Next Generation Partners

Intellectual property: Trade marks and designs in France

Armengaud Guerlain

IP boutique Armengaud Guerlain, which has an enviable client roster, is a leading name in trade mark litigation and is often involved in cases with an international element. Recent highlights included representing Virginie Taittinger before the Appeals Court of Paris, after a ruling from the Supreme Court regarding the use of the family name to sell champagne. Clients also turn to the firm for advice on trade mark registration and protection. Stéphane Guerlain jointly leads the team with Catherine Mateu. Clients include local start-ups, designers and non-profitable groups, as well as domestic and multinational corporates.

Responsables de la pratique:

Stéphane Guerlain; Catherine Mateu

Autres avocats clés:

Marguerite Higgons

Principaux clients

Studyrama

Castorama – Kingfisher

L’Occitane

Bouygues

BRF

1906 Collins

Birkenstock

Virginie Taittinger

IKEA

Musidor

Grosfillex

Principaux dossiers

  • Representing Virginie Taittinger before the Appeals Court of Paris after a ruling from the Supreme Court regarding the use of the family name to sell champagne.
  • Assisted Musidor in a trade mark infringement case over the Lip’n Tongue Logo.
  • Assisted Laboratoires M&L (L’Occitane) in a trade mark registration case.

Baker McKenzie

Noted for its stellar trade mark portfolio management practice, Baker McKenzie provides ‘technically sound, strategic and practical’ advice to clients in the pharmaceuticals, biotech, luxury goods, retail, FMCG, entertainment and technology sectors. On account of its long-standing anti-counterfeiting capability, the team’s caseload includes infringement proceedings and international enforcement matters. Elsewhere, the group is able to leverage the expertise of the firm’s corporate practice when advising on the IP aspects of M&A and restructuring mandates, as well as licensing agreements. Practice head Virginie Ulmann and Nathalie Marchand have demonstrable experience in trade mark litigation, while Pauline Celeyron focuses on trade mark portfolio management.

Responsables de la pratique:

Virginie Ulmann

Autres avocats clés:

Nathalie Marchand; Pauline Celeyron

Les références

‘Excellent advice on brand issues. Technically sound, strategic and practical.’

Principaux clients

Moët-Hennessy and Société Jas Hennessy & Co.

HRA Pharma

British American Tobacco

SAP

Unilever

General Electric

General Motors

Principaux dossiers

  • Assisting Moët-Hennessy on an ongoing basis with the management of the global trademark and design portfolio of Société Jas Hennessy & Co.
  • Assisting with the global management of HRA Pharma’s trade mark portfolios, notably oppositions, filings and the implementation of a new strategy.
  • Managing BAT’s French trademark portfolio and assisting with availability searches, opposition proceedings and pre-contentious infringement matters, as well as clearance actions regarding the choice of new names or the design of new products.

Bird & Bird

Bird & Bird‘s client roster includes French and multinational companies in the life sciences and healthcare, manufacturing, technology, media, entertainment and sports industries. Its team excels in advising on trade mark protection and enforcement matters. Patent litigator Yves Bizollon leads the practice, which includes Anne-Charlotte Le-Bihan, who has experience of sensitive trade mark and design mandates. Géraldine Arbant focuses on brand management and litigation, as well as transactional IP matters. Key clients include Piasten & Lutti, CrossFit and Groupe Candy Hoover.

Responsables de la pratique:

Yves Bizollon

Autres avocats clés:

Anne-Charlotte Le Bihan; Géraldine Arbant; Floriane Chartier

Principaux clients

Piasten & Lutti

CrossFit, Inc

Palladium

Kidiliz Group

SKF

River Island

Candy Hoover

Principaux dossiers

  • Represented Piasten & Lutti’s distributor in a preliminary injunction procedure, initiated by MARS, on the ground of unfair competition and parasitism to obtain the withdrawal of their new “TREETS THE PEANUT COMPANY” candy.
  • Defended Groupe Candy Hoover in a registration of designs case against Dyson.
  • Acting for CrossFit in matters relating to enforcement of trademarks, including infringement applications.

De Gaulle Fleurance & Associés

De Gaulle Fleurance & Associés is a strong choice for advice on trade mark and design portfolio management and litigation, as well as corporate transactions involving IP assets. Francine Le Péchon-Joubert handles contractual matters and disputes. Serge Lederman acts for clients in the fashion, media and food sectors in trade mark disputes, while Julien Horn handles transactional work involving IP assets. Along with Louis de Gaulle, all named lawyers collectively lead the ‘dedicated team’.

Responsables de la pratique:

Julien Horn; Francine Le Péchon-Joubert; Serge Lederman; Louis de Gaulle

Les références

‘The team is always available and responsive.’

‘The dedicated team, led by Julien Horn, shows great responsiveness, as well as a great ability to adapt to the files that we entrust to them. The team has also been able to deploy high quality and remarkably creative writings in litigation involving one of our key brands, thus obtaining a very good decision in our favour.’

Principaux clients

Colgate Palmolive

Dubos

Echosens

Epic Games

ETAM

Fédération Française de Tennis

Interop’ Santé

La Semelle Moderne

Monte Carlo – Société des Bains de Mer

Mango

Palais des Thés

Showroomprivé.com

Warner Bros

YETIGEL

My retail Box

Chateau de Versailles

Gide Loyrette Nouel A.A.R.P.I.

Gide Loyrette Nouel A.A.R.P.I. is particularly well-known for its strengths in IP litigation, particularly regarding patent and trade mark disputes. Raphaëlle Dequiré-Portier and Emmanuel Larere focus on French and European trade mark and patent disputes for clients in the life sciences, telecommunications, luxury goods, technology, and consumer goods industries, among others. Jean-Hyacinthe de Mitry has extensive expertise in national and multijurisdictional patent disputes. The team is also noted for its international trademark prosecution work. Elsewhere, trade mark filings and portfolio management are other key drivers of mandates.

Principaux clients

Renault

Magellan

H&M

Castel

Albéa Services

Experienced Capital Management

Corum

Adidas

Sushi Gourmet

Ann Taylor

Celine

Abercrombie

Levi Strauss

Valentino Couture

Christian Dior Couture

Belmond

Mnemo Therapeutics

Principaux dossiers

  • Represented Renault in the defence of its diamond trade mark against a competitor using a diamond/rhombus shape trade mark in the EU.
  • Assisted Magellan in the protection of its Bonobo trademark portfolio against Bonobo Inc., a subsidiary of Walmart.
  • Assisted H&M in strategic trademark matters before judicial courts and trademark office (EUIPO and INPI).

Herbert Smith Freehills LLP

The IP team at Herbert Smith Freehills LLP frequently represents major players in the technology industry before French and European courts and arbitration proceedings. It is also highly experienced in IP advisory work, regulatory advice and data protection. Based in Paris, IP/TMT practice head Alexandra Néri is noted for representing high-profile technology companies in disputes, as well as advising on cybercrime, privacy issues and dawn raids. She works alongside Sébastien Proust, a key contact regarding a broad range of IP matters, including applying trade mark law to advertising referencing, the legal status of video platforms and the digitalisation of books.

Responsables de la pratique:

Alexandra Neri

Autres avocats clés:

Sébastien Proust

Les références

‘They have ample experience of advising on tech and internet companies and are familiar with the industry practice. They have a very good collaboration within the firm and could provide full-services to clients.’

‘Alexandra Neri has done exceptional work over the past few years. She is incredibly professional, experienced and knowledgeable.’

Principaux clients

ALIBABA

Enterprise

Comptoir des Cotonniers

Principaux dossiers

  • Represented and assisted ALIBABA, a Chinese company which owns several online marketplaces, in a litigation case (preliminary injunctions proceedings (référé) as well as on the merits) against LAFUMA, which claims that ALIBABA infringed its trademarks and committed acts of unfair competition because of offers made by third people (vendors) reproducing without authorisation the LAFUMA sign on its Alibaba.com marketplace.
  • Represented Enterprise rent a car in a litigation that started in 2013 against the French car rental company rent a car. Rent a car tried to stop Enterprise from using its name and mark, claiming that it was trademark infringement.
  • Represented ready-to-wear retailer Comptoir des Cotonniers (CDC) in copyright and free-riding proceedings brought by its former supplier in relation to the sale by CDC of several dresses and shirts.

HOYNG ROKH MONÉGIER

HOYNG ROKH MONÉGIER is especially strong in cross-border IP litigation, with particular experience in European law matters. Its clients include companies in the automotive, electronic, video games, telecommunications and life sciences industries. The trade mark team covers enforcement and protection of trade marks, designs, and trade names, as well as geographic indications. Denis Monégier du Sorbier is a highly regarded IP litigator, with a focus on cross-border trade mark and patent litigation, while Sophie Micallef is experienced in IP litigation and pre-litigation, acting for claimants and defendants in both France and Europe. Marie Georges-Picot is a key resource in trade mark, design and copyright litigation.

