France

According to French practitioners, IP awareness among both start-ups and big corporates has reached unprecedented levels of sophistication. The former are now actively seeking counsel even before potential problems have materialised, while the latter are making a significant push to recruit more in-house trademark professionals. Small and medium-sized enterprises are increasingly choosing to file at a national level following a significant increase in the fees for registration of EU trademarks. At the National Institute of Industrial Property (INPI), the digital revolution continues apace: since May 2016, all oppositions must be filed online.

Firms

1
Cabinet Armengaud & Guerlain
Dentons
Duclos, Thorne, Mollet-Vieville & Associés
Gide Loyrette Nouel AARPI
Hogan Lovells
2
Allen & Overy LLP
De Gaulle Fleurance & Associés
Herbert Smith Freehills LLP
HOYNG ROKH MONEGIER
Jones Day
3
Baker McKenzie
Bird & Bird AARPI
Cabinet Escande
Candé-Blanchard-Ducamp
Clairmont Avocats AARPI
Marchais & Associés
Simmons & Simmons LLP
Allen & Overy LLP
Allen & Overy’s extensive geographical footprint – it has offices in more than 30 countries – makes the firm a go-to for businesses with sweeping worldwide portfolios or embroiled in cross-border litigation. The “extremely successful” IP team also shines on transactional matters, thanks to close collaboration with colleagues in the M&A practice. The “really excellent” Laëtitia Bénard co-heads the firm’s global life sciences group and has enviable experience in pharmaceuticals.
Baker McKenzie
Working in concert with the firm’s commercial divisions, Baker McKenzie’s estimable IP squad is ideally placed to counsel companies on high-rolling licensing agreements and other IP-rich deals. Astute portfolio management is another calling card; its wealth of global resources ensures it can meet and exceed the needs of even the biggest multinationals. Virginie Ulmann previously worked at the European Commission, so is intimately familiar with its inner workings.

With offices in the continental hubs of Paris, Dusseldorf, Barcelona and Milan, Bardehle Pagenberg has a striking track record when it comes to securing EU trademarks. Rebecca Delorey’s arrival in 2015 is widely agreed to have enhanced its standing on the market. “She is very strong – professional and commercial. Plus she has in-house experience, which really helps her understand the workings of a business. You can call her up and ask her anything. She is a lovely person.” Teammate Julien Fréneaux “knows the procedural law perfectly well – he is an outstanding lawyer. I would absolutely recommend him to others.”

