Editorial: Trademarks

01 August 2007

Trademark law is one of the most internationalised legal fields, as companies attempt to defend their marks in an increasingly globalised world. The need for expert knowledge and local insight is reflected in the following pages, where we identify 515 lawyers in 61 countries as standout trademark practitioners at IP boutiques and major corporate firms.

New York Savvy

Among the US states, New York provides the greatest number of lawyers: 40. Specialist IP firms gain a healthy level of representation at the top end of the market. One such is the winner of the Who’s Who Legal ‘Trademarks Law Firm of the Year’, Fross Zelnick Lehrman & Zissu PC, which has a formidable presence in the state. With clients such as Chanel, Colgate-Palmolive, PepsiCo and Sony BMG Music Entertainment, it is New York’s star performer. It has nine nominees – a greater figure in one jurisdiction than any other firm. The “terrific” Ronald Lehrman’s international trademark work once again attracted the most recommendations in the Big Apple, earning him a place in our breakdown of the practice area’s elite (see sidebar). Lehrman represented McIlhenny, helping to recapture the Tabasco trademark from a Japanese trademark pirate. Susan Upton Douglass’s work is described to us as “very good” and she has widely published on trademark matters. She appears alongside Marie Driscoll, described as “top notch” for her pharmaceutical expertise. Russian law expert Janet Hoffman, the “fabulous” litigator Roger Zissu, and expert in the recapture of famous international marks, Peter Silverman also performed very well in our research. Michael Davis, known for his focus on international disputes, David Ehrlich – “very sharp” – and entertainment industry expert Stephen Bigger complete the impressive showing for this New York powerhouse.

Cowan Liebowitz & Latman PC’s strong New York IP practice boasts a desirable client list including names such as QVC, Joan Rivers, Estée Lauder, Clinique, Time Magazine and LA Gear. Six of the firm’s trademark practice group feature in this publication, including William Borchard, who was praised as “one of a generation of really great lawyers”. The “super” Baila Celedonia was also recommended for her work on international trademark and intellectual property portfolios. She is joined by Albert Robin, whose experience is well respected. arthur Greenbaum – whose clients include Estée Lauder and Empire State Building – Mary Kevlin and Jeffrey Epstein were also well regarded.

Fross Zelnick and Cowan Liebowitz dominate in terms of numbers, but trademark talent in the state is spread across a noteworthy array of respected firms and individuals. Bruce Keller supervises Debevoise & Plimpton LLP’s IP litigation group and he appears alongside David Bernstein. Ropes & Gray LLP also provides two for our list: Vincent Palladino was showered with praise for his “excellent” practice and work as former editor- in-chief of The Trademark Reporter, as well as for his writings on issues such as secondary meaning and genericness. Palladino’s partner Susan Progoff is “the real deal”, according to one of our sources. Fitzpatrick Cella Harper & Scinto receives praise for the work of Pasquale Razzano and Edward Vassallo, who is the former president of the New York Intellectual Property Law Association and who has represented clients ranging from Calvin Klein to Exxon. King & Spalding LLP’s New York office boasts the figure of Clark Lackert – one of the most nominated practitioners in the state – and the “brilliant” Ethan Horwitz. Lackert has been a consultant to the US government on implementing the World Trade Organization’s TRIPs Agreement concerning trademark, patent and copyright issues. Ladas & Parry LLP’s Allan Pilson also fared well in the research.

California

America’s West Coast lawyers also make an impressive showing, fielding 27 lawyers, two of whom make the cut for our breakdown of the top practitioners. Yet again, the individual with most recommendations in the state this year is Morrison & Foerster LLP’s “famous” Thomas McCarthy. Author of the sixvolume treatise, McCarthy on Trademarks and Unfair Competition, he is a senior professor of Law at the University of San Francisco and founding director of the McCarthy Institute for Intellectual Property & Technology Law. He is joined on the list by the “smart” Sally Abel of Fenwick & West LLP, who is “very well known and respected in the international trademark community” for her work in “very complex issues throughout the world”, and her internet expertise.

California’s top-performing firm is Knobbe Martens Olson & Bear LLP, the only one in the state to gain multiple entries. The firm’s excellent IP reputation is reflected by its client list, which includes names such as Bob Hope Enterprises, Shaquille O’Neal and Samsung. Firm co-founder Louis Knobbe’s arbitration expertise is widely acknowledged, as is his presence on the lecture circuit. Fellow name partner Darrell Olson is chair of the firm’s litigation committee and is known for his work in the chemical and mechanical fields. Lynda Zadra-Symes, formerly a co-chair of the International Bar Association committee for intellectual property and entertainment law, is highly recommended for her US IP litigation and her international trademark advice. Partner Susan Natland is also well known for her management of domestic and international portfolios. Kirkland & Ellis LLP intellectual property group co-head Robert Krupka was frequently commended as a trial lawyer. Elsewhere, Greenberg Glusker Fields Claman Machtinger & Kinsella LLP’s “outstanding” Steven Weinberg is also widely acclaimed.

