EUROPEAN TRADE MARK LAW AND PRACTICE TEAM
To ensure and improve the legal position of brand owners in particular by pushing for harmonization of laws and practices at international, regional and national level.
Responsibilities/Mission:
The European Trade Mark Law and Practice Team's mission is to represent the interests of brand owners in relation to developments in trade mark law and practice in Europe. This encompasses monitoring and making recommendations on proposals at the European and EU level and taking part in meetings organised by institutions such as EUIPO. The Team often publishes position papers on relevant issues and canvasses the MARQUES membership for views on proposed changes. The team was actively involved in the work of the Taskforce on the EU trademark reform. You can find more information and background documents on the EU Reform Minisite
Members
Minutes
Publications
EU Reform Minisite
Team Chair
Robert Guthrie
Osborne Clarke
United Kingdom
Robert Guthrie
Osborne Clarke
United Kingdom
Robert Guthrie is a partner in Osborne Clarke's Intellectual Property group in London. Rob advises on all aspects of intellectual property protection, enforcement and dispute resolution. He has considerable experience of litigation in the UK across the range of intellectual property rights. Rob is a member Osborne Clarke's Digital Business, Retail and Life Sciences and Healthcare sector groups and works with clients in the media, fashion, betting and gaming and other industries.
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1 London Wall London EC2Y 5EB United Kingdom |
44 (0)20 7105 7000
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44 (0)20 7105 7063
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robert.guthrie@osborneclarke.com
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Team Co-Vice-Chair
Riccardo Fecchio
Bulgari S.p.A.
Italy
Riccardo Fecchio
Bulgari S.p.A.
Italy
Riccardo’s intellectual property practice started in 2009 and has focused on the protection and registration of trademarks and designs as well as on opposition, invalidity and revocation proceedings before the European Union Intellectual Property Office – EUIPO and the Italian Patent and Trademark Office.
He also resolves disputes in and out of court and handles anticounterfeiting, customs surveillance and contracts.
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Lungotevere Marzio, 11 00186 - Rome Italy |
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riccardo.fecchio@bulgari.com
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Team Co-Vice-Chair
Petra Goldenbaum
CMS Hasche Sigle
Germany
Petra Goldenbaum
CMS Hasche Sigle
Germany
Petra Goldenbaum studied law in Hamburg and worked as an in-house counsel for six years with Rotring, a german brand owner with international business activities in the field of writing, office and drawing. In April 1999 she joined CMS Hasche Sigle, a German law firm with a traditional focus on IP. As a head of the trade mark department of the Hamburg office, Petra's main area of practice is trade mark law, including litigation and preliminary injunction and primarily specialising in trade mark prosecution worldwide.
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Stadthausbrücke 1 - 3 Hamburg D20355 Germany |
49 40 37 63 03 60
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49 40 37 63 07 40 660
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petra.goldenbaum@cms-hs.com
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www.cms-hs.com
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Team Secretary
Johannes Fuhrmann
Bomhard Intellectual Property, S.L.
Spain
Johannes Fuhrmann
Bomhard Intellectual Property, S.L.
Spain
Johannes is a senior associate at Bomhard IP in Alicante (Spain). Although being a German qualified lawyer, he works and lives in Alicante (Spain) since 2011, where he specialized in EU trademark and design law. Johannes has an extensive knowledge of all kinds of proceedings before the EUIPO and has also represented several clients before the General Court in Luxembourg in European Union trademark and design disputes. His broad working experience includes protection and enforcement strategies, in particular relating to non-traditional trademarks, as well as multijurisdictional trademark clearance and multinational trademark portfolio management.”
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C/ Bilbao 1 5º 03001 Alicante Spain |
34 965 129474
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johannes@bomhardip.com
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www.bomhardip.com
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Paolo Andreottola
Locke Lord LLP
United Kingdom
Paolo is Senior Counsel in the London office of Locke Lord LLP and a member of the Firm's intellectual property, and trademark, copyright and advertising practice groups. His practice focuses on a wide range of trademark matters, including oppositions, revocations and invalidity actions, negotiating settlements, brand clearance and the prosecution of trademark portfolios worldwide.
