Abril “stands out in terms of quality” in both prosecution and litigation. With a 40-strong team spread across five domestic offices, it has garnered a reputation for going above and beyond the brief to get results in the most difficult cases; clients seeking alternative strategies when their backs are against the wall need look no further than the firm’s talented trademark team, which always delivers imaginative solutions. Frontman and “excellent litigator” Ignacio Temiño Ceniceros
has racked up numerous wins on parallel import matters for Volvo and competitor-on-competitor infringement suits for a world-leading consumer products company. “One of the best-prepared attorneys”, Fernando Ortega
showcases a “thorough knowledge of IP and unfair competition law, as well as anti-counterfeiting”. When private tutoring organisation Kumon sought to undertake its first enforcement actions in Spain, it turned to him to draw lines in the sand.
Arochi & Lindner SC
Mexican market leader Arochi & Lindner debuts in the Spanish tables of the WTR 1000
this year. It opened in Barcelona in 2011 and expanded into Madrid in 2014; during this short period, the dynamic group has entered the national IP consciousness with brio. Its “highly skilled, responsible and dedicated professionals” offer “efficient, personalised legal advice” and “the best strategic solutions”. Managing partner Gonzalo Barboza
has the team firing on all cylinders. “He understands your industry issues, needs and budget, and is extremely quick.” “He is responsive and gives clear and concise advice for a reasonable cost.”
“Baker McKenzie really invests in its clients and its understanding of their commercial profiles is a signature. It takes a business-friendly approach at all times and provides realistic, easily understandable solutions. It has excellent communication skills and an outstanding geographical footprint.” Confident that the Barcelona and Madrid teams’ expertise will carry the day, brand owners frequently consult the firm’s Spanish branch when the stakes are high. In a recent case, a Mexican multinational called on it to prevent the dilution of an iconic three-dimensional (3D) trademark and design by a major Spanish competitor. Carles Prat
, who heads the crew in the Catalan capital, is rock steady in high-risk situations. “He has incredible standards and when you see his drafts there are hardly any comments or corrections to make. He has a deep knowledge of Spanish and European legislation and you can trust his recommendations, which are concrete and practical.” His colleague in Barcelona, Cristina Duch
, also cuts a dash: “She is a very persistent and committed litigator, and is excellent in court.” Taking charge in Madrid is sharp all-rounder María Dolores Garayalde
, a potent triple-threat who handles prosecution, litigation and transactions with equal dexterity. Handling complex disputes for a premier fashion house, transferring ownership of large portfolios and supervising cancellation actions at the EUIPO is all in a day’s work for the clever strategist.
“BALDER is doing very well by focusing on Spain and Latin America – those are its markets and it knows them extremely well.” “Full of energetic people who are committed to protecting the interests of those they represent”, it operates a unique one-stop shop that spans the Atlantic – making it an enticing option for businesses with substantial cross-border branding interests. Although it maintains no garrisons in Latin America, it can nonetheless carry out instructions directly in the region, rather than through foreign associates; the uniformity of quality and service that it can offer as a result is much appreciated by patrons. Leading the trademark contingent and guiding its international practice is Olof Fickert
, one of Spain’s most seasoned IP professionals. The English, German and Spanish speaker knows the global IP environment inside out and is “constantly up to date on all the latest”. Prosecution maven Carlos Pires
is also extremely internationally aware; he has an excellent network of contacts and is very active in the International Trademark Association. The group’s contentious ace is Patricia Koch
. She has “outstanding patent and trademark litigation experience before the European Court of Justice” (ECJ) and is further recommended for her “excellent, customer-focused solutions”.
Agile boutique BAYLOS fields a crack team of “well-qualified, upbeat and agreeable people who are easy to work with”. A formidable force in the courtroom, it “understands the procedural aspects of litigation at a level deeper than most”, but also builds up strong substantive positions. “Real gentleman” Pedro Merino Baylos
is the top name on the fight card. “He is always prepared for anything and it’s almost impossible to find holes in his strategies and arguments. Able to explain complex matters clearly, he is excellent at presenting his case in court.”
Bird & Bird (International) LLP
Focusing on disputes, but also providing sound strategic guidance from the moment of a brand’s inception, Bird & Bird is a prime destination for rights holders with global concerns. Recent personnel changes have not altered the firm’s upward trajectory and brand owners are in good hands with WTR 1000
debutant José Ángel García-Zapata
, who has assumed management of the set’s day-to-day trademark activities. The class-act associate “has a strong sense of organisation and commitment”, and “an excellent reputation for timely and accurate completion”. “In all matters, whether simple or complex, he uses his extensive expertise to provide detailed yet concise answers.” He works under the supervision of Manuel Lobato
, a gold-rated lawyer who literally wrote the book on Spanish trademark law. “He doesn’t only know the theory, though – he knows the case law back to front.” Sources laud him as “the most brilliant IP attorney in Spain”. Fellow partner Antonio Cueto
is another savvy litigator with “vast knowledge”. An all-weather lawyer, he is equally adept at handling trademark, patent, design, and unfair competition disputes.
