Firms To Watch: Intellectual property: Trade marks

The recent additions of practice head Eduardo Castillo and Rais Amills at Pérez-Llorca bolstered the firm's intellectual property and technology group, which is active in trade mark proceedings and transactional matters, with pharmaceutical, life sciences, entertainment and luxury brands as key clients.
With a team based across Barcelona and Madrid, Ventura Garcés often represents domestic and global brands in licensing, franchising, technical service agreements, works commissions, software licenses and publishing contracts.

Intellectual property: Trade marks in Spain

Elzaburu

Elzaburu‘s market-leading trade mark department is regularly sought for trade mark litigation and anti-counterfeiting advice, with a client base featuring household name companies. On the contentious front, the firm is recognised for its protection of rights at all levels, with experience acting before the High Courts of Justice and Supreme Court. Leadership of the practice is divided between trade mark prosecution specialist Luis Baz, seasoned litigator Antonio Castán, legal and business head Javier Fernández-Lasquetty and Juan José Caselles, an expert in anti-counterfeiting and anti-piracy matters. Also noted, Enrique Armijo supports the team in complex proceedings and unfair competition matters, with Carlos Morán and María Cadarso sharing a similar focus.

Other key lawyers:

Enrique Armijo; Carlos Morán; María Cadarso

Testimonials

‘Excellent team, very professional and knowledgeable.’

‘Prestige, know-how, reputation, experience.’

Work highlights

  • Represented Champagne in a case concerning use of the name Champanillo to identify tapas bars, which was referred to the Court of Justice of the European Union for a preliminary ruling.
  • Represented Viacom International and Spin Master in an action against three local companies producing live shows that were considered a copycat of the “Paw Patrol” TV series.
  • Represented Ornua in different cases before the Spanish Supreme Court and the European Court of Justice in order to protect its trade mark Kerrygold.

Garrigues

With an industrial and intellectual property group specialising in litigation, prosecution, assessment and commercial contracts, Garrigues is a popular choice for internet companies and content providers as well as clients in the software, sports, fashion, retail and automotive industries. Based in Madrid, IP and digital business specialist Carolina Pina heads the team alongside João Miranda de Sousa, an experienced prosecutor working out of the firm’s Lisbon office. Accompanying Pina in Madrid is Cristina Mesa, noted for her experience in technology-related matters, working on matters with an innovative or disruptive element. At the associate level, counsel and litigator Isabel Pascual De Quinto, based in Barcelona, ‘provides comprehensive advice that makes the client feel absolutely supported’. Celia Sueiras is also noted.

Other key lawyers:

Cristina Mesa; Isabel Pascual De Quinto; Celia Sueiras

Testimonials

‘Their knowledge of the client, their total involvement and their absolute mastery of the matter make them stand out from other firms.’

‘Isabel Pascual de Quinto provides comprehensive advice that makes the client feel absolutely supported and accompanied throughout the process. The professional and personal treatment by Isabel is unbeatable.’

Key clients

BBVA

UEFA

Valencia Club de Futbol

Estrella Galicia

Bimba y Lola

Makeblock

Clave Denia

Spi Group

Igenomix

LaLiga

Picualia

Universal Dx

Igenomix

Gsk

Pharmamar

Work highlights

  • Represented the Spanish Football League (LaLiga) in a licensing scheme of its trade marks and copyrights for the exploitation of its IP rights and memorabilia in theme parks around the world.

Grau & Angulo

Grau & Angulo remains a key player in the trade mark space, often involved in large scale complex cases and in the provision of ‘high-quality legal advice‘ to notable clients in the fashion, automotive, media and entertainment, healthcare, and food and beverage sectors. Seasoned practitioner Alejandro Angulo, who stands out for his ‘creativity and knowledge‘ in cross-border IP litigation, leads the team, with support from Maite Ferrandiz, specialised in litigation and with particular experience before the Supreme Court, and Carlota Viola, a counterfeiting and infringement expert in the fashion, luxury goods and perfume industries. Jordi Camó is another standout practitioner in IP litigation.

