WTR 1000 – turning from the silver to gold tier

The WTR 1000, released in January 2015, comprehensively identifies the world’s leading trademark firms and practitioners. Here we profile those firms which have risen from the silver to gold tier

A strong brand is essential to success in today’s increasingly globalised market. Trademarks are key tools through which businesses can protect the goodwill and reputation inherent in their brands, and build and maintain demand for their products and services. External advisers play a crucial role in developing and implementing brand strategies for both local and international markets, and in protecting these vital assets in the face of infringement. It is thus imperative to choose the best legal counsel available.

Table 1: The new entrants to the gold tier tables

Abdelhadi IP

Egypt

Abu-Ghazeleh Intellectual Property

Egypt

Al Tamimi & Company

United Arab Emirates

Attorneys JB Eversheds Ltd

Finland

Berggren Oy AB

Finland

Cavelier Abogados

Colombia

Clyde & Co LLP

United Arab Emirates

Gün + Partners

Turkey

Helmy, Hamza & Partners

Egypt

Hogan Lovells

Russia

Horten Law Firm

Denmark

ITEM doo

Slovenia

Kelly IP LLP

United States: DC

Kromann Reumert

Denmark

LEX

Iceland

Mayer Brown JSM

Hong Kong

Mikijelj Janković & Bogdanović

Serbia

NTD Intellectual Property Attorneys

China

Patentna pisarna doo

Slovenia

Pearl Cohen Zedek Latzer Baratz

Israel

Plesner

Denmark

Roschier

Finland
Rouse & CoUnited Arab Emirates
Saikrishna & AssociatesIndia
Studio Legale Vanzetti e AssociatiItaly
Tai E International Patent & Law OfficeTaiwan
TIPLO – Taiwan International Patent & Law OfficeTaiwan
Ţuca Zbârcea & AsociaţiiRomania
Wong & PartersMalaysia

The WTR 1000 identifies the leading trademark practices at law firms around the world and the practitioners behind their success. It is the only standalone publication dedicated exclusively to the trademark field, covering both sides of the contentious/non-contentious divide. The guide shines a light on the market for clients seeking advice on all aspects of protection and enforcement, as well as for firms referring work into jurisdictions where they lack a presence.

Building on the success of previous editions, the dedicated research team conducted exhaustive research over a four-month period, involving more than 1,700 interviews with leading trademark practitioners and their clients – many of which were conducted face to face at the International Trademark Association’s annual meeting. Opinions were sought on which firms and practitioners deliver a world-class service in terms of quality, skill and client care. When analysed alongside work examples submitted by firms, a clear picture of the top flight emerged.

The WTR 1000 recommends who it considers to be leaders in the field: only those delivering top-quality trademark services make the cut. However, even among this elite group, in many markets it is possible to discern a degree of stratification; we have thus devised bandings to reflect this diversity at the top end of the market. Firms in the gold band are those that attract the most positive feedback from market sources and we identify them as the crème de la crème.

Across the five editions of the guide, the gold tier has been characterised by a greater degree of stability than the silver and bronze tiers. In the intensely competitive legal industry, the tenet that success begets success holds particularly true. In-house counsel are conservative by nature and rarely take a chance on new market entrants that have not yet had the chance to chalk up the same track records as their more established peers; while the incumbents likewise are often the most attractive option for the brightest legal talent. These and other factors make it incredibly difficult for firms to break into the top tier; but each year, a select few still manage to accomplish this feat. Those which made gold in 2015 are profiled below.


Abdelhadi IP – Egypt

Abdelhadi IP can trace its roots back to 1918, when it became Egypt’s first office dedicated to the practice of intellectual property. It has since become a leading reference point for brand owners operating in the Middle East and North Africa. It performs dexterously on both sides of the contentious/non-contentious divide; with three regional offices and a carefully cultivated network of foreign correspondents, it can quickly assemble the necessary firepower to handle urgent issues for clients irrespective of location. Commentators observe that “the quality of work it does is consistently good across the board”, citing experienced of counsel Hamdy Gaber and trademark group manager Attiat Ismail as key points of contact.


Abu-Ghazaleh Intellectual Property – Egypt and the United Arab Emirates

Abu-Ghazaleh moves into the gold tiers for Egypt and the United Arab Emirates this year. It is the only firm to be recommended in each of the guide’s Middle East chapters, as it also features prominently on the Saudi Arabia list. Chairman Talal Abu-Ghazeleh, an IP Hall of Fame inductee, has done more than almost anyone to foster the development of IP law, practice and policy in the region, and the tradition he started is carried on with pride by the firm’s top practitioners. Close integration across the office network is a hallmark of its service, with clients enjoying the benefit of cohesive, joined-up advice. It is no wonder that the firm, has become the trusted partner of international heavyweights seeking guidance on the management of their regional IP affairs.