Before joining the Firm, Paolo worked in the trademarks and brand protection group of a city firm. Prior to that, he worked in the European competition and regulation department of a magic circle firm. Before moving to London, Paolo worked for several years in the trademarks department of a leading Italian IP firm
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201 Bishopsgate London EC2M 3AB United Kingdom |
+44 (0) 20 7861 9274
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+44 (0) 20 7785 6869
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paolo.andreottola@lockelord.com
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www.lockelord.com
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Andreea Bende
Simion Baciu IP Counselling
Romania
Andreea is a Partner with Simion & Baciu. She has over 10 years of experience in the IP field, with a focus on rights administration, prosecution and litigation in industries such as tobacco, FMCG, automotive, fashion, media and telecommunications, software and IT&C. Her expertise includes assistance in trademark, design and copyright prosecution and litigation, managing and filing applications for action with the Romanian National Customs Authority, domain name disputes, IP transactions and complex IP enforcement projects.
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63 Natatiei St. 1st district Bucharest Romania CIF RO 41138290 Romania |
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andreea.bende@simionbaciu.ro
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Rainer Boehm
Eisenfuehr Speiser
Germany
Rainer is a partner at the IP law firm Eisenführ Speiser in Hamburg. He is a certified IP attorney and a regular lecturer at the Hamburg School of Business Administration and the American Bar Association. He is active in all fields relating to the protection of intellectual property, with a focus on litigation and arbitration. Rainer’s main fields of activity are trademark law and the law of marks and signs, IT law, Internet/multimedia law, outsourcing, patent law/know-how law, advertising law and competition law. He has special expertise in the field of licensing law, including anti-trust law. His activities in the patent law field mainly pertain to international litigation, especially in the USA and India.
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Patentanwaelte Rechtsanwaelte PartGmbB Johannes Brahms Platz 1 Hamburg 20355 Germany |
49 40 30 97 440
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49 40 30 97 44 44
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rbohm@eisenfuhr.com
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www.eisenfuhr.com
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Jana Bogatz
D Young & Co LLP
Germany
Jana is a German Certified IP lawyer and and a partner at D Young in Munich. She advises clients on national and international trademark, design, copyright and unfair competition law. Jana has particular experience in advising clients on their international trademark and design protection strategy as well as multi-jurisdictional IP enforcement. She has also been working with the EUIPO and as in-house lawyer in various companies in the past. Further, Jana is co-author of a Trademark Law Commentary and regularly contributes to various IP related publications.
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Rosental 4 80331 Munich Germany |
+49 89 710422055
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+49 89 710422064
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jab@dyoung.com
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www.dyoung.com
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Ellen Breddam
Plougmann Vingtoft
Denmark
Ellen has expertise within trademark, design, and domain name protection and is Head of Trademarks and European Trademark & Design Attorney at Plougmann Vingtoft. Ellen has worked in private practice since 2005 and before that, she worked for 8 years at the Danish Patent and Trademark Office where she ended up as head of the section responsible for the development of legal practice for trademarks and designs. Ellen frequently writes and speaks on European trademark law and practice and has until recently taught IP law at the Faculty of Law at the University of Copenhagen as an assistant professor.
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Strandvejen 70 2900 Hellerup Denmark |
45 41 85 16 67
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45 33 63 96 00
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elb@pv.eu
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www.pv.eu
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Franco de Barba
MERX IP
Spain
Franco is partner with MERX IP in Spain. He counsels and advises clients on trademarks and industrial design issues from both an International, European and Spanish perspective. He develops strategies for acquiring, enforcing and assigning IP rights, and litigates national and international conflicts. He also focuses on strategic counselling in the course of trademark development, name finding processes and prosecution before IP Offices. Franco practises in both English, French and Spanish.
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Calle Pinar 5 28006 Madrid Spain |
34 912195497
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fdebarba@merx-ip.com
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www.merx-ip.com
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Paula Diaz de Atauri
Balder IP Law, S.L.
Spain
Paula studied law at the University of Deusto. Having passed her undergraduate exam, she earned a Master’s degree in International Law at ISDE (Instituto Superior de Derecho y Economía) in Madrid. She then did an internship at the Spanish Patent and Trademark Office, where she worked in the legal Coordination and International Relations Department. After this she coursed the Magister Lvcentinvs Master’s degree in Industrial and Intellectual Property at the University of Alicante. She joined BALDER and is now head of the foreign trademark department and also deals with European Union trademarks and proceedings.
