Italy

Whether registering non-traditional marks or protecting geographical indications, the Italian IP framework is easily navigable. The jurisdiction is also an attractive forum for enforcement – injunctive relief for trademark infringement is readily available, for example – and litigation has picked up as a result. There is a breeze of change in the legal services market, as clients gradually move away from traditional, professor-led firms to more modern, internationally oriented entities. While the dividing line between law firm and agency remains clear, more and more organisations on both sides of the divide are crossing over, mirroring trends across Europe.

Firms

1
Bird & Bird
Hogan Lovells Studio Legale
Trevisan & Cuonzo Avvocati
2
Bonelli Erede Pappalardo
DLA Piper LLP
Nctm Studio Legale
Studio Legale Jacobacci & Associati
Studio Legale Sena e Tarchini
Studio Legale SIB
Studio Legale Vanzetti e Associati
3
Avvocati Associati Franzosi Dal Negro Setti
CREA Avvocati Associati
De Simone & Partners
Martini Manna Avvocati
Portolano Cavallo Studio Legale
Rapisardi Intellectual Property
Simmons & Simmons
Avvocati Associati Franzosi Dal Negro Setti
Intellectual property is a central pillar of Franzosi Dal Negro Setti’s well-rounded commercial practice. Focusing on high-stakes litigation in the patent and trademark spheres, the IP team has resolved hotly contested suits in many different forums by leveraging its deep substantive IP knowledge and thorough grasp of procedure. It excels on cases with an international dimension and is particularly well placed to handle matters with a China component: it has offices in Beijing and Shanghai, and understands the idiosyncrasies of the market well. Head of the China desk and a long-time partner of the firm, Federica Santonocito litigates assuredly across the IP spectrum, focusing on the fashion, design, pharmaceutical and food industries.
Bird & Bird
The biggest trademark disputes in Italy routinely go to Bird & Bird; the name itself brings comfort when trouble brews and victory looks assured when gold-rated Milan partners Massimiliano Mostardini and Giovanni Galimberti come on board. Mostardini founded the Italian branch and co-heads its IP department; he is an influential figure in the international firm, sitting on the global board and various management committees. “He can resolve any tough case” and is a master at devising winning tactics that opponents haven’t seen before. Galimberti is “brilliant at managing cases”, particularly sprawling pan-European disputes.
Bonelli Erede Pappalardo
Bonelli Erede Pappalardo ascends to the silver tier for the WTR 1000 2017 edition. The sophisticated full-service business law firm has a robust two-partner, 12-professional IP group with abundant trademark litigation and transactional experience to draw upon. Coordinating the group is Giovanni Guglielmetti, a favourite of multinationals and Italian fashion houses who is frequently found on the frontlines of must-win disputes. He recently represented Gillette before the Supreme Court in a complex cross-border matter concerning the breach of a worldwide coexistence agreement; he has also handled a parallel trading dispute for Jack Daniel’s and Martini & Rossi which raised issues concerning the notion of consent.
CREA Avvocati Associati
The product of a recent merger between three Italian firms, CREA got off to a flying start and makes its WTR 1000 debut this year. Intellectual property is a key focus and the firm’s largest department, and the greatest concentration of its work relates to trademarks. Comfortably at home in the courtroom, the team is also developing a broader strategic consultancy platform by partnering with leading specialist Bugnion. IP partner in charge Daniele Caneva has had a busy year on the enforcement side, with a crucial trademark infringement and unfair competition suit over the illicit use of several L’Oréal perfume marks a standout; earning a damages pay-out and a destruction order, he certainly kept the cosmetics giant happy.
De Simone & Partners
The De Simone partners garner effusive feedback from international sources: “Fabio Angelini was a senior attorney at Intel and has that valuable in-house experience. He is aware of everything happening in the market, is incredibly bright and also an exceptional strategic thinker. He gives you exactly what you need – concise, to-the-point legal opinions.” “Very responsive and practical, Massimo Cimoli represents excellent value for money when it comes to Italian and European trademark work.” These are two key contacts on an otherwise “deep team of professionals” who collectively provide an outstanding A-to-Z trademark and design protection and enforcement service.
DLA Piper LLP
