Spain

As the home of the EU Intellectual Property Office (EUIPO), Spain is an extremely important country for trademark practice: local professionals draw large volumes of instructions from across the continent and beyond, while the country has also seen a proliferation of boutiques dedicated to pan-EU branding matters. But despite this influx of work and a recent improvement in the domestic economy, many Spanish practitioners list an increasingly competitive marketplace and downward pressure on prices among their core challenges. Attorneys are frustrated with the sluggish national IP system and eagerly await the full implementation of the EU Trademark Directive, especially the introduction of administrative cancellation and nullity proceedings.

Firms: enforcement and litigation

1
Elzaburu SLP
Gómez-Acebo & Pombo Abogados
Grau & Angulo
Hogan Lovells
Uría Menéndez
2
Abril Abogados
Baker McKenzie
Bird & Bird (International) LLP
Cuatrecasas
3
Arochi & Lindner SL
BALDER
BAYLOS Abogados
Clifford Chance SLP
HOYNG ROKH MONEGIER
Noerr Alicante IP, SL
Salvador Ferrandis & Partners
Ventura Garcés & López-Ibor Abogados

Firms: prosecution and strategy

1
Elzaburu SLP
Hogan Lovells
2
Baker McKenzie
BALDER
Curell Suñol SLP
HOYNG ROKH MONEGIER
Noerr Alicante IP, SL
3
Abril Abogados
Ballester IP
Bird & Bird (International) LLP
Carlos Polo & Asociados
Clarke Modet & Co
Cuatrecasas
Durán-Corretjer SLP
J Isern Patentes y Marcas SL
Oficina Ponti, SLP
Salvador Ferrandis & Partners
Abril Abogados
Working adeptly on contentious and non-contentious briefs, Abril Abogados builds watertight portfolios and handles must-win litigation with consummate skill. The mid-sized specialist firm has six offices across Spain – including a recently opened Basque bureau – and 40 legal professionals; it has the wherewithal to manage the weightiest matters, but continues to offer a highly personalised service. Its team “has outstanding technical knowledge as well as honed practical instincts. Its lawyers have great integrity and give precise, to-the-point advice. Very prompt, they are a pleasure to work with.” Star performer and law PhD Ignacio Temiño knows how best to resolve high-stakes conflicts. “An excellent litigator, he draws on deep experience and can handle any situation. Well prepared, he always presents his case brilliantly. Ignacio is fast, proactive and highly effective. He has a really good way of stating a problem, drawing a simple and realistic picture and then giving practical guidance.” Of late, he has been representing General Motors in a dispute with Facebook regarding alleged infringement of his client’s trademarks on the social media platform. His colleague Fernando Ortega, a skilful advocate in civil and criminal proceedings, presides over the anti-counterfeiting practice. Also lauded for his “outstanding preparation”, he “explains himself well in writing and verbally. He has enjoyed success in a number of significant cases”.
Arochi & Lindner SL
Making its sophomore appearance in the WTR 1000, Arochi & Lindner – a long-established market leader in Mexico – has become a force to be reckoned with in Spain since establishing offices in Barcelona in 2011 and Madrid in 2014. Most celebrated for bringing complex trademark spats to a favourable close, the tight-knit team works harmoniously on all manner of branding matters, providing a one-stop shop to clients from both sides of the Atlantic. Adjacent expertise in advertising is a key differentiator, as is the ensemble’s prowess in the geographical indications arena. Ace litigator and perceptive strategist Gonzalo Barboza provides inspiring leadership. “His work is exceptional. He has a thorough command of the law and operates efficiently. His commercial insight ensures that he focuses on what matters. He gives smart advice, considering all possible outcomes and informed by out-of-the-box thinking.” In charge of the litigation department, WTR 1000 debutant Ana Padial brings a sure touch to judicial and pre-judicial wrangles. Clients praise her determination and ability to achieve the right result. Also debuting in the guide this year is Aida Tari, a versatile professional with a flair for obtaining Spanish and pan-EU rights; she also provides robust representation when those rights are fought over.