Practice head(s):

Alejandro Angulo

Other key lawyers:

Maite Ferrandiz; Carlota Viola; Jordi Camó; Jesús Arribas

Testimonials

‘The Grau & Angulo team is highly prepared and qualified. They have a lot of experience and complement each other very well. They study matters thoroughly and offer high-quality legal advice. They give a lot of confidence.’

‘Alejandro Angulo stands out for his creativity and knowledge of the issues. Jesús Arribas is a detailed and meticulous lawyer. Jordi Camó has great knowledge of criminal law and is very practical.’

‘They work very well as a team internally. Maximum respect and collaboration with each other. With the client, each one has their specialties. The deadlines work very well. They convey confidence.’

‘Fantastic case study. They cover all kinds of scenarios. They study the actors. They study everything. Very professional. They convey a lot of confidence.’

‘The team has very good legal skills and commercial understanding to solve complex matters. Highly recommended team.’

Key clients

Adidas

BMW

FC Barcelona

Harley Davidson

Hugo Boss

Chanel

Burberry

Tommy Hilfiger

Procter & Gamble

Prada

Golden Goose

Levis

Fred Perry

Work highlights

  • Representing Adidas in a case before the Supreme Court involving the consumer error theory.
  • Representing major perfume brands against smell-alike perfumes in continuing strategic trade mark enforcement.
  • Representing Barcelona Football Club in a case which involves a breaching of the licence by the defendants who continued manufacturing of branded goods following the licence expiry.

Gómez-Acebo & Pombo

The intellectual property department at Gómez-Acebo & Pombo features a renowned team specialised in unfair competition, infringement actions, interim injunctions, opposing actions, registration and market strategy, retaining high-calibre clients in the retail, technology, food and beverage, TMT, entertainment and life sciences sectors. Recently, the firm has also been active in the field of digital business, emerging technologies and M&A. Leadership of the group is divided between IP enforcement specialist Jesús Muñoz-Delgado and Sofía Martínez-Almeida, a digital law expert. Backing these efforts are Gonzalo Ulloa, recognised for his role in a broad range of IP litigation, and associate Anna Viladás Jené, who covers both contentious and non-contentious matters, especially in relation to the entertainment and art industries. Associate Mercedes Corbal is another key contact for administrative proceedings.

Key clients

Interporc

Provacuno

Bodegas Emilio Moro

Entertainment One UK

Nintendo

Giorgio Armani

Work highlights

  • Represented Bodegas Emilio Moro against one of its major competitors, the vineyard owner Carlos Moro, as well as against companies of the Matarromera group owned by the latter.
  • Providing ongoing advice to Giorgio Armani with regard to its trade mark matters in Spain.
  • Representing INTERPORC and PROVACUNO against Foods for Tomorrow surrounding misleading advertisement.

Bird & Bird

The ‘exceptional‘ IP team at Bird & Bird attracts high-profile clients including Tommy Hilfiger, Monster Energy and Procter & Gamble, which it assists in a variety of trade mark issues. Such matters include unfair competition mandates, infringement claims, counterclaims and strategies for market expansion. Experienced litigator José Miguel Lissén and the ‘extraordinaryMariano Santos co-head the team, with the latter noted by a client as ‘one of the most outstanding lawyers‘ in the field. Of counsel Manuel Lobato and Antonio Cueto are additional key contacts, with the latter specialising in litigation in the retail and fashion industries. Marta Arteaga joined the team in February 2022 from Baylos, working alongside Maria Fernandez at the associate level.

Testimonials

‘The Bird & Bird trade mark team is an exceptional team, with great legal knowledge, a very important commercial approach and extraordinary delivery. They are very oriented to provide not only a quality service, but also to offer innovative ideas that give added value to their clients.’