DLA Piper Italy continues to raise its trademark game, most notably by moving into the prosecution arena; client demand necessitated the service expansion and it filled a gap within the wider firm’s international trademark protection offering. In April 2016 Annamaria Algieri joined as head of filing and prosecution in Italy. On the contentious front, meanwhile, Gualtiero Dragotti and Roberto Valenti have been in the thick of it. In an important EU Intellectual Property Office invalidity action involving the interpretation of the distinctive capacity of 3D trademarks, Dragotti is acting for glass manufacturer Bormioli Rocco against Ty Nant Spring Waters and others. Going up against crack litigator Massimiliano Mostardini of Bird & Bird, Valenti is representing apparel company Franklin & Marshall against a college of the same name. While Dragotti is mainly patent focused and Valenti predominantly trademark facing, they are formidable opponents in any IP case and frequently link up behind the scenes to devise clever strategies for each other’s cases.
Hogan Lovells Studio Legale
Taking up its customary slot in the gold tier, Hogan Lovells continues to set the pace in the Italian IP market. Its incisive factual analysis and polished presentation to judges – making particularly good use of attractive visual aids – distinguish its approach to IP litigation. Decorated fighters Luigi Mansani and Giovanni Ghirardi have a gift for weaving persuasive narratives around the facts of a case. The erudite Milan maestros – who both speak and lecture regularly – are at the cutting edge of case law developments in Italy and vital cogs within Hogan Lovells’ compelling transoceanic IP practice. Maria Luce Piattelli is also much loved by clients for her portfolio management and strategic counselling prowess. She has developed a uniquely commercial perspective on the protection of brands as a result of her extensive engagement in transactional IP work. Combining refined sectoral knowledge with a commercial approach to intellectual property, IP Law Galli stands apart from many more traditional Italian line-ups. Keeping a laser focus on the quality of the group’s advocacy in the contentious context, and on the commercial relevance of its strategic advice in other settings, the charismatic Cesare Galli provides inspiring leadership to his talented team. Setting precedents in IP litigation is par for the course for the respected professor, prolific author and anti-counterfeiting guru.
Martini Manna Avvocati
On the market for just a few short years, Martini Manna’s star remains firmly on the ascendant. With a thriving prosecution practice – a rarity among Italian law firms – it moves portfolios in directions that are advantageous for subsequent commercialisation, and for any threats of litigation that may arise. The group pays close attention to clients’ budgets and makes clever use of technology to streamline its service and minimise trademark protection costs. When it comes to litigation, it has likewise found the recipe for success by tailoring its enforcement strategies to suit the business goals of clients. Founding partner Elena Martini has been representing premium eyewear brand Silhouette on the enforcement of its marks and defending Giustacchini Office Store in trademark infringement proceedings brought by Montblanc. Her IP compass is very broad and she is more than prepared for any issue that crosses her desk.
Nctm Studio Legale
Full-service Nctm is home to a strong standalone, boutique-style IP group; clients get the best of both worlds in terms of extensive resources and highly specialised trademark advice. Its glittering client roster bears testament to the calibre of its service: for Sky International it provides clearance, opposition and enforcement support; it handles myriad contentious matters for Ferrari and Fendi; and it supervises important transactions for Ermenegildo Zegna and Anheuser-Busch InBev. Litigator and commercial IP maven Paolo Lazzarino leads the team responsible for Ferrari’s global enforcement, and is the main relationship partner for many other A-list brands. He is a font of insight on commercial and trademark trends in the fashion, design and automotive sectors.
Portolano Cavallo Studio Legale
An ability to speak the same commercial language as media, fashion, manufacturing, design and life sciences concerns makes Portolano Cavallo a popular choice. The IP team has gone from strength to strength of late, thanks to the successful cross-selling of its trademark services to existing clients of other departments as well as increased generation of instructions in it own right. High demand meant that extra support was needed; it came in the form of seasoned litigator and business counsellor Lydia Mendola, the former chief of Allen & Overy’s Italian IP practice. She now helms a strong cadre of experts that includes ex-Rapisardi man and litigation and anti-counterfeiting ace Davide Bresner, who supercharged the practice a year earlier when he joined in April 2015. Both make their debut in the WTR 1000 this year. Micael Montinari, who leads the dispute resolution team, adds further bench strength. With his broad commercial litigation background, he is well equipped for any case.
Rapisardi Intellectual Property
A pioneer of the Italian IP scene, Rapisardi can trace its roots back to the turn of the 20th century. While drawing on this deep well of institutional experience, clients also have a modern, dynamic and customer service-oriented team at their disposal. A marriage of law firm and trademark attorney firm, it offers a comprehensive menu of services. European patent and trademark attorney and Supreme Court lawyer Mariacristina Rapisardi supervises the set’s activities with a hawkish eye for quality and an unstinting dedication to efficiency. She has spent several decades at the IP coalface and is “incredibly smart”, with a knack for spotting emerging trends and developments before anyone else. Gianluigi Volonte heads the trademark department and has finely honed skills in all aspects of trademark protection, both in Italy and internationally.