Al Tamimi & Company – United Arab Emirates

Middle East commercial powerhouse Al Tamimi runs one of the most business-oriented IP practices in the region. Regarded by many as a trailblazer, it has a reputation for pushing the boundaries at the trademark office, enforcement agencies and courts to get the right results for clients. A self-contained filing team effortlessly manages large portfolios, although the firm’s prowess in litigation and anti-counterfeiting is perhaps its best-known feature. Omar Obeidat has such a wealth of experience that he is often called upon to train government officers in the field. The dynamic lawyer boasts one of the broadest IP skill sets in the United Arab Emirates, with in-depth knowledge in ancillary areas such as regulatory law, consumer protection and free trade.


Attorneys JB Eversheds – Finland

Juridia Bützow – one of Finland’s premier full-service providers – joined the Eversheds network in late 2014, a smart move which has significantly extended its international reach and reputation. It is now one of only two entities in Finland to win gold for litigation and prosecution. Together with IP-dedicated subsidiary Heinonen & Co, it provides a comprehensive suite of services to patrons. The combination proves a winning one: clients appreciate its holistic, pragmatic advice which is always aimed at achieving their commercial objectives. Hanna-Maija Elo is a crack infringement specialist and a founder of the Finnish Anti-Counterfeiting Group; she also has her finger on the pulse of the transactional scene. Petteri Häkkänen and Kukka Tommila are highly rated for their conflict resolution skills; while Nina Mikander leads the Heinonen trademark and design practice with a sure hand.


Berggren Oy AB – Finland

Over the course of nearly eight decades, this ensemble has refined trademark filing to a fine art, entering the prosecution and strategy gold tier on a raft of enthusiastic recommendations. However, the depth of talent available means that it can confidently dispatch a diverse range of complex legal assignments too – a versatility which resonates with celebrated local brands and international players alike. Berggren has offices in Helsinki, Oulu, Tampere and Turku, and its domestic market coverage is second to none, although it also has carved an enviable foothold in Europe. As a licensed trademark and design attorney and a lawyer who trained on the bench, Hannu Halmetoja is a shrewd operator with a strong command of both protection and enforcement issues. Erkki Holmila’s practice also has a broad scope, though internet and domain name matters are a particular forte.


Cavelier Abogados – Colombia

Prestigious, forward-looking Colombian outfit Cavelier Abogados has a degree of specialisation in intellectual property that is rare among its full-service competitors across the continent. It earns kudos for its filing services, while its ability to “look at IP issues in a profound way” and “outstanding knowledge regarding jurisprudence” make it well placed to advise on out-of-the-ordinary matters. The inspiring leadership of Jorge Chavarro has galvanised the IP squad of late; few, if any, individuals in the region receive such warm reports from foreign associates. The firm not only breaks into the gold tier, but also has two individuals selected for the first time in 2015: Luz Clemencia de Páez and Edna Sarmiento helm the trademark and litigation departments respectively.


Clyde & Co LLP – United Arab Emirates

Like its rivals, Clyde & Co is a prodigious filer which also proves adept when it comes to contentious and enforcement concerns. Unusually, however, it also offers cutting-edge transactional support; it truly has all aspects of trademark practice locked down. The set is hailed for its strategic focus and draws further praise for upholding European standards of client service – a trait perhaps best personified by the “extraordinarily attentive” Jon Parker. Parker manages the prosecution practice, while Rob Deans dispenses “carefully thought-out and clearly articulated advice” on infringement matters. Joycia Young is behind many of the region’s most lucrative IP transactions.


Gün + Partners – Turkey

Gün + Partners has been tipped as the market leader for litigation and enforcement in each of the five editions of the WTR 1000 and this year is the only gold-rated contentious firm. It also moves into the top spot for prosecution, finding a place alongside high-volume outfits such as Ankara Patent Bureau and Stock Industrial Property Services. While it processes more trademark registrations than many would give it credit for, it stands out from the filing crowd for its incisive guidance and ability to harmonise procurement and enforcement game plans. It boasts expertise across the board, but nobody stands taller than the “incredible” Mehmet Gün, a pioneer in the enforcement of IP rights in Turkey. “Incredibly trustworthy and experienced” IP department co-chair Uğur Aktekin nimbly traverses the contentious/non-contentious divide in his practice.