Bird & Bird AARPI
With four dedicated partners, nine associates and two paralegals in its French trademark practice, Bird & Bird has the firepower to provide truly holistic counsel on everything from clearance to portfolio exploitation and enforcement. It has recently been helping Zodiak to protect the title of its historic television drama Versailles worldwide, and representing ASSOS of Switzerland in a high-profile infringement matter against fashion website ASOS. Having worked in the field for 15 years, new recruit Géraldine Arbant is a big signing for the firm: “She is an extremely experienced lawyer and a very nice person to work with.” Life sciences, food and beverages and automotive are her provinces.
Cabinet Armengaud & Guerlain
Independent home-grown boutique Cabinet Armengaud & Guerlain has carved a real niche on the market since opening its doors in 1993. Its diverse client roster features everything from dynamic start-ups to household-name brands, and it is a common sight at both the national and EU courts. “Outstanding trademark litigator and brilliant strategist” Stéphane Guerlain can “solve complex cases both in and out of court”. He is a regular speaker at the Centre for International Intellectual Property Studies. Catherine Mateu is another renowned practitioner in the team, thanks to her cost-effective solutions and flair for the fine print of licences.
Cabinet Escande
Geographical indications are a specialist subject for Cabinet Escande, which plies its trade at the cutting edge of intellectual property for a colourful blend of domestic companies, foreign players and individuals. Luxury goods, agribusiness and automotive are particularly happy hunting grounds. Founding partner Michel-Paul Escande is a veteran of the French IP scene who regularly shares his wisdom on topics such as parasitism and protected designations of origin at the lectern, and is an accomplished mediator to boot.
Candé-Blanchard-Ducamp
Candé Blanchard-Ducamp’s IP team knows what it takes to prevail in France’s regional, commercial and criminal courts, and is becoming an increasingly potent presence before the European Court of Justice (ECJ). Cancellation and opposition proceedings at INPI are dispatched with equal panache. Enforcement sage Julien Blanchard “really impresses with his handling of tricky cases”. The perspicacious Patrice De Candé is someone who clients and peers “wholly trust. He has a very strong reputation – particularly on the design side – and is fantastic before a judge”. “Casalonga Avocats is really famous in the trademark world.” Established in 2005, the formidable enforcement outfit works in close concert with its elder sibling, agency Casalonga & Associés, to provide clients with a streamlined, A-to-Z service. Recent highlights include acting for Hasbro in a crucial matter before the Paris Court of Appeal and BNP Paribas in litigation with Mybee over use of the sign MYB’S for bank cards. Caroline Casalonga and Karina Dimidjian-Lecomte are “excellent lawyers who fully understand both the EU and US legal systems and provide strong, practical advice”. Casalonga has over 20 years’ experience in the field and an advanced understanding of the electronics, automotive and consumer products sectors. Dimidjian-Lecomte recently won a claim on behalf of US bank Wells Fargo to cancel the domain name ‘wellsfargo.fr’, which had been reserved without authorisation by NetTalk. Hudson’s Bay Company and CBS Broadcasting are other A-list clients. Arnaud Casalonga complements his deep trademark know-how with keen insight into competition law and a matchless understanding of the perfume and haute couture industries.
Clairmont Avocats AARPI
An authority on all things Internet, Clairmont Avocats makes light work of briefs involving everything from domain name filing and revocation to AdWords, withdrawal of infringing content and privacy policies. Web agency Vuxe and Groupe Le Duff are just two of the players which queue up for its online expertise. Other key clients include jeweller Didier Guerin, which it is assisting with the development of its worldwide trademark portfolio; and national rail company SCNF, for which it has handled significant opposition proceedings before INPI and the EU Intellectual Property Office (EUIPO). Involved in the latter, Sandra Cabanne-Desgranges operates flawlessly on both sides of the contentious/non-contentious divide and brings valuable design and unfair competition law knowledge to the table. Similarly versatile colleague Alexandre Nappey offers “precious advice and is a great defender of clients’ interests. He manages procedures with timeliness and true professionalism”.
