Most Highly Regarded Firms: Trademarks 2009

Several firms are represented in multiple jurisdictions. Bird & Bird LLP fields an impressive 12 practitioners in eight jurisdictions across Europe and Asia.

THE INTERNATIONAL WHO'S WHO OF TRADEMARK LAWYERS 2009

Most Highly Regarded Individuals - Global
LawyerFirm
Daniel Bereskin QC Bereskin & Parr, Toronto
Shlomo Cohen Dr Shlomo Cohen & Co, Tel Aviv
Cynthia Rowden Bereskin & Parr, Toronto
Ella Cheong Ella Cheong (Hong Kong), Hong Kong
John Hackett A J Park, Auckland
Miguel O'Farrell Marval O'Farrell & Mairal, Buenos Aires
Sheldon Burshtein Blake Cassels & Graydon LLP, Toronto
Charles Gielen NautaDutilh, Amsterdam
Fabrizio Jacobacci Studio Legale Jacobacci e Associati, Turin
Sally Abel Fenwick & West LLP, Mountain View, CA
M Farrukh Irfan-Khan Irfan & Irfan, Lahore
Jerome Gilson Brinks Hofer Gilson & Lione, Chicago
Miles Alexander Kilpatrick Stockton LLP, Atlanta
Peter Dirk Siemsen Dannemann Siemsen Bigler & Ipanema Moreira, Rio de Janeiro
Thomas McCarthy Morrison & Foerster LLP, San Francisco
Ronald Lehrman Fross Zelnick Lehrman & Zissu PC, New York
Mark Sommers Finnegan Henderson Farabow Garrett & Dunner LLP, Washington, DC
Isabel Davies CMS Cameron McKenna LLP, London
Leslie Lott Lott & Friedland PA, Coral Gables, FL
Morag Macdonald Bird & Bird, London

INTERNATIONAL FIRMS

This "formidable firm" has a "stellar record for trademarks work", which includes successfully representing Reckitt Benckiser in a landmark community design case against Procter & Gamble over its ‘Air Wick Odour Stop' product. Joint head of intellectual property Morag Macdonald was involved in the case. Peers note her "ability to find solutions for almost anything". Trevor Cook also received a notable tally of recommendations, deemed "sensational" for work such as his advice to Apple.

Ten Baker & McKenzie lawyers, from jurisdictions as diverse as Thailand, Texas and Colombia, appear in this publication. One impressed peer considers Russia-based partner Eugene Arievich "top in the country." A "true trademarks specialist", he is noted for his "hugely impressive knowledge of local and international trademark law". The firm achieved a notable ruling for Levi Strauss, and other clients include an entertainment company, which it is advising on its IP rights regarding the adaptation of a best-selling children's book. Stephen Jones, based in London, is "exceptional for technology-heavy work" and Margaret Boulware was praised as "a dean of the Texas bar". Say Sujintaya is "well respected within the trademarks community".

Lovells LLP's eight included practitioners represent "a formidable team," which includes the "excellent" Verena von Bomhard who heads the internationally staffed Alicante office, which specialises in community trademarks and designs. Contributors also praised the "excellent" David Latham for his broad-based practice, and his anti-counterfeiting work in particular. The firm advises Lego on its trademark enforcement and protection in Germany and the EU.

Allen & Overy LLP increases its representation in our book to five lawyers this year, across Europe. The firm is currently advising Novartis on its strategic alliance with biotech company MorphoSys. Chair of the firm's pan-European IP group Geert Glas is considered "clearly one of the best in Europe," noted especially for his expertise on media-related matters as well as cross-border work. Nicola Dagg also has a high profile in the area.

US AND CANADA

New York state provides the greatest number of US practitioners in this edition: 43 lawyers feature, with specialist IP firms claiming a healthy market share. Eight practitioners from Fross Zelnick Lehrman & Zissu PC appear, including the "excellent" Ronald Lehrman, a "dean of the New York bar", who appears on our list of most highly nominated practitioners. Its large client roster includes long-term client Time Warner in matters such as the issue of termination related to "Superman" trademarks. Cowan Liebowitz & Latman PC also fields a strong contingent of six lawyers, including the "great scholar" William Borchard. The firm's work includes obtaining a permanent injunction for Sanofi-Aventis against the use of the name and brand Advancis by a rival company. King & Spalding's Clark Lackert also "figures prominently on the trademarks scene"; he is praised for his global strategy work.

