Allen & Overy LLP

WTR Research

The WTR 1000 focuses exclusively on trademark practice and has firmly established itself as the definitive 'go-to' resource for those seeking world-class legal trademark expertise.

Recommended - Firms

Allen & Overy is the sole representative of magic circle law firms on the list. Its comprehensive IP offering is an integral part of its global practice. The joint operation with Shanghai Lang Yue Law Firm is strengthening A&O’s domestic prosecution and litigious capabilities. The team offers a high level of specialisation in Chinese law and strong cross-border experience, which is brought seamlessly together by its bilingual IP advisory service. This is the signature of its IP team, which houses Shanghai-based US-qualified IP litigator Jill Ge – she wields immense trademark and IP-related competition expertise. It is best exemplified by the quote from one of her articles in a UK Court of Appeal judgment. Ge also impresses peers with her “professionalism, efficiency and sharp briefs” in multiple trademark litigations.

Recommended - Firms: transactions

Silver - Firms: prosecution and strategy

Gold - Firms: enforcement and litigation

Allen & Overy has long ranked among the country’s trademark elite, with high-value instructions on both sides of the contentious/non-contentious divide flying in from all corners of the globe. It distinguishes itself as the only magic circle law firm with a significant prosecution practice – to which WTR 1000 debutante Karla Hughes has made a significant contribution. Having recently moved to Belfast from Alicante, she has spent more than a decade prosecuting and safeguarding trademark rights across Europe. Recent highlights include defending Gibson’s shape mark registrations relating to its world-famous guitars; assisting Netflix with a host of filings; and inputting on the management of Coca-Cola’s trademark portfolio and related oppositions. On all of these matters, she has worked alongside David Stone – not only a world-renowned portfolio strategist, but one of the biggest names in trademark litigation globally. Competitors hail him as an “outstanding practitioner”, an “absolute expert” and “one of the most recognised people in the WTR 1000”. Clients attest that “he is a very experienced and seasoned litigator, and his advice is always timely, measured and commercially pragmatic”. “The work that David does is at the cutting edge of trademark law.” He recently went out to bat for Manchester United in a high-profile trademark and passing-off dispute against Sega, which has major implications for the video game industry. Also on this brief is Neville Cordell, who has been litigating headline trademark, copyright and trade secret cases for the past 25 years. “From a personal perspective, I would call him the leading light for trademark work in this country,” enthuses one patron. “In fact, his skill set, experience and knowledge are such that he is a leading practitioner across all areas of intellectual property – which is quite rare.” The firm is also home to an outstanding transactional offering, anchored by Jim Ford and Nigel Parker. Heading the London commercial IP practice and co-chairing the firm’s global life sciences group, Ford is called on by the likes of Marks & Spencer for his percipient take on IP commercialisation. Parker is equally adept at building IP value and makes light work of major M&A and rebranding projects; he recently advised Naked Wines on the IP aspects of the disposal of its retail and commercial business to Fortress Investmen tGroup.

Silver - Firms

Allen & Overy’s French contingent may not be the largest outfit on the local market, but it is up there with the best; and thanks to the size and power of its international network, it can ably serve its blockbuster global clientele. It is the only magic circle law firm with a fully fledged trademark and designs prosecution practice; combined with its capacity for high-stakes litigation and heavy-duty transactional work, this makes it perhaps the most prestigious one-stop shop in France. The beating heart of the practice is Alexandre Rudoni, whose busy and varied calendar this year has included time spent advising Nintendo on its trademark enforcement issues and overseeing trademark clearances for Netflix. He founded and leads the Paris brands team and can be relied upon for all contentious issues involving trademarks, copyright and designs. At his side is Laëtitia Bénard, who has an outstanding reputation in the patent space, but also undertakes a healthy amount of trademark work – she heads up both the Paris IP practice and the global life sciences division.

Bronze - Firms

Allen & Overy’s German contingent provides a value-added service across the entire trademark lifecycle, eschewing siloed thinking in favour of a holistic, multi-disciplinary approach. Despite the modest size of the Düsseldorf group, it attracts rave reviews from colleagues across Europe: “The firm provides extremely pragmatic and straight-to-the-point solutions for clients. It is extremely responsive and sees things from a business point of view.” Running the show is Jens Matthes, whose broad legal knowledge encompasses trademarks, designs, patents and unfair competition issues. He thrives in disputes that involve interlocutory relief and is also a poised negotiator of IP-rich corporate transactions.

Silver - Firms

Executing all instructions with minimum fuss and maximum impact, the versatile trademark team at Allen & Overy is a top choice for total IP, IT, and data privacy support. While best known for its work in precedent-setting litigation and brand-rich transactions, the Belgian contingent also designs far-sighted brand strategies with input from colleagues in other departments and jurisdictions that cover all angles. In one recent highlight, it assisted Jack Daniel’s in a dispute with its largest Belgian distributor – a matter on which senior associate Edward Taelman ran point. His insight in a wide range of industries and across the trademark lifecycle, coupled with an unwavering work ethic, guarantees favourable solutions to the most complex scenarios. He works closely with partners Geert Glas and Peter Van Dyck, who have spent over 45 years in the game between them. “Highly respected all-round IP lawyer” Glas recently teamed up with Taelman to coordinate Nikon’s anti-counterfeiting strategy across Europe, establishing training programmes for customs agents and working closely with local partners. Van Dyck leads the tight-knit team and acquits himself with distinction on high-rolling transactional matters. He recently helped the Campari Group to acquire a majority stake in Champagne Lallier, becoming the first Italian company to own a Champagne brand.

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