Simmons & Simmons
Few, if any, understand the commercial drivers and regulatory framework of the life sciences as well as Simmons & Simmons; companies such as Lundbeck, Venture Life Group and Alkalife routinely seek it out on any number of matters. However, the past few years have seen the local IP group expand into the fashion, luxury and consumer goods sectors and diversify its trademark-related activities. Notable recent highlights include successfully representing Zwilling JA Henckels Group in preliminary injunction proceedings for trademark infringement against a former subsidiary and assisting TOD’s on an important luxury brand purchase. Taking charge is Laura Orlando, an “efficient, business-oriented lawyer who is always extremely well prepared”.
Studio Legale Jacobacci & Associati
The 40-strong team at Jacobacci has all the expertise needed to protect, defend, enforce and commercialise the full range of IP rights. Italian, French, Spanish and many international clients appreciate its lightning-fast turnarounds on urgent contentious matters, as well as the creative strategies it devises to overcome obstacles. Founding partner Fabrizio Jacobacci is a must-have ally in disputes with intersecting trademark and unfair competition components. Fellow founder – and Milan office director – Marco Francetti handles a mix of contentious and transactional work and is one of the few lawyers in Italy with a finger on the pulse of the Chinese market.
Studio Legale Sena e Tarchini
Sena e Tarchini commands immense respect among its peers: “Its work is top quality and its lawyers are extremely well prepared.” Much of the established trademark case law in Italy bears the stamp of Giuseppe Sena, a senior statesman and one of the most experienced trademark lawyers anywhere in the world. His partner Paola Tarchini is known for her case and client management prowess and is another veteran with wisdom born of decades of cutting-edge practice.
Studio Legale SIB
The legal wing of Societá Italiana Brevetti resolves disputes – it doesn’t just fight them. Always pulling in the same commercial direction as clients, it overlays its rich comprehension of the law and procedure with a strategic approach to emerge victorious. Its knowledge of the fashion and luxury goods industries is certainly a trump card, but it doesn’t lag behind in other fields such as information technology and pharmaceuticals. Collaborating closely with the agency side of the organisation, it demonstrates interdisciplinary thinking which ensures it can make light work of the most complex branding issues. Pier Luigi Roncaglia set up the law firm and serves as managing partner. A former board member of the International Trademark Association (INTA), he remains an active member, putting him at the centre of the international trademark conversation.
Studio Legale Vanzetti e Associati
“Nobody knows Italian trademark case law as well as Vanzetti”; this is perhaps unsurprising, considering that the firm has shaped much of it. The boutique is in its element protecting and enforcing famous trademarks and non-traditional distinctive signs. The teachings of Professor Adriano Vanzetti have furthered the knowledge base of the entire Italian IP scene. He remain a lodestar for the team, which includes Stefania Bergia and Giulio Enrico Sironi – both extremely erudite in their own right and highly skilled in the art of IP litigation.
Trevisan & Cuonzo Avvocati
“Trevisan & Cuonzo deserves its fine reputation. It combines the best attributes of a traditional Italian firm with those of a thoroughly modern set-up and has a lot of excellent lawyers.” “It was one of the first to offer a top IP service oriented to international clients and, for a period, it faced very little competition; now the market is crowded, but it remains at or near the top.” The group is best known for its flawless advocacy in high-profile litigation and enforcement settings, and has had a strong year or two in terms of results: it prevailed for Unilever before the Court of Milan against an Italian food producer in a dispute over the use of signs on packaging; while in Milan, it successfully represented Beiersdorf, the owner of the NIVEA trademark, against Neve Cosmetics. Gold-rated litigators Gabriel Cuonzo and Luca Trevisan form a potent strike force for prestigious clients. Unstinting in its dedication to quality, the prosecution and strategy side of the group shines brightly, too. Coordinating the practice is Lia Puntieri, who shows flair in navigating major projects to a successful close. Together with Julia Holden, she is running a sweeping trademark enforcement and anti-dilution programme for 3M. English solicitor and Italian attorney Holden is the touchpoint for many international clients; her broad practice spans the trademark spectrum.