Rest of the Best – US

A notable array of talent lies beyond the borders of the two East and West-Coast IP centres. Illinois houses a fine selection of specialist IP firms: Brinks Hofer Gilson & Lione is home to the top practitioner in the area; co-founder Jerome Gilson, who also appears in our list of most highly regarded lawyers. The original author of a leading treatise in the field, Trademark Protection and Practice, Gilson is renowned nationally and internationally for litigating for marks such as Coca Cola and McDonald’s. He is also a recipient of the International Trademark Association President’s Award. “Formidable” litigators Gary Ropski and Jack Berenzweig also fare well in the research. Pattishall McAuliffe Newbury Hilliard & Geraldson LLP was recommended as a “strong firm” to researchers. The firm boasts a contingent of six practitioners recommended for their trademark work – the highest proportion in the state. Robert Sacoff, former chair of the ABA Section of International Property Law is “authoritative”; he appears alongside past president of the Intellectual Property Law Association of Chicago, Raymond Geraldson. Mark Partridge’s “sterling” work in the food industry was noted. Senior partner David Hilliard also appears. The “excellent” Jeremiah McAuliffe and Joseph Welch – “great to work with” – complete the firm’s showing.

In Atlanta, the talented team at Kilpatrick Stockton LLP dominates in terms of practitioners listed: four nominees make the cut, including the “outstanding” Miles Alexander, who is included in our list of top practitioners as well as being the most frequently mentioned lawyer in the state. Co-chairman of the firm Alexander received the 2002 INTA President’s Award. Respondents also “had the highest regard for” Virginia Taylor. Theodore Davis and Jerre Swann were also pointed out for their expertise at this esteemed office. Finnegan Henderson Farabow Garrett & Dunner LLP’s DC office is yet another “very strong” practice, whose clients have included The Body Shop, Disney and Ameritrade. A “great firm”, it has four representatives on our list. This includes the state’s highest nominated lawyer: the “excellent” Mark Sommers, who also appears on our list of top practitioners. Sommers is well known for his work in the American, European and Asian markets. “Top-drawer” senior counsel Laurence Hefter is widely published, while David Kelly and Douglas Rettew also drew praise. Sughrue Mion PLLC can also boast a four-practitioner representation in DC. Mack Webner, Gary Krugman and Jody Drake appear alongside managing partner Cynthia Weber. Arent Fox LLP’s contingent also came highly recommended – michael Grow and sheldon klein were reportedly “very experienced and well respected”. Michael Clayton at Morgan Lewis & Bockius LLP is a “leader”; he appears alongside his colleague, the “well-regarded” Rochelle Alpert.

Texas hosts a number of well-respected names, including the lawyers at the newly formed trademark boutique Pirkey Barber LLP. Named partners, the “great” Louis Pirkey and William Barber, who is “always in the mix”, both teach Trademark Law at the University of Texas. They are also former partners of Fulbright & Jaworski, as is Steve Meleen, the third Pirkey Barber lawyer on our list. Fulbright & Jaworski LLP remains a significant presence in the Texas trademark market. Richard Groos generated an impressive response, as did Michael Metteauer and Shannon Vale. Their DC partner Paul Williamson was described as “excellent” and is valued for his experience. Finally, another popular inclusion is the “wonderful” John Cone at Hitchcock Evert LLP in Dallas.

A number of individual lawyers stand out. Leslie Lott at Lott & Friedland PA in Florida is the final US lawyer to be mentioned in our list of top practitioners. Described as “fantastic” and a “great lawyer”, she is especially well regarded for her work in ADR matters. Georgia sole practitioner Joan Dillon was described as “wonderful”. She advised the 1984 and 1996 Olympic committees on trademark law. Foley Hoag LLP in Maryland is represented by the chair of the ABA’s intellectual property law section, Susan Barbieri Montgomery, whose national and international reputation was widely recognised in the research.