Responsables de la pratique:

Denis Monégier du Sorbier; Sophie Micallef; Marie Georges-Picot

Les références

‘Knowledgeable, responsive, clear communication, experts.’

Principaux clients

Agrial

Benda Bili

Consejo Regulador del Tequila (CRT)

Cora

Essity

Etam

Katjes

Lancôme

Mobilux

Sage

Ticketbis

UBS / La Maison

undiz

Principaux dossiers

  • Advised and represented Etam Lingerie as claimant and defendant in two parallel litigations pending before the Paris commercial court, involving unfair competition and parasitism issues with respect to i) underwear designs, ii) advertising campaigns and iii) market positioning.
  • Represented ETAM in unfair competition and infringement case where the team obtained an ex parte order and GIFI was condemned to withdraw all infringing products.

Jones Day

Jones Day provides full coverage to its clients on French and European trade mark disputes and litigation. Notably, the team has sector-specific knowledge in the wine and spirits industries and is able to advise on relevant IP matters such as licensing, marketing and regulatory issues, as well as the protection of brands that utilise the protected geographical indication system. Practice head Emmanuel Baud is experienced in representing clients in IP matters such as trade marks, designs, trade secrets and unfair competition, with a track record in assisting well-known food and beverage players with protected geographical indications. Edouard Fortunet, who made partner in January 2021, focuses on soft IP matters, with expertise in advising on IPOs and technology and wine and spirit industry clients.

Responsables de la pratique:

Emmanuel Baud

Autres avocats clés:

Edouard Fortunet

Les références

‘Sharp firm with great IP expertise.’

‘Emmanuel Baud has in-depth expertise and detailed analysis, great rigour and informed risk assessment.’

‘Jones Day clearly falls into the category of full service law firm with a strong and wide coverage of IP aspects, in France and at a worldwide level. Jones Day IP team is one step ahead in my view compared to its competitors given its IP transactional / IP litigation skills combination, its worldwide offices (with a very strong presence in the US and a presence in all countries that are relevant to our business) and its dedication to clients (strengthened by its partnership rules which makes the coordination very fluid and the ability to work with any offices worldwide very easy). Their premier intellectual property team in Paris provides high-profile advice across all key pillars of IP protection. The team offers comprehensive national and cross-border coverage of intellectual property law and has first-class experience in brand protection. In addition, Jones Day has developed a specific IP transactional practice, which is key in M&A and PE matters Tech companies such as Deezer are dealing with. Partners and associates have great availability, are top in their field and demonstrate excellent relationship management skills.’

‘Emmanuel Baud is committed to his clients and passionate about his work. He is able to navigate and manage the process effectively, all with a dedication to the client. On the litigation front, we trust him with highlevel matters. Edouard Fortunet is smart, business-minded, responsive and reliable. He is my go-to person for all IP matters. Edouard has the requisite experience in the legal issues and risks that underpin our transactions, as well as a firm understanding of the underlying business such as commercial risk and reward elements. A top notch lawyer in my view who is a true business partner on a daily basis and knows how to develop an extremely strong relationship with his clients. A true role model for any junior partner’

‘Great responsiveness, attentive listening to customer needs, great rigor in the analysis of files and precise strategy proposed to the customer. Jones Day knows how to innovate by offering original solutions and being inventive in the face of complex legal issues in the context of litigation. Extensive expertise in copyright and trademark infringement litigation.’

‘Edouard Fortunet is very responsive, rigorous and human. He has extensive expertise both in copyright and trademark law litigation and in contractual matters. He always has a relevant analysis of cases and a precise legal strategy. He knows how to be daring and creative in the face of the challenges posed by a complex affair. Certain talent for the practice of advocacy.’

‘The network of the firm to connect issues from multiple jurisdictions in order to fit the customers need in complex contracts is unique.’

‘Edouard Fortunet is not only available at all times, but also manages to guide the client trough his network of collaborators within jones day.’

Principaux clients

Bolt Technology OU

Jean-Charles De Castelbajac

Voodoo SAS

Deezer SA

Les Heritiers Matisse

INAO (Institut National de l’Origine et de la Qualité)

JCDA SAS and Diffulice Sàrl, operating under the name “Body Minute”

Jeff Koons and Jeff Koons LLC

ENEDIS

Principaux dossiers

  • Represented Bolt Technology OU (formerly Taxify OU) to protect its trademark “Bolt”.
  • Retained by Jean-Charles de Castelbajac to take over his representation in various litigation matters, including infringement, cancellation, and revocation actions pending before French and EU courts.
  • Represented Voodoo in several civil actions launched against foreign companies and developers further to their unlawful copies of several Voodoo games.

Laude Esquier Champey

Laude Esquier Champey specialises in IP-related dispute resolution, both in France and internationally. IP practice head Sophie Havard Duclos is noted for her broad litigation experience, including representing clients in trade marks and design disputes. The firm's clients include French and international corporates and SMEs active in the fashion, cosmetics, luxury goods and technology industries.

Responsables de la pratique:

Sophie Havard Duclos

Principaux clients

Christian Dior Couture

Danone

Engie

Facebook

Instagram

Accor

Leopold Croizet

Eugène Perma

Oxstal

Laboratoires Laurence Dumont

Corel

Principaux dossiers

  • Obtained the confirmation by the Douai Court on 17 June 2021 that the trademark “Danio” does not infringe upon Dagniaux’s former rights over two trademarks containing the name “Dagniaux”.
  • Obtained a decision from the Paris Court on 28 May 2021 condemning Energy Green for the infringement of Engie and Engie Green’s former trademarks and trade names.

Allen & Overy LLP

The team at Allen & Overy LLP represents clients in the full range of IP disputes, including those concerning trade marks and design rights, as well as litigation over licensing and contracts, among other matters. It has particular sector-specific expertise representing major international brands active in the gaming, entertainment, consumer, technology and media industries, especially those based in the United States and Japan. IP practice head Alexandre Rudoni is a highly regarded IP litigator, particularly in relation to trade marks, designs and copyright mandates. Associate Andrea Dufaure acts for clients such as high-profile video game publishers and media service providers.

Responsables de la pratique:

Alexandre Rudoni

Autres avocats clés:

Andrea Dufaure

Les références

‘Operational team, efficient, fast and full of common sense. Perfectly masters the discipline.’

‘Great humanity of the interlocutors, beautiful and deep implication in the treated file.’

Principaux clients

Airbus

Cafe Joyeux

Darewise

Epic Games

Focus Home Interactive

Fujifilm

GSK

Homa Games

Imperial Brands & Fontem

MGM

Netflix

Nightbloomer

Nikon

Nintendo

Primark

Riot Games

SFL Interactive

Sintra

SPI Spirits

Valve

Webedia

Wolters Kluwer

Principaux dossiers

  • Assisted Netflix with the clearance of more than 90 clearances of new titles to be broadcasted in France.
  • Assisted SINTRA before the Paris First Instance court in a trademark infringement counterclaim regarding the use of their trademark “PULSEUR”.
  • Successfully represented Café Joyeux, a coffee-shop chain which employs disabled staff, in summary proceedings before the President of the Paris First Instance Court regarding the use of the term “JOYEUX”.

ADVANT Altana

The IP team at ADVANT Altana represents French and international clients in trade mark litigation and cross-border disputes. Its broad scope of IP work includes the protection and valuation of trade marks, domain names, and designs, as well as IP enforcement before places such as the French and European Trademark Offices. Additionally, the team is highly experienced in trade mark portfolio management, alternative dispute resolution methods, and commercial IP arbitration. Practice co-chair Pierre Lubet is a highly experienced IP/IT litigator and often acts for clients in the manufacturing and luxury brand industries. He works alongside co-chair Jean-Guy de Ruffray, a specialist in IP litigation. He also represents clients regarding data protection law, copyright law, and patent litigation.

Responsables de la pratique:

Pierre Lubet; Jean-Guy de Ruffray

Les références

‘Based on our experience with French firms in the field of IP, ALTANA has become our first choice. They are excellent both in terms of expertise and of value for money.’

Principaux clients

Moulin Rouge

ALDI

Herta

Ducati

Arenaire

Praised for its ‘impressive expertise in design matters’, Arenaire’s workload also includes anti-counterfeiting mandates, trade mark infringement litigation and regulatory work relating to the advertising of alcoholic beverages. The boutique firm counts multinational companies and SMEs in the technology, architectural and pharmaceutical sectors among its key clients. Founding partner and design expert Pierre Massot ‘gives a clear and objective picture of cases’ to furniture companies, high-profile designers and architects. He jointly leads the practice with Thibault Lentini, who is noted for his experience in customs litigation relating to counterfeiting.