BomhardIP ascends to the silver tier in this year’s WTR 1000
. Established in March 2015, it has rapidly become a prime address for brand owners looking for a more flexible and efficient service that is not billed by the hour. Unencumbered by burdensome conflict clearance procedures, the partners here can get right down to action; they earn plaudits for their speed, responsiveness and hands-on approach. The Alicante-based boutique has unrivalled EU trademark know-how and handles some of the most difficult cases with aplomb; among recent highlights, it successfully defended the validity of LEGO’s 3D ‘Minifigure’ trademark before the EU General Court. Numerous interviewees hail “creative problem solver” Verena von Bomhard
as the world’s leading EU trademark expert. Giles Corbally
is another ace on EU trademark and design prosecution and enforcement, and shines particularly brightly on searches and clearance. His customer care skills are some of the best in the business and “he is a practical, down-to-earth guy whom clients really warm to”. Meanwhile, high-flying Inmaculada González
is steadily growing the domestic litigation practice. The “master of all trades” has impeccable patent, trademark, copyright, unfair competition and data protection credentials.
Carlos Polo & Asociados
Carlos Polo & Asociados offers a comprehensive trademark service that leaves no stone unturned. Its “highly professional and very friendly” practitioners have “an excellent gut feeling for how examiners at the Spanish trademark office work”. The respected boutique was founded by multi-award-winning Spanish and European IP attorney Carlos Polo
, “a senior statesman with a very distinguished track record”. “Hugely experienced in EU trademarks and an excellent English speaker”, Helena Granado
also comes highly recommended.
Clarke Modet & Co
IP heavyweight Clarke Modet & Co maintains a strong presence throughout the Spanish and Portuguese-speaking worlds. Its systems and management processes are International Organisation for Standardisation 9001-2008 certified, ensuring a seamless service across the 10 jurisdictions in which it operates. Its 450 professionals can astutely advise across the trademark spectrum.
Clifford Chance’s Barcelona IP team is a force to be reckoned with in patent litigation, but also performs adroitly in the trademark space. Able to identify and execute innovative solutions in the most challenging cases, it handles contentious matters for – and dispenses strategic counsel to – an array of prominent blue-chips, including a world-leading food company and a top name in the tobacco industry. “Exceptional professional” Miquel Montañá
is the star of the show and “by far one of the best IP litigators in Spain”. “Incredibly intelligent, commercial and client friendly, he has a lot of experience and an open mind. He explains your situation and the options open to you with clarity, and takes a pragmatic stance.” One source went so far as to say that “he is a guarantee of success”. He draws invaluable support from Josep Montefusco
, a senior associate who runs high-stakes cases without breaking a sweat.
Cuatrecasas Gonçalves Pereira
Spanish-bred international full-service player Cuatrecasas houses a large team of IP specialists and serves a diverse range of patrons, from motor-racing and football stars to food and beverage titans, fashion houses and gaming companies. Dispute resolution is a forte and its commercial approach to cases lends it enduring appeal – it understands that litigation is not an end in itself and closely analyses the impact that any action will have on clients’ business interests. Litigator-in-chief Jorge Llevat
is “an excellent lawyer who gets really involved in your matters”. “He has a lot of experience, is very proactive and provides fast answers.” The firm has dispatched prosecution briefs for years through its own IP agency, run by Enrique Sánchez-Quiñones
. Leveraging his contentious acumen, Sánchez-Quiñones wisely oversees prosecution with a view to avoiding future troubles.
Curell Suñol SLP
“Curell Suñol is a well-structured organisation and the quality of its work has always been high.” Celebrating its 70th anniversary in 2016, it toasted the long-term success of its prosecution practice; although it remains committed to providing agency-type services, it has steadily expanded its contentious offering in recent years to become an eminently well-rounded outfit. Its artisanal approach to prosecution has also proven highly effective in the courtroom, where each case demands a nuanced approach. Commentators commend the team’s “outstanding communication skills” and linguistic proficiency is certainly a hallmark; members can advise fluently in English, French, German and several other languages. Managing partner Mireia Curell
leads on the non-contentious front. “The best trademark agent in Barcelona, she has a lot of experience and really takes care of the detail.” “Bright, responsive and creative”, Jordi Güell
presides over the legal department. Whatever an international brand owner needs, he can deliver it.
