Bardehle Pagenberg > Paris, France > Firm Profile

Bardehle Pagenberg
AVOCATS AU BARREAU DE PARIS
SO SQUARE OPÉRA, 5 RUE BOUDREAU
75009 PARIS
France

France > Intellectual property: Patents Tier 2

Bardehle Pagenberg is active across the full spectrum of contentious and non-contentious patent matters. The IP boutique acts in prosecution and litigation, including cross-border disputes. The telecoms, automotive, electronics, and consumer goods sectors are particularly busy areas of the group. Expert litigator Julien Fréneaux heads the team. Dominique Dupuis-Latour specialises in patent prosecution and portfolio management matters. Marie-Claude Pellegrini and Axel Munier are also noted.

Practice head(s):

Key clients

FREE/FREE MOBILE/ILIAD

INNOVATRON

INTELLECTUAL VENTURES

IPCom GmbH & Co. KG

ROBERT BOSCH

CASH SYSTÈMES INDUSTRIE

Work highlights

  • Represented INTELLECTUAL VENTURES in a series of high-profile patent infringement disputes against three French telecoms services providers, also involving several of their respective equipment suppliers.
  • Represented IPCom GmbH & Co. KG in two separate patent infringement disputes against Xiaomi and the Lenovo group, including the latter’s subsidiary Motorola Mobility further having been granted the first-ever ‘anti-antisuit injunction’ in France and successfully defended it against the Lenovo group in appeal proceedings.
  • Advised INNOVATRON, the French chip card pioneer on multiple patent-related aspects and in several pre-contentious patent and trade secrets licensing matters.

France > Intellectual property: Trade marks and designs Tier 2

With offices throughout Europe, the IP specialist team at Bardehle Pagenberg is highly active in representing clients in trade marks and designs enforcement, prosecution and litigation. Its clients include multinationals and big-name brands active in sectors such as fashion, pharmaceuticals, and media and entertainment. Practice co-heads Rebecca Delorey and Axel Munier are both experienced in representing clients before French courts over complex trade mark and design disputes. Marie-Claude Pellegrini made partner in January 2021, while Lionel Vial joined from Universite Paris-Saclay in June 2021.

Practice head(s):

Testimonials

‘The Bardhele team is very attentive to its customers and does not hesitate to offer innovative solutions to difficulties that sometimes seem inextricable.’

‘Axel Munier is an excellent lawyer specializing in intellectual property. He combines technical skills and a good understanding of the constraints and expectations of his customers.’

‘Very good legal knowledge and commercial understanding to solve disputes.’

‘Highly responsive, cost-effective and understanding of how the “Anglo-Saxon” legal profession works – i.e. they understand UK and US practices and ways of working.’

‘I have been working with Rebecca Delorey for many years. she has US and French qualifications, which means she can understand principles of IP in common law jurisdictions very easily. This makes the working relationship very efficient. Rebecca is very responsive and very commercial.’

Key clients

BMW

H&M

Diesel

Springer Nature Group

Red.com

Van’s

Virgin Enterprises Limited

Ferring Pharmaceuticals

easyGroup Ltd

Nintendo

Work highlights

  • Assisted BMW in multiple trademark and design matters, including strategic advice, pre-contentious work and opposition proceedings before the French IP Office, as well as court proceedings before EU and French jurisdictions.
  • Assisted H&M in various non-contentious and contentious trade mark, copyright, design and unfair competition matters in France.
  • Assisted and represented Ferring Pharmaceuticals in a wide range of trademark matters, including strategic advice, pre-contentious work, and opposition proceedings before the French IP Office.

IP practitioners with technical expertise
BARDEHLE PAGENBERG is one of the leading IP law firms in Europe which has pooled the strengths and competences of patent attorneys and attorneys-at-law for more than 40 years, clearly setting itself apart from many other IP law firms.

BARDEHLE PAGENBERG provides its clients with excellent services in all fields of Intellectual Property – from the first idea through to the launch, exploitation, enforcement and strategic management, particularly in the legal areas of patent law, trademark and design law, unfair competition law, antitrust law as well as licensing and technology transfer.

