Gowling WLG

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

Gold - Firms: enforcement and litigation

The Russian outpost of worldwide juggernaut Gowling WLG is distinguished by its total dedication to IP. Its success in prosecution, litigation and transactions prompts competitors to highlight it as “a group of quality lawyers who can deal with the most extraordinary requests and provide practical and scrupulous advice”. The Moscow team – under the leadership of Canadian-born David Aylen – assists the likes of Jaguar Land Rover, Starbucks and Volvo with trademark issues not just in Russia, but across the whole CIS region. Polished litigator Aylen earns effusive plaudits from clients: “Having worked with David on a challenging trademark litigation that went to appeal, he was thorough, understood the big picture, communicated options and strategies well, and was ultimately victorious. I think he is outstanding.” Assisting Aylen on Starbucks’ dispute with One Bucks Coffee, as well as on the Jaguar Land Rover brief – which has involved a high volume of trademark filings as well as customs enforcement actions and cancellation proceedings – is Alexander Christophoroff. He has appeared in more administrative proceedings than he can count and is the sitting president of the Russian Chamber of Patent Attorneys. Maria Aronikova has also been doing battle for patrons at Rospatent and the courts for 16 years in trademark, domain name, copyright and unfair competition proceedings. The versatile Maria Stadnik is a Swiss army knife of a practitioner who deals with issues of every flavour – from prosecution to litigation and licensing. Marina Drel and Yulia Yarnykh are both well versed in advertising and e-commerce issues, and act as a formidable strike force against counterfeiters.

Silver - Firms: anti-counterfeiting

Gold - Firms

“One of the most well-known names in intellectual property, Gowling WLG provides a reliable and effective service in both prosecution and enforcement. The firm has a deep bench of experienced practitioners who devise excellent strategies and arguments to get the job done successfully and bring about great outcomes.” The forward-thinking outfit is constantly looking for new ways to innovate and is currently creating a ground-breaking online-based initiative that aims to set a new standard in the provision IP legal services. It also has a dedicated brand protection and anti-counterfeiting group, which Christopher Pibus, Martha Savoy, and Monique Couture are central to, that uses cutting-edge software tools. “A rock-solid and super knowledgeable litigator, Christopher is outstanding and far superior to anyone I’ve come up against recently”, enthuses one peer. In the words of another: “An outstanding attorney, Martha provides smart recommendations and is a wonderful asset to anyone in need of advice and counsel.” “Well-versed in all areas of trademark law, Monique is very fair in negotiations and terrific across the table.” She has been co-authoring a chapter on Canadian anti-counterfeiting law along with Savoy. The side is also home to a sterling litigation division and leadership therein comes astute strategist and “excellent litigator” James Buchan. The managing partner cares about his patrons, as seen by his excellent work and the development of fruitful client relationships. “Excellent partners with immense expertise in trademark law”, Laurent Massam, Kelly Gill and WTR 1000 newcomer James Green have been assisting PayPal in a trademark infringement dispute against an Indian company that used a similar logo when it entered the market. Leading the team in Toronto, Kevin Sartorio has been managing all of Starbucks’ trademark prosecution and enforcement needs in Canada, teaming up with IP division lead Shelagh Carnegie to do so. Carnegie is a brilliant strategist who gets right to the point and focuses on solutions that are driven by innovation. Teaming up with both Sartorio and Carnegie to represent Outillages King Canada in a series of oppositions against Weems Industries is Natalie Rizkalla-Kamel. “A deliberate and effective practitioner, Natalie is instrumental in guiding her patrons. Her strategic thinking combined with her in-depth knowledge of business needs makes her an ideal partner.” In early 2020, she began overseeing the Royal Bank of Canada’s global portfolio, one of the top 10 largest portfolios in the country. For its domain name enforcement matters, Eric Macramalla comes to the fore. He is at ease in the online world, navigating the ever-changing social media landscape to assist with issues on various virtual platforms. Looking deeper into the prosecution division, Frank Mulock, Susannah Rolston, John Leckie and WTR 1000 debutant Jodi English shine. Mulock is noted for his deft global coordination of worldwide portfolios and tenacious representation in domain name conflicts; following the amendments to the Canadian Trademarks Act, Rolston has been supporting Magna with their portfolio and strategic filing; Leckie has been assisting the Mark Anthony Group with all their protection needs in local and international markets; and English’s “deep understanding of prosecution” has made her a confidant to some of the world’s most recognisable brands. Working alongside English in the Toronto office, Jennifer Morton stands out for her insight into the practices of the country’s trademark office. She collaborates extensively with the CIPO and its director general on existing and new trademark policies. “A force to be reckoned with, Jennifer is immensely knowledgeable and has a stable list of clients that adore her. She is tireless, energetic, and selfless”. In Ottawa, Stuart Ash, Douglas Fyfe and Paula Clancy also receive high praise from patrons: “Stuart is the greatest attorney. He is knowledgeable, diligent, and his demeanour is top-notch. He has offered nothing but good service at an excellent price since I gave him my first case many years ago and now, he receives all my trademark work for Canada.” “Doug has been an excellent partner for many years. He takes the time to get to know his in-house counsel counterparts, is quick to respond, and never upsells. He is one of the best attorneys I have ever worked with.” Returning to the firm in November after a successful 13-year stint at her own boutique, Clancy “is leagues ahead of her competitors”. “Paula has the ability to deconstruct complex topics and deliver pragmatic guidance. Her forward-thinking assistance enables customers to acquire the greatest possible protection in Canada, which includes providing enlightening advice regarding the best strategies. She is the go-to attorney in the country.” Holding down the fort in Hamilton, “Lori Hall has a superior grasp of the law and always achieves desired results. She strategically executes trademark prosecution in a timely and thorough manner, and her ability to integrate complex national and international knowledge with a vast understanding of business needs sets her apart”. Rounding out the line-up, Ronald Dimock is lauded as a “trademark guru” by those in the industry and he has contributed vastly to landmark cases over the past four decades.