California is another important intellectual property jurisdiction, placed as it is at the heart of the US entertainment and high-tech industries. Knobbe Martens Olson & Bear LLP possesses the greatest presence of any firm there in this edition. It is praised as "a slick operation, great for any matter you can think of". Louis Knobbe and Susan Natland performed particularly well in the research and the firm represents clients such as Samsung and Yamaha. Fenwick & West LLP's Sally Abel appears on the list of most highly nominated practitioners. She is recommended for her "prestigious client list, competence with complex issues and fantastic, positive approach". Morrison & Foerster LLP boasts, according to one contributor, "one of the most famous trademarks lawyers in the US": Thomas McCarthy, who, according to another source, "knows his stuff - no question". Morrison & Foerster's international trademarks practice won praise from interviewees - the firm's clients include the Beijing Organising Committee for the 2008 Olympic Games, and it counsels on matters such as registration, licensing, use and protection of Olympics-related IP rights.

Outside these two states there also lies a wealth of talent. Washington, DC, is home to Finnegan Henderson Farabow Garrett & Dunner LLP, where Mark Sommers is very highly nominated. This "high-profile boutique" represents clients such as Starbucks, which it represented in an opposition to the application for the mark "Lessbucks Coffee". In Atlanta, Kilpatrick Stockton LLP provides four partners for our list - among them is Miles Alexander, one of the most highly nominated individuals in the world and considered "one of the top trademarks lawyers in the US". In 2008 the firm won the largest ever jury award for a trademark case. Its client Adidas was awarded $304 million dollars protecting its three-stripe trademark and trade dress against Payless ShoeSource. Illinois-based firm Brinks Hofer Gilson & Lione also attracted praise from peers. The "terrific player" Jerome Gilson notched up a large quotient of votes. In Florida, Leslie Lott of Lott & Friedland PA is "fantastic to work with and very well respected".

Canada's trademarks bar is extremely strong, with three practitioners appearing in our round-up of most highly nominated practitioners. A "leader recognised worldwide", Dan Bereskin tops our research this year; he is considered an "absolute must" for the list. Three times winner of Who's Who Legal's "Trademark Lawyer of the Year" award, he is a winner of the INTA President's Award for his services to the International Trademarks Association. His colleague at Bereskin & Parr, Cynthia Rowden also features prominently in the research. She is heralded as "one of the absolute best", especially for her prosecution work. The "excellent" Sheldon Burshtein of Blake Cassells & Graydon LLP "really deserves to be on the list". Burshtein is recommended for his work in a variety of fields - from pharmaceuticals to retail and consumer electronics. "Stalwart full-service firm" Gowling Lafleur Henderson LLP is "a real presence in the area", with an "enviable record" for work in jurisdictions such as Russia and China. Paul Blanchard is "an eminent figure" in the jurisdiction.

REST OF THE WORLD

In the UK, top-ranking practitioner Isabel Davies at CMS Cameron McKenna LLP is "extraordinary". She is praised for her enforcement expertise. Her CV includes the Intel case before the European Court of Justice. She also represents distiller Jack Daniels, and the brands associated with Elvis Presley and Marilyn Monroe. Bristows' Sally Field and Paul Walsh "really know their stuff". From Field Fisher Waterhouse the "world-famous" John Olsen and the "shrewd" Nick Rose are selected for our list. Helen Newman at Olswang is considered a "star", and at Ashurst LLP, Ian Starr is "an excellent, savvy lawyer".

Several European firms maintain a reputation for excellence. NautaDutilh boasts the inclusion of "eminent Dutch lawyer" Charles Gielen as well as further representation in Belgium. The firm represents Coca-Cola regarding the alleged infringement of the mark "Pepsi" by the company. Other clients include DuPont de Nemours. Germany is home to several well-regarded firms such as Bardehle Pagenberg, whose name partner Jochen Pagenberg received the most recommendations in the country. Grünecker, Kinkeldey, Stockmair & Schwanhäusser's Maximilian Kinkeldey is considered "phenomenal" and noted for his representation of Wrigley.