With over a century of experience on the market and bureaux in Barcelona, Madrid and Alicante, patent and trademark attorney set-up Durán-Corretjer is a fixture on the Spanish IP landscape. It offers all the usual filing and prosecution services, but its behind-the-scenes strategic counsel in particular has big-name businesses queuing up to instruct it. In Luis Alfonso Durán Moya
, the firm has “simply the very best Spanish trademark agent”. The list of leadership positions that he has held in domestic and international IP associations is a mile long; he has also reported to the Spanish Parliament on legislative developments in the patent and trademark spheres.
Elzaburu’s “incredibly rich tradition and prestige” set it apart from the Spanish IP pack. It deftly combines the strengths of an efficient agency with those of a sophisticated law firm, enabling it to comprehensively cater to all brand owners. For prosecution, it is “a reference in Spain” in terms of volume and quality. Luis Baz
keeps the wind in the trademark department’s sails through his astute management practices. Javier Úbeda-Romero
is a reliable contact for companies with brand protection needs in Latin America; while for those looking east to Germany and Italy, and north to Scandinavia, geographical indications expert Miguel Ángel Medina
is your man. Fernando Ilardia
brings extensive know-how on contentious administrative proceedings to the mix, as well as portfolio management nous. The young partner provides “practical, business-minded advice in a timely fashion, and always responds to emails and requests within 24 hours”. The firm has a large IP litigation division, with nearly 20 lawyers working exclusively on infringement matters – leaving clients spoilt for choice. Department head Antonio Castán
impresses with his “analytic mind and superb procedural knowledge”. The “top academician” “presents arguments with great clarity and is one of the country’s best trademark litigators”. Enrique Armijo Chavarri
is known for his 360-degree international IP knowledge and adroit handling of tricky cross-border patent and trademark disputes. With social media trademark infringement issues on the rise, Javier Fernández-Lasquetty
– an eminent expert in the field – finds himself in hot demand. He also has an affinity for the fine print of licences and other deals and knows how to secure the most advantageous results for clients.
Gómez-Acebo & Pombo Abogados
“Gómez-Acebo & Pombo has been a leader in intellectual property since the practice became relevant in Spain.” It was one of the first full-service outfits to commit significant resources to the discipline and “has many years of experience to call on”. In particular, “the quality of its litigators is excellent”: “They are fierce, tough, well prepared and highly trained, and strong from a technical point of view.” It thus comes as no surprise that the group is “a regular in the most important IP cases”. It recently took a major dispute in the snack food sector all the way to the Supreme Court, which ultimately clarified the scope of a 3D trademark registration; it bagged a win for its client in the process. “Hard fighter” Sofia Martínez-Almeida Alejos-Pita
, who handled the case, is “thorough, responsive and brilliant at litigation strategy”. She sits in the gold tier alongside Jesús Muñoz-Delgado
, an outstanding patent litigator who can also navigate his way around a trademark dispute with his eyes closed. These two partners are well supported by senior associate Mónica Esteve Sanz
, a trademark and unfair competition ace with a leading advertising practice.
Grau & Angulo
With the largest contentious IP line-up in the country, Grau & Angulo has the critical mass and specialisation to handle the biggest, most complex trademark spats. It does so with style, being “profoundly knowledgeable about the law”, but also “extremely sharp on commercial strategy”. It “really focuses on quality” and “gives clear-cut advice, so you always know what situation you are in and what the next steps are”. “Its lawyers won’t keep a case alive for the sake of billing – they do their utmost to find business-solutions instead.” The team has racked up a clutch of crucial victories of late, winning a massive trademark and design infringement case for adidas and successfully enforcing BMW’s MINI trademarks. It has also continued its perfect run in ‘smell-alike’ cases in the perfume industry, representing Carolina Herrera and other members of the Puig group. A further distinction is its top-of-the-line anti-counterfeiting practice. Contentious mavens Alejandro Angulo
and Jorge Grau
wield unique weapons and tactics in their dogged defence of clients’ rights. A “leading light in Spain”, Angulo “gives the best service possible” and is an “extremely clever and creative lawyer on civil and criminal matters”. “Unanimously respected” Grau is a “true gentleman” and a “hero” to many other lawyers. “He is incredibly hardworking and will never play dirty tricks, and he always finds innovative and interesting approaches to his cases.” Jesús Arribas
is a new addition to the WTR 1000
this year and goes straight into the silver tier. The patent and trademark advocate is “technically strong and a relaxed guy who keeps cool in difficult and stressful situations”. A mastermind at cross-border strategy, Sonia Santos
is another popular practitioner.