‘Mariano Santos is extraordinary. He is always available to his clients, and has a very deep legal knowledge. He is without a doubt one of the most outstanding lawyers in Spain.’

Key clients

BenQ Corporation

Chrome Hearts

KTM

Procter & Gamble

Marv Studios

Carl’s Jr. Restaurants

Toys”R”Us

Jimmy Lion

Hormel Foods

Tommy Hilfiger

Monster Energy Company

Wolters Kluwer

Work highlights

  • Advised Hormel Foods in relation to the prosecution and enforcement of its Spanish portfolio.
  • Advising Procter & Gamble on trade mark rights in Spain for more than 600 trade marks.

CMS Albiñana y Suárez de Lezo

The industrial and intellectual property and digital business group at CMS Albiñana y Suárez de Lezo features a strong focus on trade mark registration, prosecution and the strategic assessment of trade mark portfolios. With a client base centred around the automotive, technology, e-commerce and telecoms sectors, the firm’s expertise also extends to transactional advice. María González Gordon heads the team from Madrid, accompanied by senior associate Ricardo Gómez-Barreda, who covers contentious and non-contentious matters. Counsel Jaime Bello joined from Gómez-Acebo & Pombo in November 2021.

Practice head(s):

María González Gordon

Key clients

Realogy Group

Adama Agriculture

Parfumerie Douglas

ITV Studios

Phantom Creek Estates

US Polo Association

Syngenta

Aldebarán Projects

Diageo

Work highlights

  • Advising Realogy Group on an infringement proceeding for the “Sotheby’s International Realty” trade marks.
  • Advised Adama in relation to the use of its sign “Adama” in Spain and infringement of third parties’ rights.

Cuatrecasas

With expertise across its multiple domestic offices, the intellectual and industrial property and trade secrets practice at Cuatrecasas excels in a variety of trade mark matters, especially in litigation, prosecution and strategy. The team is particularly active representing clients with a footing in the digital economies, life sciences, manufacturing, automotive and gaming industries. Barcelona-based partner Albert Agustinoy leads the practice alongside Álvaro Bourkaib, the head of the Madrid office. Bourkaib specialises in the protection and transferal of intangible assets, supported by Alejandro Negro, an expert in new technologies. Barcelona-based IP litigator Jorge Llevat is another key contact at the firm.

Other key lawyers:

Alejandro Negro; Jorge Llevat

Key clients

Torres y Ribelles

Beiersdorf

Ohla

Real Zaragoza

Pernod Ricard

Bh Bikes

Junta Constructora Temple Expiatori de la Sagrada Familia

Eckes Granini

Industrias Reunidas Jabugo

Faes Farma

Work highlights

  • Advised Pernod Ricard on an ongoing basis on the registration of trade marks, license agreements and on administrative and court proceedings.
  • Representing Eckes Granini in infringement proceedings relating to the well-known Granini juice bottle shape trade mark.
  • Advised OHLA on changing and registering its new international trade mark in over 35 countries where it offers its services.

HOYNG ROKH MONEGIER

HOYNG ROKH MONEGIER‘s IP department has a strong reputation in cross-border trade mark litigation, with a further emphasis on licensing, opposition proceedings, border control strategies, portfolio management and unfair competition matters. The team is co-led by Luis Fernández Novoa and Laura Alonso, who have expertise in a broad range of IP matters and brand protection issues, respectively. With expertise extending to both national and European trade marks, the firm’s client base features the likes of Duracell, Radisson and Hitachi, with an additional footing in the electronics, music, e-commerce, and food and beverages sectors. Counsel Laura Cantero supports the team’s litigation efforts. Associate Patricia Gutiérrez joined the firm in June 2022.

