Change frequently alters how we perceive, use and protect trademarks, and even what qualifies as a trademark. This team evaluates social and cultural trends and emerging issues affecting registered signs, brands and related intellectual property rights - mindful that we can often add insight when we explore the intersection between trademark law and other fields and disciplines.
Responsibilities/Mission:
Change frequently alters how we perceive, use and protect trademarks, and even what qualifies as a trademark. This team evaluates social and cultural trends and emerging issues affecting registered signs, brands and related intellectual property rights – mindful that we can often add insight when we explore the intersection between trademark law and other fields and disciplines.
Members
Minutes
Publications
Team Chair
Kate Swaine
Gowling WLG (UK) LLP
United Kingdom
Kate is a partner and Head of the Brands & Designs team at Gowling WLG (UK) LLP. She specialises in brand and design right clearance and enforcement and acts for a number of household names. Kate is experienced in all aspects of litigation from pre-action applications to full trial and manages both domestic and international litigation on behalf of her clients. She is an active member of ITMA, INTA and Marques.
Team Vice-Chair
Laetitia Lagarde
Baker McKenzie
Italy
Team Secretary
Eniko Karsay
SBGK Law Office
Hungary
Enikő graduated from the Faculty of Law of Eötvös Lóránd University of Science. She received her LL.M. degree in European Business Law from the Pallas Consortium at the Catholic University of Nijmegen. She studied at Humboldt University in Berlin for Diplomas on Mediation and International Arbitration. Her special areas include legal representation of the fields of IP law, copyright and competition law with litigation. She is copyright expert registered by the Hungarian PTO and member of Body of Expert of Copyright
Jennie Berner
Reckitt Benckiser
Netherlands
Benjamin Choi
Deacons
Hong Kong
Benjamin Choi is a partner of Mayer Brown JSM (Hong Kong). With more than 18 years of experience in IP practice, Benjamin specialises in international trade mark prosecution, portfolio management and IP assets protection and acquisition with focus in Hong Kong, China and the Asia Pacific regions. He is experienced in conducting IP due diligence and giving advice and solution to IP disputes and other commercial transactions with core IP elements in Hong Kong and China. Benjamin is an active member of INTA, APAA and Marques and will serve as President of the Hong Kong Institute of Trade Mark Practitioners from 2017 to 2019.
David Fyfield
Charles Russell Speechlys LLP
United Kingdom
David is an associate in the Intellectual Property Litigation team at Charles Russell Speechlys LLP. After qualifying in 2007, David has developed wide ranging experience with regard to the creation, exploitation and enforcement of intellectual property rights, in particular in relation to trade marks, patents, and design rights. He has also advised on matters concerning copyright, moral rights, compliance with advertising codes, data protection and breach of confidence. He has worked with clients in a variety of business sectors including healthcare, food and drink retail, fashion, engineering, packaging, communications and financial services
Nicoletta Galizia
Studio Legale Jacobacci & Associati
Italy
Nicoletta specialises in IP rights and has also gained experience in commercial and employment law. She assists national and foreign clients in IP litigation, and advises them on issues involving trademarks, licensing issues and brand enforcement, designs and patents and copyright, art and cultural assets. She is active in drafting and negotiating distribution, licensing and technology transfer agreements. Nicoletta graduated in law from the University of Urbino in 1996 and was admitted to the (Turin) Bar in 1999. Languages: Italian, English and French.
Camí Garcia i Carreté
Soremartec SA
Luxembourg
Camí holds a Law Degree from ESADE University (Barcelona), obtained an LL.M. in Litigation (ESADE), an LL.M. in International Business Law – Intellectual Property (ESADE – Bocconi) and the Joint Certificate in Business Law from the Themis Network. She works as an IP Legal Counsel at Ferrero managing APAC and MEA countries. Admitted to the Bar of Barcelona and Milan, prior to joining Ferrero she worked for 5 years on IP-related litigation, enforcement, prosecution and counselling matters for Jacobacci&Associati in Milan.
Irene Hallikainen
Berggren Oy
Finland
Irene is a lawyer specializing in intellectual property rights and marketing law, with a particular focus on brand protection, IP strategies, commercializing and enforcing intellectual property rights. Due to her background in music, she has a particular interest in audio branding and the IP and contract issues involved. She also lectures frequently as well as writes articles and blog posts on her field. Before joining Berggren, Irene gained valuable international experience by working at the European Union Intellectual Property Office, EUIPO in 2015–2016.
