IP Handbook - Home
The comprehensive guide to the world's leading tax firms

Bird & Bird entered the Finnish market in 2007 and handles IP and M&A-related IP matters. The IP practice is headed by partner Ella Mikkola, who is supported by various partners and associates with mixed disciplines. Mikkola has particular expertise in the life sciences field. In 2010 the firm was involved in the Actavis Group case over the patent for the transdermal patch fentayl.

Partner Shirley Kwok left Bird & Bird last year, but the IP team remained strong, led by managing partner Matthew Laight, and partners Alison Wong and Ai-Leen Lim. It further received a boost in 2010 with the joining of three new associates, Shanghai partner Li Weishi and special counsel Clifford Borg-Marks. The latter worked as a diplomat in China in the early 1980s and has practised IP in the country for two decades.

The UK firm is best known for its patent expertise. Laight and Wong are both specialists in the electronics and life sciences sectors. The team is often called upon by healthcare, pharmaceutical and electronics companies to give advice. It is also handling the patent portfolio of AEG, a sports and entertainment company, and SC Johnson, a household product manufacturer.

On the trade mark and copyright side, a highlight of it was helping clothing brand Stussy to successfully claim copyright infringement and unfair competition to stop a trade mark infringement. The counterfeit shop had registered the Stussy logo in the 1990s and the clothing brand has been trying to retrieve the trade mark for years with no results. Bird & Bird advised the client to accuse the counterfeiters of infringing its copyright and Stussy finally got its mark back.

"The Chinese IP protection system is not like what we have in our own country, and Bird & Bird is good at helping us understand what is going on in China," says a client.

Bird & Bird continues to build its IP department under the guidance of former Allen & Overy lawyer, Vojtech Chloupek, who joined the firm in 2009. The firm also hired Andrea Jarolímkova, who brings with her global clients and provides the practice with a "business-orientated approach", according to the firm.

Last year Chloupek advised a US consumer electrics company on a case involving anti-counterfeiting, with lookalike goods being distributed in the Czech Republic. The firm also represented a US aviation manufacturer on a patent infringement case.

One of Chloupek's clients commented: "He went above and beyond to get the work done very quickly. He provided good and useful advice."

The Prague office is now fully integrated with the Bird & Bird network and works closely with the other central European offices in Hungary, Poland and the Slovak Republic. A US media company recently switched all of its IP legal advice to the firm for this very reason.

Bird & Bird enters the rankings this year, with one competitor agreeing that: "The firm is more and more recognised on the market."

A leader in the French courts, Bird & Bird is a regular player in major and strategic soft IP cases in trade mark, community design and unfair competition matters for clients such as Coca-Cola, Nokia and Western Union. The two partners in charge of the firm's Paris and Lyon operations are Isabelle Leroux and Yves Bizollon, with expertise covering luxury products trade mark and pharmaceutical patent matters, respectively. Leroux continues to advise L'Oréal, Lancôme, Cacharel and Giorgio Armani in a case pending before the Court of Justice of the EU regarding trade mark infringement and selective distribution agreements under eBay practices. Bird & Bird has obtained the first droit à l'information decision against a third party for its clients. Bizollon was kept busy by numerous high-profile cases, including the patent revocation action on behalf of Actavis against Merck in a dispute over the patentability of a dosage regimes, or the specific dosage of an active ingredient. Sanofi also instructed Bizollon to engage in legal action against a generics manufacturer of its patented Fexofenadine drug.

Bird & Bird is recognised by peers for its rapid growth in both Munich and Düsseldorf and is described as being among the strongest litigation groups in the jurisdiction. Christian Harmsen, head of the German IP group and co-head of the international IP group, is highlighted by competitors who describe his work as being excellent and of high quality. The firm has acquired new clients in the course of 2010 including Dow Chemical, Huawei and Pioneer, all contributing to increased activity across the telecoms, electronics and food sectors. Representing Dow Chemical, the firm has been active in advising on preliminary injunctions in relation to fruit and vegetable conservation. Bird & Bird represented Life Technologies, a further new client, in life sciences. The firm's attorney provided comprehensive advice and representation in relation to a number of infringement proceedings regarding laboratory equipment. On the trade mark side, the firm has strengthened its existing client mandate with L'Oréal, with particular focus on a competition law dispute. Other trade mark work involved advising Deutsche Telekom in connection with portfolio management, out of court and court representation.