Baker McKenzie
IP giant Baker McKenzie has top-notch trademark practices in Barcelona and Madrid. Bolstered by superlative support structures and an international reservoir of expertise, both outposts handle hefty global portfolios with flair; they also acquit themselves well in the fight against fakes and in hard-fought infringement battles. Helming the side in Barcelona, Carles Prat “can handle any IP matter and shows his mettle in complex disputes. He really manages concepts well and puts forward persuasive arguments”. Flanking him in Catalonia is Cristina Duch, another hardy campaigner who “distinguishes herself in long, challenging cases”. Over in Madrid, María Dolores Garayalde is a key contact. A multi-talented practitioner, she acquires, enforces and monetises intellectual property with panache. “She is an excellent communicator, advises well and makes things simple and easy. Her responses are quick and comprehensive.”
BALDER
Highly sought after for its value-adding prosecution counsel, dynamic young practice BALDER has tripled in size since its establishment five years ago; it now has 23 attorneys on its bench. With broad horizons, its team adroitly develops brand rights across Latin America, as well as in Spain and across the European Union. “It is a relative newcomer to the Spanish market, but offers a first-rate service and is very efficient. Its lawyers are excellent – they are very well qualified and work as a team from top to bottom.” Managing partner and 30-year veteran Olof Fickert is intimately acquainted with the ins and outs of prosecution and is brilliant in European filing mandates. Fellow non-contentious whizz Carlos Pires obtains ironclad rights with machine-like efficiency; he also has significant experience in Latin America and brilliantly manages portfolios across borders. BALDER also packs a punch in contentious matters, thanks in part to Patricia Koch, a “great litigator with an outstanding record in the European Court of Justice (ECJ)”.
BAYLOS Abogados
The “small but dedicated team” at nifty litigation shop BAYLOS “shows quality, agility and tenacity in the most testing cases”. Its “superb, hardworking lawyers” have a “first-rate appreciation of the importance of procedure in getting the best outcome from disputes”. “Smart and competent” Pedro Merino Baylos leads the charge, impressing peers with his “amazing depth and breadth of know-how”. He has a “positive attitude in testing situations and can be relied on completely”.
Bird & Bird (International) LLP
Serving up holistic brand protection guidance, Bird & Bird’s Spanish garrison comes into its own when contentious circumstances arise: it dazzles before the courts, the EUIPO and in settlement negotiations. Manuel Lobato is one of the most celebrated lawyers on the market. “A true scholar of trademarks and a seminal figure, he has a brilliant mind and has authored a major textbook on the subject. He understands all the latest concepts and deals well with complexity.” One former opponent attests to his abilities: “Lobato is well prepared, has a good strategic sense and operates extremely well in court – he made things very difficult for us!” Flanking him is Antonio Cueto, “a natural litigator with vast knowledge of IP matters”. The courtroom virtuoso handles national and international squabbles with equal composure. José Ángel García-Zapata – a WTR 1000 sophomore – presides over the branding team’s activities. He provides additional firepower in heated administrative and judicial disputes.
Clifford Chance SLP
A dominant force in Spanish patent law, Clifford Chance also cuts an impressive figure in the branding arena. While dishing up perceptive strategic counsel on all manner of trademark puzzles, the world-renowned corporate law firm is most handy in big-ticket litigation, where it can bring its enviable resources and multi-disciplinary expertise to bear. Miquel Montañá is a potent weapon in the local team’s arsenal. The gold-tiered lawyer has acted for major players across a number of industry sectors in high-stakes infringement suits. At his flank is Josep Montefusco, another level-headed problem solver, who demonstrates microscopic attention to detail. He blends IP, advertising and unfair competition know-how to great effect.
Cuatrecasas
Boasting 16 seasoned specialists – with another four in Portugal – general service powerhouse Cuatrecasas is a major presence on the Spanish trademark litigation and transactions landscape; its filing practice has made huge strides forward in recent years, too. In addition to a razor-sharp understanding of intangible assets, its team brandishes ancillary expertise in data protection and IT law; it also makes use of cutting-edge electronic systems, which ensure a strikingly efficient and reliable service. “Courtroom supremo” Jorge Llevat comes highly recommended. “He has a firm grasp of all IP matters – he is knowledgeable about theory but also has common sense.” His recent battles include parallel import infringement proceedings on behalf of Bose France, and acting for Beiersdorf in a trademark court case and an advertising spat before regulatory authorities. Helping to enforce and commercialise intangible rights, Alejandro Negro heads the firm’s IP group in Madrid. On the other side of the practice, the “highly strategic” Enrique Sánchez-Quiñones leads the prosecution team with assurance. Gaming industry giant Recreativos Franco entrusts its rights to him, as does Formula One star Fernando Alonso.
