Norton Rose Fulbright

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: transactions

Bronze - Firms: prosecution and strategy

One of the largest IP teams in the world, Norton Rose Fulbright’s offering is spread across five continents, with its most recent expansion coming in China. Its international strength and depth attract patrons such as Nike and BNP Paribas along with a host of other companies in the consumer goods, food and beverage, and luxury goods sectors. Head of Intellectual Property for the Europe Middle East and Asia region is transactional specialist Mike Knapper. “Mike provides pragmatic, business-focused advice. He is professional, reliable, responsive and extremely knowledgeable.” Leading the prosecution effort is Abida Chaudri, who has a combination of private practice and in-house experience, having been seconded to GlaxoSmithKline and Diageo. She has recently been providing portfolio management services to BNP Paribas.

Silver - Firms

Norton Rose Fulbright’s US brands team spans six offices in three states, Texas, Minnesota and New York, and forms a central cog of an international offering which scores further WTR 1000 recognition in Canada, Australia, Hong Kong, Germany and the United Kingdom. Its US attorneys file trademarks extensively at the USPTO and abroad, deal with a large volume of disputes and, in conjunction with colleagues in non-IP departments, see to the successful completion of IP-rich commercial transactions. Applying a local lens, the Minnesota group has grown significantly of late with multiple new hires at the associate and counsel levels strengthening the team. Attracting and retaining the best talent is the job of Minneapolis partner-in-charge – and co-head of US intellectual property – Timothy Kenny, and he does it extremely well alongside his activities for top clients in consumer goods, technology, life sciences and other fields. His recent efforts include coordinating a major global search and filing project for Electronic Arts, relating to the rebranding of its primary trademark and logo, which, involving other partners in Vancouver, Sydney, London, Singapore, Johannesburg and Hong Kong, presents a good example of the firm’s cross-border teamwork. Another leader on the roster is Felicia Boyd, who recently took over the captaincy of the US IP brands team. Boyd is best known for her litigation talents, but can also be described as an elite all-rounder in trademark practice.

Recommended - Firms

Bronze - Firms: prosecution and strategy

Coming with an extensive network of worldwide associates, the IP practice at Norton Rose Fulbright’s Hong Kong office is well placed to deliver a multi-jurisdictional, A-to-Z of IP services. It dispenses sophisticated prosecution, litigation and transaction counsel, especially within financial institutions, energy, infrastructure, transport, technology and life sciences sectors. BNP Paribas and Crown International are among those well-known brands that have entrusted the group with their vast trademark portfolios. The credit must go to rainmaker Justin Davidson, whose service is considered by many as “simply spectacular”. He regularly assists in protecting and exploiting IP portfolios and with the growing sophistication of the Chinese legal system. Working alongside him is Maggie Chong — an IP and technology lawyer who helps service users to manage, protect and commercialise their portfolios across Asia.

Bronze - Firms

With brand specialists on both coasts, along with Minnesota and Texas, the trademark team at Norton Rose Fulbright is well placed to help clients with almost any issue. The firm has three offices in Texas, all of which played some part in the approximately 400 trademark searches, 150 opposition and cancellation proceedings, and numerous disputes the group is involved in every year. In Dallas, partner Linda Merritt focuses her practice on trademark, trade dress, copyright and technology matters, both contentious and non-contentious. One major patron, for whom she handles prosecution work and enforcement actions at the TTAB, is a tech company that operates a number of dating applications. She was also involved in a district court litigation on behalf of a confidential client, which involved the assertion of post-mortem rights of publicity. The result was a court-issued permanent injunction against the defendants.


Silver - Firms

Silver - Firms: anti-counterfeiting

Many of the most well-known brands in the world choose to work with Norton Rose Fulbright because it has one of the biggest and most well-integrated worldwide IP practices. The group provides clients with exceptional advice and handles their issues in a way that benefits their company in the long run. The Canadian branch has a discerning enforcement and litigation offering where Chris Wilson stands out. “Chris has a reputation for being a pragmatic and invaluable partner. His international perspective, business-savvy approach and excellent insight into the mindset of opposing counsel mean the outcomes achieved are outstanding. Without a doubt, Chris is one of the best lawyers in the trademark space.” The outfit also has solid expertise in the anti-counterfeiting arena in the form of Karen MacDonald, who earns high praise from her patrons: “When dealing with hundreds of brands, we need counsel that is responsive, organised and practical. Karen is all of that and more. She provides an exemplary service and is constantly ready to modify internal procedures to meet our demands.” Rounding out coverage of the team are Jean-François Drolet and Elizabeth Williams, both of whom are integral to the firm’s success in transactions involving intangible assets, complex licensing and M&A. Drolet drafts commercial contracts that successfully protect intellectual property rights with ease, and Williams manages significant multi-jurisdictional M&A transactions.

Bronze - Firms

Norton Rose Fulbright is a household name across Europe, Asia and North America, with recent expansion coming in China. The German team remains a pivotal cog in the machine, representing the likes of BNP Paribas and Nike. “The practitioners are robust, reliable and friendly in their approach. They are highly responsive, proactive and dynamic.” The key duo in Frankfurt are Daniel Marschollek and Manuel Merling. Marschollek takes the lead in the portfolio management work for BNP Paribas and is regularly instructed by leading blue-chip companies. “Manuel has a global business mind and a wide knowledge of trademarks. He is sharp, strategic, flexible and hardworking. Manuel can handle complex cross-border IP matters and has a deep understanding of his clients’ needs.”

Silver - Firms: prosecution and strategy

Silver - Firms: enforcement and litigation

With a fearsome reputation in trademark disputes and an unmatched brand protection offering, international firm Norton Rose Fulbright is a convenient one-stop shop for entities looking for commercially sound advice and insightful instructions on contentious matters. Its extensive global network also entices service users to seek a unified strategy on multi-jurisdictional matters. In addition to global integration, the Australian arm “gives straight-to-the-point, practical advice and provides clients with a good understanding of the nuances of the local practice”. Anchoring the group is head of intellectual property Frances Drummond, who “has remarkable knowledge of trademark law, especially in the area of registration, which is usefully deployed in parallel with litigation”. Working alongside Drummond is partner Georgina Hey, who is a specialist in brand and IP asset management and has played a keen part in some of the biggest deals in Australia for the past year. Hailed by one enthusiastic patron as “one of Australia’s pre-eminent intellectual property lawyers”, IP litigator Jackie O’Brien has clocked up more than 30 years of experience in tackling contentious IP matters in Australia and become a household name on the scene. “Her legal knowledge is matched by her commercial acumen and her deft skill in compiling the right team for each case to meet the client’s needs and to achieve the best possible outcome.” Also well regarded on the IP contentious front is head of disputes Cameron Harvey, who has extensive superior court trademark litigation experience. “He is a skilled, commercial negotiator with a strategic approach to litigation and resolution.” Formerly at Gilbert + Tobin, Mindaugas Skavronskas has found a new home at Norton Rose Fulbright. He excels at complex prosecutions and global portfolio management.

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