Strategic Research Partner of the American Bar Association's Section of International LawThe Queen's Award for Enterpise 2012

Most Highly Regarded Firms: Trademarks 2012

THE INTERNATIONAL WHO’S WHO OF TRADEMARK LAWYERS 2012
Most Highly Regarded Individuals
LawyerFirm
Daniel Bereskin QC Bereskin & Parr LLP, Toronto
Cynthia Rowden Bereskin & Parr LLP, Toronto
Shlomo Cohen Dr Shlomo Cohen & Co, Tel Aviv
Charles Gielen NautaDutilh NV, Amsterdam
Pravin Anand Anand and Anand, Noida
Anna Carboni Redd Solicitors LLP, London
Sally Abel Fenwick & West LLP, Mountain View
Ella Cheong Ella Cheong (Hong Kong & Beijing), Hong Kong
John Hackett A J Park, Auckland
Morag Macdonald Bird & Bird LLP, London

TOP FIRMS

New York boutique Fross Zelnick Lehrman & Zissu PC earns an impressive 13 listings in this edition – more than any other firm. Susan Upton Douglass has wide-ranging capabilities, spanning trademark advice, searching, filing and general strategies. Peers admire her “unshakeable good sense and commercial advice”. Cases in which the “revered” Ronald Lehrman has worked include the decision of the Supreme Court of Japan resulting in the recapture of the Tabasco trademark from a Japanese trademark pirate. Janet Hoffman is “superb” on the relationship between trademark and competition law and Carlos Cucurella has an “excellent knowledge” of European as well as US markets. Along with the “very talented” Cara Boyle and Mark Engelmann, he is listed for the first time in this edition. Roger Zissu is regarded as “one of New York’s top trademark lawyers”.

International full-service firm Baker & McKenzie earns 11 listings in this edition, across an impressive nine offices spanning Europe, the Americas and Asia-Pacific. In Hong Kong Joseph Simone is considered “outstanding” and Loke-Khoon Tan earns praise for his “excellent knowledge of the Chinese market”. In the London office Stephen Jones is “a leading name” and brings over 30 years’ experience to the IP group. The “first-class” Paul Rawlinson boasts a client list that includes such well-known brands as Calvin Klein, L’Oréal and Tommy Hilfiger. Christopher Smith heads the Beijing IP group and is admired for his “detailed and insightful advice”, while Alvaro Correa Ordoñez leads the IP group in Bogotá and earns plaudits for his “innovative counsel”. Further listings in Thailand, Spain, Switzerland, Singapore and Russia affirm Baker & McKenzie’s position among the global elite.

Bird & Bird LLP has had another excellent year in our research, with 10 names featured in this edition. The “ubiquitous” Trevor Cook is “undoubtedly a star of the firm’s IP group” and is one of five lawyers listed from the London office. Jane Mutimear has been involved in many reported trademark cases including Harrods v Harrodian School, Société des Produits Nestlé v Mars and Phones 4U v Phone4U.co.uk. Morag Macdonald has a “well-deserved top reputation” for international cross-border IP strategy advice and is one of the most highly regarded lawyers in the research. Peter Brownlow and Katharine Stephens are “exceptional IP practitioners with a wealth of experience between them”. Based in Milan, Massimiliano Mostardini was repeatedly recommended to researchers and in Düsseldorf Wolfgang von Meibom is considered a “dean of intellectual property law”. With further listings in Spain, China and Hong Kong, Bird & Bird has a well-established presence in the international IP market.

Nine lawyers are listed from Hogan Lovells LLP, including Hamburg’s Andreas Bothe whose expertise includes trademark infringement proceedings and extra-judicial advice. Natalia Gulyaeva, a partner in the Moscow office, has represented H&M in high-profile trademark litigation relating to a dispute with a Russian trademark pirate. Burkhart Goebel is “very highly regarded” in Madrid and Amsterdam’s “brilliant” Marc Wallheimer is praised for his work in the entertainment and consumer electronics industries. Henry Wheare is a partner in the Hong Kong, Hanoi and Ho Chi Minh offices and heads the Asia intellectual property practice. He has over 30 years’ experience and gives “expert advice” to international companies on Asia regional and global brand management. In Milan Luigi Mansani is considered “highly intelligent and a fantastic litigator”.

Rouse Legal fields eight nominees this year. Stuart Adams and Catriona Smith represent the London office and earn praise for their “top-notch client service” and “responsive, helpful advice”. Head of the China trademarks group Rachel Tan focuses exclusively on brand clearance, protection and registry enforcement in China and is “second to none” in this area. Nick Redfearn practises from the Jakarta office and has handled complex litigation across Asia. He is also “widely sought after” for his portfolio management expertise. Fabrice Mattei manages the Bangkok office and is admired for his work on anti-counterfeiting issues.

Edwards Wildman Palmer LLP achieves four listings across its offices in New York and London. John Olsen has more than 30 years’ experience and advises clients on selection, acquisition, exploitation and enforcement of trademark rights throughout the world. Sources commend his “endless knowledge” and “solution-oriented advice”. Perla Kuhn has assisted US and international companies in devising strong trademark portfolios in the US and across the globe.