Elzaburu SLP
Elzaburu is a standard setter in the Spanish IP market: its substantial squad of seasoned practitioners, boasting exhaustive trademark expertise, is a natural choice for Fortune 500 clients with demanding and complex branding needs. “Adept in all facets of intellectual property, the firm is especially brilliant in portfolio management.” Leading the prosecution department, the “excellent” former in-house adviser Luis Baz keeps a bird’s-eye view over his clients’ rights and knows how to get marks granted by the national and EU offices. The multi-talented professional is also formidable in infringement spats. A member of the International Trademark Association’s Famous and Well-Known Marks Committee, Fernando Ilardia excels in filing and opposition mandates. “His opinions are objective and well reasoned, taking into account all factors. Moreover, he always responds within 24 hours.” Javier Úbeda-Romero has extensive know-how of Latin American portfolio management, while fellow non-contentious ace Miguel Ángel Medina draws on his niche knowledge of geographical indications. The firm also counts a number of out-and-out litigators in its ranks. “One of the best courtroom battlers on the market”, Antonio Castán leads the department by example. “His knowledge of intellectual property is razor sharp and he is very creative and persuasive in litigation. He really understands the matter at hand and is excellent to work with. He is a good mix of learned professor and down-to-earth, common-sense lawyer.” Another valuable ally in contentious circumstances is the “impressive” Enrique Armijo Chávarri, a “skilled advocate who keeps on top of the most difficult cases”. One client avers: “His recommendations are to the point and always reflect our strategy and budget; he understands that, while we may have grounds for legal action, litigation is not always the best thing to do. He gets great results for our brand.” Recent highlights include prevailing for McDonald’s in the EU trademark court in Alicante, winning €30,000 in damages. When alternative means of resolving disputes are required, Javier Fernández-Lasquetty is a good bet; the top-notch transactional lawyer is a polished mediator and arbitrator. “A new star in Spanish intellectual property”, FJF Legal has become “the hottest law firm on the market” since its establishment in late 2016 by three former partners of WTR 1000-ranked Salvador Ferrandis & Partners. “With detailed knowledge and extensive experience, the firm’s highly skilled and dedicated professionals serve up judicious advice across the trademark lifecycle.” Supplementary expertise in IT, competition, advertising and contract law ensures a holistic approach to soft IP matters. Contentious briefs are a strong suit, thanks in part to Fernando Rodríguez, a smooth operator before courts and trademark offices. “He knows clients’ businesses inside out and provides important insights at every turn.” Fellow founding partner Fabrizio Miazzetto has “a truly global knowledge of intellectual property and relevant procedures. He is always up to date with the latest developments and adopts a fast and practical approach to his cases”. The versatile practitioner – who handles prosecution and enforcement mandates with equal verve – is “one of the best lawyers out there”, according to one patron: “He has an excellent grounding in both national and EU-level matters.” Juan Luis Gracia Albero rounds off the exciting new team, making light work of administrative and judicial disputes. “He is an articulate advocate, but also understands the strategic aspect of litigation.” The business-savvy Gracia distinguishes himself further in the most complex brand commercialisation projects.
Gómez-Acebo & Pombo Abogados
Revered general service colossus Gómez-Acebo & Pombo stands tall in trademark matters. The gold-tiered firm’s laser-focused IP lawyers – who draw on the vast commercial law know-how of their colleagues – have the solutions to the most complicated cross-disciplinary branding conundrums. Handling any scenario with poise, the team is best known for potent advocacy in high-profile disputes. It has “an impressive skill set. It can be relied on in must-win cases and takes wonderful care of its clients”. Of late, it has been defending LIDL Supermarkets in an infringement suit before the Alicante trademark court, and recently acted for Continente in Spain’s first branding case in which the doctrine of residual goodwill was alleged and acknowledged by the court. Sofía Martínez-Almeida Alejos-Pita is an “excellent litigation strategist, whose work is extremely thorough. She fights strongly on every salient point in a way which is very effective”. Related advertising and regulatory nous are further strings to her bow. Flanking her is 30-year veteran Jesús Muñoz-Delgado, another hard-hitting fighter, who also has a flair for maximising the value of intangible assets. Their senior associate Mónica Esteve Sanz draws effusive praise for her adroitness in negotiations and at trial; she also shows tenacity in the pursuit of counterfeiters.
