Pharmaceutical Trademarks: A Global Guide 2018/2019 Contributors
Daniel Legal & IP Strategy
Isabella Cardozo joined the firm in 1998 and became head of the trademark department in 2015. Her multidisciplinary practice emphasises managing large portfolios in various market segments, such as pharmaceuticals, cosmetics, fashion and consumer goods, and developing corporate strategies for the development and protection of intellectual property. She also leads a team that focuses on legal consultancy relating to trademarks, as well as providing portfolio management for international clients in various market segments, handling judicial and extrajudicial cases relating to trademark rights violations and crimes of unfair competition, and conducting due diligence relating to trademark issues, including analysis of registrability of marks and planning corporate IP strategies.
Ricardo Nunes is licensed to practise in Brazil and New York and is one of Brazil’s top IP experts, with extensive experience in high-stakes multi-jurisdiction litigation. His practice focuses on complex IP and food and drug disputes, with particular emphasis on the pharmaceutical and biotech fields. He holds an LLM degree in IP law, summa cum laude, from The George Washington University Law School (United States) and a master’s degree in regulation from Fundação Getúlio Vargas (Brazil), and is a law professor at the Catholic University of Rio de Janeiro (Brazil). He is the vice chair of the Latin American Practice Committee of the Intellectual Property Owners Organisation and a frequent speaker at international conferences.
Bereskin & Parr LLP
Ainslie Parsons is a barrister, solicitor, registered patent agent and associate with Bereskin & Parr LLP. Her practice focuses on biotechnology and pharmaceutical matters, including patents, plant breeders’ rights, licensing and related litigation. She has authored a number of professional papers published in Cell and Nature Biotechnology. She is also the recipient of the Canadian Institutes of Health Research Canada Graduate Scholarship Doctoral Award and the Natural Sciences and Engineering Research Council of Canada Post-Graduate Scholarship.
Meghan Dillon is a barrister, solicitor, registered trademark agent and partner with Bereskin & Parr LLP. Ms Dillon’s trademark practice focuses on providing opinions and advice on registrability, filing and prosecuting applications; representing clients before the Trademarks Opposition Board in opposition and expungement proceedings; and assisting clients with the management of their domestic and international trademark portfolios.
Susan J Keri
Susan J Keri is a barrister, solicitor, registered trademark agent and partner with Bereskin & Parr LLP. She has practised exclusively in the area of trademark law since her call to the Ontario Bar in 1986. Ms Keri’s practice extends to all areas of trademark law, including clearance and opinion work, prosecution, opposition, cancellation proceedings, domain name issues, licensing, commercial transactions involving trademark assets and assistance with the acquisition and maintenance of international trademark portfolios. Most of her practice relates to the protection and management of large trademark portfolios for multinational corporations in all industry sectors, with particular expertise in pharmaceuticals. Ms Keri is regularly ranked as a top professional in her field of expertise.
Francisco Aravena Riveros
Francisco Aravena Riveros is an associate in Silva’s trademark and IT departments. He obtained his law degree from the University Adolfo Ibánez. He holds an LLM in information and communication technology law from the University of Oslo, Norway. He focuses his practice on assisting foreign undertakings in regards to all aspects related to trademark prosecution and IT matters. His areas of expertise include trademark law, copyright, unfair competition, data privacy and e-commerce, among others.
Francisco Silva Dorado
Francisco Silva Dorado is a partner and oversees the trademark, patent and entertainment, media and sports departments at Silva. He graduated with an LLB from Pontificia Universidad Católica de Chile and with an LLM from Washington College of Law, American University, Washington DC. Before joining Silva, he worked in the respected US law firm BakerHostetler. His practice focuses on major international trademark and patent cases in a variety of industries on behalf of key clients. He serves on committees of the International Trademark Association and holds other professional memberships. Frequently sought to speak and moderate on IP topics, he has particular expertise in trademarks, patents, regulatory, entertainment and sports law.
Karine Disdier-Mikus is a partner in DLA Piper’s IP and technology department in Paris. She heads the IP practice. She has a master’s degree from a French university and an LLM from McGill University, Canada. She is a former European trademark and design attorney and has more than 15 years’ experience in trademark and design prosecution and litigation, brand protection, anti-counterfeiting and brand enforcement, especially in the pharmaceutical and life sciences sectors. She has also developed significant expertise in domains, Uniform Domain Name Dispute Resolution Policy proceedings and new generic top-level domains. She is an active member of the International Trademark Association and the Association of Trademark and Design Law Practitioners.
BEST Rechtsanwälte PartmbB
Michael Best studied law in Mainz, Germany and in Dijon, France. He first became involved in intellectual property as a scientific assistant at the University of Mainz in 1987 where he wrote a doctoral thesis on trademark and unfair competition law. He then worked at a large German auditing firm for two years before joining chemical and pharmaceutical company Hoechst AG. Dr Best is a founding partner of the law firm BEST Rechtsanwälte/Attorneys (1998) and has worked as counsel to clients worldwide in all aspects of trademark, unfair competition, copyright and domain matters for more than 20 years. Dr Best is a member of the International Trademark Association, the Pharmaceutical Trademarks Group and the German IP Association.
