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.