Allen & Overy LLP
Benefiting from close contact with over 100 IP specialists in Allen & Overy’s expansive global network, the Paris cadre handles cross-border matters in Europe and Asia in a frictionless and fruitful manner. In addition to its geographic advantage over many other firms in France, the group has a strong grasp on an array of sectors, notably telecoms, entertainment and life sciences. Anchors of the practice, Laëtitia Bénard
and Alexandre Rudoni
continue to blaze a trail with exciting contentious and non-contentious work; one highlight saw them band together to support Bayer on a string of infringement actions concerning the packaging of blockbuster products. This was copybook terrain for pharmaceuticals powerhouse Bénard. “She’s extremely impressive in court and has a strong understanding of procedural issues.” A video games authority, Rudoni is entrusted by Nintendo with the enforcement of all aspects of its national anti-piracy programme.
A regular fixture in French courtrooms, Armengaud Guerlain handles contentious IP matters “excellently” and has the experience to know when to keep pushing and when to negotiate. Recent successes came supporting the educational publisher Studyrama in a bruising infringement battle against FNGE and helping Bouygues to cancel an opponent’s trademark for a major construction programme in Lyon. Stéphane Guerlain
led the charge on both matters. He is a worldly wise litigator whose straightforward, transparent arguments are impossible to ignore. His teammate Catherine Mateu
is another dazzling lawyer, who knows the jurisprudence inside out. She has the creativity, commercial savvy and powers of recall to succeed in thorny cases.
Dispensing every trademark-related service under the sun – from availability searches through rights transfers to courtroom enforcement – Baker McKenzie is a fine choice for brand owners seeking a one-stop shop. Because every practitioner in the Paris office keeps long-term business objectives front and centre in their thinking, they can be relied on for pragmatic, real-world support. Virginie Ulmann should be the first port of call for interested parties.
A holistic approach to prosecution and litigation is in BARDEHLE PAGENBERG’s DNA, and the French office embodies this absolutely. EU trademarks are filed only when all possible objections have been considered, while infringement flames are extinguished with astonishing speed. Thanks to its newly established cooperation with Yusarn Audrey in Singapore, the firm is also equipped to support brand owners expanding into Southeast Asia. Julien Fréneaux
is a versatile practitioner who has appeared before courts the country over and conducted IP due diligence for plenty of large M&A transactions. Since joining him at the firm in 2015, the “fantastic” Rebecca Delorey
has lit up the practice with bursts of fresh thinking. She is a fabulous litigator commended by interviewees for her sangfroid in high-pressure situations.
The “extremely active” BCTG Avocats continues to make waves in French intellectual property, representing a knit of high-profile fashion brands. Its tailor-made, cost-effective counsel helps clients to stay one step ahead of their competitors; non-traditional marks are expertly registered while forgers are pursued relentlessly. Leading the team, Gaëlle Bloret-Pucci
is an “extremely able, efficient, pragmatic and responsive lawyer” with a singular understanding of the exhaustion of rights and the risk of market partitioning.
Bird & Bird AARPI
While Bird & Bird may have expanded dramatically since its founding in 1846, intellectual property remains a keystone of its strategic vision. The firm recently expanded its trademark practice in France to comprehensively cover prosecution as well as enforcement – a move that is proving popular among its international client base. Driving the practice forwards is Anne-Charlotte Le Bihan
. The nucleus of the team, she is a cosmopolitan, outward-looking litigator whose recent workload includes helping Crossfit to combat a flurry of unauthorised uses of its trademarks. With over 20 years’ experience, Géraldine Arbant
is a fine choice on the non-contentious side. She is au courant with all the latest developments in the telecommunications, life sciences and automotive sectors.