Responsables de la pratique:

Massot Pierre; Lentini Thibault

Autres avocats clés:

Faustine Chaudon; Louis Louembe

Les références

‘Arenaire’s team is composed of young and very motivated professionals. While working with them, you get the feeling that they thoroughly discuss each aspect of the case, mix their expertise and share strategy and decisions. They are very well-organised, strict on deadlines and offer you continuous assistance, keeping you constantly updated on the case.’

‘Thibault Lentini is very attentive, available and pragmatic.’

‘The Arenaire team provides highly technical advice on difficult subjects with impressive expertise in design matters.’

‘Pierre Massot is an excellent lawyer, who combines technical expertise and an understanding of the expectations and constraints of his clients.’

‘Arenaire is a specialised firm in intellectual property, very professional and close to clients and their expectations.’

‘Pierre Massot has a great capability of listening and understanding the needs and objectives of the client. He gives a clear and objective picture of cases and explains the practical risks for the business. He has a great expertise in IP matters, is proactive and professional and offers you full and prompt assistance.’

‘We can wholeheartedly recommend Arenaire, which is highly specialised in design and always works to a consistently high quality. The team is always on the ball regarding all the latest in French and EU case law and we feel they are totally trustworthy when it comes to providing sound and well considered advice.’

‘Pierre Massot and Faustine Chaudon are creative thinkers, very good in design cases, knowledgeable, responsive and a pleasure to work with.’

Principaux clients

Maisons du Monde

Teva Santé

Technicolor

Lina Ghotmeh Architecture

Pernod Ricard

Martell Mumm Perrier-Jouët

Groupe Roullier

Zentiva

Balenciaga

Aéma Groupe

Wilmotte

Proludic

Ferragamo

Bardehle Pagenberg

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.

Responsables de la pratique:

Rebecca Delorey; Axel Munier

Autres avocats clés:

Marie-Claude Pellegrini; Lionel Vial

Les références

‘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.’

Principaux clients

BMW

H&M

Diesel

Springer Nature Group

Red.com

Van’s

Virgin Enterprises Limited

Ferring Pharmaceuticals

easyGroup Ltd

Nintendo

Principaux dossiers

  • 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.

BCTG Avocats

BCTG Avocats covers all areas of IP law, particularly in relation to trade marks and designs. The team provides strategic advice and handles litigation for French and international clients, such as those active in the retail, sports, pharmaceuticals, cosmetics and software industries. It also is active handling unfair competition matters, parasitism and ambush marketing issues. The head of the IP department is Gaëlle Bloret-Pucci, who is an expert in both advisory and contentious IP matters, with a particular focus on trade marks and designs, brand protection, marketing, and parasitism. Consumer law and competition law specialist François Dauba was promoted to partner in January 2021. He frequently represents major players in the health and food sectors.

Responsables de la pratique:

Gaëlle Bloret-Pucci

Autres avocats clés:

François Dauba

Principaux clients

Nike/Converse Inc./All Star C.V.

Stada Arzneimittel/EG Labo

Uber/Uber Eats

Acast

Principaux dossiers

  • Assisted and represented both NIKE, LVMH and LACOSTE in the elaboration of a joint strategy to carry out brand protection measures against the operators of the flea-market in Saint-Ouen, which is a hot spot for counterfeit retailers in the close suburb of Paris.

Candé Blanchard Ducamp

Candé Blanchard Ducamp is a well-known name among French and international companies active in the luxury brands, pharmaceuticals, insurance, technology and banking industries. Clients turn to the firm for advice on IP infringement and unfair competition actions, as well as customs and arbitration proceedings. The team is frequently active in both French and European courts. Founding partners Claire Herissay-Ducamp, Patrice de Candé and Julien Blanchard are each highly experienced IP litigators and advisors, often active before civil, criminal and community courts. Associates Clarisse Tourneux and Anna Revidi are also noted for their IP experience.

Responsables de la pratique:

Claire Herissay-Ducamp; Patrice de Candé; Julien Blanchard

Autres avocats clés:

Clarisse Tourneux; Anna Revidi

Casalonga

With offices in France and across Europe, Casalonga is well-placed to provide a full IP service to international clients, including mandates involving trade marks, patents, designs and copyright. Caroline Casalonga, who leads the trade mark and design team, frequently acts for French clients active in the life sciences, beverage, electronics and media industries. She works with Arnaud Casalonga and Marianne Gabriel as joint heads of the trade mark and design litigation practice. Karina Dimidjian-Lecomte is dual-qualified in New York and France and advises on trade mark and design matters, as well as portfolio management.

Responsables de la pratique:

Arnaud Casalonga

Autres avocats clés:

Caroline Casalonga; Karina Dimidjian-Lecomte; Marianne Gabriel

Les références

‘Cabinet Casalonga has real experience and a very good network which allows it to efficiently manage international portfolios of brands and models. The firm has also developed IT tools which allow it to give its clients direct access to their portfolio and to consult the brands and models held according to various relevant criteria.’

‘The team is strong in wine law/the wine sector.’

‘Truly business-oriented employees. Very good knowledge of our specificities.’

‘Casalonga had perfectly understood the specificity of our needs regarding the protection of our trademarks. Besides the quality of their legal advice, Casalonga’s team had proven their capacity to take into account the nature of our association and its activities and to provide an adequate and personalized legal support in defining global strategy or managing cases.’

‘The team dedicated to our account had shown remarkable support, over the years, with efficiency and availability while providing legal counsel or representing us in regard to the protection of our trademarks.’

Principaux clients

Adeo

Altarea

A.P.C.

Auchan

BBG HYLINE Building Systems

Berliner

Biogaran

Blue Cross Blue Shield Association

Champagne de Telmont

Crédit Mutuel Arkéa

Eram Group

Essity

Gillardeau

Groupe France Thermes

Hasbro

Heineken

INAO

Kodak

La Chablisienne

Lalique

Lidl

Matsui

Médecins sans frontières

Moulin Rouge

Pandora

Samsung

Saint Gobain

Sanofi

Sky

VF

ViacomCBS

V33

Principaux dossiers

  • Litigated for the cancellation of French and EU trademarks for Crédit Mutuel Arkéa and engaged in trade mark infringement and unfair and parasitic competition cases.
  • Assisted CBS Studios Inc. with filing an opposition against a trademark application claiming protection for Class 34.
  • Defending Pandora in design litigation before the Paris court.

Dentons

Dentons‘ trade mark and designs practice is gaining momentum under the stewardship of new practice head Loïc Lemercier, who joined in March 2021 from Clifford Chance. Working with the very experienced senior counsel Isabelle Leroux, Lemercier handles a mix of litigation, counselling and transactional matters; the work often has an international component, with the firm’s global reach making it a popular choice for multijurisdictional matters. The technology, life sciences, fashion and luxury goods sectors are core sectors of the practice, in line with the firm’s general positioning.

Responsables de la pratique:

Lemercier Loïc

Autres avocats clés:

Isabelle Leroux

Les références

‘I’m very satisfied that Loïc Lemercier and his team have handled the matters with consummate professionalism and great care.’

‘Technical competence, availability, responsiveness.’

Principaux clients

Fontaine Limited

Merial/Boehringer Ingelheim Animal Health France

MG Freesites Ltd, MindGreek

Mobility Trader Holding

Mr Puffs Franchises

Olivier Lapidus

Polaroid/PLR IP Holdings, LLC

Polo Club

Schneider Electric

XNT Ltd.

Principaux dossiers

  • Defended MG Freesites Ltd and MindGreek in a legal action concerning alleged trade mark and copyright infringement before the Paris Court.
  • Representing Schneider Electric Global in a trade mark infringement case against Euro-Négoce, for parallel importation of products of Schneider Electric trademark from outside of the EEA, without authorisation.
  • Represented Merial (now Boehringer Ingelheim Animal Health France) in an eight year trade mark case.

DLA Piper

DLA Piper hired Frank Valentin from ADVANT Altana in February 2021 as global co-chair for media, sport and entertainment. Since his arrival, the very experienced litigator (whose expertise also includes patent and copyright matters) has built on the team’s strong track record in international disputes. In addition to its forensic practice, the group also assists with licensing matters, frequently in the context of wider contracting strategies, and acts on trade mark and design clearance and prosecution matters.  The practice is particularly active in the media and entertainment, IT, e-commerce and life sciences sectors.

Responsables de la pratique:

Frank Valentin

Principaux clients

Akzo Nobel

Amazon.com

Brooks Sports

Coravin

Edwards Lifesciences

Exacompta

Clairefontaine

Fear of God

Microsoft Corporation

Richemont International Ltd.

Unga BV

Principaux dossiers

  • Acted for defendant Coravin in a multijurisdictional trade mark dispute against the French and Belgian companies Cora and Delfipar regarding the registration of the trade mark Coravin, involving multiple opposition proceedings against the EU trade mark, cancellation actions and infringement proceedings on the claimants’ side as well as several revocation claims and a cancellation action for fraudulent filing brought by Coravin.