Bronze - Firms: prosecution and strategy

Silver - Firms: enforcement and litigation

Gowling WLG has a mighty 200 dedicated professionals stationed in 19 offices in nine countries worldwide, and the UK contingent is a vital cog in this slick machine. By merging international reach with local knowledge and maintaining relationships with a range of trademark attorney agencies, the firm makes itself a compelling one-stop shop for clients of all stripes. Heading up the IP practice is Kate Swaine, whose recent credits include crafting the brand strategies of Major League Baseball and Weetabix. “Kate is fabulous!” enthuses one market source. “She has a very international outlook and is very hands-on, with a lot of knowledge under the bonnet, and is always ahead of new developments. She has an in-depth understanding of her clients’ businesses and provides valuable commercial advice as a result.” Co-heading the global brands and designs group is the “astute, commercial and knowledgeable” John Coldham, who has been representing Oatly in infringement proceedings against Glebe Farm Foods. “John is available any time you need him. He is good with people – including both clients and counsel – takes a sensible objective view of cases and provides practical advice.” His fellow litigator is the forward-thinking Alexandra Brodie, who co-chairs the firm’s global tech division, plays a hand in both patent and trademark matters, and balances close attention to detail with big-picture thinking. Also on deck are Huw Evans and Gordon Harris. Head of patent litigation Evans dedicates a significant chunk of his time to trademark work; while Harris spent 25 years of his 35-year career as the firm’s IP head and continues to provide invaluable insight and guidance to the team. “Gordon is very experienced and that shows through in his work. He and his team are very thorough and innovative in building cases which lead to satisfying conclusions for clients.” Connecting the IP squad to the firm’s advertising division is Dan Smith, whose knowledge of the ins and outs of sponsorship and endorsement agreements knows no bounds.

Recommended - Firms

The major event for Gowling WLG this year is the arrival of ex-Clyde & Co IP head Elliot Papageorgiou. With the addition of the whole Clyde & Co China IP team, the firm has established itself as one of the most pre-eminent foreign IP outfits in the region. The Beijing and Guangzhou offices form a formidable duet and cover everything from domestic filing to IP litigation across China. Papageorgiou works hand in hand with head of IP prosecution Jian Xu in Beijing to provide a 360-degree, cross-industry, cross-border service. A shrewd IP practitioner who is full of character and energy, Papageorgiou has a firm understanding of Chinese IP law and is equipped with top-notch technical proficiency. Many European and US clients return to him for his highly sophisticated and intelligent IP counsel. His track record on handling complex litigation matters before the Supreme People’s Court is also impeccable. A testimonial from one of his longstanding patrons sums it up the best: “Elliot provides unparalleled service and is basically the only lawyer I would select for IP matters in China.” Meanwhile, Xu tackles all fronts of IP prosecution and has a brilliant command of an array of industry knowledge. An author of a popular Chinese IP guide, he has garnered high praise from peers and clients alike over his decades of career as an IP attorney. “Jian Xu understands our needs very well. He is an amazing caretaker who ticks all the boxes.” Now based in London, partner Jamie Rowlands oversees the China IP team and has extensive experience in all aspects of the court system in the country.