Cabinet Escande is a nimble-footed boutique that plies its trade at the leading edge of intellectual property. It has notable experience assisting agri-business clients in geographical indication and designation of origin issues, and is adept at alternative dispute resolution. Hallmarks of the firm’s service are cost-effectiveness and a steady focus on commercial aims. Michel-Paul Escande
scrutinises materials with painstaking care before putting pen to paper; nothing escapes his penetrating eye.
Brand owners in the market for an IP litigation shop that will furnish them with round-the-clock attention and resolutely commercial support need look no further than Candé-Blanchard-Ducamp. Experience before courts of all levels has honed the team’s skills to a razor’s edge. Julien Blanchard
and Patrice De Candé
are its leading lights. Taking on a case at the appeal stage is exactly the sort of challenge Blanchard loves; when the chips are down, he digs deep to turn things around. De Candé’s technical knowledge immediately puts clients on a sure footing.
Working shoulder to shoulder with sibling Casalonga & Associés, Casalonga Avocats is a “hands-on, client-oriented and proactive” boutique that handles matters with “real efficiency and flexibility; it’s always open to realigning priorities when needed”. La Chaise Longue recently sought its help in a heated infringement tussle with Logoshirt and Mr X, and the team’s inarguable line of reasoning wrested a favourable result from the Paris Court of Appeal. Arnaud Casalonga was responsible for this success; with more than 30 years’ experience under his belt, he has excellent instincts for what will swing a tight case. Another masterly litigator, managing partner Caroline Casalonga conveys complex legal arguments in bitesize summaries that clients can easily digest. The quick-witted Karina Dimidjian-Lecomte scored a great goal for CBS Studios in a landmark opposition against the Chinese company Baidu Online Network Technology, concerning CBS’s famous shield design mark; the EU Intellectual Property Office (EUIPO) sided with her client, upholding the opposition and cancelling Baidu’s EU trademark application.
De Gaulle Fleurance & Associés
Business law firm De Gaulle Fleurance & Associés serves up finely judged trademark counsel that consistently hits the target. Knowing how high the stakes can be for brand owners, the firm’s steadfast IP lawyers double down to meet their clients’ needs, communicating regularly with their colleagues on the corporate side. Julien Horn
threads together watertight licensing contracts and litigates with flair and finesse. His teammate Louis de Gaulle
boasts a similar skillset, with significant experience in both backrooms and courtrooms. He is a resourceful lawyer who shows immense commitment and care in everything he handles.
“Dentons is a fabulous firm whose highly skilled lawyers are a pleasure to litigate against or negotiate with.” The side maintains a notably diverse roster of clients, comprising start-ups, household names and public bodies, and ensures that each receives uniquely tailored, budget-conscious and proportionate support. David Masson
, Isabelle Leroux
and Gérard Delile
exemplify this common-sense approach. “Masson is a strong litigator whose analyses are always well thought out.” He has been busy advising Polaroid on branding and infringement issues throughout Europe, as well as the Brazilian flip-flop company Havaianas on 15 proceedings before civil and criminal courts. Another “very impressive” contentious old hand who “can only be praised”, Leroux has the experience to coordinate multi-jurisdictional cases and the contacts to organise last-minute customs seizures. Delile is a razor-sharp enforcement expert who supplements a robust trademark practice with a singular knowledge of advertising law.
Deprez Guignot & Associés
When it comes to luxury brands – and especially issues surrounding selective distribution – Deprez Guignot & Associés is a leader in the market. Its cosmopolitan, forward-looking lawyers place a premium on close contact with clients, running an extremely sophisticated Hubmarques service for frictionless portfolio management. Vincent Fauchoux
is a jewel in the group’s crown. He complements a wide-ranging trademark practice with robust knowledge of media law.
DLA Piper France LLP
Brand owners choosing DLA Piper can rest assured that they will receive muscular support not only in France but also across the rest of Europe – and wherever else they operate; the firm’s expansive coverage has proven irresistible to some of the world’s biggest names, including McDonald’s and Nintendo. Representing both clients, the “down-to-earth, constructive and efficient” Karine Disdier-Mikus
is a versatile trademark ace, as adept at filing applications for non-traditional marks as she is at masterminding anti-counterfeiting operations. “She’s very thorough and clear in her guidance and won’t skip a beat when something unpredictable happens.”