Udo Pfleghar studied and trained in Melbourne, Australia and Regensburg, Germany. From an IP boutique in Munich he joined the Office for Harmonisation in the Internal Market in Spain in 1999, where he worked as a Community trademark examiner and an instructor. In 2004 he joined Boehringer Ingelheim to become the head of the domain and trademark group. In 2009 he joined BEST Rechtsanwälte as a partner. He deals with all questions relating to trademark, design and domain law, as well as data protection issues. Mr Pfleghar is a lecturer in law at the University of Applied Sciences in Frankfurt.
Aprajita Nigam is an advocate currently working as an associate at LexOrbis. She holds an LLM in IP rights from NALSAR University of Law, where she secured an overall Gold Medal encompassing all LLM specialisations. She has in-depth understanding of all facets of IP law and is interested in the exploration of niche areas. Having previous experience in general litigation, she has enriched the firm with her keen insight on contentious issues. Being a valued member of the legal research team of LexOrbis, she has received much appreciation for her articles published in leading IP publications. She has a diverse client portfolio, comprising various Fortune 500 companies, multinational corporations, small and medium-sized enterprises and technology start-ups.
Dheeraj Kapoor is a senior associate at LexOrbis. He holds a BSc (Hons) in zoology and an LLB from the University of Delhi. With extensive knowledge and expertise in IP law, he specialises in handling diverse matters before the high courts, the IP Appellate Board, the Trademarks Office and the Copyright Office, and also advises on various related laws. He is closely associated with the legal research and publication team of LexOrbis, and has authored many articles and papers in leading IP publications. He has a diverse client portfolio comprising many Fortune 500 companies, multinational corporations, small and medium-sized enterprises and technology start-ups.
Erwin Cruz has been helping clients to add value to their businesses and projects in Mexico since 2008, when he became part of the OLIVARES life science law group. He achieves this not only by obtaining exclusive rights for clients, but also by developing and successfully implementing strategies to enforce these rights and fair trade rules against potential infringers.
Mr Cruz provides highly qualified regulatory assistance related to marketing, labelling and advertising. He has extensive expertise and has written several articles about litigation and regulations relating to the pharma, agro and software industries. He regularly participates in international and national conferences.
Victor Ramirez joined OLIVARES in 1999 and completed a postgraduate major in IP law at the Pan-American University in Mexico City in 2005. He attended the IP Summer Institute at the Franklin Pierce Law Centre in 2007.
Mr Ramirez’s work at OLIVARES focuses on counselling, lobbying and prosecuting administrative proceedings on IP and regulatory matters such as marketing, advertising and labelling issues before government agencies such as the Mexican Trademark and Patent Office, the Federal Commission for Health Risks and the Consumer’s Attorney General Office.
He is also an experienced litigator, assisting clients from a number of industries to challenge before the courts the inspections, infringement proceedings and seizures or fines imposed by government agencies.
Kathrine Kjendlie is a trademark specialist with more than 25 years’ experience, originally as a senior corporate attorney in the pharmaceutical industry and now as part of the Onsagers trademark team. She is a sought-after adviser to pharmaceutical sector clients, but also works with domestic and international companies in other sectors. Her extensive in-house experience – including cooperation with regulatory departments – gives her a particular advantage in understanding pharmaceutical clients’ needs. Ms Kjendlie has managed international pharmaceutical trademark portfolios. She has established global rights to many trademarks for the Takeda group, including trademark creation, availability search and registration procedures. Her work has also encompassed specific trademark strategies, infringements, parallel imports and drafting various trademark agreements.
Kristoffer Weltzien is a seasoned IP attorney and strategist in IP rights establishment and enforcement, specialising in the chemical and pharmaceutical sectors. Mr Weltzien takes an in-house approach to his client relationships, working in close collaboration with the client to ensure tailor-made advice. He is also a key player in Onsagers’s cooperation with the Confederation of Norwegian Enterprise and frequently speaks at its events. In addition, Mr Weltzien’s eight years’ experience as an examiner with the Norwegian Intellectual Property Office has proved invaluable to international clients seeking advice on prosecution and handling of trademark and design applications in Norway.
Thomas Gaarder-Olsen is an attorney at law and partner at Onsagers, assisting domestic and global clients with their trademarks and other IP rights. He is listed as a national trademark expert in Who’s Who Legal. His work ranges from developing IP strategy and establishing IP rights to maintaining and enforcing these rights through dispute resolution and litigation. Mr Gaarder-Olsen has particular experience helping rights holders to fight counterfeiters. In this respect, he has acted as a board member of the Norwegian Anti-counterfeiting Group and enjoys close cooperation with Customs. He is a regular at international trademark conferences, such as the International Trademark Association and the Pharmaceutical Trademarks Group.
Cabinet M Oproiu
Raluca Vasilescu is a patent and trademark attorney, and has been a partner at Cabinet M Oproiu since 1995. She specialises in patent and trademark prosecution, including related appeals and litigation. She has authored numerous articles, as well as the Romanian chapter in Enforcement of Intellectual Property Rights Through Border Measures (Vrins/Schneider, Oxford University Press, 2012). She also contributed to the first edition of commentaries on the EU Community Trademark Regulation and the Community Design Regulation published by CH Beck in Spring 2015; a second edition of both commentaries is expected in 2018.