Helmy, Hamza & Partners – Egypt

For brand owners with global ambitions, Baker & McKenzie is a go-to choice. With associate firms in multiple jurisdictions in the region, its presence is felt across the Middle East; Egypt affiliate Helmy, Hamza & Partners is one of the best known. Its Cairo-based professionals are Egyptian trained, with an encyclopaedic knowledge of domestic law and practice; however, it is their practical application of international trademark concepts in the local market which underpins their popularity among marquee multinationals. Unlike its gold-tier counterparts, which typically focus on registration, the firm’s practice is oriented towards dispute resolution and licensing. Hazim Rizkana, one of Egypt’s top business lawyers, heads the practice.


Hogan Lovells – Russia

No other firm enjoys quite the same cachet in Europe as Hogan Lovells: it is gold rated in France, Germany, Italy and Spain, and now, for the first time, in Russia. The Moscow office is home to some of the trademark scene’s most influential voices – not least the fiercely competitive, talented and motivated Natalia Gulyaeva, who heads the Commonwealth of Independent States IP practice. She is a magnet for blue-chip trademark owners and has hit the headlines lately with her work for Lego and Alibaba; she is also perennially busy on behalf of companies such as Caterpillar and H&M. The members of her team follow her lead by providing commercially resonant advice and putting in the necessary hours and effort to secure clients the protection they need.


Horten Law Firm – Denmark

Horten has long enjoyed a fantastic reputation in the patent sphere, thanks to the sterling work of redoubtable pharmaceutical litigator Ole Damsbo; but it now shines with equal lustre in the soft IP arena. The growth of its robust portfolio administration practice has been a key trend at the firm recently; it has made impressive inroads in a space traditionally occupied by leading agencies and has quickly become a prodigious filer. Few practitioners hold as much sway at the C-suite level as astute operator Christian Kragelund, the driving force behind the outfit’s non-contentious success. Meanwhile, it is business as usual on the litigation side, with Jens Jakob Bugge fighting on multiple fronts for Tivoli A/S, the owner of one of Denmark’s most recognisable trademarks.


ITEM doo – Slovenia

Slovenia is a small market, and one that is already well served by a range of boutiques and full-service outfits; however, this has not stopped the cream from rising to the top. ITEM “employs the best people” and is regularly engaged on high-profile assignments by prominent domestic companies and major international corporations alike. The storied set arrived on the scene in 1992, shortly after Slovenia established its IP office; it is experienced in procuring trademark rights for patrons and excels on tricky oppositions and other administrative actions. Its anti-counterfeiting work, however, most frequently grabs the headlines. Managing partner Gregor Maček is an enforcement pioneer and an outstanding litigator who has done more than anyone to advance Slovenian IP case law. Jasna Habič is the second in command and another ace litigator; she recently masterminded important customs seizures for handheld power equipment manufacturer Andreas Stihl.


Kelly IP LLP – United States

The US legal market is evolving, with several recently established, compact boutiques making an indelible mark on the IP scene. Some of the most prominent focus on patent litigation, but a foremost example – DC’s Kelly IP – is exclusively dedicated to the business of brands. The firm was founded in May 2013 and shortly thereafter made its debut in the WTR 1000 2014. In the latest edition, it not only takes a place alongside Finnegan and Arent Fox in the DC Metro Area gold tier (for both litigation and prosecution), but also finds a spot on the table of leading national players. The sheer passion of its founding partners – chief among them David Kelly – for clients’ brands sets this nimble and pragmatic ensemble apart. No aspect of trademark practice is off limits for the experienced collective, which excels in cutting-edge areas such as online enforcement.


Kromann Reumert – Denmark

Kromann Reumert’s successful forays into the prosecution area confirm that it is an artful operator that can respond quickly and prudently to client demand and market developments. It now has the necessary non-contentious expertise to complement its litigation wizardry in a one-stop shop service. “Outstanding strategic thinker” Frank Bøggild tackles cases across a variety of commercial areas and is a veteran of 20 Supreme Court actions. Intellectual property – and particularly trademark law – is a special focus for the adroit advocate. Pia Kirstine Voldmester is another stellar IP litigator, though her practice encompasses other areas including trademark procurement, franchising and data protection. Her broad knowledge base makes her well suited to strategic counselling.