Duclos, Thorne, Mollet-Viéville & Associés
For more than half a century, Duclos, Thorne, Mollet-Vieville & Associés has been delivering sagacious IP advice on budget and on time. Its commercially focused lawyers listen carefully to clients, analyse the options open to them and then craft watertight strategies. The team’s ability to work not only in French and English, but also in Italian, Spanish and Portuguese, has attracted foreign companies in droves. Those seeking enforcement support are in safe hands with Pascal Lefort
, a courtroom hotshot ranked in the WTR 1000
’s gold tier. Remarkably quick witted and nimble, he has what it takes to manoeuvre clients out of dead-end situations. Thierry Mollet-Viéville
, Eléonore Gaspar
and Thomas Cuche
all excel on both sides of the contentious/non-contentious divide. The seasoned Mollet-Viéville leaves opponents standing when it comes to pharmaceutical matters, while Gaspar has unique expertise in the entertainment and fashion industries. Cuche is an active member of the International Association for the Protection of Intellectual Property and so has a bulging address book; anti-counterfeiting is just one of his strong suits.
On the back of 12 exciting months, FTPA has broken into the WTR 1000
for 2018. The firm has been particularly active in the audiovisual industry, providing savvy counsel to key players on the establishment and enforcement of IP rights. Because the trademark team nestles within a full-service set-up, it is only a few strides away from a troop of commercial mavens who can provide strong second opinions; this ensures that nothing slips through the cracks. Boriana Guimberteau
’s time working at LVMH stands her in good stead; she provides her clients with concise, straightforward summaries and, when litigating, never loses sight of the big picture.
Gide Loyrette Nouel AARPI
Since its humble beginnings in 1921, Gide Loyrette Nouel has transformed into a 14-office, 600-lawyer operation with the footprint and resources to support even the most exacting brand owners. Its finesse in fashion matters is well known, as is its adeptness when it comes to anti-counterfeiting. Arnaud Michel
and Emmanuel Larere
are two market-leading members of the team. Having served as president of the Licensing Executives Society International, Michel is a font of commercial wisdom. In 20 years of courtroom combat the formidable Larere has left lasting imprints on French case law. Wise to the pressure senior business executives face, Grégoire Triet
turns briefs round at lightning speed and his writing is admired for its clarity and concision. Pan-European litigation is bread and butter for the seasoned Raphaëlle Dequiré-Portier
. She expertly scopes out the lay of the land in each country before coming up with an infrangible plan of attack.
Home to a thriving trademark practice – not to mention healthy design and advertising ones – Gilbey Legal is a smart choice for ambitious brand owners. It is richly experienced on both sides of the contentious/non-contentious divide, and counts anti-counterfeiting as a forte. Name partner Richard Gilbey
is widely praised for his “tremendous” expertise and “highly commercial” approach to matters. “He ticks all the right boxes and is probably the best reporter of searches in the country.” His “responsive and practical” teammate Richard Metzger
also picks up notable praise, interviewees label him a “true expert” and remark that he is a pleasure to work with. Having served as IP and licensing manager at the French subsidiary of General Mills, he has invaluable in-house experience under his belt.
Herbert Smith Freehills LLP
Herbert Smith Freehills is a fixture on the IP scene. The qualities that business executives look for in outside counsel are drilled into every lawyer in its ranks: accessibility, responsiveness, rigorous technical analysis and a laser focus on business objectives. Never missing the mark on these points, the trademark corps has become a magnet for brand owners of all shapes and sizes. Owing to extremely close cooperation with the firm’s Africa team, it can provide uniquely reliable assistance on plans to expand into the continent. Spearheading the practice, Alexandra Néri
is a savvy, solutions-oriented practitioner. She is senior vice chair of the IP and Entertainment Committee of the International Bar Association, and burns exceptionally brightly in online matters.