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Paseo de la Castellana 93 5ª planta 28046 Madrid Spain |
34 91 13 36 805
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34 91 13 31 384
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pdiazdeatauri@balderip.com
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Karina Dimidjian-Lecomte
Casalonga
France
Karina is a partner with Casalonga. As a member of the Paris Bar since 2003 and the New York Bar since 1996, she represents clients in diverse industries, including personal care products, sports and entertainment, publishing, telecommunications and apparel. She advises clients in trademark, design, copyright and domain name matters. Her practice includes domestic and foreign trademark clearance and prosecution, opposition and appeal procedures before the EUIPO and the French Trademark Office, domain name disputes, counterfeit goods and customs, drafting IP contracts and conducting IP audits.
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5 Avenue Percier Paris 75008 France |
33(0)145619464
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33(0)145639421
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k.dimidjian@casalonga.com
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www.casalonga.com
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Guido Donath
Donath-Law
Austria
Guido is Attorney-at-Law in Innsbruck and Vienna (Austria) since 2013, admitted to the Austrian Bar. He specializes in the fields of Intellectual Property and Unfair Competition Law. Previously held positions include: In-House Legal Counsel at Swarovski, University of Innsbruck, Department for Commercial Law and Department of Civil Law, Binder Grösswang Attorneys-at-Law
He holds a Masters and Doctorate Degree in Law from the University of Innsbruck, a PMD in Law from the University of London and studied at the University of Cardiff Law School.
He is author of numerous publications especially in the areas of trademark and copyright law and is a University lecturer at the Management Center Innsbruck (MCI).
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Schmerlingstrasse 6/3 Innsbruck A-6020 Austria |
43 512 35 85 85 0
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43 512 35 85 85 85
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gd@donath-law.at
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www.donath-law.at
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Augusto Drumond
Amazon
Luxembourg
Augusto is an Intellectual Property Counsel at Amazon, based in Luxembourg. He has a double cursus: he studied Law in Brazil and qualified as a Brazilian Lawyer. He then studied law in France and earned a Master’s degree in IP at Panthéon-Assas University, in Paris, as well as his qualification as French and European trademark and design attorney. Before joining Amazon in 2019, Augusto worked for 8 years for a top-tier French IP private practice and then 3 years for Signify (Philips Lighting).
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38, Avenue J.F. Kennedy Luxembourg L-1855 Luxembourg |
+352 691 431 981
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drumonda@amazon.com
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Manuela Finger
Gowling WLG (UK) LLP
Germany
Manuela is a partner in Gowling WLG's intellectual property group in Germany. She specialises in intellectual property, information technology and commercial matters and has a special focus on the digital media and online area. Her practice includes both contentious and non-contentious work for national and international clients from various industries, such as entertainment, fashion and retail, healthcare, information and communication technologies. She is a member of Gowling WLG's Brands, Design and Tech sector groups.
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Prannerstrasse 15 Munich 80333 Germany |
+49 89 540 4120 45
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+49 89 540 4120 99
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manuela.finger@gowlingwlg.com
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www.gowlingwlg.com
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Kasper Frahm
Plesner Law Firm
Denmark
Kasper is a partner at the IP practice at Plesner Law Firm, Copenhagen, where he heads Plesner's Trade Mark Law team. He provides advisory services on a wide range of IP matters but his main emphasis is on trade marks, designs and domain names. He regularly appears in court where he primarily represents rights owners. Kasper frequently writes and speaks on trade mark law and practice.
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37 Amerika Plads DK-2100 Copenhagen Denmark |
45 36 94 13 31
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N/A
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kfr@plesner.com
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www.plesner.com
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Charlotte Hebert-Salomon
Altana Law
France
Charlotte holds a postgraduate degree in Innovation, Communication and Culture Law – Specialization in Copyright on Digital Works and a Master’s degree in Business Law. Member of the Paris bar since 2009, she joined Altana in 2017. She is specialized in intellectual property (copyright, trademark, patent, design and domain name), new technologies/IT (computer law, internet-related matters) and commercial law. She advises French and international clients both in litigation and transactional matters in various sectors (software, Internet, media, pharmaceutics, consumer goods, the leisure industry). Charlotte is a member of APRAM, INTA and MARQUES.
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45 rue de Tocqueville 75017 Paris France |
33 1 799 793 00
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chebertsalomon@altanalaw.com
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Emilia Hodge
Properta Attorneys Ltd
Finland
Mrs Hodge, Attorney-at-Law in Finland, has years of experience counselling both national and international clients on various domestic and international IP-assignments and litigation, among others, in relation to trade marks, unfair business practices as well as consumer- and marketing law claims. In addition, she has acted as an In-House Corporate Counsel in one of the largest European clothing companies. She is currently a Chairman of the Board of Finnish Fashion Law Association.