Industry sector strengths
Thanks to its vast experience in various industries, BARDEHLE PAGENBERG covers a very broad spectrum of services. For example, the IP firm is well-known for its expertise in the automotive industry, telecommunications, software and electronics. Moreover, BARDEHLE PAGENBERG focuses on technical sectors such as mechanical engineering or medical devices as well as on sports equipment and the pharmaceutical sector.

International presence and alliances
BARDEHLE PAGENBERG stands out as a law firm with strong cross-national ties between its offices in Munich, Duesseldorf, Paris, and Barcelona. Furthermore, its reliable global network, includes long-standing relationships with numerous high-end IP law firms in the US and the fast-growing Asian markets. Thus, BARDEHLE PAGENBERG has a global reach with excellent capabilities in cross-border IP disputes.

Team experience and size
With more than 40 years of experience in the IP world, a considerable international clientele and over 240 specialists from more than 15 different countries on three continents, BARDEHLE PAGENBERG is able to simultaneously conduct numerous major infringement, opposition, and nullity proceedings.

Patent Litigation
A strong focus of the firm is on patent litigation. Presently, our German patent litigation team (more than 40 litigators and patent attorneys) is handling more than 250 German patent infringement actions, more than 200 German nullity actions, and more than 200 EPO oppositions in parallel. Similar numbers apply to the past five years.

Over the last few years, its telecommunication, automotive and pharmaceutical business have registered the highest growth rates as BARDEHLE PAGENBERG has simultaneously handled various high-profile litigation series.

Patent Prosecution
Patent prosecution is another pillar of BARDEHLE PAGENBERG. Many long-standing client relationships with prestigious companies and a continuously increasing number of applications bear impressive witness to that.

With the profound expert knowledge of its patent attorneys who are specialized in various fields such as high tech, the automotive industry, life sciences, medical devices, engineering, and physics BARDEHLE PAGENBERG provides clients with competent advice on further and new technological developments.

Trademarks
While offering the full range of trademark-related services to its clients, BARDEHLE PAGENBERG clearly focuses on strategic advice, especially regarding multinational portfolios and the cross-border enforcement of its clients’ brands. Both start-ups and the long-standing client base of BARDEHLE PAGENBERG entrust in the firm with complex and high-profile litigation matters frequently leading to ground-breaking decisions for clients in sectors such as restaurant chains, consumer health care, fashion and cosmetics as well as the sports industry. Moreover, BARDEHLE PAGENBERG is a leader in helping clients establish rather exceptional types of trademarks for precious brain waves, even if admitted by law only recently, e.g. multimedia marks and hologram marks.

Design
The firm has always been at the forefront of design law from the very beginning of the establishment of the European design law regime. BARDEHLE PAGENBERG represents clients that are famous for their uniquely designed products, some of which have become all-time classics in a very short time. These classics deserve a customized approach to stay unique not only on a national but also on a global level. The experience BARDEHLE PAGENBERG has in design protection is not limited to fields that typically have an affinity for design such as clothing and furniture, but also in health-relevant sectors like pharmaceutical appliances.

Unfair Competition Law
For many years, BARDEHLE PAGENBERG attorneys have been representing clients in unfair competition cases such as misleading advertisements, imitations of product get-ups and any other sort of unfair misconduct. A team of experienced experts supports clients from sectors such as restaurant chains, consumer health care, fashion and cosmetics, and the sports industry in proceedings before the courts of all instances throughout Germany, including the German Federal Court of Justice; however, the firm also advises its clients on creating marketing and advertising concepts which avoid legal conflicts, striking a balance between legal and regulatory requirements on the one hand and commercial needs for an attractive and appealing advertisement on the other.

Antitrust Law
The BARDEHLE PAGENBERG team includes several leading experts in the field of IP related antitrust law who bring vast experience in settlement and licensing negotiations to the table and, thus, are able to provide clients with specific added value such as blacklists, risk assessment, or assistance in wording contracts. The law firm advises clients on a broad range of antitrust-related topics, including R & D agreements, FRAND and SEPs.