DTMV & Associés

DTMV & Associés is particularly well known for its strength in litigation, although the practice is broader and encompasses prosecutions, clearances and licensing matters. The boutique firm is able to offer clients access to a deep bench of partners, including Thierry Mollet-Viéville, Pascal Lefort, Thomas Cuche, Eléonore Gaspar, Laurine Janin-Reynaud and Julien Grosslerner. It is particularly experienced in matters connected with the luxury goods sector, but also frequently acts on matters involving the media, publishing and travel industries. In addition to its trade mark and designs expertise, the practice is also well versed in patent, copyright, trade secrets and unfair competition matters.

Responsables de la pratique:

Thierry Mollet-Viéville; Pascal Lefort; Thomas Cuche; Eléonore Gaspar; Laurine Janin-Reynaud; Julien Grosslerner

Les références

‘The team is very friendly and good to work with, responsive and knowledgeable.’

‘Thomas Cuche was my key contact. He handled the matter very competently, and was easy to communicate with, making the whole process smoother.’

Fiducial

Fiducial Legal by Lamy's practice, which is led by Karine Disdier-Mikus, acts on contentious, transactional and advisory IP matters. The firm has a particularly strong reputation for international strategic branding matters, including the management and development of trade mark portfolios. The firm is part of the global network Terralex through which it can draw on the expertise of trade mark and design specialists across a number of foreign jurisdictions.

Responsables de la pratique:

Karine Disdier-Mikus

Principaux clients

MCDONALD’S CORPORATION

CITY OF DEAUVILLE

POINT S

IRO

HAIER

B&B HOTELS

CITEO (formerly ECO-EMBALLAGE)

EMILE HENRY/JARS

Principaux dossiers

  • Advising McDonald’s on the availability of any new brand contemplated on their products and services in France, including advising the client on the best approach to dismiss or mitigate the risks generated by prior trade mark rights.
  • Advising B&B Hotels on its brand strategy worldwide, including on conducting clearance searches in multiple jurisdictions, as well as conducting online IP enforcement including ‘notice and take down’ action and filing oppositions worldwide.
  • Defending IRO brand in multi-jurisdiction disputes against another clothing similar brand from Taiwan.

FTPA

The team at FTPA covers the full gamut of IP matters, including trade marks, designs, copyright, and patents, as well as appellations of origin and disputes involving patronymic names. Additionally, it is highly experienced in search clearances and IP litigation before French and European courts, as well as related non-contentious matters such as data privacy, IT issues, and data protection. The team is particularly strong advising clients active in luxury brands, media and entertainment, fashion, and the perfumery and cosmetic industries. Antoine Gautier-Sauvagnac specialises in IP and media law, both within France and internationally. Counsel Hélène Huet frequently litigates before French and European courts and is also experienced in IP contract drafting and negotiations. Boriana Guimberteau left the firm.

Responsables de la pratique:

Antoine Gautier-Sauvagnac

Autres avocats clés:

Hélène Huet

Les références

‘The team is very solid and very advanced in the knowledge and use of new technologies. Great efficiency in understanding files and above all the service provided is very efficient and extremely business-oriented.’

‘Antoine Gauthier-Sauvagnac is not only an extremely effective leader and very attentive but he is very business-oriented, which makes his opinions very concrete. His responsiveness is remarkable and he is very approachable.’

‘Antoine Gautier-Sauvagnac greatly supports us on trademark litigation cases involving also trade dress and unfair competition aspects. He has a lot of knowledge about the trademark, trade dress and unfair competition scene in France and we always received fast and easy to understand advice.’

Gowling WLG

Gowling WLG‘s broad IP experience includes both contentious and non-contentious mandates involving trade marks, patents and design matters. The team is particularly strong in IP litigation and disputes, negotiation of operating contracts and management of IP rights. It frequently acts for French and international clients active in the cosmetics, food and drink, science and technology, and pharmaceutical industries, among others. IP head Céline Bey is experienced in French and pan-European trade mark and patent litigation and disputes, as well as trade mark clearance, oppositions and settlement agreements. Philippe Rousseau is a highly regarded commercial litigator. He also specialises in dispute resolution and international arbitration. IT/IP specialist and principal associate Clémence Lapôtre advises on copyright, trade marks and designs.

Responsables de la pratique:

Céline Bey

Autres avocats clés:

Philippe Rousseau; Clémence Lapôtre

Les références

‘Céline Bey is excellent in litigation and demonstrates great rigor, agility and availability for the client as well as a great ability to transcribe the necessary pragmatic approach into legal terms.’

‘I have been working for several years with Céline Bey, who is in charge of most of the Group’s major litigation cases in the area of trademark law and unfair competition. She is always available, has an acute understanding of business issues while being excellent in the legal and judicial approach to cases.’

Hoffman

Hoffman is noted for its advice on strategic IP issues, and also its strong litigation offering. It often acts for high-profile clients in sectors such as fashion, the arts and publishing. The team also addresses related issues in commercial law and unfair competition law, as well as IT matters involving personal data protection. Emmanuelle Hoffman, who is dual-qualified in France and Quebec, handles cross-border IP work. Pierre Hoffman acts on matters involving the intersection of criminal law and IP law. Ingrid Zafrani departed in January 2021.

Responsables de la pratique:

Emmanuelle Hoffman; Pierre Hoffman

Principaux clients

Guess

Delvaux

Chalet International

Repetto

Etam

Maison Chateau Rouge

Marine Serre

L et M “Bombers”

Zapa

Barbara Bui

Groupe Vendome

Mediatransports

Olivier Lapidus

Mersea

Rock the Kasbah

Un Jour Ailleurs

Tianhai Lace

Lancaster

Sprintex

Zadig et Voltaire

Chalet International

Mathilde M

Groupe Cargo

Lexon

Mobiliere de France

Forestier

Platex

Ligne de Front

Trust

Publicis

Isermatic Systemes

Visuapose

Media Vision

MGA

Domaine Chateau Tour-Fourthon

L’Atelier du Vin

SNC Evok Hotels Collection

Woolip

Saint Tropez

Happn

Creacard

Airmat

Fooding Company

Hogan Lovells (Paris) LLP

The specialist IP, media and technology team at Hogan Lovells (Paris) LLP frequently advises clients active in the consumer goods, technology and media industries. Its work on trade marks and designs is part of a broader practice that encompasses patents and copyright issues. The dispute resolution team covers international litigation, mediation and arbitration matters before the French courts and the French IP office. Practice heads Marie-Aimée de Dampierre, David Taylor and Jane Seager collectively deal with major IP disputes and brand protection. Counsel Olivia Bernardeau-Paupe focuses on IP transactions, prosecutions and IP litigation.

Responsables de la pratique:

Marie Aimée de Dampierre; David Taylor; Jane Seager

Autres avocats clés:

Olivia Bernardeau-Paupe

Principaux clients

Facebook

Principaux dossiers

  • Acted as a key outside counsel for Facebook regarding the recuperation of domain names and security issues.

Kern & Weyl

The boutique IP team at Kern & Weyl is led by founding partners Tania Kern and Claire Weyl, who primarily advise US, Italian and Spanish clients on IP rights and anti-counterfeiting measures, as well as the enforcement of trade marks, designs, and patents through litigation before European courts. Clients are often active in the fashion, luxury goods, wine and spirits, and cosmetics industries. Associate Florence Houisse focuses on both IP protection and defence. The team is also highly experienced in negotiating and drafting IP agreements.

Responsables de la pratique:

Tania Kern

Autres avocats clés:

Claire Weyl; Florence Houisse

Les références

‘Excellent team, great responsiveness and professionalism’

‘Claire Weyl is very involved in these files and always available for her clients.’

Principaux clients

PSA Group – Citroën Peugeot

Desigual

Calvin Klein

Tommy Hilfinger

Golden Goose

Danone

Osborne Clarke

Osborne Clarke has longstanding experience in IP litigation and IP asset management, particularly in relation to trade marks. The team frequently advises clients in advertising and other industries on internet IP content licensing, as well as IP enforcement, and has related experience in trade secrets. Claire Bouchenard focuses on trade marks and design-related advice and litigation, while Xavier Pican specialises in IP litigation and data protection, especially for clients in the energy, defence and telecoms industries. Béatrice Delmas-Linel covers IP and IT-related matters, such as regulatory and data privacy law, online distribution and cloud services for clients in the financial services and health sectors.

Responsables de la pratique:

Claire Bouchenard; Xavier Pican; Béatrice Delmas-Linel

Principaux clients

This.Sign

PopSockets®

Bolt Mobility

RTE

Wirecard

Filatures du Lion

Esprit Europe Services

Palais des Thés

Poilâne

Richard Orlinski

Neoen

AutoDoc

Bren-Tronics, Inc.

Danone

GRTgaz

HanesBrands

HID

Médiamétrie

WW – Marque

Principaux dossiers

  • Defended This.Sign in a litigation case aimed at limiting the exhaustion of trademark rights on the European market.
  • Advised Palais des Thés on its international development, including trademarks, distribution agreements, franchising concept stores, litigation and pre-litigation.
  • Defended Bolt Mobility in a dispute preventing the arrival on the scooter market of a new economic player.