De Gaulle Fleurance & Associés
Commercial outfit De Gaulle Fleurance & Associés has positioned itself as a persuasive one-stop shop option: clients which engage it for its incisive IP counsel find that contract negotiation, tax optimisation and competition and advertising law issues are also effortlessly dispatched. Rainmaker Julien Horn is a master of pan-European matters who also lectures on IP litigation at the University of Paris. He has recently been assisting Château de Versailles on the administration, licensing and defence of its worldwide trademark portfolio, and long-term client Colgate on a lucrative asset sale agreement with the Bolton Group. Entertainment maven Frank Valentin is “one of France’s pre-eminent individuals; he is a charming all-round IP expert known to have a strong following among top US corporates”. Courtroom champ Louis de Gaulle is au courant with new technologies and impresses on intellectual property’s electronic frontier.
Dentons
Dentons’ exacting standards and extensive global network have captured the attentions of a slew of heavyweight clients, from international conglomerates to private equity firms and significant public bodies. As examples of the calibre of instructions it attracts, it has lately been representing Lactalis at the EU General Court; Novartis on a 3D trademark dispute with a generic rival; and iconic flip-flop manufacturer Havaianas in several actions before the French courts involving its figurative marks. Non-traditional marks wizard David Masson is a “fabulous litigator who provides shrewd legal analysis”. His “fantastic” teammate Isabelle Leroux is “famous in the field” too. Splitting her time between Dubai and France, she is sought out by businesses with Middle Eastern concerns. Gérard Delile is an “excellent professional who knows how to handle big clients” – particularly in the luxury goods, furniture design and toys and games sectors.
Duclos, Thorne, Mollet-Vieville & Associés
Founded in 1966, Duclos, Thorne, Mollet-Vieville & Associes is “extremely popular with clients” thanks to its A-to-Z offering and industry insight; it shines on both sides of the contentious/non-contentious divide and has a nuanced understanding of the issues at play in the entertainment and luxury goods industries. “Really outstanding individual” Pascal Lefort ascends to the top tier of the enforcement and litigation table this year. “He is a tremendous trial lawyer – a real expert.” The redoubtable Thierry Mollet-Viéville files trademarks with finesse and then defends them with vigour in the courtroom. He has complementary expertise in unfair competition and design matters. Eléonore Gaspar is another “brilliant IP litigator” who comes enthusiastically recommend; she has unique know-how in the audiovisual field. A previous stint as an examiner at INPI has given Thomas Cuche an insider view of its workings, which translates into watertight strategies.
Gide Loyrette Nouel AARPI
“Gide Loyrette Nouel has a longstanding IP practice. It has been involved in a lot of famous cases; it is sharp in presentations; and it is very well versed in anti-counterfeiting.” Founded in the capital in 1920, it is now home to 600 lawyers operating out of 14 offices worldwide. Emmanuel Larere is “fantastic –a hard worker who is extremely creative and intelligent”. With over two decades’ experience, he is a safe pair of hands for the most pressing matters. The commercially minded Arnaud Michel has served as president of the Licensing Executives Society International; he never loses sight of clients’ long-term business objectives. Grégoire Triet provides 360-degree counsel to healthcare, pharmaceuticals and life sciences clients. Raphaelle Dequire-Portier is a “reliable and experienced litigator” who brings useful unfair competition and copyright expertise to the table.