Agencies

Agencies

Highly recommended
98
Barzanò & Zanardo
Bugnion SpA
Jacobacci & Partners
Società Italiana Brevetti SpA
Recommended
H
AKRAN Intellectual Property
Botti & Ferrari Srl
Buzzi Notaro & Antonielli d'Oulx
Cantaluppi & Partners
Modiano & Partners
Murgitroyd & Company
Rapisardi Intellectual Property
Studio Torta SpA
AKRAN Intellectual Property
AKRAN Intellectual Property makes its debut in the WTR 1000 for 2017. The dedicated trademark attorney outfit partners with clients during the brand creation phase and remains close by their side to protect and commercialise the brand as it grows. Prosecution ace Peter McAleese is a go-to for all manner of strategic questions. He serves as vice chair of the International Trademark Association’s (INTA) Bulletin Committee. Andrea Klein provides to-the-hilt protection for EU Italian and international trademarks, and is also recommended for his proficiency in copyright and advertising law.
Barzanò & Zanardo
“Professional through and through”, and with “an excellent client list including many famous Italian luxury brands”, Barzanò & Zanardo is one of the top trademark prosecution and brand consultancy firms in the country. It can process a prodigious volume of cases without breaking sweat, but not at the cost of providing a personalised service that resonates with patrons. Commended by US sources for her trademark portfolio management work, Alessandra Tedesco has an international reputation that travels far. She is based in the Milan office, which she is responsible for managing.
Botti & Ferrari Srl
This Milan, Bologna and Brescia boutique is relatively compact and, as a result, can respond nimbly to client requests and offer tailored solutions; it also operates with an uncommon degree of efficiency. Though best known for its technical and scientific credentials and concomitant patent work, it does great things in the brands space, as foreign associates confirm: “Professional, responsive and always happy to help, Botti & Ferrari provides the best advice in every case.” Partner Sabrina Fumagalli is the set’s go-to trademark expert. She focuses on prosecution and is a dab hand at administrative contentious proceedings.
Bugnion SpA
Bugnion is extremely well established in the domestic market, but efforts to expand its horizons are now starting to bear fruit. Honing its Asia expertise has been one particular project and in 2016 the group established a Japanese desk to further this goal. It also recently opened an office in Los Angeles to shore up links with US clients and correspondents, and has moved into new premises in Munich. Its services are far removed from robotic prosecution; the team’s strategic acuity translates into opinions that will advance the commercial cause of clients. “Fantastic consultant” Donatella Prandin is “one of the best filing and prosecution experts in Italy”. She is a member of the board of directors and head of the Milan office. Another good name to note, particularly for foreign associates, is Simone Verducci-Galletti. New to the guide this year is Alessandro Mannini; the head of the Florence office is very active in INTA and knows a great deal about protecting rights at a European level.
Buzzi Notaro & Antonielli d'Oulx
Patent and trademark attorney outfit Buzzi Notaro & Antonielli d'Oulx is a top-10 filer with a loyal following of Italian industrial groups and a broad swathe of eminent foreign patrons. Unusually for a set-up of its nature, it can both protect and enforce trademark rights and draws on a wealth of experience in administrative proceedings and court actions. Enrico Antonielli d'Oulx, Livia Pasqualigo and Alessandra Romeo form a seasoned triumvirate. All have know-how across the contentious/non-contentious divide and expertise encompassing domain names and Internet Corporation for Assigned Names and Numbers proceedings. Attracting particular praise this year, WTR 1000 newcomer Romeo “has a really impressive understanding of trademarks in an international context”.
Cantaluppi & Partners
The team at Cantaluppi & Partners may be young and dynamic, but it still has all the experience required to help rights holders to navigate successfully through the global commercial environment. The team likes to get in early and clients are happy to invite it to: its advice on brand creation is both insightful and instrumental in the smooth introduction of new products to the marketplace. From that point, it can do whatever is necessary to ensure the continued protection of a mark and stands ready to deploy whenever oppositions or lawsuits threaten. Barbara Saguatti and Monica Faia are key contacts.