Pinsent Masons LLP

The IP team at Pinsent Masons LLP is highly experienced in trade marks and designs, copyright and patents. Its team has expertise in cross-border issues involving France, Germany, and the United Kingdom. Clients are often active in the construction and engineering, life sciences, retail, and technology industries. Practice head Emmanuel Gougé, who is dual-qualified in England and Wales and France, specialises in cross-border soft IP litigation, while legal director of the Paris team Virginia de Freitas is noted for her pan-European IP litigation experience on behalf of clients in a wide range of industries.

Responsables de la pratique:

Emmanuel Gougé

Autres avocats clés:

Virginia de Freitas

Les références

‘Personal contact. Clear guidance’

Principaux clients

Griesson de Beukelaer

Accord Healthcare

Teva Pharmaceuticals

France Brevets

UHU

Principaux dossiers

  • Successfully advised Griesson de Beukelaer, a major player in the food industry, in defence on a three-dimensional trademark infringement and action against Générale Biscuit Glico France and Mondelēz Europe & France, in connection with the “Mikado” chocolate biscuit stick.

Simmons & Simmons

Simmons & Simmons‘ team, which is led by Marina Cousté and Sarah Bailey, stands out for its integrated international network of specialists in contentious, transactional and advisory IP matters. Bailey, who is dual-qualified in France and England/Wales, leads the firm’s cross-border brands team, which regularly examines client development projects and changes to local case law and legislation. Another standout aspect of the group is its depth of knowledge in specific sectors such as pharmaceuticals and wine & spirits.

Responsables de la pratique:

Sarah Bailey; Marina Cousté

Autres avocats clés:

François Jonquères

Les références

‘The team assists us in an integrated and extremely pragmatic way, taking into account the needs of the business. It offers innovative solutions tailored to each case in both operational and financial terms.’

‘They are accessible and possess an unwavering involvement with a real desire to support the company’s projects and to ensure the best possible legal security while keeping in mind the need to preserve and support the business.’

Principaux clients

Metro-Goldwyn-Mayer

Chateau Lafite Rothschild

Domaine Romanée-Conti

Ticket for change

@Makesense

Taylor Wessing

Taylor Wessing‘s team, which is 'very knowledgeable and well-respected', has particular expertise in matters where soft IP issues, cybersecurity and data protection cross over. Soft IP is an area in which associate Inès Tribouillet often acts both as a counsel and as a litigator. The team is led by experienced practitioner Marc Schuler, who concentrates on the technology and media industries. The offering to clients covers filing strategy and trademark protection, as well as infringements and reputational risk to clients in the digital communication age.

Responsables de la pratique:

Marc Schuler

Autres avocats clés:

Inès Tribouillet

Les références

‘True experts in their field and very helpful.’

‘Very knowledgeable and well-respected.’

Principaux clients

Orange

Banijay Group

Square

Fox Channels

RATP

Airbus

American Airlines

Dailymotion

The North Face

Hiscox

Farfetch

Webedia

Comcast

Tik Tok

Spotify

Gallup

Festicket

Maison Lejaby

Woolworths

Hacker-Pschorr

Principaux dossiers

  • Representing Orange in a lawsuit initiated by Intel Corporation on the grounds of the infringement of its trade mark INTEL INSIDE and unfair trade practice regarding the use of the brand HUMAN INSIDE.
  • Managing Banijay Group’s trade mark portfolio and assisting in its title clearance program.
  • Assisting Tik Tok with anti-counterfeit actions relating to the import and marketing of various infringing products reproducing its trade mark.

UGGC Avocats

UGGC Avocats‘s trade mark and design practice is a core part of the broader IP offering at the firm. The team has expertise in the development and implementation of domestic and international portfolio strategies, as well as commercial contracts, including agreements for marketing, merchandising and franchising purposes. Contentious matters are also a key driver of work, including anti-counterfeiting matters, opposition, revocation and infringement proceedings. Elsewhere, domain name matters, including cybersquatting cases, and alternative dispute resolution matters are other areas of strength. The group's wide sector expertise includes the fashion and luxury goods, pharmaceutical and cosmetics, consumer goods, publishing and IT industries. Elisabeth Logeais, Corinne Khayat and Anne-Marie Pecoraro lead the practice. Consultant Rodolphe Boissau provides key support.

Responsables de la pratique:

Elisabeth Logeais; Corinne Khayat; Anne-Marie Pecoraro

Autres avocats clés:

Rodolphe Boisseau

Les références

‘Anne Marie Pecoraro has the qualities of a great lawyer (agile intelligence and formidable strategist) and is an individual of action, strong in her expertise and convictions. She knows how to pursue her client’s objective with extraordinary diligence and combine an iron fist with great negotiating and diplomatic skills. Rodolphe Boissau is excellent. They are remarkable lawyers.’

‘A trusted team, who are always on top and available 24/7.’

‘Anne-Marie Pecoraro is Europe’s best IP lawyer, by far.’

‘An outstanding trade mark practice.’

Principaux clients

Crédit Agricole Immobilier

Colas

Girardin Benoît

Divine Paris

Solinest

Enalean SAS

Musée d’Art et d’Histoire du Judaïsme

Gustavo Lins

Licensing international (ex LIMA) https://licensinginternational.org/)

Zahia Dehar

Moundir Zoughari

Quartana

Bouderbala

Archikonsol

Luxuvince ECI

Michel klein / marques SEMK- DINGO

MAS de So

Luc Bellier

Principaux dossiers

  • Advised Divine Paris on the management of its trade mark portfolio.
  • Advised Gustavo Lins on the protection of his brand and creations across the globe.

Aramis

Benjamin May's team at Aramis is experiencing a rapid growth in mandates in the cosmetics, biotech and life sciences sectors. It was particularly focused on anti-counterfeiting and IP portfolio management issues in 2021. The group benefits from the firm’s wider partnerships with large international firms, enabling collaboration on worldwide disputes. The team is assisting with an infringement claim for Molo Design against Chanel companies, which is pending in Germany and Italy. Senior associate Florent Mattern is praised for his ‘creative solutions.’

Responsables de la pratique:

Benjamin May

Autres avocats clés:

Florent Mattern

Les références

‘Aramis has an excellent, highly qualified and responsive team. We have worked with them in a number of high profile matters in and out of court and they have performed well in all instances. They have shown in-depth knowledge in all IP issues.’

‘Benjamin May is a seasoned practitioner and very experienced. Florent Mattern has creative solutions.’

Principaux clients

Molo Design

Allergan/AbbVie

Verweij Fashion

Lidl

Eiffage

National Fitness Campaign

Qonto

Principaux dossiers

  • Represented Molo Design Ltd in a worldwide dispute related to the infringement of its internationally renowned industrial designs against Chanel and its suppliers.
  • Assisted Allergan with a complex and worldwide trade mark case.
  • Assisted Lidl France with several litigations for various IP-related issues.

Benoliel Avocats

Benoliel Avocats remains one of France’s go-to firms for complex trade mark and design disputes. Under the lead of founding partner Sylvie Benoliel-Claux, the team shoulders a busy caseload of litigation before French and EU courts, with clients including prestigious French and international companies from the automotive, media, food, design, fashion and pharmaceutical sectors. Since 2022, Benoliel-Claux is the president of the French Association of Trade Mark and Design Law Practitioners.

Responsables de la pratique:

Sylvie Benoliel-Claux

Les références

‘Sylvie Benoliel-Claux is very clear, provides to-the-point recommendations, is quick to respond, provides a high service-level and is fun to work with.’

‘A small, good-level team (who is attentive to its clients and available) led by Me Benoliel-Claux, whose expertise in intellectual property, and in particular in designs, is recognised.’

Principaux clients

Etablissements Gabriel Boudier

Societe Hotel Majestic Immobiliere et d’Exploitation

Lola James Harper

Cabinet Bouchara Avocats

Vanessa Bouchara is the main contact at Cabinet Bouchara Avocats. She has expertise in trade marks and industrial design rights, as part of a broader IP practice. Her work encompasses filings, oppositions and administrative proceedings, as well as cancellation actions and infringement matters.

Les références

‘The whole team is extremely good from a technical point of view, and is also very pragmatic. We appreciate the proactive and intelligent solutions offered to us. We love working with this firm.’

‘Vanessa Bouchara is truly remarkable and brilliant, both for the quality of her work and for the cohesion with her team. We have unparalleled follow-up and love to work with each member of the firm.’

‘One of the firms I rely on in France for trademark protection issues. Very responsive and top-notch expertise.’

‘The main person we work with is Vanessa Bouchara, who we appreciate and is a brilliant and very resourceful lawyer. She always offers us practical solutions, in which she mixes her perfect knowledge of our company and legal principles.’