Grau & Angulo

Highly acclaimed litigation boutique Grau & Angulo is a safe pair of hands for landscape-altering IP disputes. Brandishing a deep bench of 31 contentious lawyers – who have impressive specialist and sub-specialist expertise – it appears regularly before the highest Spanish courts and is also the country’s most prolific filer of EU trademark suits; the firm wages a ferocious war against phoney goods, too. “The go-to practice for crucial matters, Grau & Angulo acquits itself superbly in criminal and civil proceedings. Its lawyers are extremely professional: they are thorough, reliable and know their cases in minute detail; they are academic, but practical at the same time, having a good feeling for the courts. You have a tough battle on your hands when you are against them. The firm has a quality-oriented culture and is very attentive to client needs.” Founding partner Alejandro Angulo has a glittering reputation when it comes to domestic and cross-border spats. “He is a pre-eminent trademark expert and has an excellent understanding of his brands owners’ needs.” Involved in the most cutting-edge matters, he obtained an important Alicante ruling for Gucci, Hugo Boss and Lacoste against purveyors of smell-alike perfumes. He has also enforced adidas’s three-stripe mark in European proceedings against a retailer of two-stripe sportswear. His fellow name partner Jorge Grau also brings ample dispute resolution experience to the table. “He writes brilliantly and performs well in the courtroom. Jorge has a granular understanding of the law and always finds the best solution.” The accomplished relationship lawyer won a Client Choice Award in 2016. Sonia Santos is especially popular with UK and North American brands. Working seamlessly across jurisdictions, she is “a good negotiator and litigator. Robust on the main points, she can nevertheless negotiate reasonable settlements”. Similarly effective in achieving out-of-court solutions, Maite Ferrándiz handles contentious issues for a slew of household names in the automotive and confectionary sectors. Also garnering plaudits, “IP polymath” Jesús Arribas is “very pragmatic, understands his clients’ strategies and shapes his approach accordingly”.

“Excellent in prosecution”, Herrero & Asociados is a trusted partner of domestic and foreign clients for portfolio development in Spain, the European Union and around the world. It recently took stewardship of Samsung’s national trademarks, and was entrusted with Volkswagen’s brand rights in a number of Spanish-speaking jurisdictions. Its 140 IP professionals “provide clear and pragmatic advice on complicated matters. They work to a consistently excellent standard and outshine their rivals in global rights management. They are commercially savvy and innovative, too”. National prosecution team captain Mario Carpintero secures watertight brand rights with alacrity. Interfacing seamlessly with patrons across the country, he is assisted by the firm’s impressive network of bases in Alicante, Asturias, Barcelona, Bilbao, Madrid, Murcia, Seville, Valencia and Vigo. Taking steady-handed stewardship of international clients’ rights, María Ángeles Moreno works masterfully in a number of continents – especially across Latin America, where Herrero & Asociados is developing an excellent reputation. One foreign associate comments: “She and her team take the guesswork out of prosecution in Spanish-speaking America. They are unfailingly responsive and to the point in their communications.” EU trademark sage Mariano Santos is another key contact. He obtains bulletproof trademark rights with stunning speed and performs admirably in oppositions and cancellation proceedings. Providing a single port of call for all trademark issues, the firm has also established a formidable contentious offering in recent years. It won damages for Unilever from copycat retailers in Valencia’s commercial court – a decision that was upheld at second instance. Enrique Astiz joined lately as chief litigator. Having spent 35 years on the front line, the battle-hardened veteran can wrangle the best outcome in the most heated spats, but can also find ways out of conflicts through clever licensing deals.