Michal Hasiow
Societŕ Italiana Brevetti
Italy
From assisting multinational luxury brands to guiding start-ups through their first steps in the IP world, Michal is constantly engaged in crafting bespoke legal advice. Apart from his involvement in trademark clearance, filing and prosecution, he oversees customs enforcement actions and designs IP asset management strategies. Closely working with marketing professionals and product development officers, Michal is regularly involved in the “business side” of IP.
He follows with interest the issues of new technologies’ impact on the IP practice, especially blockchain. He is also interested is interdisciplinary perspectives on brand protection, in particular relating to the fields of linguistics, cognitive psychology and behavioral economics.
Michal has significant project management and communications experience. He is fluent in Polish, Italian, English and Spanish and has a working knowledge of French and German.
Marion Heathcote
Davies Collison Cave
Australia
Marion is a partner of Davies Collison Cave (Australia). Her major area of practice is in Trade Mark law, specialising in their availability for use and registration, infringement issues and related Trade Practices Act, Copyright Act and associated Common Law Actions. She has gained experience in strategically advising on international trade mark portfolio management and protection particularly within the Asia Pacific, and presents seminars, locally and abroad, on issues associated with trade mark protection and enforcement.
Robert Kenney
Birch, Stewart, Kolasch & Birch, LLP
USA
More than 30 years of experience in patent, trademark and copyright litigation and U.S. trademark prosecution, counseling and portfolio management.
Eduardo Kleinberg
Basham Ringe Y Correa, S.C.
Mexico
Managing Partner since 2014 of Basham, Ringe y Correa, S.C. He is the Head of the Trademark, Licensing and Franchising practices. Some of his activities are as follows: Advising clients in IP matters in general, negotiating and drafting license, franchise, copyright and confidentiality contracts, filing and prosecuting trademarks and patents, filing copyrights, due diligence of IP matters, classifying and registering product and service trademarks of Mexican and foreign companies, registering of trademarks in south and Central America, Europe, Asia and the U.S., counseling Mexican and international clients in e-commerce issues related to IP, and registering and cancellation of domain names.
Kathleen Lemieux
Borden Ladner Gervais LLP
Canada
Kathleen is a lawyer in Borden Ladner Gervais’ Intellectual Property Group and Litigation Group, Based in Ottawa and specializing in trademark prosecution, IP litigation, and transactions involving IP assets. She assists clients with the development, administration and protection of IP rights, with an emphasis on trademarks, copyright and licensing agreements. She is advising clients in trademark opposition and cancellation proceedings and in assisting with litigation involving IP rights before the Federal Court. She also negotiates and advises clients on various transactions involving all types of IP rights, including patent, trademark, copyright and IP licence agreements, transfer and development agreements.
100 Queen Street, Suite 1300 Ottawa ON K1P 1J9 Canada
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1 613 7873740
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klemieux@blg.com
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MARQUES Council Member
Leo Longauer
LVMH
France
Leo Longauer is Deputy Director Market Protection at LVMH in Paris, responsible for oversight of anti-counterfeit teams and operations for 30 Houses of the LVMH group. Prior to joining LVMH, Leo was VP of IP at Swarovski, Head of Group IP at UBS and chef de section at the Swiss IPO. Leo holds a Master of Law degree from the University of Berne and an LLM in IP Law and Management from the University of Strasbourg (CEIPI).
Anthony Malutta
Kilpatrick Townsend & Stockton LLP
USA
Anthony is a partner in the San Francisco office of Kilpatrick Townsend & Stockton LLP. As co-leader of the firm’s national Trademark & Copyright Team, he manages a team of over 110 specialized trademark and copyright lawyers. His practice focuses on the strategic management of complex global trademark portfolios for brand-driven companies. He has deep expertise advising large clients in the technology, retail, and food product sectors.
Alicia Martín
Hoyng Rokh Monegier LLP
Spain
Alicia is a lawyer and intellectual property attorney at the Madrid Office of HOYNG ROKH MONEGIER. Her current IP practice is mainly focused in trademark and design prosecution, including clearing, obtaining and protecting trademark and design rights, oppositions, cancellation actions and licensing, either before the Spanish PTO, the EUIPO or the WIPO. She represents high-profile clients including the world’s no. 1 beverage company and the owner of the world’s best-selling cigarette brand.