‘A very determined firm and team, hardworking and passionate about their profession. It is a pleasure to work with people who have this passion. All our needs are anticipated and we are really very satisfied.’

‘While I have worked with most of the lawyers, my go-to person is Vanessa Bouchara. She is smart, has the experience needed and is responsive.’

Principaux clients

In-N-Out Burger

Beiersdorf

Nicolas Ghesquière

Ba&sh

IKKS Group

Christian Lacroix

La Prairie

Caudalie

Respire

Western Digital Technology

Attijariwafa Bank

JT Global

Sofrane (Paul & Joe)

Eleven Paris

Stella Forest

Berenice

Des Petits Hauts

Byli Vy

Valege

Creaddict (Redline)

Les Montres Suisses

Feed

Deux Magots

Biocoop

Witradis (Cavavin)

Benoit Valérie Calvet

Château Peyrat-Fourthon

La Française des Jeux

Netbet

Altavia Group

Maisons France Confort

Technitoit

Camif Habitat

Guy Hoquet

Laforêt

Eeveroad

Levest

Gigafit

Tonipharm

Laboratoires Diététique et Santé (Vitaflor)

Kingsley Coman

Sophie Ferjani

CMS

CMS continues to grow its trade mark and design portfolio practice to complement its strong litigation practice. Practice heads Anne-Laure Villedieu and Jean-Baptiste Thiénot specialise in the perfume and cosmetics, automotive, healthcare, media, hotel and leisure and fashion industries. Clients benefit from the firm's international presence and the Paris office’s other departments. Counsel Sabine Rigaud is also recommended.

Responsables de la pratique:

Anne-Laure Villedieu; Jean-Baptiste Thiénot

Autres avocats clés:

Anaïs Arnal; Sabine Rigaud

Les références

‘The CMS team is remarkable from all points of view. Responsiveness, pragmatism and finesse of analysis. They know how to create links with their clients and deliver high-quality services within sometimes tight deadlines.’

‘Anne-Laure Villedieu is very available and a good IP practitioner.’

‘Anne-Laure Villedieu, the partner who leads the team, is approachable and talented. She relies, in particular, on Anaïs Arnal, a lawyer whom I appreciate working with because of her speed in identifying our issues and her finesse of analysis.’

Principaux clients

Biogroup

Advance Publications

Champagne André Clouet

Wexford France

Des chiffres et des lettres

Hotel George V

Caval

Principaux dossiers

  • Assisting Advance Publications with the protection of its trade marks.
  • Representing Champagne Andre Clouet in trade mark infringement proceedings abroad.
  • Managing the trade mark portfolio of hotel George V.

DS Avocats

DS Avocats impresses with its expertise in commercial contracts, contentious matters and prosecutions. The licensing practice covers matters such as distribution and technology transfer contracts, research and development contracts and contracts relating to artistic performances and productions. Contentious work includes French and cross-border disputes, spanning infringement, opposition, revocation, invalidation and cancellation actions. Disputes before the European courts and the EUIPO as well as domain name disputes are also handled. Catherine Verneret is the head of the practice.

Responsables de la pratique:

Catherine Verneret

Principaux clients

EDF

Enedis

Société de Gestion Pierre Cardin

Bazarchic

O’Tacos

Carrefour

Le Louvre

Afnic

Joseph Duclos

YEGO Urban Mobility

Principaux dossiers

  • Advising EDF on its partnership with the Olympic Committee for the 2024 Olympics.
  • Advising Société de Gestion Pierre Cardin regarding issues raised in the context of testamentary succession of Pierre Cardin and the continuity of the protection of its trade marks.
  • Managing Groupe O’Tacos’s trade mark portfolio worldwide.

Eversheds Sutherland (France) LLP

Eversheds Sutherland (France) LLP stands out through its clear focus on the luxury goods sector. Paris-based practice head Gaetan Cordier also leads the firm’s global luxury goods practice group, which is highly active in multijurisdictional matters. In addition to handling advisory work, the team excels in a wide range of contentious matters, with anti-counterfeiting cases and infringement proceedings accounting for a significant portion of the caseload.

Responsables de la pratique:

Gaëtan Cordier

Fieldfisher

Fieldfisher is particularly renowned for its strong litigation practice, both before French and European courts. The team is also a very good choice for non-contentious matters, such as the management and development of sizeable trade mark portfolios. Practice head Nathalie Hadjadj-Cazier and her team are also well versed in unfair competition and trade secret matters. Domain name disputes are also handled, including through alternative dispute resolution methods UDPR and Syreli. The French practice is an integral part of the firm’s international IP offering and frequently joins forces with colleagues abroad to cover multi-jurisdictional matters.

Responsables de la pratique:

Nathalie Hadjadj-Cazier

Autres avocats clés:

Mathilde Razou

Les références

‘This firm has strength and expertise in trade marks, both in France and other Western European countries. They are responsive, efficient, and have performed well.’

‘I rely on Nathalie Hadjadj-Cazier as my go-to partner. She is smart, has great expertise, is pragmatic and great with clients.’

‘FF Paris is handling a good number of opposition, invalidation and cancellation proceedings. They have a very knowledgeable and professional team and it is a joy to work with them.’

‘Of counsel Mathilde Razou is very thorough and responsive. Nathalie Hadjadj-Cazier is the lead partner and she is always there if needed.’

Principaux clients

Digital Classifieds France (SeLoger)

Tricotage des Vosges

Wolf Lingerie

Petits Frères des Pauvres

Main dans la Main

Giordano Enterprises

6000 Rebonds

Recordati Europe

Take Two Interactive

EY

FRAMA

Hager Electro SAS and subsidiaries (Hager Group)

Chateau Talbot

KNT Limited

Hager

Champagne Billecart Salmon

Hema France

Purally

Crocs

Principaux dossiers

  • Assisting Hager Group with a case involving an infringement action before the Paris Court of First Instance, against the Schneider Electric Group, which had counterfeited the design of a switch.
  • Acting for Group Giordano against the Dutch company Verweij Fashion in three pending non-use invalidation actions and in proceedings before the French Supreme Court (Cour de Cassation), the Court of Appeal and the INPI (revocation actions).
  • Defending Recordati Rare Diseases (RRD) and Recordati Orphan Drugs (ROD), two pharmaceutical companies member of the Recordati group notably specialized in research and development of orphan medicinal products, in litigation brought by one of its former medicine boxes’ supplier, the French company ALIAS before the Paris Court and an invalidation action filed before the EUIPO.

Féral

Féral acts on transactional and litigation matters involving trade marks and designs. The team of practice head Richard Willemant is well-versed in multijurisdictional disputes, with a particular focus on Europe, Canada and Japan. Anti-counterfeiting proceedings and alternative dispute resolution methods feature in the caseload. The practice also assists with the development and implementation of brand protection strategies, often involving multiple jurisdictions. The group’s expertise in software-related IP and due diligence experience are further assets. Farid Bouguettaya joined from Artemont.

Responsables de la pratique:

Richard Willemant

Autres avocats clés:

Farid Bouguettaya

Les références

‘Richard Willemant is one of the most gifted lawyers of his generation. His expertise in intellectual property is impressive. He is one of the best strategists in France in disputes.’

‘The team has excellent knowledge of its subjects.’

‘FÉRAL is truly an exceptional intellectual property law firm, because they have a practice that covers both litigation and advice, including the filing of trade marks, designs and copyright. They are also very experienced on the international scene, whether for an international infringement dispute or, in terms of advice, to define and implement a strategy for the protection of a brand internationally.’

Principaux dossiers

  • Managing a client’s trade marks portfolio, file oppositions and infringement lawsuits.
  • Assisting a French industrial client with respect to its trade mark applications in South America.
  • Assisting a French company with its trade mark strategy across the EU, including management of risks involved by earlier trade mark rights, management of the client’s trade mark portfolio, drafting of trade mark-related agreements and assisting in pre-contentious matters.

Joffe & Associés

Joffe & Associés launched its IP practice with the arrival of Véronique Dahan (formerly counsel at August Debouzy) in November 2020. Dahan’s practice includes strategic portfolio development and prosecution, litigation and commercial contracts. Investigations and interim measures are areas of particular strength. Customs proceedings, IP valuing and audits also frequently feature in the caseload. UDPR proceedings are also handled. Dahan’s specialisation in the luxury goods sector fits very well with the firm’s existing client roster of luxury goods clients.

Responsables de la pratique:

Véronique Dahan

Les références

‘The arrival of Véronique Dahan is a significant development. She brings huge experience and knowledge of IP protection and exploitation, particularly in fashion.

‘Véronique Dahan is clever, strategic with incomparable industry knowledge. And a delight to work with.’

My interaction with Véronique Dahan has allowed me to appreciate her listening skills, her proactive attitude to propose solutions not just in a legal context. Her extensive experience gave me the pleasant impression that her solutions are tried and trusted.’