“Leading prosecution firm” Herrero forges close relationships with patrons, who appreciate its custom-tailored protection strategies. Under the watchful eye of trademark head Mario Carpintero
, “it stands out for its attention to detail and substantive engagement in projects” and for its “creative, business-oriented solutions”. In 2016 it enjoyed a red-letter year in terms of business development, thanks to the efforts of globetrotting rainmaker Mariano Santos
; Repsol, for example, entrusted the group with the stewardship of its EU trademark portfolio. Santos is “recommended without reservation” as “extremely responsive, dedicated, intelligent and thoughtful”, and a “candid counsellor who places a premium on open communication”. Another highlight has been the rapid rise of the firm’s Latin American practice; it maintains fast-growing bases in Brazil, Argentina and Mexico, which work in perfect harmony under a highly efficient centralised system. “Herrero is great for one-stop shopping in Latin America, where it has very smart professionals who provide an excellent service.” María Ángeles Moreno
, who leads the international department, is the driving force behind this expansion. Brand owners are also taking note of the firm’s increasing clout in the contentious sphere – it boasts substantial firepower and can throw its weight behind the meatiest disputes. Recent cases include defending Unilever Spain against copycats of several of its top bodycare product lines.
Hogan Lovells has a large Spanish IP team of nearly 50 practitioners and six partners. The Alicante office is a jewel in its IP crown and the epicentre of its best-in-breed EU trademark and pan-European advisory and portfolio management practices. Playing an indispensable role in some of the most cutting-edge cases going, Andreas Renck
is the partner in charge. Clients call him “the perfect local counsel”: “He is not only highly responsive, but an out-of-the-box thinker who comes up with effective solutions.” Imogen Fowler
, also based in the southeastern port city, is a client-service award winner and one of the most proactive brand managers on the continent. “She is super-quick responding to emails and gives clear, thorough advice. She doesn’t think only as a lawyer, but can see things from a business perspective.” “Practical, creative and up to date on jurisprudence, she makes your life so much easier and is pleasant to work with.” Recently, she successfully represented adidas in an ECJ case concerning an opposition against a two-stripe position mark on a shoe. The firm oversees its bustling Spanish practice out of Madrid and the team in the capital has been notching up successes thick and fast of late. Building on his sophisticated colour trademark know-how, continental Europe regional managing partner Burkhart Goebel
is representing Santander in a multi-pronged dispute concerning the cancellation of a red colour mark registration. Colleague Ana Castedo
has been busy fighting the corner of a worldwide television production company. “Goebel and Castedo stand out in terms of the genuine international scope of their expertise, their deep technical knowledge of trademark procedures and their acute understanding of business problems. They are always readily available and respond swiftly and precisely to all demands.” Domestic prosecution is the preserve of Constanze Schulte
, who manages the portfolios of PepsiCo and other household names.
HOYNG ROKH MONEGIER
High-end European IP outfit Hoyng Rokh Monegier dispenses incisive strategic trademark advice to premier multinationals, including The Coca-Cola Company. Head of brand protection and prosecution Laura Alonso
has been working for the beverage giant for many years, acting in a quasi-in-house counsel role, as she does for many others; clients need not lift a finger to take care of their prized brands, as she does it all for them. The gifted counsellor “handles routine matters expertly, but is even more impressive when navigating complex, unusual issues”. Litigation is another strong suit for the firm, which can pool resources across its international offices to provide the necessary punch in high-stakes cross-border disputes. Luis Fernández-Novoa
manages the Madrid office and heads the IP contentious team there. Like Alonso, he is deeply accustomed to meeting the demands of blue-chips and acts for one of the world’s top fashion retailers.
J Isern Patentes y Marcas SL
Longstanding agency J Isern has an enviable list of patrons numbering in the tens of thousands and provides a top-notch service to each, albeit with a highly personalised touch. Adept across the trademark spectrum, it astutely balances cost effectiveness and quality, to much acclaim from patrons. With a presence in 11 cities across Spain, it is always close at hand and can deliver whenever needed. Pepe Isern is the managing partner.