In France, Richard Gilbey of Gilbey Delorey is lauded as "one of the top in the country," while Cabinet Hirsch & Associés' Marc-Roger Hirsch is an "eminence grise" of the French IP bar with "great US contacts". Arnaud Michel of Gide Loyrette Nouel AARPI "deserves the highest praise" and Philippe Combeau of Cabinet Philippe Combeau also received plaudits. In Italy, Fabrizio Jacobacci at his own firm, Studio Legale Jacobacci e Associati, is "top notch - truly excellent", and Luca Trevisan of Trevisan & Cuonzo Avvocati won several accolades. Irish firm F R Kelly & Company appears thanks to Neil McVeigh, who gains particular praise for his knowledge of Irish and community trademark law. Dr Helen Papaconstantinou, John Filias & Associates' Helen Papaconstantinou stands out in Greece, and in Cyprus, Roddy Kyriakides at Emilianides & Kyriakides is considered the "go-to lawyer" in the country.

In East Asia Ella Cheong is the region's most highly nominated practitioner. "Internationally recognised as excellent," she has served on the board of directors for INTA and is a life founder member of the Asian anti-counterfeit association. Vivien Chan, also at her own firm, features prominently in the Hong Kong research, while Anne Choi at Wilkinson & Grist is recommended as "experienced and great to work with." In Singapore, Jo-Ann See of "super Asian firm" Amica Law LLC attracts plaudits, as does the "top tier" Alban Kang at ATMD Bird & Bird LLP. In Thailand, Domnern Somgiat & Boonma Law Office Ltd's Nettaya Warncke is "well respected in the trademarks community" and in South Korea, Jay Young-June Yang at Kim & Chang "deserves to be on any list" of leading IP lawyers. Pravin Anand of Anand & Anand is "fabulous for litigation and enforcement", while in Pakistan, Farrukh Irfan Khan at Irfan & Irfan is the highest nominated practitioner in the jurisdiction; an "internationally recognised star".

In Australia the best represented firms are Davies Collison Cave Solicitors, where Christine Lowe's broad-based practice is admired, and at Allens Arthur Robinson. Jim Dwyer at the firm is an "excellent, very active practitioner with a high profile." At Spruson & Ferguson Lawyers, Simon Williams also received a raft of positive recommendations while Corrs Chambers Westgarth's Stephen Marcus Stern "commands respect". In New Zealand, John Hackett is "Mr Trademark," according to interviewees and features in our list of most highly recommended practitioners. At Henry Hughes, the "very bright" Barbara Sullivan gained praise for her "groundbreaking" work in the protection of indigenous peoples' cultural properties.

In Brazil, Dannemann Siemsen Bigler & Ipanema Moreira is the firm with the greatest contingent, represented by the country's highest-nominated lawyer, Peter Dirk Siemsen, who also appears in our list of global high flyers. Large Brazilian firm Momsen Leonardos & Cia also achieves a high profile in the research. Luiz Leonardos "delivers every time", according to interviewees. In Argentina, Marval O'Farrell & Mairal's Miguel O'Farrell is "the leading lawyer in the country," with "an enviable client list." Chilean lawyer Arturo Alessandri "sets the bar high" in that jurisdiction. He represents his own firm, Alessandri & Co. In Venezuela, Karel Bentata of Bentata Abogados "is a safe pair of hands", and Sergio Olivares of Mexico-based firm Olivares & Cia is "a trusted and senior lawyer". The final Latin American lawyer to be mentioned is the "exceptionally smart" Hugo Berkemeyer of Berkemeyer Attorneys & Counselors in Paraguay.

Israel is home to a number of high-profile lawyers. At his own firm, Shlomo Cohen is the "dean of IP in Israel", lauded as a "real heavy hitter" with "fantastic credentials." His cross-border work was particularly recommended. Also at his own firm, Sandford Colb is highly regarded in the jurisdiction, as is Neil Wilkof at Herzog Fox & Neeman. In South Africa, Brett Oldridge of Adams & Adams is the most highly nominated lawyer in the country alongside Dean Owen of Spoor & Fisher; "one of the leaders", according to sources.

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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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