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Bird & Bird

World IP Survey Coverage: Print-friendly version

Rankings

Finland

China

Czech Republic

France

Germany

Hong Kong

Italy

Slovak Republic

Spain

Sweden

United Kingdom

Netherlands - Benelux

Belgium - Benelux

Editorial coverage

Finland

Commercial firm Bird & Bird's IP practice is led by highly-regarded litigator Ella Mikkola, who is the Helsinki office's only dedicated IP partner. She's strong in patents, particularly life sciences, trade marks and copyright, and also handles non-contentious work. Mikkola has a team of six working for her.


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China

Bird & Bird has a reputable IP practice in China, with many practitioners naming it one of the more established IP practices among foreign firms. On top of a presence in China with offices in Beijing, Shanghai, Guangzhou and Shenzhen among other provinces, the firm has been in formal association with Lawjay Partners since 2009 giving it both foreign and local firm capacity. The team has grown in the past year to 23 IP professionals, including three partners, one of counsel and 14 associates.

The firm has been busy maintaining regional portfolios in patent and trade marks for global clients in the banking, technology, hospitality, automobile and consumer goods industries to name a few. Partner Matthew Laight often leads in IP litigation cases. Laight has been engaged in various court actions before the Shanghai court for patent and trade mark infringements.

Patents is an area that the firm has become commended for. One practitioner notes: "It is quite strong in electronics; I don't feel other foreign firms have really invested in their patent firms as much."


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France

Bird & Bird's IP team has a solid IP practice divided between its offices in Paris and Lyon. The team has a good deal of experience with five partners, but with two counsel, two senior associates and six associates it also has depth. It represents leading businesses across a range of industries including film, telecommunications and fashion.

IP head Yves Bizollon is the firm's standout partner for both peers and clients. "He's a very good lawyer: he's very quick, he's very knowledgeable and he also has a good sense of business relevance," says one client.

The firm has made several senior recruitments recently. It moved to replace joint practice head and trade mark expert Isabelle Leroux, who joined Salans in September 2011, hiring Rebecca Delorey and Nathalie Ruffin, formerly name partner and partner respectively with Gilbey Delorey (now Gilbey Legal). Both Delorey and Ruffin focus on enforcement and protection of trade marks and industrial designs in addition to transactional advice.

Additionally, it hired two further new partners in 2012: Anne-Charlotte Le-Bihan from Gide Loyrette Nouel and Mark Schuler from Nixon Peabody. The former covers all areas of contentious and non-contentious IP while Schuler specialises in IT.


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Germany

Internationally, Bird & Bird is renowned for its IP expertise and in Germany it's no different. Covering the full range of IP advice, it is well regarded in each niche. It has a practice of 62 lawyers and 11 attorneys working across offices in Düsseldorf, Frankfurt, Hamburg and Munich, in addition to its international network that spans 23 offices and 16 countries.

Bird & Bird has a strong technology client base which includes Nokia, Apple, LG and Microsoft, a recent addition to the firm's roster. Other new clients include Broadcom and Nestlé on the patent side, and 3M, Adidas and Burger King for trade marks.

The German arm of Bird & Bird is best known for its contentious work. Several Düsseldorf partners, in particular, are highly regarded for their experience in patent disputes. Joint head of the firm's global IP group Christian Harmsen is a familiar name for peers, but Oliver Jüngst, who co-heads the international electronics group, is the firm's most prominent and admired litigator.

Nokia was among Jungst and Harmesen's more active clients in 2012. Along with Matthias Meyer and Boris Kreye, the pair have been representing the telecoms company in disputes with IPCom, RIM, HTC and View Sonic.

Design disputes are growing increasingly common when it comes to the infringement of IP relating to touch-screen devices. One example of this saw Richard Dissmann representing Apple in its infringement suit against Jay-Tech, which infringed its design for the iPad. Apple won the case and the judgment was used as a reference in the suit brought by Apple against Samsung's Galaxy's tablet.