Thanks to its resolutely commercial approach to intellectual property, dynamic outfit GLP is experiencing increasing demand for its trademark protection and management services. The group has all the tools needed to bring a mark to life and help it grow and generate goodwill for its owner. Internationally minded, it files all over the world, selecting the best foreign agents in order to maintain the high standards of quality it sets in Italy and at the EU Intellectual Property Office (EUIPO). GLP continues to blur the line between attorney firm and law firm; co-managing partner and legal department head Davide Luigi Petraz is an authority on licensing and a redoubtable litigator, too.

Jacobacci & Partners
“Pragmatic and efficient”, is the verdict on Jacobacci & Partners – Italy’s number one trademark filer. The outfit is geared up to handle large portfolios and high-volume filers; but with customer-oriented individuals such as Enrico Riccardino and Franca Acuto on staff, it never drops the ball on quality. Riccardino is an influential member of the global trademark scene, with friends and correspondents across the world – a network that clients appreciate. The Turin trademark group head is particularly noted for his EUIPO oppositions expertise. “Efficient and proactive”, Acuto is likewise adept at prosecuting trademarks before the EUIPO. Her comprehensive practice encompasses everything from assisting with brand selection to coordinating international litigation. Newly ranked this year is Elena Monte, a savvy trademark and anti-counterfeiting strategist. At the helm is Guido Jacobacci, a guiding light on trademarks for the entire market.
Modiano & Partners
A top-five trademark filer in Italy, Modiano & Partners is also highly visible on the European stage. Offices in Munich and Lugano, in addition to its Milan HQ, help to keep it in the continental frame; as does the cosmopolitan make-up of its staff, which includes individuals qualified in various European and Asian countries, as well as the United States. In addition to prosecution, it offers an array of services including extra-judicial dispute resolution. Management duties fall to Gabriella Modiano.
Murgitroyd & Company
Murgitroyd is a true one-stop shop for intellectual property – both in Europe, where its offices are concentrated, and globally. It has a deep team of talented trademark attorneys stationed across its network with overlapping skill sets that collectively cover every aspect of brand protection. Its Milan-based Italian group is best known for its patent work relating to high-technology and software innovations, but dispatches plenty of trademark briefs too, often in concert with the Geneva team. Veronica Raffi is the resident trademark guru.
Società Italiana Brevetti SpA
Societá Italiana Brevetti treats every piece of intellectual property as a business asset and carefully designs its brand strategy services around the commercial contours of clients in a way that is very effective. With in-house counsel seeking to spend their limited budgets and resources on the rights that will make most difference to their bottom line, the firm’s IP portfolio audit service is in particularly hot demand. At the same time, there has been no let-up in demand for its efficient clearance and prosecution. Mara Mondolfo heads the Milan office and trademark group. Having practised in the field since 1995, she knows Italian and European trademark procedures like the back of her hand. Also recommended is Elisabetta D’Amore, a similarly adroit worldwide portfolio manager. Lorenzo Litta has a more contentious bent to his practice and stands out for his anti-counterfeiting know-how.
Studio Torta SpA
Studio Torta has been at the leading edge of Italian IP practice for over 130 years. The slick prosecution shop runs its filing, renewals, searching and watch services with the utmost efficiency, while at the same time keeping a hawkish eye on the fine detail. Picking up excellent feedback, Maria Cristina Baldini and Raffaella Barbuto make their customary appearance in the WTR 1000. Baldini is “brilliant at building relationships” and is much loved by clients. In addition to portfolio management, she has an abundance of expertise concerning trademark infringement. Barbuto is “careful and attentive in everything she does”. The Milan-based lawyer and trademark attorney supervises domestic and European prosecution for a global clientele.