Principaux clients

ADP (Aéroports de Paris)

Bpifrance Innovation – Large Venture

LES CORPOGRAPHES

Principaux dossiers

  • Advised Aéroports de Paris on its project to acquire the entire capital of BTA SAS France, in cooperation with the firm’s other departments.
  • Advised Bpifrance Innovation – Large Venture on the IP aspects of its investment in Cubyn, in cooperation with the other departments of the firm.
  • Assisted Les Corpographes with trade mark and image right matters for its clients’ advertising campaigns, including research of prior trade mark registrations, filing and prosecution of trade mark applications, and strategic advice.

Momentum Avocats

Momentum Avocats was created in September 2020 by Julien Canlorbe (formerly at Meridian), Jean-Sébastien Mariez and Julie Carel (both formerly at De Gaulle Fleurance & Associés). The young independent firm has already made name for itself in the market, notably for its high-profile litigation practice. The advisory work on the structuring of IP portfolios and their valuing in the context of audits or commercial contracts also deserves a mention. The luxury goods, fashion and publishing sectors are mainstays of the firm, but the team offers wide-ranging sector expertise. Companies from the digital economy, including e-commerce platforms and artificial intelligence players, also turn to the firm for strategic advice.

Responsables de la pratique:

Julien Canlorbe, Jean-Sébastien Mariez; Julie Carel

Osmose

Osmose acts for mid-sized companies and international players, primarily from the consumer goods, food and beverage, luxury goods, financial services, entertainment, automotive and healthcare sectors. Jointly led by Alexandra Le Corroncq and Alexis Vichnievsky, the team acts for clients in contentious matters, notably in counterfeiting and unfair competition proceedings, as well as on non-contentious work, including the management and development of trade mark portfolios. Transactional work is also handled.

Responsables de la pratique:

Alexandra Le Corroncq; Alexis Vichnievsky

Les références

‘We appreciate the availability of the lawyers and their level of intellectual property knowledge. They are good extension workers and their work is of high quality.’

‘They know how to give clear and complete information, allowing the management of the disputes entrusted to them. They highlight the essential pillars of the file, to allow it to succeed favourably and then indicate the secondary elements that can consolidate the procedure.’

Principaux clients

Coca-Coca European Partners

Sony Interactive Entertainment France

Picard Surgelés

Saupiquet (Bolton Food)

Takasago Europe Perfumery Laboratory

Schmidt Groupe

Cité de la musique – Philharmonie de Paris

OGF

CEF-Yesss Electrique

Orveda

Grevin et compagnie

Jack Morton (IPG Group)

Bel

Havas Voyages

Agir pour l’environnement

Utel Fastlight

DST

Anne & Valentin

Sogetrel

Schmidt Brunet Litzler

Schmidt Brunet Litzler demonstrates strengths in both advisory and contentious matters. Founder Delphine Brunet-Stoclet frequently acts on strategic portfolio development matters, particularly in France and at European level before the EUIPO. Commercial contracts and co-existence agreements complement the prosecution practice well. The team’s litigation strength comes to the fore before French and European courts, as well as in opposition proceedings before the respective intellectual property offices. Custom proceedings and emergency measures such as interim measures and seizures also feature in the caseload. The group’s wide-ranging sector expertise includes the luxury goods and cosmetics, commodities and food and beverage sectors.

Responsables de la pratique:

Delphine Brunet-Stoclet

Les références

‘The team is fantastic. They showed great pedagogy. They offered us excellent advice in order to work on a robust strategy adapted to our needs in order to protect our brand in France and abroad. In addition, they have done and still show a lot of flexibility throughout the process.’

‘I have the chance to work a lot with Delphine Brunet-Stoclet. Not only did Delphine’s advice prove to be precise and fair but Delphine went above and beyond the matter at hand.’

‘Very responsive, with helpful and practical advice.’

‘Delphine Brunet is a very strong lawyer, hands-on, strategically, and also commercially. She is a pleasure to work with!’

‘Small team with a pragmatic business-oriented approach to legal matters.’

‘Delphine Brunet-Stoclet is very pragmatic and comes up with outside the box solutions.’

Principaux clients

Amélie Pichard

Marquisat de Sainte Marie

Eugene Riconneaus

Artenova

Vasgos – Oddo

Dermatologic Skincare Solutions

Freemium

Stim Media

Bastille Day

Concept Footwear Solutions

Crossline

Yaheer E-sense of Bue

Beauty Disrupted

MBXCH

Econocom

Nasco

BUTLER Industries

Noerden

MEYER

WEB Industries

Val d’Opies

Skeat

CMI Media

ESP Consulting

Westland

Precious

Edmond de Rothschild

Piaton

Carmen Busquets

Covivio

Web Industries

Cyria

Marie Poniatowski

Le Piton de Sancerre

Isalt

Fonds Stratégique de participations

Artora

Actually

ETEX

OVD

L’Ameublement français

Principaux dossiers

  • Advising Dermatologic Skin Care Solutions on trade mark infringement and unfair competition proceedings against its former distributor.
  • Assisting CYRIA with the management of a European designs portfolio and license agreements, and defending its European design rights.
  • Advising So Press on its trade mark So Foot.

Squire Patton Boggs

Squire Patton Boggs' Paris practice has developed well since the arrival of practice head Catherine Muyl (formerly at Foley Hoag) in June 2020, not least thanks to the team’s close ties to the firm’s international offices. Under Muyl’s lead the practice focuses on advising international corporations from the electronics, pharmaceutical, aerospace and energy sectors as well as companies from service industries such as the media, telecommunications and research sectors. The caseload mainly includes licensing agreements and other commercial contracts as well as contentious matters.

Responsables de la pratique:

Catherine Muyl

Principaux clients

Rimac Automobili

Principaux dossiers

  • Advised Rimac Automobili on all French IP issues relating to its combination with iconic French automotive brand Bugatti Automobiles.

Taliens

European IP boutique Taliens offers the full range of trade mark and design services, spanning prosecution, litigation and transactional matters. With offices in France, Germany and Spain, the practice is an excellent choice for European cross-border matters. Lead duo Jean-Frederic Gaultier and Clara Steinitz are especially renowned for their strengths in litigation and experience of advising on complex transactional work, including due diligence matters.

Responsables de la pratique:

Clara Steinitz; Jean-Frédéric Gaultier

Les références

‘Outstanding in IP litigation cases, especially on an international level.’

‘Jean-Frédéric Gaultier is professional and experienced.’

‘Solid assessment of the cases, great communication skills, high percentage of success on solving disputes.’

‘The employees are very sharp, efficient and fully meet our expectations in order to respond to requests often formulated within tight deadlines.’

‘Jean-Frédéric Gauthier knows his subject remarkably well. It is a great help in quickly identifying important topics and making the right decisions.’

‘Clara Steinitz has been exceptional in her assistance. She has been able to deliver excellent responses in very little time and to achieve great results for our company. I would also like to give special mention to the exceptionally good command of the English language.’

‘Very hands-on and practical, fast and successful.’

‘The team provides a solid assessment and is able to deliver the expected results. The team is especially useful to find extra-judicial solutions.’

Principaux clients

Fruit of the Loom

Richemont

TCL

Banque de Neuflize

Burger King France

ODDO BHF

Goodwin Procter

Red Bull

Stella Mc Cartney

Principaux dossiers

  • Advising Red Bull on a regular basis in the defence of its trade mark portfolio in France and acting as French Customs point of contact for trade mark infringement matters.
  • Advising Burger King on risks assessments in relation to the launch of new products or promotional operations, in view of its competitors’ rights and operations.
  • Managing TCL’s trade mark portfolio.

VARET PRÈS KILLY

VARET PRÈS KILLY is a boutique firm focusing on intellectual property, media and information technology matters. Practice heads Vincent Varet and Xavier Près have longstanding experience of undertaking both advisory and contentious matters across a wide range of sectors, including luxury goods, publishing, culture, sports and IT.

Responsables de la pratique:

Vincent Varet; Xavier Près

Les références

‘Varet & Près is at the forefront of all matters relating to intellectual property, in particular with regard to digital technology.’

‘Vincent Varet is exceptionally available, responsive and efficient.’

‘Vincent Varet has been able to adapt to our business. We appreciate his strategic vision of brands, which does not systematically lead us to litigation.’

Principaux clients

Ville de Vichy

Principaux dossiers

  • Assisted and advised the City of Vichy in the framework of the historic agreement signed with the French State regarding the transfer of the Vichy Spa and the related trade marks and domain names portfolio (VICHY, VICHY CELESTINS, PASTILLE DE VICHY, VICHY SPA HOTELS, VICHY DETOX, THERMALIA, CLINIQUE DES CELESTINS, etc.).

August Debouzy

Responsables de la pratique:

Mahasti Razavi; Grégoire Desrousseaux

Autres avocats clés:

Laure Arnon-Duquesnoy

Les références

‘The team takes a pragmatic and innovative approach to subjects. They have a desire to understand the project and propose the most appropriate solution. They think outside the box and are not confined to an obvious solution.’