Key clients

Campbell Soup Company

Caryn Mandabach Productions

Duracell

Groasis

Hitachi Data Systems

International Sport Broadcasting

Experience Hendrix

Marley Green

Narbon Group

Paragon Pet Products

Premier Tech

Radisson Hotels

Seiko Epson Corporation

Signify

Vlisco

Yoko Ono Lennon

Zenni Optical

Uría Menéndez

The IP and unfair competition practice at Uría Menéndez is recognised for its comprehensive advice on non-contentious matters as well as regulatory work and IP proceedings. Among its key clients, the firm regularly represents leading chemical, pharmaceutical, biotechnological and consumer goods clients in the enforcement of foreign judgments, infringement claims, unfair competition matters and third-party rights. The practice features Barcelona-based partner Montiano Monteagudo and Ingrid Pi in Madrid, heading the team jointly with combined expertise in unfair competition and a range of contentious and non-contentious IP matters. Other standouts include senior associate Francisco Javier García, a key contact for IP litigation. In December 2021, the team saw the retirement of José Massaguer, the team’s former co-head.

Practice head(s):

Montiano Monteagudo; Ingrid Pi

Other key lawyers:

Francisco Javier García

Key clients

Port Aventura Entertainment

Danone

Uriach

Bayer

Elanco

Spotahome

Ineos Automotive

Magic Box Int

Value Retail Barcelona

Value Retail Madrid

Cabify España

Hispano Suiza Cars

Balder

Balder‘s specialised trade mark practice is recognised for its focus on the management and protection of portfolios, with food and beverage, media, hospitality, gaming, pharmaceutical and automotive companies making up a large proportion of the firm’s client roster. Key areas of work in this regard include opposition and cancellation actions, prosecution and strategy. Experienced litigator Oscar García and trade mark specialist Patricia Koch lead these efforts, supported by Olof Fickert, with over 30 years of experience providing ‘practical advice‘.

Practice head(s):

Oscar García; Patricia Koch

Other key lawyers:

Olof Fickert; Carlos Pires

Testimonials

‘Olof Fickert and Carlos Pires are friendly but professional. They know clients’ needs and provide practical advice in a professional way.’

Key clients

Dormakaba

Beiersdorf

Thyssen-Krupp

AmorePacific Corporation

Visa

Mediaset

Baylos

The intellectual property department at Baylos divides its offering into litigation, arbitration, strategy and prosecution advice, covering the fashion, luxury, tobacco, beverages, telecoms and advertising sectors. Led by managing partner David Gómez, an experienced IP litigator, the firm has recently introduced a new AI-based service to protect clients from IP threats on the internet. Other notable figures in the department include Juan Luis Gracia and Fernando Rodríguez.

Practice head(s):

David Gómez

Key clients

Tous

Schweppes

Nbc Universal Media

Titania

Grupo Pachá

Prisa Group

Ferring

Work highlights

  • Advised Tous on both criminal (counterfeit) and civil litigation cases and prosecution proceedings in Spain.
  • Representing the Schweppes Group regarding its exclusive rights over the Schweppes® trade mark.
  • Advising NBCU on its EU and Spanish trade mark portfolio, including tradem ark renovations, new filings, search reports and freedom to use opinions.

Clifford Chance

With a unified global network to provide support, Clifford Chance‘s intellectual property team is often sought by clients with a presence in the healthcare and life sciences companies, banks, TMT companies, funds, and consumer goods manufacturers. Led by renowned IP dispute specialist Miquel Montañá in Barcelona, the team’s multidisciplinary approach covers advisory and litigation services, with infringement and nullity actions, trade mark license agreements and opposition proceedings taking centre stage. Other key contacts include dispute resolution expert Josep Montefusco, co-head of the firm’s tech offering, and senior associate Sonia Sebé.

Practice head(s):

Miquel Montañá

Other key lawyers:

Josep Montefusco; Sonia Sebé

Key clients

Samsung

GB Foods

Uriach

Lindt

Honda

Philip Morris

Affinity Petcare

The European Super League

Vivo

L’Oréal

Westfarmers

Novartis

Henkel

Work highlights

  • Advising the organisers of the European Super League on the registration of the “Super League” trade marks and in cancellation proceedings brought by the Danish League of Football against one of said trade marks.
  • Representing a leading manufacturer of pet food products at the hearing of a trade mark case before the General Court of the European Union.
  • Representing one of Spain’s leading food and beverage companies in infringement proceedings concerning a food product.