Tanya Meedom
Elmann IPR Law Firm
Denmark
Tanya is partner in charge of the IP department of the Danish law firm Elmann. She is specialized in protection and enforcement of trademarks, designs and domain names. She is experienced in prosecution and litigation and has extensive experience with the legal aspects of digital marketing and protection and enforcement of rights in digital media. Tanya is an active member of INTA, Marques and ECTA and gives annual lectures on current trademark practice in co-operation with the Danish PTO.
Vanja Nedimovic
Dennemeyer & Associates S.A
Luxembourg
Vanja is a European Trademark and Design Attorney at Dennemeyer & Associates and active in IP law since 2010. Her area of expertise is trademark and design law, international public and private law and anti-counterfeiting. She holds a Bachelor in Communications, as well as an LL.M. in International Law and has acquired experience in various IP issues at the European Commission. Currently, she represents and advises clients ranging from start-ups to large corporations in trademark and design prosecution and enforcement. She speaks English, French, Spanish and Serbian
Zuzana Peniaskova
Noerr Alicante IP, S.L.
Spain
Zuzana is a senior associate at Noerr Alicante IP, S.L. in Alicante, Spain. She specialises in the trade mark and design law. In addition to her broad knowledge of all types of proceedings before the EUIPO, Zuzana has extensive experience in handling international trade mark portfolios and trade mark disputes, as well as in multijurisdictional trade mark clearance. Zuzana obtained an LLM in IP in 2013 (Alicante, Spain), and is qualified as a Chartered Trade Mark Attorney in the UK.
Thomas Raab
Taylor Wessing Partnerschaftsgesellschaft mbB
Germany
Thomas is a partner in the IP department of Taylor Wessing. Based in Munich he is head of Taylor Wessing's German trade mark group. With more than 15 years of experience in the field of IP Thomas specialises in all legal aspects of trade marks, company names, domain names as well as advertising, trade dress and designs. Thomas is author and co-author of various German and international publications in the fields of trade mark, design and internet law. He is a regular speaker at conferences dealing with trade mark law topics.
Janet Satterthwaite
Potomac Law
USA
Janet Satterthwaite is a partner in the trade mark group of Potomac LawGroup in Washington DC. She handles trade mark prosecution, litigation, counselling, and licensing, and also specialises in worldwide domain name dispute and registration strategies and internet fraud. She studied at the University of Virginia, Cambridge University and Yale University, and is admitted to the bar in Virginia, Washington and the District of Columbia. She has written a number of HouseMARQUES articles and been active on Marques teams
Goesta Schindler
Buse Heberer Fromm Part GmbB
Germany
Dr. Gösta Schindler is a partner with Buse Heberer Fromm in Germany. His practice encompasses all areas of IP including competition law. Client’s retain Gösta for his litigation experience as well as strategic advice regarding the set-up of IP portfolios, trademark prosecution or in a transaction context.
Gösta is involved in the development of new technologies for the advancement of legal services in the IP field. He also continues to teach IP, most currently in the context of the Bucerius Law School (Hamburg, Germany) Summer Program on International IP Transactions
Adrian Smith
Simmons & Simmons LLP
United Kingdom
Adrian is a partner in the IP practice of Simmons & Simmons, London. He has extensive experience of advising on a wide range of contentious and non-contentious IP and commercial issues, in relation to registered trade marks, passing-off, copyright and designs. In addition to UK, European and global trade mark clearance, registration, portfolio management, commercial exploitation and enforcement. He writes and speaks regularly on a range of IP issues.
Daan Teeuwissen
Knijff Trademark Attorneys
Netherlands
Daan obtained his law degree at the University of Amsterdam in 1991, specializing in IP law. He passed the exams of the Benelux Association for Trademark Attorneys (BMM)in 1995 and he joined Knijff Trademark Attorneys in 1999. There he became a partner in 2000 and managing partner in 2005. He is responsible for servicing the firm’s US clients. Daan was a member of the BMM Board of Directors for several years and he taught International and CTM law at the Dutch Association for Patent Attorneys and at the Grotius Academy.
Sabin Tigu
Ploum
Netherlands
Sabin is, after pursuing a career as professional tennis player, senior attorney at law at Ploum attorneys and primarily concentrates on trademarks, design rights, copyright and commercial law. Furthermore, He is very familiar with domain name disputes and has litigated many times before the administrative courts such as WIPO. Besides that, he has an extensive experience in relation to large-scale and long-term projects for international clients, managing and assisting in parallel trade and anti-counterfeiting problems such as Custom detentions