Clients are generally positive about the firm. "They are very responsive. We've had some good successes and we've had some setbacks but we have a very long working relationship and the overall experience is excellent," notes one who works with the firm's patent practice. The client, who works with Matthias Meyer on the litigation side and Daniela Kinkeldey for prosecution, adds: "They work well as team, together and with us. When it's necessary to meet short deadlines they give us their all." Another considers the firm good value for money, remarking: "They are expensive but I think they're worth the price. We have a good open relationship where we try and control the cost as much as possible."

One adds the caveat, however, that while the firm's wide reach can be useful it can also be a hindrance. "The international network can be helpful, but it also means they can have conflicts and are less flexible. Sometimes they also try to bring in their own teams when you have work in another jurisdiction, and sometimes we want to work with another firm."


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Hong Kong

The well-established IP practice at Bird & Bird consists of 18 professionals with three partners and nine associates. The team has strong capabilities in patents and frequently represents clients in contentious patent proceedings. The team is very active in copyright infringement disputes, patent infringement and enforcing trade mark protection.

In the past year, the firm has been busy maintaining regional portfolios in patents and trade marks for global clients in various industries, including banking, technology, hospitality, automobile and consumer goods. Clients are content with the quality of service provided to them. One said: "I have used a number of firms but the responsiveness and attention to detail has impressed me. I think it is one of the best given its regional reach as well." Partner Alison Wong is commended as an exceptional litigator.


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Italy

It has been a very successful year for Bird & Bird, which moves up to the top tier in both patent and trade mark contentious work.

"Bird & Bird is very good everywhere, really," comments one partner, while another competitor adds: "Bird & Bird should definitely move up."

The firm has two offices, in Milan and Rome, with 23 fee earners comprising predominantly lawyers but also some trade mark attorneys. Managing partner Massimiliano Mostardini co-heads the Italian IP group with Giovanni Galimberti, and disclosable clients include Sony Ericsson, Ferrero, Trussardi, Noble Europe and Puma Italia.

The firm also regularly assists Actavis in patent proceedings in Italy, in addition to Allergan, Honeywell and Merck Serono. Trade mark work includes preliminary injunction proceedings for registered designs on behalf of Ikea, as well as acting for L'Oréal on the attempted invalidation of a trade mark held by an Austrian competitor.


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Poland

In Poland, Bird & Bird has a small but growing presence. The firm is made up of seven IP fee-earners and its IP practice in Warsaw is led by Maciej Gawronski. It is ranked in tier 4 of the trade mark/copyright contentious table but benefits from its integration into the Bird & Bird international network. The firm acts for clients such as Gedeon Richter, Actavis and Celltrion.

The firm handles Monster Energy's trade mark portfolio in Poland and also its infringement and anti-counterfeiting cases. The firm also acted for the generic company Gedeon Richter in patent infringement proceedings related to medicinal products.


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Spain

Bird & Bird is located in Madrid and is ranked in the second tier of the contentious tables. In Spain, it has a small practice led by the highly reputable Manuel Lobato. "Lobato is originally a trade mark expert but he has a lot of knowledge of patent law," one peer says. "I have a lot of respect for him." It only has seven lawyers but the full-service law firm is supported by an international network of 260 lawyers. It acts for clients such as Eli Lilly, Sanofi-Aventis, Actavis and Google.

The firm acted for the generic company Actavis in a patent case with separate nullity and infringement claims before the Madrid courts. The patent concerned the sustained release and formulation of fluvastatin and was revoked under appeal at the EPO. Actavis looked to revoke the patent and Novartis sued the client for patent infringement. The firm also acted for FYM-Italcementi Group in a patent nullity and unfair competition lawsuit against a Spanish company in Navarre.


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Sweden

In Sweden, Bird & Bird is made up of 15 fee-earners and is located in Stockholm. The international firm is ranked in tier 1 of the trade mark contentious and copyright tables and tier 2 of the patent contentious table. "It's a well-known law firm," one peer says. "Bird & Bird has good staff and a good reputation." Sara Sparring leads the firm's IP practice and specialises in trade marks, designs, counterfeits, domain names and marketing law. Staffan Boström, head of the media team, enjoys a strong reputation as a media and entertainment lawyer. In May 2012, the firm hired partner Gabriel Lidman who used to be the head of IP and TMT at law firm Hamilton. Recently, the firm lost the old guard of Örjan Grundén, Giovanni Gozzo and Ragner Lundgren who re-established Gozzo Advokater.