Jacobacci Abril

Jacobacci Abril‘s trade mark department is active in a range of matters, encompassing unfair competition, opposition actions, prosecution, and the cancellation of trade marks. These services are complemented with a ‘unified and coordinated digital management system for all IP matters‘. Carolina Montero, Fernando Ortega and Ignacio Temiño share leadership of the team, with Ortega having been promoted to the partnership in 2022. Temiño is a key contact for IP litigation, considered by clients to have ‘notable experience‘ and the ability to ‘facilitate practical, efficient solutions‘. The firm’s client list features high-profile clients from the food and beverages, automotive, telecoms and tech sectors.

Testimonials

‘The attention to all issues is always very fluid, dynamic and with a practical sense, thinking of the best solution for the company as if they were part of it.’

‘They now offer a very complete service through their offices in Spain, France and Italy. Additionally, its unified and coordinated digital management system for all IP matters that affect it, allows the client to save time in decision-making, and allows it to have updated information whenever needed.’

‘Both Isabel Garcia and Ignacio Temiño are two lawyers with notable experience and preparation. They dominate the legal aspects, and they facilitate practical, efficient solutions with a magnificent response time. What sets them apart from other lawyers is their ability to analyse situations as if they were part of the company, and not from an external perspective.’

Key clients

Reebok

Fila

Camper

Benefit Cosmetics

Isdin

Suntory Holdings

Samsung

Geox

Benetton

Burger King

Work highlights

  • Successfully enforced Benetton’s contractual position in litigation before the Appeal Court of Barcelona.
  • Advising Hyundai in its securing of the use of the trade mark ‘Palisade’ in Spain for its new car 4×4 model.
  • Advising META4 on trade mark portfolio transfer and licensing matters.

Roca Junyent

Roca Junyent‘s IP team specialises in a range of conflicts applicable to the IP space, with litigation at the forefront of the practice. Apart from disputes, the team is heavily involved in the technology and digital sector, which represents a growing area of work. Barcelona-based partner Javier Vázquez, a prosecution and portfolio management specialist, leads the team alongside Madrid-based partner Blanca Cortés Fernández, who consistently ‘stands out‘ for her work on a wide variety of contentious and non-contentious matters. Associate Elisenda Perelló is another key contact for infringement issues.

Other key lawyers:

Elisenda Perelló; Javier Vázquez

Testimonials

‘Blanca Cortés: absolute dedication and transparency.’

‘RocaJunyent’s Intellectual Property Department, led by Blanca Cortés, is unique in its treatment and proximity to its clients. The main skill of Blanca Cortés is the specificity of the approaches totally adjusted to the idiosyncrasy of each company or creator. Her dedication and connection to each case is crucial. Without a doubt, the diversity of topics that she can cover is outstanding, always with a refined and creative interpretation.’

‘Blanca Cortés always adds a deep conceptual plus to what for others is mere professional practice. With her we have never felt that our issues were treated in general, but with great specificity by her and her team. A notable virtue of Blanca Cortés is her ability to negotiate with third parties on behalf of her clients, whether they are conditions of use of a brand or moral right, or a contract of any kind.’

Key clients

Estudio Herreros

Nixi1

Solo Contemporary

Asociación de Clubes de Esports

Codorníu

Tina Turner

Tiffany & Co.