"The firm is very professional and gives replies on time," says a client of Bird & Bird. "The lawyers are very good in understanding what we need." In addition to its traditional strength in patents, Bird & Bird was occupied with a wide range of matters in the past year. A highlight was representing Television Broadcast (TVB) and TVB Vision in a copyright dispute against four music publishers and the Hong Kong Recording Industry Alliance concerning reproduction, broadcast and public performance licences for music. This case has been widely reported by the media and will affect how royalty is calculated for this kind of licence. Cookware manufacturer Lagostina has turned to the team for copyright infringement and passing off actions in Hong Kong against the former long-term distributor of its premium stainless steel cookware.

The team has a robust IP portfolio management practice. It looks after the entire trade mark portfolio for Helen of Troy in China and Hong Kong, the trade mark and domain name portfolio for nutritional supplement company GNC, and advises Electrolux on its registration strategy. Sport and entertainment company AEG and SC Johnson, a household product manufacturer, seek advice from Bird & Bird on patent matters too. Special counsel Clifford Borg-Marks and three associates joined the firm in 2010 to strengthen the team and to fill in any gaps that might have been left by the departure of partner Shirley Kwok.

The Bird & Bird network set up an office in Hungary three years ago as Simándi Bird & Bird. The firm has been commended by both clients and competitors on the level of expertise of the lawyers. The four-lawyer team has managed to secure a strong client database. The firm advised a fortune 100 media company in connection with production and distribution of children's TV programmes aimed at children. The client sought cross-border advice in several countries in central Europe and Turkey. One of the key issues was the transfer and licensing of copyright under Czech, Hungarian, Polish, Romanian and Turkish law. Another highlight for the firm was advising a German media enterprise on the Hungarian aspects of a complex cross-border joint venture relating to the CEE region. The firm was also responsible for due diligence of Ringier Hungary preceding establishment of a joint venture between the two media companies for central European operations.

Bird & Bird moves up to tier 2 in patent contentious and holds its position everywhere else. The IP practice is split between Milan and Rome under the joint leadership of partners Massimiliano Mostardini and Giovanni Galimberti. The practice saw growth in 2010, adding three new associates from rival IP practices. "It has a great reputation in the market," says one leading patent and trade mark attorney.

In one of the biggest European patent cases of the year, Galimberti and associate Rahul Kakkar advised the European Central Bank (ECB) in proceedings to revoke a patent held by a private company on anti-counterfeiting devices that were used in all euro banknotes. The Court of Turin announced its decision at first instance in favour of the ECB and invalidated the patent. Galimberti also advised Puma Italia on a design and trade mark matter and won the case in the Court of Milan. The two co-heads were active in other large confidential cases representing global clients in the telecom and IT sectors on patent nullity actions, patent infringement litigation and internet copyright issues. One case in particular involves a €1 billion compensation claim. The practice clocks up about 80 IP litigation cases a year for clients such as Actavis, Electrolux, Mylan, Nokia, Apple and L'Oréal.

Bird & Bird saw an increase in contentious work and moves up a Tier in trade marks. The Spanish office, under head of IP Manuel Lobato, continues to represent some of the biggest clients in Europe and is especially well placed in contentious patent work. In 2010 the firm improved its litigation expertise with Antonio Cueto, who joined as a senior European counsel from Gómez-Acebo & Pombo.

Through 2010 the firm handled some of the highest profile patent matters of the year. Among the publishable cases, Lobato and associate Fidel Porcuna saw off a preliminary injunction attempt by Novartis against client Medis (Actavis Group); the case is part of a larger patent infringement case over the drug fluvastatin, which continues in a number of European countries. Lobato, Porcuna and associate Teresa Mercadal were also representing Actavis against Novartis and others in disputes related to the drug Valsartan. Elsewhere, Lobato and associate Beatriz Díaz de Escauriaza won a preliminary injunction for biological crop protection company Koppert against Deval. Other patent clients included Winthrop Pharma, OncoStem Pharma and patent owners Brompton Bicycle and Streetsurfing.