Canada Trademark Stars

With three practitioners in our breakdown of the area’s elite, Canada is surely one of the world’s strongest jurisdictions for trademark law. Daniel Bereskin of Bereskin & Parr is the highest-nominated lawyer overall and is a two-time winner of the Who’s Who Legal ‘Trademark Lawyer of the Year’ award. A “living legend”, Bereskin is a winner of the INTA President’s Award for his long-standing service and involvement with the International Trademark Association. Cynthia Rowden also makes the cut in our list of top lawyers and is recommended as “top-tier” for her portfolio work. Sheldon Burshtein at Blake Cassels & Graydon LLP is also recognised, especially as a “prolific author” and speaker.

Gowling Lafleur Henderson LLP has a long-standing tradition of IP work and provides three names for our list: Robert Macdonald has a multifaceted practice and also lectures in Trademarks at McGill University. “Litigation expert” Scott Jolliffe and Paul Blanchard complete the Gowlings contingent. Another well-recognised individual is named partner Hugues Richard at Leger Robic Richard LLP, who is joined by Bob Sotiriadis in the following pages. Smart & Biggar/Fetherstonhaugh wins praise for the work of Michael Manson, who is “clearly top tier” and “very competent”, with a broad-based practice, mainly focused on litigation. David Morrow, noted for his scientific and technical expertise, joins Manson on the following pages. Toni Polson Ashton at Sim Lowman Ashton & McKay LLP also received effusive praise.

Citizens of the World

A number of international firms have cultivated extremely successful worldwide networks of trademark specialists and are known for providing multi-jurisdictional expertise.

Baker & McKenzie, with nine nominees in eight jurisdictions, possesses the greatest international spread of any featured firm. Margaret Boulware in Houston is highly rated, and Stephen Jones and Paul Rawlinson both do “fine work” at the London office. In Europe, Michael Treis represents the firm’s Swiss arm and Carles Prat features from the Barcelona office. In Moscow, Eugene Arievich is “a skilled and respected specialist in the field”. The firm’s Asia-based contingent is particularly strong, with two inclusions. Thailand’s Sujintaya Sayumporn received generous praise for her client-focused approach. Christopher Lim at Quisumbing Torres (associated with Baker & McKenzie) in the Philippines also makes the list. Alvaro Correa at Raisbeck Lara Rodriguez & Rueda (Baker & McKenzie) in Colombia completes the firm’s contingent.

Our list contains nine representatives of Lovells, in six locations. The majority of these inclusions reside in Europe: the London office is home to David Latham and Nicholas Macfarlane, who were both recommended for their disputes experience. The “very active” Verena von Bomhard is founder and managing partner of the firm’s Alicante office and in Madrid, Burkhart Goebel is famed for his complex multi-jurisdictional trademark work. Carsten Albrecht and Andreas Bothe represent the firm in Germany and the “excellent” Luigi Mansani is included for his “strong IP practice” at the Milan of- fice. In the Netherlands, Marc Wallheimer makes the cut and Henry Wheare was recommended as “the man” in Hong Kong.

Bird & Bird has a “formidable IP department” and boasts eight nominations across five jurisdictions in our book. Among others, Bird & Bird has represented Nestlé and Phones4u.co.uk Internet. Joint head of the intellectual property group Morag Macdonald has an “excellent reputation” for pan-European work and combines this with work in computers and electronics. All of which earns her a place among our elite top 20 practitioners. Three other practitioners join her in the London section: Trevor Cook is widely published and especially known for his work in the pharmaceuticals sector. One competitor said that Jane Mutimear was “very good and extremely active in the area of internet and domain names” and Peter Brownlow’s trademark litigation has garnered praise from peers. In the Paris office, Isabelle Leroux, chairman of the French trademarks and internet board of the Association des Praticiens du Droit des Marques et des Modèles (APRAM), is acclaimed for her expertise in settling internet domain name disputes. In Germany, Wolfgang von Meibom is the other head of the firm’s IP group and carries a “great reputation” for national and international work. Finally, Matthew Laight in the Hong Kong office was described as “a great allrounder”.

Allen & Overy LLP completes the quartet of international firms with lawyers in five jurisdictions. In London, Nicola Dagg joins Catriona Smith, who is known for gaining the first European-wide Community Trademark injunction in the UK. The “very established” Henning Harte-Bavendamm was characterised as a “major player” in Germany. In Belgium, Geert Glas is chair of the firm’s pan-European IP practice, appearing along with the “excellent” Thierry van Innis. Pierre Lenoir in France and Paul Reeskamp in the Netherlands bring the count at A&O up to seven.