LEX – Iceland

Drawing resounding praise from commentators, full-service firm LEX joins elite boutique Arnason Faktor in the Iceland gold tier. It doesn’t just dot and cross the legal Is and Ts, but “achieves real results for clients”, drawing on a “remarkable breadth and depth of expertise” that people might not expect to find on this sparsely populated island. Erla Árnadóttir spearheads the IP practice, impressing brand owners with her open and constructive approach to their instructions.


Mayer Brown JSM – Hong Kong

The Hong Kong legal scene is as crowded as the city’s skyline; many global brand owners manage their regional operations from the high-octane metropolis, so it is no surprise to find plenty of famous international law firms stationed here. The 2013 recruitment of former Hogan Lovells litigator Gabriela Kennedy was a watershed for Mayer Brown JSM, which now takes its seat at the market’s top table. Kennedy brought with her some notable clients, including NVIDIA; her team now manages the Silicon Valley chip manufacturer’s entire portfolio in Hong Kong and China, and also handles a raft of trademark and unfair competition disputes on its behalf. The group is steadily building up a résumé that anyone would be proud of; other recent mandates include High Court infringement suits for adidas concerning counterfeit Brazuca World Cup 2014 footballs, and oppositions and cancellations for Jack Daniel’s.


Mikijelj Janković & Bogdanović – Serbia

As a bridge between Central and Southeast Europe, Serbia is an important jurisdiction for rights holders to consider when developing their international trademark protection strategies. Companies seeking complex IP services need look no further than Mikijelj Janković & Bogdanović, a business law firm which has IP practice at its heart. When it comes to both protection and enforcement, the commercially astute outfit performs proficiently on the domestic stage; it also effectively plays the regional quarterback role and utilises its foreign correspondent network to safeguard the integrity of clients’ brands across the Balkan Peninsula. “Exceptionally good litigator” Dejan Bogdanovic is widely touted as “one of the top experts in the Serbian IP community”.


NTD Intellectual Property Attorneys – China

NTD became one of the first dedicated IP service providers in China when it opened its doors back in 1987, and while it has led the way for many Chinese IP shops, few have managed to repeat its success. The forward-looking, internationally conversant outfit now has offices in Beijing, Shanghai and Hong Kong, as well as branches in Japan, France and the United States, and can dispense advice in a number of different languages. It provides an end-to-end prosecution to enforcement service, but is best known for its registration and portfolio management prowess. Senior partner Aidi Ge is the primary point of contact for trademark owners.


Patentna pisarna doo – Slovenia

Patentna Pisarna is Slovenia’s oldest IP service provider, though it never shows its age; by investing in ongoing staff training and participating in key IP associations, it can provide advice underpinned by an understanding of the most internationally relevant developments in trademark law and practice. Its trademark team comprises both lawyers and trademark consultants, so complex legal matters are handled with the same dexterity as more routine registration duties. Vesna Kovic and Irena Kadunc are much sought after for their clever management of challenging court disputes.


Pearl Cohen Zedek Latzer Baratz – Israel

The IP practice is a central pillar of Pearl Cohen’s commercial full-service offering. The distinguished ensemble has an unusually large complement of domestic patrons and its entrepreneurial spirit clearly appeals in a country with one of the world’s most vibrant start-up scenes. It also acts for an enviably wide selection of multinationals, with concentrations in the luxury goods, apparel and technology sectors. The group is an accomplished all-rounder, sitting in silver on the enforcement and litigation table and, for 2015, in gold for prosecution and strategy. Senior partner Dor Cohen-Zedek is one of the country’s most popular IP practitioners and a whiz at international trademark management strategy. She is great on contentious matters too, with a flair for resolving conflicts quickly and cost effectively.


Plesner – Denmark

Plesner is famed for its dominance of the Danish pharmaceutical patent litigation world – it is the sole gold-ranked firm in WTR 1000’s sister publication, the IAM Patent 1000. Though not on an exclusive basis, the trademark group now enters the gold tier too. In line with some of the other most influential law firms in Denmark, it has recently made a significant play in the prosecution arena: former Zacco senior Christian Bardenfleth has given the portfolio management practice a real shot in the arm since his arrival in 2013. He has settled in nicely and, thanks to his litigation experience, has found common ground with top dog Sture Rygaard – “perhaps the best IP enforcement lawyer in Denmark”. The pair’s big-picture thinking on procurement and contentious matters is widely appreciated.