Cutting-edge player Gilbey Legal has a star-studded client roster filled with prestigious names; of late it has won a slew of mandates in the flourishing social media and app sectors. Having forged closer ties with the customs authorities, it has also been developing its anti-counterfeiting capabilities, to superb effect. Overall, its service is evenly blended between high-stakes litigation and strategic non-contentious counsel. Richard Gilbey is prized for his “straight-up, to-the-point” advice and the efficiency with which he can KO tricky matters. His experiences in-house as head of trademarks for two leading pharmaceutical companies have given him a real appreciation of clients’ wants and needs.

Herbert Smith Freehills LLP
Unparalleled awareness of the issues surrounding cloud computing and outsourcing separates Herbert Smith Freehills from the pack; unsurprisingly, leading internet, media and telecommunications companies feature prominently among its clientele. Heading the IP and technology, media and telecommunications practice in Paris, Alexandra Néri has a keen interest in the burgeoning social media sphere and significant insight into cyber-criminality. Her practice spreads across the contentious/non-contentious divide.
Hogan Lovells
The streamlined international IP offering of Hogan Lovells consistently dispenses joined-up, big-picture counsel. Patrons particularly appreciate its centralised worldwide trademark online service, Mercuriam, which affords 24/7 access to documents and produces customised reports. “Excellent and really experienced practitioner” Marie-Aimée de Dampierre is “extremely successful. Plus she’s a very nice person – and that’s essential in business”. She has been assisting the Estée Lauder Companies with the launch of new products in France. Colleague David Taylor is “one of the top domain name attorneys in the world and always has a solid team behind him”. The brains behind Hogan Lovells’ sophisticated online brand protection service, Anchovy, he has recently been helping Facebook to recover domain names.
HOYNG ROKH MONEGIER
The merger between Hoyng Monegier and ROKH-IP in October has united 100 dedicated IP specialists across Europe. The boutique’s “very strong reputation” is reflected in its sparkling client roster. Name partner Denis Monégier du Sorbier is “one of the best professionals in France. Pragmatism and commercial awareness are hallmarks of his practice. There are people who are good in trademark law and people who are good in patent law, but he is the only person in France who is brilliant across the board – in trademarks, patents, designs and copyright law”. He recently flexed his muscles for Bic in a case concerning the 3D EU trademark on its Cristal pen, successfully confirming its validity. “Effective, efficient, agile and personable”, Marie Georges-Picot “understands clients’ constraints and objectives, so can always recommend the best way to solve an issue. Negotiating is a real strength”. Sophie Micallef is an “established and reliable IP litigator” whose close ties with customs authorities and officials pay dividends in border seizures.
Jones Day
Jones Day’s French trademark team works seamlessly with the firm’s 37 IP professionals across the continent, making it an attractive option for cross-border litigation and pan-continental anti-counterfeiting campaigns. Its caseload has lately included a significant geographical indication matter for the Bureau National Interprofessionnel du Cognac. Ace litigator Emmanuel Baud is a “really hard worker who doesn’t like to lose”; domain names and trade secrets are key focuses. Edouard Fortunet shines in the life sciences and pharmaceuticals sectors, and has secured favourable results in innumerable opposition and cancellation proceedings before INPI.
Marchais & Associés
Making waves on the French IP scene, compact, hands-on Marchais & Associés breaks into the WTR 1000 for the first time this year. Its practitioners deploy their encyclopaedic knowledge of the law and deep commercial acumen to maximise the impact of crown-jewel brands; EUIPO proceedings are a forte. Of the versatile Guillaume Marchais, one enthusiastic interviewee enthuses: “He is our go-to practitioner because he always provides informed, prompt, practical and transparent counsel on trademark matters – and on copyright and design matters too.” Emmanuelle Limouzy continues to impress on geographical indication briefs and publishes widely on the subject.
Simmons & Simmons LLP
The one-stop shop service at Simmons & Simmons marries a comprehensive brand management service – encompassing clearance, filing and monetisation – with a hard-hitting enforcement practice. Its members have striking aggregate experience before INPI, the EUIPO, the General Court and the ECJ, and know just which tactics to adopt in each forum. Embodying the firm’s breadth, Sarah Bailey is a data protection and advertising ace, who is as comfortable in the courtroom as she is devising long-term trademark strategies.