‘Grégoire Desrousseaux and Laure Arnon-Duquesnoy are available, pragmatic, efficient and innovative.’

Principaux clients

Maytronics France

Château Beauséjour HDL

Deepgray Vision

Voodoo

Principaux dossiers

  • Assisting Voodoo with its brand strategy its registration of multi-media TMs.
  • Advised Maytronics on the best strategy to implement, in order to carry out a verification prior to the filing of a French and EU design.
  • Assisted Château Beauséjour HDL with the management of its IP portfolio, in accordance with the provisions relating to wine law and Grand Cru Classé appellations.

Bignon Lebray

Responsables de la pratique:

Nicolas Moreau

Principaux dossiers

  • Advised Agence Nationale pour la Cohésion des Territoires, the French national urban planning public agency in protecting its trademark portfolio.

De Pardieu Brocas Maffei

Responsables de la pratique:

Barbara Levy

Principaux clients

Valeo

Exor

Timberland Group

VF Corporation

Totes Isotoner

Vans

The North Face

CNIM

Napapijri

Blackberry

Victoria’s Secret

Siemens Healthcare

Robert Bosch

Principaux dossiers

  • Advising Exor on the IP aspects of its acquisition of Christian Louboutin group.
  • Representing Blackberry in an IP litigation case.
  • Advising SAIPEM on the IP aspects of its acquisition of Naval Energies’ floating wind business.

Deprez Guignot Associés

Responsables de la pratique:

Vincent Fauchoux; Frédéric Dumont; Jean-Daniel Bouhenic

Principaux clients

L’Oreal

Fédération française de la Couture

Polaroid

M6

Principaux dossiers

  • Co-founded with BLOCKCHAINYOURIP of a time-stamping solution using blockchain technology to protect creations and innovations which been used by several large luxury houses.
  • Acted as counsel for L’OREAL in litigation regarding the launch of new eco-friendly products.
  • Litigated on behalf of Polaroid against Fujifilm for the protection of the iconic ‘square format’ of photography, historically proposed by Polaroid.

EBL Lexington Avocats

Responsables de la pratique:

Laurent Levy; Michaël Piquet-Fraysse

Les références

‘The firm is able to respond quickly and efficiently.’

‘Michaël Piquet-Fraysse’s ability to offer alternatives and innovative solutions.’

Principaux clients

SPA

J.M. Weston

Bonpoint

Piper-Heidsieck

Charles Heidsieck

Gas Bijoux

Normalu

Mackage

Sartore & Compagnie

Bonneval Waters

Duclot

Malt

Codage

Go on Media

Audi

Volkswagen

Morganne Bello

Petrus

Principaux dossiers

  • Advised Pétrus in pre-litigation, opposition and invalidity proceedings against Gordon Ramsay, who tried to acquire trade mark rights on the Pétrus name.
  • Representing SPA in an action against the association La Manif Pour Tous and the Fondation Jérôme Lejeune for parasitism.
  • Representing J.M. Weston in an action against Amazon Europe Core for trade mark counterfeiting and misleading commercial practices.

FIDAL

Responsables de la pratique:

Laurence Dreyfuss Bechmann; Natalia Moya-Fernandez

Principaux clients

Puma SE

Jardins de Gaia (SARL MAKA)

Dopff et Irion

Clipso

Badiff / Bagelstein

Top Tex / Kariban

TOURCOM

BAYARD PRESSE

AEW Europe

Académie des Beaux Arts

Fondation Alliance Française

Principaux dossiers

  • Represented Puma SE in several proceedings before different jurisdictions linked to the infringement of designs and trademarks of the international sportswear company PUMA in the sector of shoes and garments.
  • Managed the IP assets and enforced IP for Bayard Presse.
  • Acted for Clipso regarding trademark infringement and unfair competition before the judicial court of Nancy.

Franklin

Franklin

Responsables de la pratique:

Sandra Strittmatter

Autres avocats clés:

Erwan Prely (Associate)

Les références

‘I highly recommend the qualities of Sandra Strittmatter, who knows how to take into account business and marketing aspects of matters and has an excellent knowledge of the law. She has extensive experience in issues related to alcohol advertising, a rare specialty that few lawyers master.’

‘Erwan Prely is a fine jurist and a very good lawyer.’

‘Sandra Strittmatter started this team very recently, but the evolution is amazing. Very fast turnaround, excellent level of English. Sandra is young and works for her clients with 100% energy and commitment.’

Principaux clients

Martell & Co

Champagne Perrier-Jouët

Airwair International Limited

Siemens SAS

Principaux dossiers

  • Assisted Martell & Co and Champagne Perrier-Jouët with contract and IP law in the context of marketing and communication related agreements on a regular basis.
  • Advising Airwair International Limited on the protection and enforcement of its IP rights in France.
  • Advising Siemens SAS on a regular basis in relation to IP law.

Harlay Avocats

Responsables de la pratique:

Sabine Lipovetsky; Fabrice Perbost; Dominique Mallo

Principaux clients

Société d’Exploitation de la Tour Eiffel

IonisX

Laboratoires Thea

Isigny Sainte-Mère

Tereos

Lanson

Sipromad

Made4aWoman

Organisation Mondiale du Prix Versailles

Herald Avocats

Responsables de la pratique:

Richard Milchior; Jérémy Cardenas

Les références

‘Efficient team who are attentive and available.’

‘Jérémy Cardenas stands out with his deep knowledge, swift way of thinking and always gets to the heart of things.’

‘The team anticipates client needs and gets to the point quickly.’

‘Jérémy Cardenas and Camille de Perthuis are efficient in handling cases.’

Principaux clients

OVHcloud

Champagne Lanson

Champagne Chanoine Frères depuis 1730

Maison Burtin/Lanson-BCC

Région Bourgogne-Franche-Comté

Mutuelle de l’Industrie du Pétrole

Conticini Franchise

Vegan Diners Limited

Financial Planning Standards Board Ltd.

Jacobacci

Jacobacci

Responsables de la pratique:

Jean-Mathieu Bertho; Olympe Vanner

Autres avocats clés:

Alexia de Maulde

Les références

‘Jacobacci is a very good firm with great expertise in intellectual property law and innovative measures to capture its clientele.’

‘Jean-Mathieu Bertho and his team are excellent lawyers specializing in trademark law. Bertho demonstrates impeccable professionalism in the management of his practice.’

‘The trademark team of Jacobacci Paris provides great, pragmatic advice. Olympe Vanner combines excellent legal knowledge with lots of business acumen and a fantastic can-do approach. She’s highly responsive and a great strategical partner when things get difficult. Also clear on invoicing matters and value for money. Highly recommended!’

‘They have always a very direct approach to the issues bearing in mind the interest of the client.’

‘They are very client oriented and always demonstrate deep knowledge of the business environment that surround the legal issue at stake, in order to propose effective and efficient as well as practical solutions.’

‘Jean-Matheiu Bertho is very good. The team is also very good, diligent, available and highly specialized in trademark and copyright law, as well as in design and model law and in unfair competition law.’

KGA Avocats & Wenner

Klein Wenner

Responsables de la pratique:

Laurent Badaine; Matthieu Bourgeois

Les références

‘Very professional team, which cares about the details and is very solution oriented. Files are handled quickly by a dedicated team.’

‘Laurent Badaine was very efficient. His recommendations were very relevant.’

Principaux clients

Agence du Numérique en Santé

Time Bomb Record Label

Spot

Archery SAS

Artizans of Photo Video Background Editor App

Orlade

Principaux dossiers

  • Advised Agence du Numérique en Santé’s IT and health department on filing a collective trade mark.
  • Represented Raidlight in IP and unfair competition proceedings rights against one of its competitors and its European retailers.
  • Assisted Time Bomb with IP, unfair competition and parasitism proceedings against a publishing house, before the Paris Judicial Court.

Lext Avocats

Lext Avocats

Responsables de la pratique:

Anne Bourdu; Gaëlle Leroy; Pierre-Lucas Thirion

Les références

‘Great listening, quality of advice and exceptional responsiveness.’

‘We work with Anne Bourdu, who is both available and advise us with seriousness and efficiency.’

‘Very good, proactive follow-up of files. The client feels surrounded and supported by the team.’

LPA-CGR

LPA-CGR avocats

Responsables de la pratique:

Prudence Cadio

Autres avocats clés:

Romain Viret (Counsel)

Les références

‘The team is business friendly, not just giving legal objections but looking for alternatives.’

‘Our main contact at LPA CGR is Romain Viret, who has been our trusted IP advisor for many years and fully understands our critical business issues. Romain Viret is always available, very business minded and has the ability to explain very complex IP issues in a straightforward way. He is also a very pragmatic IP litigator, who always tries to find the best solution for our company.’