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Unioninkatu 7 B 17 Helsinki 00130 Finland |
358447505628
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emilia.hodge@properta.fi
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www.properta.fi/
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Hui Huang
Wanhuida Intellectual Property
China
Huang Hui has been a senior partner at Wanhuida IP since 2002. Before joining the firm he served for 12 years at the State Administration for Industry and Commerce(SAIC), where he gained an understanding of the lifecycle of trademark proceedings. Huang has represented clients in the food, beverages, electronic, and electrical equipment industries. He is a member of AIPPI,INTA and Marques. He has received a Chinese and a French doctoral degree of Law, both on the protection of trademark, from China Academy of Social Science in 2000 and Strasbourg University in 2018 respectively.
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Yiyuan Office Building, Friendship Hotel, No.1 Zhongguancun St. South Haidian District, Beijing, China 100873 China |
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86 10 6894 8030
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huanghui@wanhuida.com
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www.wanhuida.com
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Member of the MARQUES Executive Team
Roland Mallinson
Taylor Wessing
United Kingdom
Roland Mallinson
Taylor Wessing
United Kingdom
Roland is partner at Taylor Wessing UK and heads up its UK trade mark practice. He advises on a wide range of UK and European IP disputes, incl. litigation and ADR about brand and design copies, comparative advertising, domain names, image rights, new media and other technology. He is responsible for the international trade mark portfolios and IP advisory work for a number of famous brands. Since the early 1990s he has conducted litigation, prosecution or oppositions at all levels of the English courts, UKIPO, OHIM and Court of Justice of the EU, and coordinated cases in most EU countries and many others worldwide.
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5 New Street Square London EC4A 3TW United Kingdom |
44 207 300 7081
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44 207 300 7100
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r.mallinson@taylorwessing.com
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s.vandermerwe@taylorwessing.com
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Gonçalo Paiva e Sousa
Gastão da Cunha Ferreira Lda
Portugal
Goncalo has a Law Degree at the Law Faculty of the Catholic University of Lisbon (1998) and joined Gastão da Cunha Ferreira in 2020. He is a member of the Portuguese Bar Association (OA) since 2002. Before that he was Head of the IP Department (Lisbon office) at Gómez-Acebo & Pombo (2015-2020). Between 1999 and 2015 he was an IP Attorney at J.E. Dias Costa, Lda, Industrial Property Consultants (1999-2015) and also a Lawyer at SMCA Law firm. Gonçalo is an Official Industry Property Agent before the Portuguese PTO and a representative before the EUIPO. Languages: Portuguese, English and Spanish.
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Rua dos Bacalhoeiros, 4 Lisbon 1100-070 Portugal |
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goncalo.sousa@gastao.eu
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Kurt Stöpetie
Brinkhof
Netherlands
Kurt was one of the founders of Brinkhof in the Netherlands. Before starting Brinkhof, he was head of the IP practice at Stibbe. He has been involved in numerous trademark, design and unfair competition court cases, as well as many press and advertising law cases. He litigated before the European Court of Justice, including on the direct effect of European law in arbitration proceedings and the direct effect of the TRIPs treaty in national law. He is a dedicated, knowledgeable and straightforward adviser and delivers prompt, thorough advice. Litigation and enforcement is his bread and butter, but companies also seek him out for his incisive strategic advice.”
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Grote Bickersstraat 74-78 1013 KS Amsterdam Netherlands |
+31203053211
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+31203053201
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kurt.stopetie@brinkhof.com
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Biljana Velichkovska
Law Firm Joanidis
Macedonia
Biljana is founder of Joanidis Law Firm. She is expert in IP Law and unfair competition Law focusing particularly on Patents, utility models rights and Trademarks as well as unfair competition Law, including litigation, copyright law and Contract Law. Simultaneously her expertise extends to areas of Licenses, pharmaceuticals, data protection and data security, with all sorts of IP regulatory matters. She has a degree in mediation and alternative dispute resolution and she is author of numerous article on IP and IT Law published in international journals, newspapers and magazines as well as World bank and has been supervisory of the articles given by other experts, upon the request of the editor.
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Str. Donbas 14/1-1 Skopje 1000 Macedonia |
389 2 3067 199
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389 2 3067 201
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biljana@joanidis.mk
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www.joanidis.mk
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+44 (0)116 2747365