Hogan Lovells
With six elite IP partners, supported by a small army of well-trained associates, Hogan Lovells’s Spanish practice ascends to the gold tier this year following effusive feedback for its fully integrated A-to-Z offering. The nerve centre of a unique pan-European network, the teams in Alicante and Madrid are at the vanguard of EU trademark law: they make light work of weighty cross-border briefs and are ubiquitous in precedent-setting cases. Font of wisdom Andreas Renck heads the Alicante office. The well-rounded professional works deftly on both sides of the contentious/non-contentious split, but shines brightest in EU administrative proceedings – he is the long-serving chair of the European Communities Trademark Association’s EUIPO Committee. He has recently been acting in a landmark dispute before the trademark office and the EU General Court in order to uphold and enforce Ceramtec’s continental pink colour mark for hip balls. Regional managing partner Burkhart Goebel focuses his efforts on tricky IP tussles; experienced in ECJ and World Trade Organisation proceedings, he is also adept in suits before the German and Spanish national courts. Like Renck, he has lately been embroiled in crucial colour mark litigation, seeking the cancellation of Sparkasse’s red trademark on behalf of Santander. Managing global portfolios with aplomb, the “absolutely outstanding” Imogen Fowler garners warm plaudits. According to one client: “She is a highly respected industry leader who has built a team of capable and commercially focused associates to support her. Imogen effectively and efficiently handles brand rights without needing too much input from me. I have complete confidence in her and she has delivered great results. If only all external counsel were as good as her.” Fowler is also praised for her ability to handle “the most challenging cases, which require deep knowledge, experience and creativity. She keeps a keen eye on what is important to clients’ business and will tell them when they have a weak case. She is technically excellent, incredibly responsive and a pleasure to deal with”. Her recent highlights include overcoming oppositions to British American Tobacco’s VYPE mark for e-cigarettes. Colleague Ana Castedo channels her energies into fiercely contested branding battles. She has proved her mettle in a plethora of EU trademark and design suits, working harmoniously with counterparts in offices around the continent. Spearheading the domestic prosecution group, the “detail-oriented” Constanze Schulte has a particular penchant for domain names and geographical indications.
HOYNG ROKH MONEGIER
Tenacious EU-wide IP practice HOYNG ROKH MONEGIER is consolidating its position among Spain’s top trademark shops. “It stands out for the consistency of its work – it doesn’t matter who you deal with, the firm’s lawyers are at the top of their game.” Although the outfit is best known in other jurisdictions for high-end litigation, the team in Madrid is most celebrated for acquiring and managing rights on behalf of an assortment of blue-chip brands. This is thanks to the efforts of Laura Alonso, a first-rate prosecutor who shapes faultless strategies for national and European protection. Coca-Cola entrusts her to take care of its portfolio of over 200 EU marks and 250 domestic marks; she also serves up clear-sighted counsel to Ferring, Hitachi Data Systems and Duracell. “Alonso has a modern and commercial way of working. She is always on top of cases and clients love that. Her performance is outstanding.” Managing partner Luis Fernández-Novoa takes charge of contentious briefs. An accomplished courtroom litigator, he is also sure footed in arbitration and negotiation. Commercial law dynamo J&A Garrigues takes challenging branding mandates in its stride, performing exceptionally across the IP lifecycle. Many of its 50 specialised professionals are dual qualified as agents and attorneys at law, giving them a 360-degree understanding of intangible assets. With offices in Spain and Portugal, the firm offers a single point of contact for international clients with trademark needs throughout the Iberian peninsula. “Garrigues is business savvy and strongly client focused – its professionals are exceedingly diligent and proactive.” Hailed for “devising effective strategies” and getting to know the culture of his clients’ enterprises, global department head João Paulo Miranda de Sousa divides his time between Madrid and Lisbon. He is a dab hand in complex prosecution mandates and doggedly fights his patrons’ corner when disputes arise, too. Carolina Pina leads the IP team in Spain; she acquits herself well in must-win branding litigation, often drawing on adjacent know-how in media, copyright and privacy law. Google is one of her key clients: she has been representing the internet powerhouse in an unfair competition and trademark spat relating to Google AdWords. Facebook instructs Pina on a range of infringement matters, too. Another superb practitioner, Celia Sueiras Villalobos is equally renowned for shrewd rights management and stellar advocacy before the Spanish Supreme Court and the EU General Court.
