

Nicolas Hamblenne

Key clients

LuxTrust S.A

Google

Work highlights

  • Advised LuxTrust on the legal implications of the implementation of a new platform allowing the sharing of documents collecting clients’ consents and ensuring trust.
  • Appointed by Google as local counsel in order to manage communication with the Luxembourg Data Protection Authority in relation to requests related to the right to be forgotten.

Bonn & Schmitt

Co-headed by Alain Grosjean and Gabriel Bleser, the latter who joined in October 2020 following the firm’s absorption of Moyes Bleser, Bonn & Schmitt has a particular focus advising on data protection/GDPR compliance.

Practice head(s):

Alain Grosjean; Gabriel Bleser

Other key lawyers:

Simon Malterre; Elena Arno

Key clients

Luxembourg Bar Association

International Association of Lawyers (UIA)

Clifford Chance

Overseen by ‘very reliable and responsive‘ litigator Albert Moro and led on a day-to-day basis by senior associate Charles-Henri LaevensClifford Chance is particularly focused on assisting clients in data protection compliance-related matters, as well as in the context of any breaches. Much of this work is on behalf of financial services clients, with asset managers a particularly fertile source of work. Counsel Isabelle Comhaire is also recommended.

Practice head(s):

Albert Moro

 

Testimonials

 ‘The very reliable Albert Moro is responsive and his advice is very accurate.’

Key clients

The LHoFT Foundation

Allegro

Work highlights

  • Advised Allegro, Poland’s number one commerce platform and most recognised e-commerce brand, on its $11.2bn IPO on the Warsaw Stock Exchange.
  • Continuing to regularly advise investment funds and private equity global firms with their data protection compliance.

Linklaters

Although it lacks much of a discernible IP offering, Linklaters handles a considerable flow of IT-related contractual work, including in the context of outsourcing agreements, as well as data protection mandates for many of the firm’s impressive roster of asset management and banking clients, in particular. Managing associate Katrien Baetens heads up the team and is particularly well-versed at GDPR compliance matters.

Practice head(s):

Katrien Baetens

Other key lawyers:

Raoul Heinen

Testimonials

‘Understanding the clients’ business and needs: well integrated in the international network.’

Loyens & Loeff

IP and TMT-related work forms a part of Loyens & Loeff‘s litigation and risk management group, which is headed by Veronique Hoffeld. As well as handling a considerable volume of data protection matters for many of the firm’s private equity clients, the team also regularly represents clients engaged in multi-jurisdictional IP disputes, where it is able to leverage its international network, particularly in the context of Benelux specific matters.  

Practice head(s):

Veronique Hoffeld

 

Other key lawyers:

Sabrina Martin; Emilia Fronczak

Wildgen

Tax partner David Maria is now de-facto head of Wildgen‘s IP/TMT offering following Emmanuelle Ragot‘s departure in 2020. As a result, the firm is undoubtedly less focused on work in the area, although it does remain active particularly in relation to data protection work.

Practice head(s):

David Maria

 

Other key lawyers:

Aurélie Caillard

Key clients

INUI STUDIO S.A.

EXCELLIUM SERVICES LUXEMBOURG

Work highlights

  • Advising a leading telecom services provider and a leading German automaker regarding connected objects such as cars, mobile devices and mobile applications in particular on IP and consumer protection law and on regulation that would apply to these services in Luxembourg.
  • Assistance for a leading shoe company regarding counterfeited products and representation against two major supermarkets in Luxembourg (both from well-known French supermarket chains).
  • Advising numerous entities in the fund industry on different data protection and governance issues: compliance of data transfer agreements from Luxembourg to the US, data protection compliance and governance, implementation of GDPR policies.