InmoCaixa

Bombons Cudié

Pira Charcoal Ovens and Barbecues

Fundación Gala Salvador Dalí

Palex Medical

T.A.O. Workers

Esteé Lauder AG Lachen

VICIO – Comerconlasmanos

Fundació Eurecat

Ajuntament de Sitges

Andersen Tax and Legal

With the ability to draw expertise from offices in Madrid, Barcelona, Valencia and Seville, Andersen‘s intellectual property group is often sought for a range of work, including trade mark prosecution, registration, licensing, assignment and clearance. Among its key clients, the firm advises clients in the insurance, sports, food and beverage, tobacco and construction industries. Madrid-based partner José Garrido leads the practice, with expertise in a range of patent, design, trade mark and trade secret matters.

Practice head(s):

José Garrido

ClarkeModet

With a long-standing presence in the sector, ClarkeModet is often retained to manage significant trade mark portfolios. Notable figures in the Madrid-based team include trade mark strategy specialist Marta Tolón, managing director Ignacio Gómez-Acebo and foreign prosecution director Raquel Gómez-Limón. Innovation and legal services director Rosario Echeverría and associate Esther Armero, an expert in portfolio management, are also noted.

Other key lawyers:

Esther Armero

Fieldfisher JAUSAS

The IP practice at Fieldfisher JAUSAS showcases substantial experience in the registration and protection of trade mark portfolios. Led by Josep Carbonell in Barcelona, who is regarded by a client as ‘one of the most brilliant lawyers‘ for his ability to ‘advise clients thoroughly from business operation perspectives‘, the team has additional expertise in licensing agreements and rights transfer contracts. Key industries for the group include the technology, media, life sciences, retail, energy and natural resources sectors.

Practice head(s):

Josep Carbonell

Testimonials

‘Fieldfisher’s IP team provides the best strategies and helps develop a fully rounded compliance system in the operation in EU market. They really care about their client and they are really good at what they are doing in the IP areas.’

‘Josep Carbonell is one of the most brilliant lawyers. He is more than just experienced in IP, but he can really advise clients thoroughly from business operation perspectives. His team can work diligently to meet client’s urgent needs and provide sufficient guidance on the way out.’

Key clients

Bimbo

PONS IP

The ‘exceptional’ trade marks and brand intelligence team at PONS IP makes use of its extensive network of global offices to handle a range of matters, divided into litigation, consulting and the protection of intangible assets. These key pillars encompass infringement and opposition proceedings, trade mark cancellations, IP strategy, licensing and transfer agreements. With the development of strategies and management of IP portfolios as a key focus, Carmen González leads the team, overseeing head of international legal affairs Isabel Cortés, a trade mark litigation expert. The firm is often engaged by clients in the apparel, telecoms, life sciences, automotive and media sectors for its ‘excellent advice‘.

Practice head(s):

Carmen González

Other key lawyers:

Isabel Cortés; Alejandro Betancourt

Testimonials

‘Total transparency and flexibility in terms of business, and with efficiency and promptness in terms of management. There is always excellent advice, personalised and friendly so that the client feels comfortable at all times.’

‘PONS IP has an exceptional team of people who reflect the excellent teamwork that exists between them, and the work environment that is so healthy and well-run that they transmit this in the daily work they do, which is obviously also exceptional.’

‘Alejandro Betancourt is a complete professional and his response and guidance in matters is always that of a practitioner with knowledge of the market, the client and the different jurisdictions he handles.’

Key clients

Ifema

Universitat Politécnica de Valencia

Universidad de Sevilla

Universidad de Salamanca

Consejo Superior de Investigaciones Científicas

Universidad de Zaragoza

Instituto de Microelectrónica de Sevilla-Csic

Renfe

Aena

Correos

Work highlights

  • Successfully acted on behalf of Manuel Busto Amandi in a non-use cancellation proceeding brought by a third party.
  • Successfully acted on behalf of Ceymsa Audiovisual in a board of appeal proceeding challenging an EUIPO decision to accept registration of an EU trade mark.
  • Successfully acted on behalf of Bella Aurora in opposition proceedings against an EUTM application for “BELLALAB” by DirectMarketing OÜ.