One look at its trademark clientele tells you that this Iberian power player and major international set-up is serious about intellectual property. It is representing Google in a weighty ongoing case regarding the company’s AdWords service and advising Facebook on (among other things) questions concerning secondary liability for trademark infringement on its social media platform; it also executes strategic IP deals for Grupo Bimbo. Clients consider the team “very commercial, extraordinarily diligent and proactive”; while foreign associates hail its “profound IP knowledge” and “understanding of business and cost issues”. João Paulo Miranda de Sousa
is the worldwide head of the IP practice. He has spent his career at the heart of European trademark practice and held several top executive positions at the EUIPO between 1995 and 2008. Fellow Madrid partner Carolina Pina
is the main contact point for Google and Facebook. The “excellent litigator” also operates dexterously in the non-contentious space; she has particular expertise in the sports, entertainment, media and telecommunications sectors. Rock-solid senior associate support comes from Celia Sueiras Villalobos
. She has an extensive background in prosecution, but shines as an all-rounder with a deft touch in contentious and transactional matters.
Noerr has been on the frontline of many ground-breaking EU trademark cases since it planted its flag in Alicante in 2011. Clients sing the praises of its personable, “quick and practical” crew: “Sometimes you get very theoretical advice from your representatives, but Noerr carefully considers your business interests.” “The firm has grown substantially, but has kept the quality high and never let the responsiveness suffer. It really is one of the best.” Former Hogan Lovells dons Tobias Dolde
and Michael Hawkins
form a dream team. Dolde, who manages EU trademark prosecution and enforcement for Abercrombie & Fitch and BASF, among many others, is “completely perfect in terms of soft skills” and “excels at thinking commercially and understanding relevant industry issues”. “Fabulous lawyer” Hawkins “has it all – he is extremely knowledgeable, eloquent, measured and efficient”. “He functions like a member of your in-house department, and is hugely likeable and easy to deal with.” Moreover, “his fees represent great value for the work done”.
Oficina Ponti, SLP
Oficina Ponti boasts one of the longest traditions in the Spanish IP realm, but its practice is continually evolving to cover all the latest developments in the field. Brand owners seeking optimum protection and value for money find that the venerable agency strikes the perfect balance of both. It offers the full suite of patent and trademark prosecution and protection services, but also smoothly coordinates infringement actions, border measures and IP transactions. The trademark department is run by Joan Salvá
, a partner at the firm and a member of its management committee.
PONS IP turns heads with its broad reach and deep resources; it employs over 130 people; has eight domestic offices and further outposts in Bogota, San Francisco, Guangzhou and Brussels; and runs a non-profit IP awareness-raising organisation. In addition, it regularly tops the Spanish and European charts for EU trademark filings. Never one to stand still, it recently won several competitive tenders, hired a raft of new lawyers and attorneys in several offices and launched new practices, including one dedicated to IP transfers. Debuting in the WTR 1000
this year, Isabel Cortés Martínez
leads the international trademark department. The Spanish, English, French and German speaker easily gets to grips with large international portfolios.
Salvador Ferrandis & Partners
A relative newcomer – it was established in late 2009 – Salvador Ferrandis has already left an indelible mark on Spanish IP practice through its stellar performances in many of the country’s recent landmark trademark cases. The litigation-focused boutique doesn’t draw inspiration from the standard trademark infringement playbook – it devises fresh strategies customised to fit the commercial needs of clients. It helps that it keeps pace with the latest developments in the international branding arena, investing substantially in its lawyers’ continuing professional development. While its contentious might is a hallmark, it also manages a growing non-contentious practice. Main man Salvador Ferrandis
is “brilliant in a hands-on role – he really commits himself to a case to ensure that it has a happy ending”. Clients recommend Fabrizio Miazzetto
for his ability to secure victory in the thorniest spats: “He has a remarkable knowledge of procedural law, but presents excellently in court, too.” The two recently joined forces with newly ranked Fernando Rodriguez
to tackle a multi-layered dispute for Diesel. Rodriguez has profound anti-counterfeiting know-how and is a favourite among luxury goods brands.
Ungria Patentes y Marcas SA
Ungria’s 120-year history bears testament to its tradition of success on the Spanish legal services market, as does its impressive 11-office spread across the country; a US representative bureau is another string to its bow. Domestic and foreign brand owners alike can call on its vast experience wherever and whenever they need it, as a specialist is always on hand and ready to help. The international management of trademark and patent portfolios is the firm’s bread and butter.
Of Uría Menéndez, one source comments: “It is simply the number-one law firm in Spain. It has a large number of lawyers who operate at the highest level.” Renowned for its incisive courtroom strategies and persuasive argumentation, the two-partner IP group packs a real punch in big-money brawls. It has an outstanding track record, meaning that its pre-litigation advice is well founded. José Massaguer
is “an elite trademark lawyer from both a technical and commercial perspective”. “He is brilliant at focusing on the central issues and at finding the key to unlock them.” He recently defended leading utilities company Acciona in connection with alleged trademark infringement in an advertising context.