On the trade mark side the firm was advising the leading Portuguese bank Caixa Geral de Depositos before the Court of Justice of the EU in defence of its trade mark Caixa against Spanish bank La Caixa, and also recently acted for the wine group Grupo Arco. Incidentally, the firm acts for the largest winery in the world, Enartis. The IP practice was also active in copyright disputes for clients including Lexmark and Google.

Bird & Bird's IP team is headed by Ragnar Lundgren, Staffan Boström, Sara Sparring and Richard Lewinson. The firm moves up a tier in the copyright contentious table following recommendations by competitors and a strong client portfolio. Across other areas of IP the firm maintains its reputation.

Its IP team acts for some of the biggest global media, internet, telecom and IT companies. Boström and Jerker Edström recently advised Touring Exhibitions on the first museum based on the band ABBA: ABBAWORLD. Boström, Edström and Per Svanteson also advised live concert touring operator Live Nation Nordic regarding the trials for the Eurovision Song Contest and the firm continues to advise music production and publishing company Maratone.

On the patent side, through 2010 Lewinson and Sara Ulfsdotter were advising generic company Teva in infringement and invalidity disputes, while the firm also handled IP matters for clients including Actavis Group, Cederroth Industrial Products and the bakery Polarbröd. In 2010, high-tech dairy company Octrooibureau van der Lely turned to Lundgren for representation in litigation against DeLaval International before the Supreme Court.

One client recommends Sparring: "She delivers with very high quality, speed and competence."

The "brilliant" Bird & Bird has benefited from the tide of rising litigation, its practitioners keeping very busy particularly on appeals. This past year, the team welcomed pharmaceutical and biotech partner Liz Fuller to its team from Wragge & Co and expanded its portfolio of work in the energy sector, particularly in cleantech and windfarms. The firm's peers hold the IP group in high-esteem, one saying: "It's at the top of the game." With praise like this, it's no wonder that Bird & Bird once again is the only firm to feature at the top of all three contentious rankings in the UK. At the beginning of 2011, it was selected by communications provider Airwave as one of two firms to sit on its legal panel to drive the growth of its business.

Bird & Bird has been successfully implementing its international IP network to attract new clients to the firm. Nestlé, Nokia and Volkswagen cite the firm's network as their reason for working with Bird & Bird. Furthermore, it was one of the few international firms that successfully avoided the conflict issue by introducing its own internal rules with clients. Bird & Bird's head of IP, Wouter Pors, says: "The firm may act for any client, but individual lawyers cannot for and against a client." One rival praised the approach saying: "Conflict has always been a problem, but you know what you're getting when you join this firm."

Bird & Bird has a strong patent litigation practice that reflects its second-Tier ranking. The firm is representing the animal health company Merial in a multi-jurisdictional infringement dispute against Intervet, which is the first case following a court-approved seizure action under the European IP Enforcement Directive. The overall practice won praise from different quarters of the market, with some suggesting Bird & Bird should be regarded as a Tier one outfit for copyright. A major US electronics company is advised by the firm on a daily basis regarding alleged counterfeit products entering the country, which also involves litigation proceedings.

The three people consistently named when Bird & Bird is mentioned are Bruno Vandermeulen, Benoit Van Asbroek and Jean-Christophe Troussel. The market noted the departure of associates Serge Flecijn, to his own practice, and Reinhard Dhondt. Troussel's reputation pushes the firm into the copyright rankings for the first time. In 2010 Vandermeulen and team successfully advised Indspec against Sumitomo at the Antwerp court, securing Indspec's patent rights to a resin and winning financial compensation for infringement. Van Asbroek acted for telecom operator Belgacom on ISP liabilities on a peer-to-peer data exchange, a key case in the industry which is now at the CJ, and Troussel helped Hotwheels enforce its Mattel trade mark and convinced the courts to recognise the trade mark beyond the toy industry. The firm was also hired by JETRO, the Japanese External Trade Relations Office, to provide an overview of the Belgian IP regime. One client who has instructed the firm on all matters of IP work highly recommends Vandermeulen and the rest of the team as "top quality": "On a personal level, I would use them again and would recommend them to my colleagues."