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

Baker & McKenzie's approximately 20-member team across its Melbourne and Sydney offices advises a range of telecommunications companies includes Cisco, Intel, Google and the Australian Broadcasting Corporation.

Robert Arnold and Elisabeth White are assisting Nokia with IP enforcement matters that encompass trade mark infringement and breaches of trade practices legislation. White is also working for Bard Australia on regulatory issues for the approval and sale of a medical device.

In the last year Arnold and Ross McLean helped Mars Australia successfully register a shade of purple as a trade mark for Whiskas cat food. The Federal Court order relied on ample expert and survey evidence and subsequently ended a long-standing battle with Nestlé. The firm also has a strong copyright practice and is the exclusive advisor to FetchTV and provides advice on strategic brand protection, copyright and patents to the IPTV service.

With the support of a huge multinational law firm behind it, the IP team of Baker & McKenzie has earned a reputation as a respected presence in Argentina. The branch benefits from the success of the global practice, with an impressive client list including Citigroup, Black & Decker, Cisco, Procter & Gamble, Warner Bros, Vodafone, Unilever and Abbott.

The IP group has particular expertise in anti-counterfeiting and several members work with Customs authorities, helping to identify pirated copies of clients' products. The anti-counterfeiting team also works with private investigators, filing preliminary injunctions under Argentina's IP laws and the TRIPs Agreement.

At the time of going to press, the firm had obtained a police search warrant and the seizure of around 6,000 counterfeit goods on behalf of Warner Bros. In 2010, the firm successfully represented Save the Children against oppositions filed against the charity's logos.

Clients of Baker & McKenzie have noted the high quality of associate Andrea Grubinger both in her proactive approach in cases and in her client relations. Jane Burley, IP counsel at The Body Shop International says: "She always looks out for the brand and understands our business." Grubinger also advises Unilever on the organisation, management and development its trade mark portfolio. The firm as a whole has a solid reputation for its work in Austria.

Baker & McKenzie holds its position across the board. The IP team, managed by one of the best known IP lawyers in the country, Eugene Arievich, grew in 2010 with the hire of four lawyers at associate level and above. The firm has a large trade mark prosecution practice and throughout 2010 attorneys Arievich, Pavel Gorokhov, Denis Khabarov and Ekaterina Vypirailo were kept busy managing the trade mark portfolios of global beverage company Diageo and its affiliates and pharmaceutical company Novartis (which it recently won), among others. The firm successfully registered Russian trade marks for Richemont International (the Cartier mark), Bridgestone (tyres) and Swedish hardware maker Husvagnar (chainsaws). In one contentious trade mark case in 2010 Khabarov and Darya Ermolina appeared in court for the Coordination Centre for TLD.ru in litigation over a domain name dispute. "They are great when it comes to trade mark contentious work," says a peer. "It is the leading firm in Russia in trade marks and of course the firm has the great Arievich," says another competitor. The firm is in charge of all IP litigation for Diageo and also has an active patent prosecution service, which was busy last year handling all patent filings for Pepsi, amongst others. It also played an active part advising on national legislation. Arievich and Denis Khabarov, who are both members of the Expert Council of the Russian Duma, helped prepare amendments to Part IV of the Civil Code. Arievich has been involved in drafting amendments to the Administrative Regulations of Rospatent and Margarita Divina helped prepare amendments to Russian franchise legislation on behalf of the Russian Franchise Association.

"Baker & McKenzie has a big China practice," notes a peer. Combining in-depth local knowledge with an extensive global network, it is a top choice for well-known brands and multinational corporations like Unilever, Calvin Klein, The Body Shop and Bausch & Lomb. "The firm is excellent, very proactive and hard-working. It helps us achieve what we want to achieve. To me, is the most impressive brand protection firm in China," says an in-house client. "Tan Loke Khoon is very practical and effective in getting the right outcome. He and his team are focused and clear in their advice and don't just give abstract advice." Partner Joe Simone is also highly recommended.

Best known for its trade mark and enforcement work, Tan led a team for Hasbro, a toy and game manufacturer, that sued Guangzhou Xingjie Toy Computer for infringing its trade marks on Transformers lookalike toys. Hasbro won the case – the first time Hasbro has engaged in IP litigation in China. Another highlight of the firm in the trade mark arena is obtaining well-known status for Bausch & Lomb's Chinese house mark at a time when the CTMO is becoming more reluctant to recognise foreign-owned trade marks as well-known.

