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Freshfields Bruckhaus Deringer

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Editorial coverage

China

Magic circle firm Freshfields Bruckhaus Deringer is known for its capability in handling complex IP work and often assists clients to understand the complex IP aspects of corporate transactions. A prime example of this is the firm's representation of Zhejiang Geely Holding Group in its groundbreaking takeover of Volvo. The deal is the first takeover of a global premium carmaker by a Chinese corporation and is also the largest international automotive acquisition by a privately held Chinese company. It is highly challenging from the IP point of view, as there was a high degree of integration of Volvo into Ford's business on technological, IP and R&D levels.

The firm has deep sector knowledge in a number of industries, such as telecommunications, energy and natural resources, financial services and banking and chemicals. Sasol Synfuels, a manufacturer of chemical products, sought its expertise on various issues regarding its coal-to-liquids energy technology for the set up of its power plant. Matters it advised on include patent infringement, freedom to operate and invalidation matters and technology transfer.


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Germany

Freshfields Bruckhaus Deringer remains a strong player, notably in copyright, and a respected practice in the region. "Freshfields has excelled," says one peer, adding: "Mr Hafnagel has been in the field for a long time so is one of the main players. He has long-standing clients and a solid client base. Matthias Koch has advised Mars Group in relation to all recent trade mark and unfair competition matters, both in and out of court. Advice involves contentious and non-contentious matters. It involves considerable reliance on the expertise of Freshfields across IP matters as Mars does not have an in-house legal department in jurisdiction. In copyright, Peter Chrocziel advised Nibbe & Wiedling Literary Agency on the worldwide licensing of all rights to Boris Pasternak's works. The firm advised on rights to the novel Doctor Zhivago and all modern forms of adaptation and distribution of the work.


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Hong Kong

Connie Carnabuci heads the IP and IT team at Freshfields Bruckhaus Deringer, which is best known for its commercial IP work and being able to walk clients through complicated IP issues. "Connie is impressive," notes a peer. Demonstrating its ability to combine its IP expertise with a world-class financial and corporate practice, Carnabuci featured in Zhejiang Geely Holding Group's takeover of Volvo, advising on the IP aspects of this high-profile transaction.

Another highlight of the last year was acting for Homeland Housewares in its fight against companies that have infringed the trade mark and copyright of its famous food blender. The firm's sector expertise in areas like consumer products, telecommunications, infrastructure and transport, and financial services and banking is particularly helpful in offering clients more focused advice that takes into account their commercial interests.


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Spain

Freshfields Bruckhaus Deringer has continued to focus on pure IP litigation, which now makes up 80% of the practice's work. The remainder of the time is spent on IP support for transactional deals, most notably M&A and IT. The practice is led by Sergio Miralles, who has a towering reputation amongst peers.

The firm's main clients through 2010 have been Sony Computer Europe and Johnson & Johnson. In 2011 Miralles, Alejandro Milá and Daniel Rodríguez were active advising Sony in litigation against 27 distributors of modchips, which undermine protected technology in Sony video game consoles. Miralles and Marta Roig advised Johnson & Johnson as a defendant in high value and complex litigation related to contact lenses. The firm launched an invalidation counter claim. Miralles teamed up with Roig and Elena Molina to represent Kingfisher in a copyright and unfair litigation dispute against its main competitor in Spain. Elsewhere, the firm advised UPS on trade mark enforcement, copyright and data protection issues.


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Netherlands - Benelux

Freshfields Bruckhaus Deringer's Peter Hendrick is seen as one of the founding fathers of intellectual property in the Netherlands and continues to have an influence across the market. "Peter is still one of the top IP partners in the country," says one competitor. Running the practice on a daily basis, however, is Rutger Kleemans who was promoted to partner last year. Kleemans is an "excellent litigator" according to many competitors and a "big presence in court". Bas Berghuis van Woortman moved to Simmons & Simmons.

The firm has been involved across all sides of IP. In patents, Kleemans led a team advising Johnson & Johnson in a multi-jurisdictional patent infringement case. Furthermore, the firm has been involved with a supplementary protection certificate (SPC) case, looking to extend the life of a patent for Novartis. The work was led by Hendrick and Kleemans. In trade marks, the firm advised Ziggo against Tele2 that broadcasted a misleading commercial campaign. In a landmark case, Tele2 was subsequently ordered to broadcast an advert across all channels during prime time television correcting its error.


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Firm contact

This firm does not have a profile in the 2011 Handbook