Noerr Alicante IP, SL
Having grown from two to 20 practitioners, Noerr’s Alicante IP garrison has quickly risen into the upper echelons of Spain’s trademark market since its establishment in 2011. Part of an extensive international practice with offices across Europe – as well as Brazil, China and India desks – it specialises in continental and global rights management; encyclopaedic knowledge of EU law differentiates it from the competition. A shining star in prosecution mandates – it manages over 7,000 trademarks – the team is also well placed to defend client interests when matters get heated. Office manager Tobias Dolde became head of the firm-wide IP group in 2017. “He has excellent subject knowledge and his guidance is thorough. Attentive and professional, Tobias is on top of each file and always produces good work. He also delivers dynamic and innovative solutions.” Dolde guides Abercrombie & Fitch around the pitfalls of European brand protection, and takes care of prosecution, oppositions and coexistence agreements for Lidl in a number of jurisdictions. Recently made partner, Michael Hawkins is a “real star” whose “advice is timely, accurate, concise and easily understood. His legal understanding is profound and his business sense is fine tuned. His counsel is at the pinnacle of customer-focused service – no one is more responsive and available than Michael, and no one goes out of their way to save the client time like he does.” Of late, Hawkins has been prosecuting EU and Spanish GRAMMY trademarks for the National Academy of Recording Arts & Sciences. Prolific in brand rights registration, PONS IP functions like an in-house counsel team for a host of prestigious companies, shaping tailor-made prosecution strategies and implementing them with finesse. Its stature in administrative and judicial disputes is increasing too, earning the firm its first outing in the WTR 1000’s enforcement and litigation rankings: a number of new hires have caught the attention of fellow professionals. Eight offices scattered throughout the country ensure a smooth interface with Spanish brands; further footholds in China, Belgium, South and North America allow it to operate seamlessly across continents. Overseeing the international prosecution practice, 20-year veteran Isabel Cortés Martínez takes multifaceted branding mandates in her stride. Recent signing Jose-Carlos Erdozain plays a leading role in dispute resolution; he litigates, mediates and negotiates with equal adroitness. “He is quick to understand the issues and has honed strategic instincts. He is a good orator – very articulate.”
Salvador Ferrandis & Partners
Sterling contentious force Salvador Ferrandis & Partners has become a go-to firm for bet-the-farm litigation since its founding in 2009. Although it lost several prominent trademark practitioners in late 2016, it remains a major player with a deep and talented bench. Possessing admirable legal expertise, its professionals also see cases in a broader context, aligning their approach to clients’ commercial priorities. Name partner Salvador Ferrandis is the driving force behind the ensemble. One client enthuses: “He has a fine business mind and correspondingly practical approach to litigation, which makes a crucial difference from our point of view.” Especially adept in criminal cases, Alberto Bosch also draws praise from patrons: “He is a seasoned anti-counterfeiter who knows how to ensure police and customs seizures. Alberto has an eye for detail and is neat in his investigations.”
Uría Menéndez
Enforcement hotshot Uría Menéndez “has an excellent team of superb lawyers who are sophisticated, academic and technically accomplished. The firm works professionally and blends specific IP know-how with wider business law savvy”. Pillar of the practice José Massaguer is “a brilliant litigator and smart adviser with an incisive mind”.
Ventura Garcés & López-Ibor Abogados
General service firm Ventura Garcés & López-Ibor has developed a gilt-edged comprehensive trademark practice which attracts instructions from leading brands in the video game and toy industries, and top names in the media and publishing sectors; enforcement and transactional briefs are its strong suits. Head of department Andrea Garcés shows her prowess in both civil and criminal suits; the commercially attuned professional is further valued for her insightful counsel on various brand-rich agreements. “She shows great commitment and produces brilliantly effective results.”
Ballester IP
Compact boutique Ballester IP bursts into the WTR 1000 rankings this year following hearty recommendations from peers and brand owners alike. “Technical expertise, efficiency, proactivity and innovation” are the calling cards of its all-embracing trademark offering, which shines brightest in filing, oppositions and cancellations. “The team provides thoughtful and practical advice on the options for dealing with a particular problem. Clients’ goals and concerns are always taken into account.” Name partner Rosalía Ballester is the fulcrum around which the practice turns; the hands-on professional oversees each brief to ensure a consistently high-quality product. Considered the “go-to Spanish counsel” by prestigious foreign associates, she “takes time to know patrons’ businesses, shows detailed knowledge of the country’s IP laws and implements creative tactics in order to get the right result”. In the three years since its inception, BomhardIP has ascended to the top echelon of European IP practice. Its team – which now comprises 17 practitioners from five countries – operates with unsurpassed skill before the EUIPO and the highest continental courts. “Its work is creative and has a strong business focus. Its professionals are responsive, clear in their communication and give you the sense that they are working 100% for you.” The “heart of the practice”, Verena von Bomhard has been at the forefront of EU trademark law since the mid-1990s. Advising on all branding questions, she is especially adept in portfolio management and administrative disputes. She recently won favourable decisions from the EUIPO for Pfizer in defence of its VIAGRA brand and triumphed for Citigroup in an opposition against the proposed CITY INDEX mark. Her colleague Giles Corbally has a flair for the trickiest prosecution mandates and is best known for centralised searching and clearance. The firm’s specialist in Spanish trademark proceedings is Inmaculada González. The indefatigable practitioner recently prevailed in an opposition for Lego against the applied-for LEGOLASER mark, upholding the well-known character of her client’s brand.