Agencies

Agencies

Highly recommended
98
Cabinet Beau de Loménie
Cabinet Plasseraud
REGIMBEAU
Recommended
H
Germain & Maureau
INLEX IP EXPERTISE
LAVOIX
Lynde & Associés
Novagraaf France SA
Cabinet Beau de Loménie
European IP agency Cabinet Beau de Loménie has four offices in France, two in Germany and one in England; between them, it manages a staggering 71,000 trademarks and design registrations, and files about 3,000 applications and renewals annually. Its precision prosecution resonates in particular with clients from the electronics, luxury goods, consumer goods and entertainment industries. Heading the trademarks, designs, domain names and copyright team is Aurélia Marie, a versatile practitioner known for her meticulous, erudite approach.
Cabinet Plasseraud
Proactivity, responsiveness, cosmopolitanism and commerciality are the hallmarks at Cabinet Plasseraud. The firm has been supplementing the brand clearance and advisory work that has traditionally been its bread and butter with new transactional instructions, to superb effect. Japanese companies are uniquely catered for by a dedicated team; while businesses with Asian interests benefit from boots on the ground in Shanghai. Managing the Paris office, Patrick Boyle is a dual-qualified UK and French trademark attorney. “He is a reputed litigator who is fantastic in the courtroom – particularly when it comes to design-related matters. He is someone who can definitely be trusted.” Strategic mastermind Guylène Kiesel Le Cosquer has over 30 years’ experience to her name and a sterling reputation in the IP community; new technologies and internet law are fortes. Headquartered in Paris, Casalonga & Associés has two further offices in Grenoble and Toulouse, and bases in the IP hubs of Munich and Alicante; filing EU trademarks is something of a forte. Recently the firm assisted Hudson’s Bay Company in regard to one such mark; Faribault sought a declaration of invalidity, but this was rejected, with the EUIPO ruling that there was no need to consider evidence of acquired distinctiveness. The Alicante-based Cristina Bercial-Chaumier is a first port of call for clients with multi-jurisdictional interests.
Germain & Maureau
Much-respected Germain & Maureau continues to represent clients across the non-contentious spectrum; its end-to-end service encompasses everything from clearance searches to office actions, the monitoring of online advertising networks, the drafting of licence agreements and the long-term monetisation of IP rights. Social media is a key metier. Businesses feel complete confidence in the hands of the popular Bertrand Geoffray.
INLEX IP EXPERTISE
INLEX IP Expertise has comprehensive national footprint, with a presence in Cannes, Bordeaux, Nantes, Marseilles, Monaco and Reims; domestic businesses are assured of immediate on-the-ground support wherever they are based. Its unique Sherpa software – designed to facilitate streamlined management of IP rights and portfolios – is highly valued by clients. Founding partner Franck Soutoul is “very experienced, with the impressive ability to accurately manage clients’ expectations”. He is chief executive of INLEX AFRICA, which has built up significant experience before the African Intellectual Property Organisation and the African Regional Intellectual Property Organisation, making him a fabulous choice for clients whose interests extend into this burgeoning continent.
LAVOIX
Forward-looking boutique Lavoix has six offices in France and a key base in Germany. Having been in the game for some 116 years, it has seen and done it all for clients from every conceivable industry; it is currently entrusted with the stewardship of over 25,000 trademarks and nearly 5,000 designs. Captaining the team in Paris, Catherine Levalet excels at getting signatures on the bottom line of development, transfer of rights and licensing agreements and has specialist knowledge of software and website issues.
Lynde & Associés
Cosmopolitan outfit Lynde & Associés is renowned for its sure command of foreign IP legislation and case law. Its sparkling linguistic capabilities – it can practise in English, Hebrew, Portugese, Russian and Spanish – are reflected in an exceptionally diverse client roster. Having previously worked in Israel and Mexico, Deborah Vincze “is a thorough student of the law, national and international, and offers exceptional far-reaching insight”. Scholarly teammate Stephane Lynde has taught trademark law at the University of Paris XIII; he leaves no stone unturned in due diligence and IP audits.
Novagraaf France SA
Novagraaf France sits at the top of the EU trademark filing statistics – a position that attests to both its flair for securing cast-iron protection and its appeal to companies with significant multi-jurisdictional interests. Its 400 professionals operating from 13 offices across the continent make light work of trademark clearance, registration, brand management and monetisation. The advice of elder statesman Pierre du Boisse is informed by almost 40 years at the IP coalface.
REGIMBEAU
Premier agency REGIMBEAU enjoys a glowing reputation both in France and beyond. Its pragmatic, on-point advice has a real impact on clients’ bottom line: it knows how to extract maximum value from their portfolios and how to shepherd lucrative licensing agreements to close. Businesses value its big-picture commercial counsel and long-term perspective. Heading the trademarks and design department, Evelyne Roux “is an “experienced and reliably solid professional known for her strong holistic brand management service”. Progressive boutique Santarelli has lately been hard at work for iconic fashion house Yves Saint Laurent, assisting it with all manner of non-contentious matters, including a crucial domain name tussle with a Thai respondent. Clients of this calibre rave about its thoughtful, responsive service, underpinned by sophisticated IP software. Brand management whizz Eric Le Bihan is “really knowledgeable; he has a wealth of experience and is adept at efficiently advising clients with large portfolios”. He also regularly provides input on complex litigation in the Middle East and Asia. All-rounder Fabrice Pigeaux can find routes to exploit every element of a portfolio: “He is a really open individual who it’s fantastic to collaborate with.” Tailored solutions timely delivered at a sensitive price point are the calling card of T Mark Conseils. The team’s four partners all have extensive experience before the EUIPO and in Uniform Domain Name Dispute Resolution Policy proceedings. Founding partner Francois Deschamps is recognised for his academic prowess; he has taught at the University of Paris II and the Paris Bar School. Fellow scholar Olivier Thrierr lectures on international trademark and design protection law at the University of Strasbourg; he joined in 2015 to focus on counselling European and international clients, and has tangibly strengthened the team’s standing. The well-connected Valérie Dorey is vice president of the Association of Trademark Law and Design Law Practitioners and an invaluable ally at the negotiating table.