Roschier – Finland

Finnish powerhouse Roschier boasts one of the region’s largest – and best – IP practices. There is no trademark task that the seasoned team cannot handle, so those seeking a safe pair of hands for all their IP work find it a compelling choice. Several team members have valuable in-house experience on their CVs, so the group’s advice is commercially focused, accessible and practically applicable. Kaisu Korpua captained Nokia’s trademark team for several years and her relationship with the Finnish mobile phone manufacturer remains strong today. The firm’s deep bench (it has more individuals recommended in the WTR 1000 than any other Finnish entity) is complemented by a strong leader: assertive trial lawyer Rainer Hilli manages the practice with confidence and poise.


Rouse & Co – United Arab Emirates

Rouse is certainly not shy of the challenge presented by difficult jurisdictions and has developed a unique international footprint as a result. It opened its Dubai office in 1997 and has been there to witness the evolution of the Middle East as a commercial hub; it knows how business is done in the region and is in pole position to advance clients’ IP agendas as the United Arab Emirates transitions to a knowledge-based economy. The design and execution of brand protection programmes in the Middle East and North Africa is a specialty of UAE country manager Chad Dowle. Senior consultant Bassel El Turk – the top Arabic-speaking practitioner here – focuses on enforcement initiatives.


Saikrishna & Associates – India

Saikrishna & Associates breaks into the India litigation and enforcement gold tier for 2015. Whether tackling the infringement of a single cornerstone patent or the wholesale counterfeiting of trademarked goods, its litigators are ready to leap into action to defend clients’ rights. At any given moment, it has hundreds of active contentious assignments on its books and is much busier than many of its highly ranked peers. Though contentious work is its metier, its name is increasingly coming up in prosecution as well. “Bright litigator Saikrishna Rajagopal should be on top of anyone’s list.”


Studio Legale Vanzetti e Associati – Italy

When competitors and customers comment on Studio Legale Vanzetti e Associati, one word – ‘quality’ – consistently crops up. The weight of recommendations for this venerable IP specialist was impossible to ignore and the set consequently gains entry to the exclusive WTR 1000 gold tier this year. It was established by Adriano Vanzetti, “the leading IP professor in Italy”. By all accounts, he is still highly engaged in the practice and very little goes out the door without his seal of approval; patrons are therefore sure to receive top-notch work product every time. The protection of well-known trademarks is one of the erudite ensemble’s particularly strong suits.


Tai E International Patent & Law Office – Taiwan

In recognition of its prodigious recent filing output, longstanding Taiwanese IP firm Tai E sees its name in gold for prosecution in the WTR 1000 2015. It filed some 5,600 trademark applications with the Taiwan Intellectual Property Office in 2013 and demand for its services has only increased since. An unstinting dedication to clients and the highest standards of excellence is central to its appeal among major international brands such as Abercrombie & Fitch, Novartis and Skoda Auto. Chi-Tai Yen manages the practice.


TIPLO – Taiwan International Patent & Law Office – Taiwan

Ongoing investment in sophisticated workflow systems has paid handsome dividends for TIPLO, one of Taiwan’s top trademark filers. Uniquely, it has a large IT division dedicated to the maintenance of its trademark portfolio management platform, to ensure that clients can enjoy 24-7 access to information on their files without fuss. While prosecution is the group’s bread and butter, trademark infringement matters are supervised with hawkish scrutiny by a legal department captained by HG Chen.


Ţuca Zbârcea & Asociaţii – Romania

Pragmatism and resolve are characteristics that serve Ţuca Zbârcea & Asociaţii well in its key areas of enforcement and litigation. Major-league brand owners such as Philip Morris rely on its anti-counterfeiting nous day in, day out; the tobacco titan recently obtained a €1 million award thanks to the grit and determination – and clever damages calculations – of IP head Ciprian Dragomir and contentious leader Robert Rosu. Operating within the framework of a flourishing general business law firm, the IP division leverages on the expertise of other departments to provide a comprehensive offering. It mastery of IP transactions has helped it to attract new fans in the past year, such as top independent Romanian record label HaHaHa Production and Alticor.


Wong & Partners – Malaysia

Baker & McKenzie appears to be shoring up its premier position on the global trademark market, despite intensified competition; Malaysia-based Wong & Partners is the second of its affiliates to ascend to the gold tier this year. The team, headed by Kherk Ying Chew, has lately been engaged on some ground-breaking work, including a global benchmarking exercise and one of Malaysia’s first IP securitisation transactions. The rate at which it is assuming responsibility for major trademark prosecution portfolios for new clients is also increasing year on year. Anti-counterfeiting is a core area of expertise; the set’s effective coordination with various local authorities has been a boon for companies such as Procter & Gamble and Estée Lauder.

Nicholas Richardson is research editor in the IP Division of Globe Business Media Group [email protected]

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