England

The healthy market for trademark law in London is reflected in the number of stellar lawyers we identify. Isabel Davies – an “outstanding” new addition to CMS Cameron McKenna LLP since our last survey – distinguishes herself by being the highestnominated trademark lawyer in the country, which gains her entry onto our list of top practitioners. “Accomplished litigator” sally field at Bristows is described as “excellent” and appears along with the head of the firm’s trademark prosecution and brands practice, Paul Walsh. David Llewellyn of White & Case LLP is noted for his academic work, and Nick Rose and John Olsen of Field Fisher Waterhouse LLP come highly recommended. Charters Macdonald-Brown, co-founder of IT and IP specialist firm Redd Solicitors LLP also receives praise: one participant told researchers: “I love his work.” Tony Willoughby of Rouse & Co was commended as “outstanding and seasoned”, and Ian Starr of Ashurst is yet another very well-regarded nominee.

Continental Europe

Throughout Europe, specialist firms maintain an imposing presence at the high end of the market for trademark work. This is certainly true for Germany: specialist firms such as Bardehle Pagenberg Dost Altenburg Geissler continue to produce the country’s highestnominated lawyers. Named partner, the “very strong” Jochen Pagenberg received the most recommendations in the country in this year’s research. A “big player”, he specialises in litigation and licensing. His colleague, the “seasoned and well regarded” Peter Munzinger also performed well in the research. Carmen Lichtenstein of Lichtenstein Körner & Partners is “well respected in the field” and has attracted an excellent client list. The “capable, confident” Maximilian Kinkeldey of Grünecker Kinkeldey Stockmair & Schwanhäusser attracted a deluge of favourable comments and is especially known for his recent representation of Wrigley in the European Court of Justice.

In France, Cabinet Hirsch & Associés and Gilbey de Haas lead the field with two nominees apiece. Marc-Roger Hirsch tops the ranking for the country and is “well known and respected”, with an admired track record in dealing with US companies. His colleague, Gerard-Gabriel Lamoureux also fares well. Richard Gilbey of Gilbey de Haas is well recognised and considered “top-tier” by competitors. The firm’s co-founder Charles de Haas was recommended consistently for his litigation experience. Arnaud Michel at Gide Loyrette Nouel is well known and widely published, and Phillipe Combeau at Cabinet Phillipe Combeau was described simply as “splendid”. The Netherlands hosts the highest polling lawyer in Europe: Charles Gielen of NautaDutilh received more votes than any lawyer here is “very well known” for his litigation and academic work. He is the past president of the Dutch group of AIPPI and he also serves on the executive committee of the board of directors of INTA. Another Dutch lawyer to receive plaudits is Paul Steinhauser of Steinhauser Hoogenraad Advocaten. Top for trademarks in Italy and listed in our breakdown of elite practitioners is Fabrizio Jacobacci of “excellent firm” Studio Legale Jacobacci. Trevisan & Cuonzo Avvocati also stood out with a pair of lawyers, Luca Trevisan and Gabriel Cuonzo, appearing in the final cut. The firm successfully assisted Fox Wizel Ltd in defending its trademark in infringement proceedings brought against it by Fendi. In Ireland, Neil McVeigh at F R Kelly & Company specialises in Irish and European Community Trademark law and is especially known for his work dealing with parallel imports. Described as “an institution”, Helen Papaconstantinou at the Law Offices of Dr Helen Papaconstantinou, John Filias & Associates stands out in Greece for her international practice. Finally, Roddy Kyriakides’s firm Emilianides & Kyriakides in Cyprus was described as “the best in the region”.