Individuals: enforcement and litigation

Gabriel Cuonzo - Trevisan & Cuonzo Avvocati
Giovanni Galimberti - Studio Legale Bird & Bird
Cesare Galli - IP Law Galli
Giovanni Ghirardi - Hogan Lovells Studio Legale
Luigi Mansani - Hogan Lovells Studio Legale
Massimiliano Mostardini - Studio Legale Bird & Bird
Luca Trevisan - Trevisan & Cuonzo Avvocati
Fabio Angelini - De Simone & Partners
Giovanni Francesco Casucci - Bardehle Pagenberg Studio Legale Casucci Ferretti STP
Giovanni Guglielmetti - Bonelli Erede Pappalardo
Julia Holden - Trevisan & Cuonzo Avvocati
Fabrizio Jacobacci - Studio Legale Jacobacci & Associati
Paolo Lazzarino - Nctm Studio Legale Associato
Elena Martini - Martini Manna Avvocati
Pier Luigi Roncaglia - Studio Legale SIB
Roberto Valenti - DLA Piper Italy
Maria Cristina Baldini - Studio Torta SpA
Margherita Barié - Carnelutti Studio Legale Associato
Stefania Bergia - Studio Legale Vanzetti e Associati
Davide Bresner - Portolano Cavallo Studio Legale
Daniele Caneva - CREA Avvocati Associati
Gualtiero Dragotti - DLA Piper Italy
Marco Francetti - Studio Legale Jacobacci & Associati
Lorenzo Litta - Società Italiana Brevetti SpA
Lydia Mendola - Portolano Cavallo Studio Legale
Micael Montinari - Portolano Cavallo Studio Legale
Laura Orlando - Simmons & Simmons
Mariacristina Rapisardi - Rapisardi Intellectual Property
Federica Santonocito - Avvocati Associati Franzosi Dal Negro Setti
Giulio Enrico Sironi - Studio Legale Vanzetti e Associati
Paola Tarchini - Studio Legale Sena e Tarchini

Individuals: prosecution and strategy

Franca Acuto - Jacobacci & Partners spa
Annamaria Algieri - DLA Piper Italy
Fabio Angelini - De Simone & Partners
Enrico Antonielli d'Oulx - Buzzi Notaro & Antonielli d'Oulx
Maria Cristina Baldini - Studio Torta SpA
Raffaella Barbuto - Studio Torta SpA
Michele Capecchi - Studio Legale Capecchi
Massimo Cimoli - De Simone & Partners
Elisabetta D'Amore - Societá Italiana Brevetti SpA
Monica Faia - Cantaluppi & Partners
Marco Francetti - Studio Legale Jacobacci & Associati
Sabrina Fumagalli - Botti & Ferrari Srl
Giovanni Guglielmetti - Bonelli Erede Pappalardo
Fabrizio Jacobacci - Studio Legale Jacobacci & Associati
Andrea Klein - AKRAN Intellectual Property
Alessandro Mannini - Bugnion SpA
Luigi Mansani - Hogan Lovells Studio Legale
Peter McAleese - AKRAN Intellectual Property
Mara Mondolfo - Società Italiana Brevetti SpA
Elena Monte - Jacobacci & Partners spa
Livia Pasqualigo - Buzzi Notaro & Antonielli d'Oulx
Davide Luigi Petraz - GLP Intellectual Property Office
Maria Luce Piattelli - Hogan Lovells Studio Legale
Donatella Prandin - Bugnion SpA
Lia Puntieri - Trevisan & Cuonzo Avvocati
Veronica Raffi - Murgitroyd & Company
Mariacristina Rapisardi - Rapisardi Intellectual Property
Enrico Riccardino - Jacobacci & Partners spa
Alessandra Romeo - Buzzi Notaro & Antonielli d'Oulx
Carmela Rotundo Zocco - Metroconsult Srl
Sylvain Rousseau - IpSO srl
Barbara Saguatti - Cantaluppi & Partners
Alessandra Tedesco - Barzanò & Zanardo
Simone Verducci-Galletti - Bugnion SpA
Gianluigi Volonte - Rapisardi Intellectual Property

Luminaries

Guido Jacobacci - Jacobacci & Partners spa
Giuseppe Sena - Studio Legale Sena e Tarchini
Adriano Vanzetti - Studio Legale Vanzetti e Associati
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Issue 67