Gold - Firms

The IP experts at Gowling WLG leverage their granular understanding of trademark law and local policy and intuitive business sense to provide total support across the branding spectrum. One of the most popular and well-liked IP professionals both locally and worldwide, Jon Parker makes the global firm a compelling destination for prominent domestic and international clients. “Jon is an absolute pleasure to work with – his knowledge of trademark laws across the region and beyond is so impressive. His friendly and practical approach makes a world of difference and he always delivers excellent work at a reasonable price point. Simply put, he is the trusted adviser that everyone looks for.” The praise continues to pour in from other sources: “Everyone loves Jon – he is just a brilliant lawyer. If I were coming into this market and needed someone to instruct, Jon would be my first choice.”

Firm Profile

With more than 1,500 legal professionals in offices worldwide, Gowling WLG is an international law firm offering clients a comprehensive suite of legal services across multiple jurisdictions and industry sectors.

The firm is widely regarded as a global leader in IP law, with significant strength in prosecution, enforcement and litigation, and transactional work.

Global reach

Gowling WLG is home to top IP practices in Canada, Russia, the United Kingdom and throughout Europe, as well as across an arc of challenging jurisdictions that include the United Arab Emirates (UAE) and China. Our exclusive association with JurisAsia in Singapore — along with a robust network of established relationships with leading IP practitioners worldwide — ensures our clients have access to the very best in trademark services, wherever their business takes them.

With a view to serving our clients better, we continue to grow our global platform each year. Most recently, in September 2021, we announced a significant expansion of our IP practice and relationships in China. This expansion includes:

  • the transfer of Clyde & Co’s Chinese IP practice to Gowling WLG, giving Gowling WLG clients access to a broader range of IP services’
  • an exclusive referral arrangement with Chongqing Aquila Law Firm (Aquila Law). This arrangement will allow Gowling WLG to provide clients with enhanced, seamless access to the Chinese courts and IP offices; and
  • a new office in Shanghai, an extension of Gowling WLG’s IP agency in Beijing. This office will complement the firm's existing locations in Beijing and Guangzhou, as well as Aquila Law's office in Chongqing.

Prosecution

Directly through our offices in Canada, Russia, China and the UAE — as well as through our extensive network of trusted international associates — we offer clients a full range of trademark prosecution services. From filing to managing large international portfolios to supporting complex transactions, our professionals deliver practical, cost-effective legal advice to help commercialise and maximise your IP assets.

Enforcement and litigation

Our prosecution services are matched by formidable enforcement capabilities spanning all our global offices. Our services encompass opposition proceedings, infringement, cancellations and invalidations, passing off, dilution, anti-counterfeiting, trans-shipping and parallel import matters.

We regularly appear before all levels of court in the United Kingdom, Europe, Russia and Canada, and manage and coordinate litigation in other jurisdictions. Members of our team have represented clients successfully in a wide range of matters, including with respect to trademark validity, the misappropriation of confidential information and theft of trade secrets, defamation, and IP licensing disputes. From ‘bet the company’ litigation to the smallest skirmish, we work tirelessly to ensure we achieve optimal outcomes for our international clientele.

Transactions

Our global IP transactions team has a rich track record advising on a breadth of IP transactional and cross-border matters, including with respect to transfers, coexistence, joint ownership, licensing and recordals, securitisation of intellectual property, brand clearance and franchise contracts — as well as the IP aspects of corporate transactions (including M&A, joint venture and hive offs). Our team also has particular experience in life sciences, IT, competition/antitrust and employment transactions.

Full-service offering

Outside our IP practice, Gowling WLG is equipped to advise clients in virtually every area of law relevant to business. This comprehensive offering gives our team the ability to seamlessly harmonise our clients’ IP interests with other facets of their organisation, and in turn develop a more holistic picture of their business objectives. This is one of our core strengths and a key differentiator from other IP service providers — whether they are full-service firms or boutiques.

Recognition

Our IP practice and the professionals who comprise it are routinely recognised by the world’s foremost IP publications. In 2021 alone, our team received multiple distinctions:

  • World Trademark Review selected 11 Gowling WLG professionals across four countries, more than any other firm in the world, for inclusion in the 2021 edition of WTR Global Leaders; and
  • Gowling WLG was named among the top 26 international trademark firms in the 2021 edition of WTR 1000. The guide also recognised 39 Gowling WLG trademark professionals around the world who together earned a total of 47 listings across multiple areas.


 

 

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