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.

Gold - Firms: prosecution and strategy

“Excellent, strategic and responsive”, is the consensus on the IP practitioners at BomhardIP: “They are great at managing international trademark portfolios, have fantastic acquisitions skills and are at their best in litigation before the local and European courts.” Amazon, Pfizer and LEGO are just some of the jewels on the firm’s glittering client roster; the latter has recently sought advice from Verena von Bomhard on the defence and enforcement of its portfolio, as well as on the coordination of global filing projects. The “insightful and bold” von Bomhard is “a role model and a mentor to many in the industry”, as a “creative problem-solver who can be trusted with high-profile, complex issues”. “Verena’s breadth of knowledge and experience is virtually unmatched. She is great at explaining complicated legal concepts to non-EU practitioners; with her acute legal thinking, this makes her a first-class expert.” Peers and patrons alike are quick to highlight Johannes Fuhrmann’s “responsiveness, concise communication style and strong business focus”. “His counsel is always clear and actionable, takes into account potential risk and always considers wider client needs and objectives.” Also on board is the “approachable and efficient” Giles Corbally, who has “an impressive list of clients” and is “particularly excellent in opposition and litigation proceedings”; one notable example of the former is his recent work for Soho House Limited. Polished advocate and eloquent orator Inmaculada González is regularly sought out by the likes of Levi Strauss, Christian Louboutin and WhatsApp for representation in oppositions and various skirmishes.

Firm Profile

BomhardIP is a law firm specialising in intellectual property and based in Alicante which started business in March 2015. With attorneys from six different jurisdictions and a team of multilingual paralegals, the firm renders high-level EU and Spanish IP services to multinational clients, with an emphasis on EU trademarks and multi-jurisdictional trademark clearance.

All of the attorneys and paralegals draw from many years of experience gained as members of highly renowned IP teams at major international law firms. The combination of professional expertise with the lean and transparent structure of the boutique firm works to clients’ advantage and guarantees direct, high-quality advice from experienced practitioners.

The EU law experts at BomhardIP focus on EU trademarks and designs, pan-European brand protection and enforcement strategies, alternative dispute resolution and multi-jurisdictional clearance searches. Founding partner Verena von Bomhard has been dedicating her professional endeavours to EU trademarks since 1996, making her a leading outside counsel in this field. Giles Corbally has 20 years’ experience in EU trademark law and has been involved in Community design law since its establishment. He brings in-house perspective to the team from a previous position. Johannes Fuhrmann, who became a partner on 1 March 2019, has also been advising international clients on European IP issues for over eight years. The firm also boasts significant court experience, with its members having handled over 80 proceedings before the EU General Court and nine before the European Court of Justice in Luxembourg. It is therefore one of the most experienced firms in this area.

The Spanish department of BomhardIP, headed by Of Counsel Inmaculada González, advises on all areas of intellectual property. Ms González has extensive experience in clearing and registering trademarks and designs; she also advises on patents, utility models, plant varieties, IP licensing and franchising, technology transfer and copyright issues, unfair competition matters, data protection, e-commerce and entertainment law. She is an experienced litigator and has handled numerous IP infringement and invalidity proceedings before the Spanish courts, as well as opposition proceedings before the Spanish Patent and Trademark Office. Her experience in enforcing EU trademarks and designs before the Spanish Trademark Court in Alicante rounds off the firm’s highly specialised EU trademark department.

The firm advises clients in many industries, including food and beverages, personal care, healthcare, crop science, toys, fashion, sports, leisure and travel, finance and information technology. BomhardIP’s attorneys make their clients’ business priorities their own, and this drives them to provide legally sound, commercially oriented and cost-effective solutions that make their clients’ lives easier.

The firm’s professionals are active members of IP associations, including INTA, MARQUES, the European Communities Trademark Association (ECTA), the Pharmaceutical Trademarks Group, the German Association for the Protection of Intellectual Property (GRUR) and the Asian Patent Attorneys Association. They are also authors and editors of various articles and legal compendiums and closely follow and participate in the development of the law, always seeking to foster brand owners’ interests. Ms von Bomhard currently serves on the Trademark Reporter Committee. She is also a member of GRUR’s Expert Committee for Trademark and Competition Law. Mr Corbally is a member of the INTA Legislation and Regulation Committee and the ECTA Publications Committee. He is also on the EU advisory board for global trademark search provider Corsearch. Mr Fuhrmann is currently a member of INTA’s Non-traditional Trademark Committee and of MARQUES’s European Trademark Law and Practice Committee.

In less than five years, the firm has received widespread recognition as a leading firm in the trademark field with a specialisation in EU trademarks. It received silver ranking in the WTR 1000 2018 and 2019Further, it was awarded Managing Intellectual Property’s Firm of the Year Award for trademark prosecution – Spain two years in a row (2018 and 2019). The firm was included in the Spanish category due to its location, but the award reflected its pan-European activities.

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