"We receive consistent top quality service and advice with successful outcomes within the limits of Chinese IP law and administration," says a client. "Chris Smith is an excellent lawyer with good, sound advice and strategic thinking. Scott Palmer is another excellent lawyer. He takes special interest in our company, knows his client and is a very good representative for the firm."

Baker & McKenzie maintains its strong position in trade mark rankings, as peers agreed that given its international experience it is still a market leader. Head of department Jiri Cermak won high acclaim from his clients during the research process, noting his high professional standards. One client said: "He was always attentive to our case and always replied to our enquiries promptly at every stage of the process."

Working alongside Cermak are Michal Matejka and Barbora Krajcova, who specialise in enforcement and trade marks respectively. The firm has worked with large brands including O2, Nokia and Calvin Klein on anti-counterfeiting cases as well as trade mark maintenance.

Radka Kohutova joined the team in October 2010 as a junior associate.

The Hong Kong arm of international firm Baker & McKenzie runs a strong IP practice in the city that is highly recommended for its trade mark and enforcement work. Led by Tan Loke Khoon, the five-partner IP team also includes Joseph Simone, Shih Yann Loo, Winston Zee and Maria Smith and some of its recent active clients are Pernod Ricard, Unilever and Bausch & Lomb.

Loo and the Baker team have been busy over the past 12 months. For example, it is helping Nokia to conduct investigations and initiate a civil litigation against counterfeit mobile phone and accessories traders in Hong Kong's Chung King Mansion. LVMH also engaged the firm to help enforce a US judgment against a syndicate that was involved in counterfeiting activities throughout the world. The case is complicated as it involves many different legal issues and 10 defendants based in the US and Hong Kong.

Baker & McKenzie was the first international law firm to open an office in Budapest, despite having a strong international network; commentators observe that the firm hasn't managed to maintain the same reputation in Hungary as in bigger jurisdictions such as the UK. Due to this, the firm moved down a notch for contentious trade marks work this year. As a relatively new player in the country, commentators noted that the firm will take some time to get established in a market such as Hungary. But it has been active in cross-border transactions as well as foreign direct investments, in industries such as telecommunications, pharmaceuticals, oil and gas, energy, food and automotive. The firm represented a US-based lubricant manufacturer in trade mark cancellation and criminal proceedings and in possible civil law damages and infringement claims against its former distributor. Another highlight for the firm was coordinating a trade mark opposition procedure in China and also a trade mark cancellation action and related negotiations in Turkey for a leading Hungarian manufacturer of bakery products. The firm is also coordinating new trade mark applications in China, Russia, Turkey and Egypt. It has established a strong client base, including multinational companies and blue-chip Hungarian corporations, organs of the Hungarian state, international investment banks and other financial institutions.

Baker & McKenzie has a leading trade mark team under the leadership of Yasunori Hashiguchi and handles litigation and licensing across various industries including manufacturing, software, food and beverages, information technology, sports and recreation, and apparel. Star partner Daisuke Tatsuno is representing a European furniture designer whose product designs were allegedly imitated by a major Japanese furniture seller-manufacturer. This case, in which $3 million was sought in damages, was unique as the lawsuit was filed primarily based on copyright rules in the design of a commercial product.

Other significant cases included partner Kenichi Nakayama's involvement with the negotiation of settlement oppositions for a leading Japanese manufacturer of fishing and sporting equipment with over 200 trade marks, as well as Hashiguchi's representation of a major advertising company in its effort to obtain media rights for one of the largest sporting events in the world. Baker & McKenzie's patent capabilities are also improving, as Hashiguchi also acted for a European machine manufacturing house in a Japanese patent infringement case and a patent invalidation trial at the JPO.

Baker & McKenzie Gruszczynski & Partners had a strong year in its IP practice and further improved its patent litigation department. Led by Marek Rosinski, the firm benefited from the international network of the US corporate firm as Poland gets to grips with IP law. "One benefit of having a network is being able to rely on colleagues from other jurisdictions to help with case law," says Rosinski. The firm hired five lawyers, four from Hogan Lovells following the merger there last summer. The key acquisition was the arrival of Ewa Rutkowska whose expertise is in life sciences.