With Hogan Lovells boasting 400 IP professionals worldwide, it is little surprise that scores of multinationals have placed their portfolios in its trust. Domain name issues see the Paris team at its best. Using the sophisticated Anchovy online platform, its members provide exemplary registration, monitoring and recuperation services. Hogan Lovells is the only law firm in France to be an accredited Internet Corporation for Assigned Names and Numbers (ICANN) registrar, which means that it handle generic top-level domain (gTLD) issues with aplomb. David Taylor
– who captains the firm’s international practice – is the man to turn to for this; he is one of only two European members serving on ICANN’s competition consumer trust and consumer choice review team, which is reviewing the gTLD process. His unparalleled domain name experience stretches back to 1997; more recently, he filed the first case using the uniform rapid suspension mechanism on behalf of Facebook, successfully obtaining suspension of the domain name ‘facebook.pw’. The multitalented Marie-Aimée de Dampierre
is another standout star. She has been exhibiting her versatility with contentious and non-contentious assistance for Lego.
HOYNG ROKH MONEGIER
HOYNG ROKH MONEGIER’s strong reputation in French intellectual property is “very well deserved”, according to interviewees. Although best known for its buzzing patent practice, the firm also maintains a lively trademark workload, with highlights such as representing L’Oréal on invalidity actions against LVMH, and supporting Cora and Delipar in a battle against Coravin. The latter case was handled in tandem with teammates in Belgium, where parallel proceedings are taking place – indeed, members from all seven European offices habitually bounce ideas off each other and pool knowledge. One of the firm’s founders, Denis Monégier du Sorbier
needs no introduction; with 40 years’ experience, he handles cross-border cases with the utmost artistry. Marie Georges-Picot
and Sophie Micallef
are client favourites too. Pragmatism and a resolutely commercial focus characterise Georges-Picot’s enforcement work, while issues concerning non-traditional marks are ably dealt with by the forward-looking Micallef, who always offers a unique take on problematic issues.
Filing marks for exciting new products, masterminding continent-wide launches and coordinating pan-European litigation is all in a day’s work for Jones Day’s esteemed Paris set. It is impossible to talk about the team without bringing up Emmanuel Baud
. “He’s extremely clever – one of the top IP practitioners out there. Geographical indication issues are his speciality; in that field he is number one.” Of late he has been busy assisting the Bureau National Interprofessionnel du Cognac
in a conflict with entities marketing a cognac under conditions that might dilute his client’s valuable geographical indication. While Baud is unquestionably the poster boy for the practice, he is not the only expert that the firm can boast of in this area. Edouard Fortunet
has been turning heads with his dynamism. He chases forgers ruthlessly and never stops scoping out monetisation possibilities.
Marchais & Associés
Oozing experience and commercial common sense, Marchais & Associés is a smart choice for portfolio management or enforcement assistance. Its diligent, dedicated practitioners take the time to research their clients’ markets so that they understand the context of any action. Guillaume Marchais
is a trademark whiz who wins plaudits for the transparency of his counsel; he has notable experience in uniform domain name dispute resolution proceedings. His teammate Emmanuelle Limouzy
is another internet magus. She goes out of her way to make things simple for business executives and is always available for a face-to-face meeting.
Simmons & Simmons LLP
For the world’s biggest brand owners, trademark issues are rarely confined to one country; product launches span continents and problems proliferate. With a series of well-respected offices across Europe, the Middle East and Asia, Simmons & Simmons can provide umbrella coverage. The Paris team has particular experience before the EUIPO, where it continues to notch up strong filing numbers. Leading the practice, Sarah Bailey
manages portfolios masterfully and litigates with élan; the fact that she is a native English speaker who was trained in London helps her to stand out from the crowd.