Licensing & Technology Transfer
Contracts and agreements focussing on the exploitation of IP rights, such as licensing, distribution, sponsorship, franchising, co-marketing, R & D, and technology transfer agreements are among the strong points of BARDEHLE PAGENBERG. Its attorneys have extensive experience in and deep knowledge about negotiating, reviewing, and drafting such agreements, particularly with respect to the development and licensing of IP and IP-related technology-based services.

Additional services
In addition to its core business, BARDEHLE PAGENBERG also has its own IT department providing its clients with useful legal tech services. Thanks to its in-house language service team, BARDEHLE PAGENBERG is able to offer high-quality translation and interpretation services to its clients. Notably, BARDEHLE PAGENBERG even has a graphic designer in its team, not only helping our clients in preparing adequate representations for design filings, but also for illustration purposes in litigation proceedings.

Clients
adidas, Apple, BMW, Campari, Cisco, Dell, 3D Systems, GlaxoSmithKline, H&M, Intellectual Ventures, L’Oréal, McDonald’s, Mondelēz, Nintendo, The Coca-Cola Company, Qualcomm, …

DepartmentNameEmailTelephone
Johannes Heselberger
Johannes Lang
Claus Eckhartt
Prof Dr iur Tilman Müller-Stoy
Dr iur Christof Karl
Joachim Mader
Tobias Kaufmann
Dr Jur Philipe Kutschke
Dr iur Henning Hartwig
Martin Hohgardt
Dr Christian Haupt
Dr Ing Niels Malkomes
Pascal Böhner
Nadine Westermeyer
Dr Georg Anetsberger
Dr Axel Berger
Dr Benjamin Ruckert
Dr iur Stefan Lieck
Dr Patrick Daum
Dr Jan Bösing
Alexander Haertel
Dr iur Anna Giedke
Dr Patrick Heckeler
Prof Dr iur Alexander von Mühlendahl
Dr iur Jochen Pagenberg
Mathieu de Rooij
Rebecca Delorey
Julien Fréneaux
Dominique Dupuis-Latour
Axel Munier
Dr Marie-Claude Pellegrini
Dr Lionel Vial
PhotoNamePositionProfile
Rebecca Delorey photoMs Rebecca DeloreyAttorney-at-Law (Avocat), Partner BARDEHLE PAGENBERG SAS SPE Rebecca Delorey’s main areas of…
Dominique Dupuis-Latour photoMr Dominique Dupuis-LatourAttorney-at-Law (Avocat), Partner BARDEHLE PAGENBERG SAS SPE Dominique Dupuis-Latour’s main areas of…
Julien Fréneaux photoMr Julien FréneauxAttorney-at-Law (Avocat), Partner BARDEHLE PAGENBERG SAS SPE Julien Fréneaux represents clients before…
Clément Jaffray photoMr Clément JaffrayAttorney-at-Law (Avocat), BARDEHLE PAGENBERG SAS SPE Clément Jaffray’s practice covers all aspects…
Axel Munier photoMr Axel MunierAttorney-at-Law (Avocat), Partner BARDEHLE PAGENBERG SAS SPE Axel Munier, a French qualified…
Marie-Claude Pellegrini photoDr Marie-Claude PellegriniEuropean Patent Attorney, Partner BARDEHLE PAGENBERG SAS SPE Marie-Claude Pellegrini has vast…
Lionel Vial photoDr Lionel VialFrench and European Patent Attorney, Partner Lionel Vial’s practice involves patent prosecution…
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AIPPI
FICPI
LES
IPO
AIPLA
ECTA
German Association for the Protection of Industrial Property and Copyright Law (GRUR)
VPP
AIJA (Association Internationale des Jeunes Avocats)
EPLAW
International Trademark Association (INTA)
The Association of European Trade Mark Owners (MARQUES)
Union IP
LESI (Licensing Executives Society International)
epi – European Patent Institute
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