During a trade mark dispute, the firm advised the large sweet producer E Wedel, formerly of the Cadbury Group and now of the Lotte Group. Since the sweet company was nationalised following World War II one of its main brands, Ptasie Mleczko (Bird's Milk), had been widely used by other companies, allegedly infringing the trade mark of E Wedel. Having seen the brand diminish, E Wedel implemented a new enforcement strategy which succeeded in getting decisions by the Polish Patent Office reversed. Other cases regarding the brand are still pending.

Baker & McKenzie had a strong year in the pharmaceutical sector representing drug manufacturers Sanofi-aventis, Novartis, Pfizer and Eli Lilly in cases against the Ministry of Health for producing generic versions of their products. The firm has also been active in the technology sector. Bartosz Malinowski of Adobe Systems says: "We work mainly with Tomasz Koryzma, who was very efficient in responding to all of our enquires. In terms of quality I would go to Baker & McKenzie first."

"Baker & McKenzie / Wong & Leow is one of the best firms that we use internationally," praises a multinational client. The firm retains its place in the rankings this year with the support of hugely positive feedback from both clients and peers. A client says: "The firm's diligence and attention to detail is second to none in our opinion. Not only does it react to our requests extremely promptly but its advice is well considered and seeks to further our aims. Rather than tell us what we cannot do, it advises on the options that are open to us."

A notable matter for the firm was its representation of Estée Lauder in a trade mark infringement and passing off matter. This particular case involved working with other jurisdictions such as Switzerland, Indonesia and China, and showcased the importance of the global network of Baker & McKenzie.

Baker & McKenzie's Spanish arm, split between Madrid and Barcelona, focuses on trade mark prosecution and contentious and copyright. The firm receives especially high praise for its copyright practice thanks in part to Madrid-based José María Méndez, who is recommended by one peer as "the best copyright lawyer in the business". Over the past 18 months Méndez has represented clients including Fox International, Universal Pictures and Warner Bros. Recently, Méndez advised Fox International on European collecting societies' fees and European quota obligations to help the company establish in the most cost-efficient locations. Méndez also acted for the advertising agency Ogilvy Healthworld on a copyright infringement case related to the use of music in a television advertising campaign for a pharmaceutical.

In October 2009 the firm hired senior trade mark attorney Marioti Hernández from an in-house position at Danone. Barcelona-based trade mark partner Carles Prat managed portfolios for Joyería Tous and, in early 2011, was busy representing ITT Enterprises in litigation in Spain (OHIM), Italy, Germany, France and China on a matter related to the commercialisation of mobile phones. The firm also handled a number of anti-counterfeiting cases.

Baker & McKenzie's IP team is managed by Stefan Brandt with the help of associates Helena Magnusson, recruited in 2010 from Awapatent, and Dan Källström. The firm recruited a total of three IP associates in 2010.

In 2010 Brandt represented regular client Specsavers Optical Group in a dispute in the Market Court against Synoptik regarding unfair marketing. The case is testing 2008 Marketing Practices Act. In the media and copyright fields, Brandt also advised advertising agency Karamellpojkarna in a dispute in which artist Magnus Olsson is attempting to sue the advertising agency for use of his designs.

Brandt also acted for Workey in its defence against Stepstone, which has initiated proceedings against Workey on certain marketing claims, including Workey's claim that it is Sweden's largest search engine for jobs.

The market agrees that Baker & McKenzie has a team of good litigators and the group maintained its strong performance in court in 2010. Grace Shao, head of the patent practice, is cooperating with Seraphim Mar to defend LSI Technology, a leading fabless IC design company, against a patent infringement charge brought by a Taiwan research entity. Shao and Mar are arguing non-infringement for the client and promoting a settlement between the two parties to balance the litigation costs and commercial interests for LSI. Head of trade mark practice Joy Pan is defending a patent cancellation action for Rohm and Haas Electronics Materials. The outcome of the litigation will have a severe impact on the client's business in Asia.