NORTH AMERICA

Eight lawyers from three offices are listed from Kilpatrick Townsend & Stockton LLP. Christopher Woods is one of two lawyers featured from the New York office. He has “enviable experience” of the whole spectrum of trademark work across the US, Europe and Asia and has successfully represented a Fortune 500 multinational computer software manufacturer in trademark infringement proceedings. Lisa Pearson is a “go-to name” for alternative dispute resolution in IP matters. Senior counsel to the firm’s San Francisco office, Paul Vapnek is “very highly regarded” for his litigation know-how. William Brewster is one of five selected lawyers from the Atlanta office and was lead trial counsel in Adidas v Payless, obtaining the largest jury verdict and the largest judgment ever entered in a trademark case.

Canadian firm Gowling Lafleur Henderson LLP fields seven nominees, an increase of two from last year. In Ottawa, Paul Blanchard and Robert MacDonald garnered votes for their “unfailing strategic solutions”. Chair and CEO Scott Jolliffe is based in Toronto and is a “stellar” trial and appellate lawyer. Kelly Gill is co-leader of the firm’s IP litigation national practice group and is “a proficient advocate and an admirable opponent”.

Six lawyers are featured from the Washington DC office of Finnegan Henderson Farabow Garrett & Dunner LLP, including the “versatile” Julia Anne Matheson. Her practice encompasses trademark, unfair competition and internet-related issues and she publishes regularly on these topics. Laurence Hefter has worked as both in-house counsel and as a private practitioner, giving him “fantastic insight” into clients’ interests. Linda McLeod has significant experience before the Trademark Trial and Appeal Board of the US Patent and Trademark Office and has also served as an administrative trademark judge.

Sally Abel is one of three lawyers listed from Fenwick & West LLP. She was repeatedly recommended to researchers for delivering “a world-class service” to clients and is one of the most highly regarded lawyers in the research.

Five prominent names from Canadian firm Bereskin & Parr LLP are featured. Founding partner Daniel Bereskin QC “has no equal” for trademark advice and litigation and is “outstanding in every respect”. Cynthia Rowden heads the firm’s trademarks practice group and is a “standout practitioner” according to peers. Her practice includes opposition and cancellation proceedings, strategy for enforcement, and internet-related intellectual property issues.

LATIN AMERICA

Brazilian firm Dannemann Siemsen Bigler & Ipanema Moreira performed very well in the research, with four names included. Peter Eduardo Siemsen is commended for “always going the extra mile for clients” and Peter Dirk Siemsen is a “highly seasoned” trademark lawyer.

In Argentina, Marval O’Farrell & Mairal once again emerges as a leader in the field of trademark law. Miguel O’Farrell was widely praised as a “phenomenal” lawyer. New inclusion Gustavo Giay impresses sources with his “clear, dependable advice on the trickiest of matters”. Iris Quadrio is a “sharp-minded” lawyer with a “first-rate” trademark and copyright practice.

EUROPE

Shlomo Cohen was variously described as “one of Israel’s finest lawyers”, “extremely hard-working” and “a brilliant lawyer”. He is among the most highly regarded lawyers in the research.

Field Fisher Waterhouse LLP has a top European trademark practice, with four lawyers featuring in this edition. Nick Rose heads the firm’s intellectual property and technology dispute resolution group and is one of a trio of listed names from the London office. He specialises in the media and entertainment, technology, retail and sports sectors and has been involved in a number of leading reported cases. Mark Holah is head of the trademarks and brand protection group and receives praise for his “creative approach to problem-solving,” while Allan Poulter has a “thriving practice” which benefits from his experience as director of a leading branding consultancy. In Brussels Thierry Van Innis has a “sterling reputation” built up over more than 30 years of practice.

Charles Gielen is one of three listed lawyers from NautaDutilh NV. He is the author of various IP handbooks and is “very highly respected” amongst the trademark community.

English firm Redd Solicitors LLP sees four of its practitioners listed. Foremost among them is Anna Carboni, a solicitor advocate whose litigation practice is described as “outstanding”.

Munich-based firm Bardehle Pagenberg fields four nominees. Among Jochen Pagenberg’s trademark clients are leading producers of health-care and cosmetic products and prestigious French manufacturers of luxury goods. He has also represented a publishing house and an author of famous comic strips for more than 30 years. Sources describe him as “superlative”. Alexander von Mühlendahl is a former vice president of the OHIM (Trademarks and Designs) and is a “fabulous advocate”.

ASIA-PACIFIC

Founding partner of Ella Cheong (Hong Kong & Beijing), Ella Cheong once again tops the research in Asia. She is “absolutely committed” and “incredibly bright” according to sources.

Pravin Anand of Anand and Anand practises in Noida and garnered votes for his “unrivalled local knowledge”. Peers describe him as a “go-to name” in India.

Based in Auckland, John Hackett is “one of the most respected trademark lawyers in New Zealand”, according to one interviewee. He has led a number of high-profile projects including a foreign filing programme and strategic brand repositioning exercise for Les Mills International Group, and implementing a compliance programme to prevent the “Sellotape” and “Glad Wrap” brands becoming generic.

Three names feature from Allens Arthur Robinson. Tim Golder’s “extensive” experience includes advising Australia Post, Australian Grand Prix Corporation, Cricket Australia and Christian Dior. Jim Dwyer is “in high demand” for his trademark expertise in the entertainment sector and Philip Kerr is “a brilliant strategist”.

King & Wood Mallesons also earns three listings. Liao Fei and Yang Xiaoli are based in the Beijing office and earn plaudits for their “impressive trademark savvy”. In Sydney, Maurice Gonsalves is recommended as a “top trial lawyer”.

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Nominees have been selected based upon comprehensive, independent survey work with both general counsel and private practice lawyers worldwide. Only specialists who have met independent international research criteria are listed.

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