Asia and Australasia

Once again in our Asian breakdown, Ella Cheong at her own firm in Hong Kong retains her position as highest nominated practitioner in the region, as well as one of the top practitioners worldwide. A “successful businesswoman and lawyer”, her clients can “always count on her to give good advice”. Peggy Cheung's registration and enforcement work continues to solicit admiration in Hong Kong. Another very successful Hong Kong-based businesswoman with an international reputation is the past president of the Inter Pacific Bar Association, Vivien Chan at Vivien Chan & Co. Wilkinson & Grist boasts two fine IP specialists: Yvonne Chua is currently chairman of Licensing Executives Society (LES) of China, Hong Kong sub-chapter and anne Choi, whose 30 years of IP experience have earned her an excellent reputation. Lindsay Esler at Deacons was described as “very strong and solid in this area” and Rebecca Lo, who recently founded Rebecca Lo & Co, is held in high esteem. At Singapore’s Amica Law LLC, “top-tier” Jo-Ann See stands out as the city state’s most recommended practitioner. In Thailand, Nettaya Warncke at Domnern Somgiat & Boonma Law Office Ltd is “a great lawyer with an international reputation”. Jay Young June Yang at Kim and Chang in South Korea fares well in the research and in India, Anand and Anand received a plethora of favourable comments. Tributes were paid to Pravin Anand for his litigation and enforcement expertise, while one contributor asserted that “everyone knows” Safir Anand. Over the border in Pakistan, Yawar Irfan Kahn at United Trademark & Patent Service was described as “the dean of IP in Pakistan”. Farukh Irfan-Khan at Irfan & Irfan is another of the country’s heavy hitters. In the lead in Australia, Davies Collison Cave Solicitors and Allens Arthur Robinson are side by side with four practitioners each. Davies Collison Cave’s Trevor Stevens is a “famous name” in trademark opposition proceedings and partner Desmond Ryan has been commended for his work in domain names. They are joined by Rodney de Boos and Christine Lowe, who both performed well in the research. Over at AAR, Jim Dwyer was recommended as a “super all-rounder”, and “great practitioner” Timothy Golder also garnered praise. Philip Kerr’s representation of Sony was complimented and Jacqueline O’Brien is described as a “leader” in Australian trademark law. Corrs Chambers Westgarth is home to Australia’s top practitioner in the research, Stephen Marcus Stern “definitely among the best”. Two others at Corrs join him: Sally Nicolson and Ann Hester Dufty. Finally, “excellent litigator” Simon Williams of Spruson & Ferguson Lawyers also received plaudits. New Zealand’s most prominent firm, AJ Park, also hosts the country’s most frequently nominated lawyer. Respondents sang the praises of the “first-rate” John Hackett and his colleague Andrew Collins. Barbara Sullivan of Henry Hughes was extolled for her work in the protection of the cultural properties of indigenous peoples.

Latin Lawyers

Latin America’s IP capability was generously praised and this is reflected in our countdown of high-flyers. Peter Dirk Siemsen at Brazilian firm Dannemann Siemsen Bigler & Ipanema Moreira, who also appears in our breakdown of the practice area’s elite, is the most recommended lawyer in Latin America. This seasoned practitioner “has been around for years” and won the INTA President’s Award in 2004. Three of his colleagues join him in the listing: the “great” Luiz Henrique O do Amaral, Peter Eduardo Siemsen and José Antonio Bl Faria Correa all received glowing testimonies. At Momsen Leonardos & Cia, a triumvirate of practitioners drew praise: Luiz Leonardos, Gustavo Leonardos and Gabriel Francisco Leonardos are all highly respected. Finally, Denis Daniel at Daniel Advogados is “solid and well informed”.

In Argentina, we find one more for our table of the most highly respected lawyers. Miguel O’Farrell was described as a “leader” with a “great practice”. Chile is home to the “very highly reputed” Arturo Alessandri at Alessandri & Co who, according to one respondent “was instrumental in the development of Latin American IP law”, and José Luis Letelier at Sargent & Krahn was dubbed a “guru” of trademark law. In Mexico, Jaime Delgado at Goodrich Riquelme y Asociados received most recommendations and among our respondents is appreciated for his experience. Sergio Olivares sr at Olivares & Cía also received many plaudits. Praise was heaped upon Basham Ringe y Correa SC’s Martin Michaus, who is the coordinator of the Mexican Bar Association Intellectual Property Committee. Partners Jose Hinojosa and Eduardo Kleinberg join him on the following pages. One respondent recommended José Barreda of Barreda Moller in Peru as “excellent – the best for trademarks in the country”. The final mentions in Latin America are for lawyers based in Paraguay. Hugo Berkemeyer of Berkemeyer Attorneys & Counselors and Wilfrido Fernandez of Zacarias & Fernandez were seen as “the two best in the country”.

Rest of the World

Two further countries deserve a mention. In Israel, the second highest nominated practitioner in the entire research, “high-pro- file” Shlomo Cohen at Dr Shlomo Cohen & Co in Tel Aviv, was showered with praise. Chair of the Israeli Bar Association, he is described as “first-class” and “the first choice in the country”. Sandford Colb at Sandford T Colb & Co is “among the best” according to sources. Colleague Ruth Segel is well regarded as is Eitan Shaulsky, who comes recommended for his enforcement expertise. Neil Wilkof at Herzog Foz & Neeman is greatly commended for licensing work. South Africa is home to the final practitioner to be listed in our breakdown of the area’s elite: Brett Oldridge at Adams & Adams. Oldridge was especially recommended for his portfolio management work. He appears alongside colleague Chris Job, a past president of the South Africa Institute of Intellectual Property Law. Spoor & Fisher is the final firm we cover in our overview. Owen Dean is head of the trademark practice there. His colleague Charles Webster was considered “excellent to work with”. Jean McIvor “pleasant and on the ball” completes the firm’s contingent on the pages that follow.

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