enforcement and litigation

Emmanuel Baud - Jones Day
Sylvie Benoliel-Claux - Benoliel Avocats
Patrice De Candé - Candé-Blanchard-Ducamp
Marie-Aimée de Dampierre - Hogan Lovells International LLP
Stéphane Guerlain - Cabinet Armengaud & Guerlain
Sophie Havard Duclos - Laude Esquier Champey
Emmanuel Larere - Gide Loyrette Nouel AARPI
Pascal Lefort - Duclos, Thorne, Mollet-Vieville & Associés
Isabelle Leroux - Dentons
Arnaud Michel - Gide Loyrette Nouel AARPI
Denis Monégier du Sorbier - HOYNG ROKH MONEGIER
Alexandra Néri - Herbert Smith Freehills LLP
Muriel Antoine Lalance - AL Avocats
Sarah Bailey - Simmons & Simmons LLP
Laëtitia Bénard - Allen & Overy LLP
Julien Blanchard - Candé-Blanchard-Ducamp
Gaëlle Bloret-Pucci - BCTG Avocats
Arnaud Casalonga - Casalonga Avocats
Caroline Casalonga - Casalonga Avocats
Stéphane Colombet - Vivien & Associés
Thomas Cuche - Duclos, Thorne, Mollet-Vieville & Associés
Louis de Gaulle - De Gaulle Fleurance & Associés
Gérard Delile - Dentons
Rebecca Delorey - BARDEHLE PAGENBERG
Raphaelle Dequire-Portier - Gide Loyrette Nouel AARPI
Michel-Paul Escande - Cabinet Escande
Julien Fréneaux - BARDEHLE PAGENBERG
Eléonore Gaspar - Duclos, Thorne, Mollet-Vieville & Associés
Julien Horn - De Gaulle Fleurance & Associés
David Masson - Dentons
Sophie Micallef - HOYNG ROKH MONEGIER
Myriam Moatty - Cousin & Associés
Thierry Mollet-Viéville - Duclos, Thorne, Mollet-Vieville & Associés
Stefan Naumann - Hughes Hubbard & Reed
Grégoire Triet - Gide Loyrette Nouel AARPI
Frank Valentin - De Gaulle Fleurance & Associés
Alain Clery - Clery Avocats
Edouard Fortunet - Jones Day
Marie Georges-Picot - HOYNG ROKH MONEGIER
Boriana Guimberteau - FTPA
Marie-Emmanuelle Haas - ME HAAS
Nathalie Hadjadj-Cazier - Fieldfisher LLP
Guylène Kiesel Le Cosquer - Cabinet Plasseraud
Catherine Mateu - Cabinet Armengaud & Guerlain
Richard Milchior - Granrut Avocats
François Pochart - August & Debouzy
David Taylor - Hogan Lovells International LLP

prosecution and strategy

Marie-Aimée de Dampierre - Hogan Lovells International LLP
Rebecca Delorey - BARDEHLE PAGENBERG
Richard Gilbey - Gilbey Legal
Guylène Kiesel Le Cosquer - Cabinet Plasseraud
Emmanuel Larere - Gide Loyrette Nouel AARPI
Isabelle Leroux - Dentons
Sarah Bailey - Simmons & Simmons LLP
Emmanuel Baud - Jones Day
Laëtitia Bénard - Allen & Overy LLP
Alain Berthet - Promark
Patrick Boyle - Cabinet Plasseraud
Thomas Cuche - Duclos, Thorne, Mollet-Vieville & Associés
Patrice De Candé - Candé-Blanchard-Ducamp
Valérie Dorey - T Mark Conseils
Eléonore Gaspar - Duclos, Thorne, Mollet-Vieville & Associés
Stéphane Guerlain - Cabinet Armengaud & Guerlain
Aurélia Marie - Cabinet Beau de Loménie
David Masson - Dentons
Richard Milchior - Granrut Avocats
Thierry Mollet-Viéville - Duclos, Thorne, Mollet-Vieville & Associés
Evelyne Roux - REGIMBEAU
David Taylor - Hogan Lovells International LLP
Géraldine Arbant - Bird & Bird AARPI
Vanessa Bouchara - Cabinet Bouchara Avocats
Sandra Cabanne-Desgranges - Clairmont Avocats AARPI
Francois Deschamps - T Mark Conseils
Karina Dimidjian-Lecomte - Casalonga Avocats
Nathalie Dreyfus - Dreyfus & associés
Marie Georges-Picot - HOYNG ROKH MONEGIER
Marie-Emmanuelle Haas - ME HAAS
Nathalie Hadjadj-Cazier - Fieldfisher LLP
Eric Le Bihan - Santarelli
Catherine Levalet - LAVOIX
Emmanuelle Limouzy - Marchais & Associés
Stephane Lynde - Lynde & Associés
Guillaume Marchais - Marchais & Associés
Alexandre Nappey - Clairmont Avocats AARPI
Annick Pairault - AB Initio
Fabrice Pigeaux - Santarelli
Julien Scicluna - Laurent & Charras
Franck Soutoul - INLEX IP EXPERTISE
Olivier Thrierr - T Mark Conseils
Deborah Vincze - Lynde & Associés
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Issue 70