Carlos Polo & Asociados
With a “fine-tuned understanding of how trademark examiners think”, Carlos Polo & Asociados gets crucial rights granted for domestic and international brand owners without breaking a sweat. Founding partner Carlos Polo renders profound advice on national and pan-European soft IP registration. Armed with an MBA, he always gives commercially and legally sound guidance. Another standout figure, Helena Granado is a “hardworking and personable practitioner, well versed in EUIPO matters and a brilliant English speaker”.
Clarke Modet & Co
Making use of polished support systems – which have earned it ISO 9001 accreditation – and more than 400 well-drilled practitioners, big-hitting agency Clarke Modet & Co manages and develops hefty portfolios with ease. Not limiting itself to national briefs, it operates dexterously across more than 30 bases in 10 hispanophone and lusophone jurisdictions. While most salient on the non-contentious side, the outfit has remarkable capabilities across the branding lifecycle.
Curell Suñol SLP
Deep-rooted IP shop Curell Suñol has long boasted one of the country’s best prosecution services; with the speedy ascent of its enforcement and commercialisation offerings in recent years, it now deploys assiduous counsel throughout the branding lifecycle. One foreign associate praises its “amazingly responsive approach and consistently high-quality work. Its professionals give you clear and measured advice – they set out the options and explain which is the best. When dealing with overseas firms, they are consultative and supportive”. Its practitioners also garner plaudits for their fluency in English and many other languages. Managing partner and head of the non-contentious department Mireia Curell is “a sharp prosecutor and discerning strategist. She is vastly experienced, knows the lay of the land and shows great dedication to her clients”. Jordi Güell, meanwhile, takes charge of the burgeoning legal team. Consummate in litigation and oppositions, he “is clever, proactive and creative, with great communication skills”.
Durán-Corretjer SLP
With bureaux in Barcelona, Alicante and Madrid, time-tested agency Durán-Corretjer astutely guides clients around the obstacles to national and pan-European brand protection; not only is its filing service “highly efficient and reliable”, but its strategic input is also invaluable. Foreign collaborators have been impressed by the “superb knowledge of its attorneys” and its “sophisticated case handling”. Helming the practice is Luis-Alfonso Durán, a farsighted adviser with a nuanced grasp of domestic and foreign trademark law. “Luis-Alfonso has deep expertise and is serious and committed in his work, which is extremely rigorous.”
J Isern Patentes y Marcas SL
Providing a range of trademark services, well-oiled IP machine J Isern is most highly sought after for prosecution and strategic advice. Demonstrating a rare combination of clockwork efficiency and personalised service, the tried and tested agency has developed a loyal following among thousands of companies; its nexus of offices across the country has made it especially popular with domestic rights holders. Pepe Isern is a name for the address book.
Oficina Ponti, SLP
Seasoned IP shop Oficina Ponti continues to flourish in branding matters. Seeing intellectual property in panoramic perspective, the firm understands the commercial significance of trademark; for many years a rock-solid filing practice, it now offers a broad array of strategic valuation, reporting and advisory services. The “consultative and positive-minded” Joan Salvà provides resolute leadership to the Catalonia-centred outfit.