Benefiting from the firm's extensive international network, the team at Taipei works on many cross-border issues and counts many well-known corporations as its clients. Mar, together with the firm's Shanghai office, is acting for Microchip Technology in a Taiwan-China cross-border matter to sue Shanghai Haier Integrated Circuit, a wholly-owned subsidiary of Chinese home appliances manufacturer Haier Group, for copyright infringement and to defend the client from a counter-claim of patent infringement. Philips Electronics Industries, Sanofi-Aventis and Eli Lilly are some of the clients that turn to the office for advice. Many clients have expressed appreciation of the firm's one-stop shop worldwide and stable and high-quality services.

"Baker & McKenzie is undoubtedly the top firm in Thailand," says an in-house counsel who enlists the firm for general IP protection and anti-counterfeiting work. "Its service is 10 out of 10. It complete the task, does what it's supposed to at a reasonable cost and gives good advice in a timely manner. It delivers what it promises." The client praises Say Sujintaya: "She is the face for Baker & McKenzie in Thailand. She has the perfect expertise."

Peers also recognise the firm's strengths in enforcement. The firm has kept busy with a string of assignments in anti-counterfeiting. The outfit's ability to conduct its own raids with a reliable and well-connected team, enlisting the help of police and cooperating with authorities, has impressed some clients.

In a standout achievement this past year, Dhiraphol Suwanprateep and Chansin Tangburanakij helped L'Oréal and Estée Lauder seize over 75,000 cosmetics items in the warehouse of a suspected dealer in counterfeit cosmetics. The seized items were worth an estimated $350,000. Nike and Adidas also entrusted Sujintaya and Tangburanakij in a raid that involved the confiscation of more than 10,000 soccer jerseys, the largest to date in Thailand.

In a successful trade mark and copyright case, the team represented a major Thai television station against an illegal distributor in the US. The jury awarded the copyright owner $8.3 million in damages.

"They're responsive and competitive," says a client at a Fortune 500 company. "We like to work with a single point of contact and for prosecution we use Dhiraphol Suwanprateep. He is personable, approachable and very concerned about our business and performance." Xerox Corporation, Procter & Gamble Asia and Mars are just a few of the firm's list of clients.

As part of a huge multinational general practice firm, the IP department of Baker & McKenzie is able to draw on legal expertise in numerous jurisdictions and areas of practice. The Venezuelan branch, which was launched in Caracas in 1955, is well-respected in the IP market. Professionals there have particular prowess in matters relating to the pharmaceutical and healthcare industries and represent brands such as Chanel, Unilever, Liberty Mutual Insurance Company and Columbia Sportswear.

"Baker & McKenzie has a very good team of people taking care of its clients' interests," said one competitor. "I like them very much. I believe in the quality of the people that work there." In particular, peers admired the work of partner Dianne Phoebus. "I believe that Dianne Phoebus is a great attorney," said one rival. "I like the way she runs the business." The firm was founded in 1949 and has 68 offices worldwide.

Tran Manh Hung, IP practice head and leading partner at Baker & McKenzie in Vietnam, is one of the most respected practitioners in the country. Tran is responsible for the IP portfolios of Circle K Stores, Unilever, Procter & Gamble, Marvel Entertainment, Warner Bros and Columbia Sportswear – a collection of Baker & McKenzie clients actively engaged in worldwide enforcement programmes. Enforcement and instant raids are considered to be the firm's specialities, having recently conducted raid actions for two prominent American clothing companies.

In one case, a manufacturing partner was found to have sold and distributed genuine labels to counterfeiters, while more than 30,000 copies of counterfeit buttons and belts were found to have infringed a mark in another case. A client recalls: "Tran Manh Hung is fabulous – his team is excellent and all the folks are very friendly, cooperative and easy to work with." Tran also operates in other relevant areas and handled a case on copyright infringement of a domain name, as well as cases in the pharmaceutical industry.

Baker & McKenzie continues its strong run in trade marks, working with clients across a range of sectors from pharmaceuticals to media. After the firm's big win for L'Oréal in 2009's smell-a-like dispute with Bellure, it garnered more respect from rivals, with one commending its contentious practice as "having a lot of reach". Michael Hart runs the London IP practice. Among Bakers' roster of loyal clients are Unilever, BAT and Nike.