The firm successfully acted for Layher, a manufacturer and supplier of scaffolding systems, in trade mark infringement proceedings against a competitor before the Court of Appeal for Western Sweden. Moreover, in connection with the first official museum that features the story of the Swedish pop group ABBA, the firm acted as general counsel for Touring Exhibitions. It advised on trade mark licensing agreements and other commercial agreements that concerned IP issues. "It does most of our legal work: licence agreements, shareholder agreements, due diligence, legal advice, processes and research," one client says. "It is amazing; very good."


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United Kingdom

Bird & Bird is among the biggest names in IP around the world. Fifty-eight lawyers make up the London IP team, which is led by Morag Macdonald and Katharine Stephens. Its clients over the past 12 months included Everything Everywhere, which the firm advised on its rebrand from Orange and T-Mobile, Associated Newspapers, Mattel and Philip Morris.

The firm is strong across the board, and among its disclosable work this year was Macdonald leading a team advising Air Canada on the patent infringement case regarding flat airline seats, while Jane Mutimear has acted as lead partner on the UK aspects of litigation for Nokia.

In trade marks, a notable piece of work was Peter Brownlow preparing to go to the High Court on behalf of Swiss cycling apparel manufacturer ASSOS in infringement proceedings against www.asos.com. This case is listed for a five-day trial in June 2013.

"You can't argue with Bird & Bird in patent contentious," comments one peer, and others agree: "No doubt, Bird & Bird is a very good firm."

Another speaks to the firm's depth: "Bird & Bird definitely has the bench strength and gets the cases."


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Netherlands - Benelux

In the Netherlands, Bird & Bird is located in The Hague. It is a highly reputable international firm and is ranked tier 2 across the board. "Bird & Bird is certainly a player that we see often and is justified in tier 2," one peer says. The firm focuses strongly in areas such as electronics, life sciences, IT and telecoms. The firm is strong in the UK and the Dutch office benefits from its strong international network. Wolter Pors heads the firm's large IP department which is separate from departments it cooperates closely with including IT, ecommerce, media and telecoms. In the research period, the firm has gained new clients such as Shell, UPC and Microsoft.

The firm has attracted some interesting litigious patent, trade mark and copyright mandates. It acts for Nestlé in patent proceedings against Sara Lee, Ethical Coffee Company and others in respect to the client's patents on Nespresso coffee capsules. The Dutch office coordinates the firm's strategy in the Netherlands, Belgium, Germany, Italy and UK. Furthermore, the firm successfully acted for the defendant Shell in cross-border trade mark infringement proceedings where BP claimed a trade mark right to the term "designer water", for water of a specific composition used in oil recovery.


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Belgium - Benelux

Bird & Bird is a very strong firm in patent litigation and retains its place in the top tier of the patent contentious table. The firm's Belgian IP practice is led by Bruno Vandermeulen with partners Benoit Van Asbroeck and Jean-Christophe Troussel and it can help clients in French, Dutch, English and German. The firm is a growing presence in copyright after its successful handling of the Scarlet case and experience in big Belgian copyright levy disputes. In trade marks, it is responsible for protecting the top brands of clients such as 3M, Richemont, Facebook and Mattel. "Bird & Bird has an extraordinary team in London and its excellence is driven from there," one rival says.

In a high-profile cross-border patent dispute, Bird & Bird acted for Nestlé against Sara Lee in an attempt to stop the sale of competing coffee capsules that are compatible with the client's Nespresso operating unit. In the Belgian chapter of the capsule war, three separate but parallel proceedings are in motion against Sara Lee. Three patents are asserted and Sara Lee has raised antitrust and patent misuse defences.


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Firm contact

This firm does not have a profile in the 2013 Handbook