Luminaries

Carlos Polo - Carlos Polo & Asociados

Individuals: enforcement and litigation

Alejandro Angulo - Grau & Angulo
Antonio Castán - Elzaburu SLP
Jorge Grau - Grau & Angulo
Jorge Llevat - Cuatrecasas
Manuel Lobato - Bird & Bird (International) LLP
Sofía Martínez-Almeida Alejos-Pita - Gómez-Acebo & Pombo Abogados
José Massaguer - Uría Menéndez
Miquel Montañá - Clifford Chance SLP
Jesús Muñoz-Delgado - Gómez-Acebo & Pombo Abogados
Sonia Santos - Grau & Angulo
Enrique Armijo Chávarri - Elzaburu SLP
Jesús Arribas - Grau & Angulo
Gonzalo Barboza - Arochi & Lindner SL
Ana Castedo - Hogan Lovells
Cristina Duch - Baker McKenzie
Javier Fernández-Lasquetty - Elzaburu SLP
Luis Fernández-Novoa - HOYNG ROKH MONEGIER
Salvador Ferrandis - Salvador Ferrandis & Partners
Burkhart Goebel - Hogan Lovells
Jordi Güell - Curell Suñol SLP
Patricia Koch - BALDER
Francisco Javier Márquez Martín - Sol Muntanola Abagados
Pedro Merino Baylos - BAYLOS Abogados
João Paulo Miranda de Sousa - J&A Garrigues SLP
Fernando Ortega - Abril Abogados
Carolina Pina Sánchez - J&A Garrigues SLP
Carles Prat - Baker McKenzie
Enrique Sánchez-Quiñones - Cuatrecasas
Ignacio Temiño Ceniceros - Abril Abogados
Enrique Astiz - Herrero & Asociados
Alberto Bosch Döffert - Salvador Ferrandis & Partners
Antonio Cueto - Bird & Bird (International) LLP
Mónica Esteve Sanz - Gómez-Acebo & Pombo Abogados
Maite Ferrándiz - Grau & Angulo
María Dolores Garayalde - Baker McKenzie
Andrea Garcés - Ventura Garcés & López-Ibor Abogados
José Ángel García-Zapata - Bird & Bird (International) LLP
Inmaculada González - BomhardIP
Fernando Ilardia - Elzaburu SLP
Fabrizio Miazzetto - FJF Legal
Josep Montefusco - Clifford Chance SLP
Alejandro Negro - Cuatrecasas
José Manuel Otero Lastres - Bufete Otero Lastres
Ana Padial - Arochi & Lindner SL
Fernando Rodríguez - FJF Legal
Celia Sueiras Villalobos - J&A Garrigues SLP

Individuals: prosecution and strategy

Laura Alonso - HOYNG ROKH MONEGIER
Luis Baz - Elzaburu SLP
Luis-Alfonso Durán - Durán-Corretjer SLP
Imogen Fowler - Hogan Lovells
João Paulo Miranda de Sousa - J&A Garrigues SLP
Verena von Bomhard - BomhardIP
Rosalía Ballester - Ballester IP
Gonzalo Barboza - Arochi & Lindner SL
Dolores Cañadas Arcas - Zivko Mijatovic & Partners
Josep Carbonell - JAUSAS
Mario Carpintero - Herrero & Asociados
Giles Corbally - BomhardIP
Mireia Curell - Curell Suñol SLP
Tobias Dolde - Noerr Alicante IP, SL
Cristina Duch - Baker McKenzie
Olof Fickert - BALDER
María Dolores Garayalde - Baker McKenzie
José Ángel García-Zapata - Bird & Bird (International) LLP
Helena Granado - Carlos Polo & Asociados
Jordi Güell - Curell Suñol SLP
Michael Hawkins - Noerr Alicante IP, SL
Jorge Llevat - Cuatrecasas
Manuel Lobato - Bird & Bird (International) LLP
Miguel Ángel Medina - Elzaburu SLP
María Ángeles Moreno - Herrero & Asociados
Carlos Pires - BALDER
Andreas Renck - Hogan Lovells
Joan Salvà - Oficina Ponti, SLP
Enrique Sánchez-Quiñones - Cuatrecasas
Mariano Santos - Herrero & Asociados
Constanze Schulte - Hogan Lovells
Celia Sueiras Villalobos - J&A Garrigues SLP
Aida Tari - Arochi & Lindner SL
Ignacio Temiño Ceniceros - Abril Abogados
Javier Úbeda-Romero - Elzaburu SLP
Christine Weimann - ABG Patentes
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Issue 72