Popović Popović & Partners
Katarina Kostic is a partner at Popović Popović & Partners. She graduated from the University of Belgrade Faculty of Law (LLB, 1990) and is a registered IP agent. Ms Kostic specialises in patent and trademark invalidations, litigation, IP infringement, industrial property, protection of IP rights before Customs and market supervision of counterfeit goods.
Natalija Popović has been a junior attorney at Popović Popović & Partners since 2016. She obtained an LLB from the University of Belgrade Faculty of Law and an LLM in international IP law from the Technical University of Dresden, in cooperation with the University of Exeter. Ms Popović deals with trademark prosecution, customs measures, litigation and commercial practice. Her particular areas of expertise are trademarks, unfair competition, copyright contract and tort law. She is fluent in English and German.
Robert Flury is partner of Zulauf Partners in Zurich. He graduated from the University of Zurich in 1994 and worked for the Zurich District Court. After writing his doctoral thesis (Dr iur), he passed the Zurich Bar Exam in 1998. He holds an LLM degree in intellectual property from the University of New Hampshire.
Dr Flury’s practice focuses on trademarks and distinctive signs, encompassing trademark litigation, prosecution and enforcement of all types of trademark. His expertise includes strategies for the global registration and policing of trademarks in the pharmaceutical and cosmetics industries. Dr Flury is guest lecturer at the University of Applied Sciences and Arts Northwestern Switzerland and author of professional and newspaper articles in the field of intellectual property.
CMS Cameron McKenna Nabarro Olswang LLP
Fionnuala Rice is an associate in the IP group at CMS and a member of the firm’s life sciences sector group. She graduated with a degree in physiological sciences from the University of Oxford before qualifying as a solicitor in 2013. She advises on the protection and enforcement of IP rights, working on both contentious and non-contentious IP matters. She also regularly advises clients on UK and EU regulatory law, with a particular focus on pharmaceutical products and medical devices. She has previously been on secondment to the in-house legal team of a global pharmaceutical company.
Sarah Wright is an IP partner at CMS Cameron McKenna Nabarro Olswang LLP and head of trademarks. She has over 15 years’ experience in advising companies on how to protect, monetise and enforce their brands and designs.
She has experience advising pharmaceutical and medical device businesses on a broad range of IP work, including devising trademark filing strategies, conducting clearance searches and managing international portfolios, as well as advising on all types of contentious matters before the UK and EU IP offices and the UK courts.
Having spent five years at a large city firm, she is equally adept advising on the IP aspects of corporate acquisitions and disposals. Legal 500 describes her as “‘efficient and practical’ in her approach”.
Yvonne Onomor is an associate and chartered trademark attorney in the IP group at CMS with over 10 years’ experience working in both France and the United Kingdom. She specialises in trademark and design prosecution as well as contentious matters before the UK and EU IP offices. She has valuable trademark portfolio management and commercial experience. Her work involves managing a range of trademark portfolios spanning a number of industries and she regularly advises clients on licensing and assignment contracts, and copyright issues. She is experienced in advising pharmaceutical clients in relation to brand protection and enforcement.
David J Davis
David Davis is a partner in Baker McKenzie’s IP practice. He graduated with a BS from the University of Illinois and a JD and a MBA from Duke University. He handles a wide range of matters relating to various aspects of IP law, including prosecution before the US Patent and Trademark Office, international IP coordination, clearance, counselling and prosecution, managing the IP aspects of mergers, acquisitions and other corporate transactions, drafting IP licensing agreements and resolving domain name, social media and other internet-related conflicts. He has extensive trademark, trade dress, copyright, false advertising and computer law litigation experience before US federal courts and the Trademark Trial and Appeal Board.
Jur Strobos is a partner in Baker McKenzie’s healthcare and IP practices. He obtained his BA from Johns Hopkins University, his MD from the University of Chicago and his JD from the University of Pennsylvania. He has extensive experience providing legal and regulatory support, problem-solving and strategic advice for US and international life sciences companies. He provides legal, regulatory and policy advice to companies whose products are directly or indirectly regulated by the US Food and Drug Administration (FDA). He assists in a range of issues from enforcement and best practices to marketing authorisation. He has guided many products through the FDA regulatory processes for clients. He also assists with inspectional readiness, compliance agreements, delegation subcontracts with clinical sites, research and manufacturing organisations.
Shima S Roy
Shima Roy is a partner in Baker McKenzie’s IP practice. She graduated with an AB from Bryn Mawr College and received her JD from the University of Michigan Law School. She has extensive experience developing strategies for clients involved in multi-jurisdictional disputes. She represents clients in both commercial and IP disputes in federal and state courts, international arbitral tribunals, the International Trade Commission and the Trademark Trial and Appeal Board. Her clients include pharmaceutical and healthcare companies, high-tech manufacturers, hedge funds and commodity exchanges.