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Hogan Lovells

World IP Survey Coverage: Print-friendly version

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United States

Russia

China

France

Germany

Hong Kong

Italy

Japan

Poland

Spain

Vietnam

United Kingdom

Netherlands - Benelux

Editorial coverage

Russia

The establishment of Hogan Lovells was the market's biggest piece of news in 2010. Both Hogan & Hartson and Lovells had substantial IP practices before the merger and the new firm now counts on a considerable amount of expertise as well as support from the US office and a larger network of international clients. For the moment few problems are reported and the merger has boosted the firm's profile. Although the group lost counsel Julianna Tabastajewa in the merger, key individuals remained, including managing partner Natalia Gulyaeva and counsel Vladislav Ugryumov (one of the best litigators in the market). The firm represents predominantly foreign clients. Through 2010 it kept busy managing GlaxoSmithKline's trade mark portfolio and advising it on anti-counterfeiting and IP strategy. Gulyaeva, Ugryumov and associate Vironika Pilyugina also represented GSK in patent litigation against generics company Gedeon Richter. The firm advised SAP on trade mark and copyright contentious and non-contentious matters, and X5 Retail on IP matters related to corporate transactions. Gulyaeva is an active member of the Anti-Counterfeiting and Enforcement Committee of the INTA and is well respected by clients. "She is extremely commercial as well as being very competent and she always provides her advice to us very quickly," says one client. One client with experience of using a number of firms says Hogen Lovells "is preferable for IP issues due to their best in class expertise".


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China

The big news for Hogan Lovells over the past 12 months is the departure of the well-regarded Douglas Clark at the end of 2010 to pursue a career as a barrister. Although the departure of such a talented individual would be a blow for any firm, Hogan Lovells still has a team of talented individuals. Clients in particular are quick to mention Beijing managing partner Horace Lam, Shanghai Geoffrey Lin and Deanna Wong who splits her time between Beijing and Hong Kong. The latter two were promoted to the partnership in May 2010.

"Horace Lam and Geoffrey Lin have stood out as particularly impressive attorneys. They are highly sophisticated, on a par with the best in the US," says one. Another client enjoys working with Wong: "Deanna is extremely sharp. She understands not only what happens in China, but also in Europe and the US and she always gets back to us on a very timely basis."

With an extensive worldwide network, Hogan Lovells is a preferred choice for many multinational corporations in portfolio management and recently took over work on the entire trade mark portfolio of Motorola in Greater China and of Exxon Mobil in China. Lam is the key partner in charge of these portfolios.

IP litigation is another area the firm takes pride in and clients have faith in. One long-term client of Lovells, which merged with Hogan & Hartson in May 2010, says: "We use the firm for more complex or more important matters, as we believe the investment in fees translates to positive results."

Some important cases the firm has been handling include advising Nintendo on copyright and trade mark infringement cases against game copiers in China and Hong Kong, and defending Mattel against charges of patent infringement in a dispute that has gone from Nanjing to the Supreme People's Court. The team's expertise in the pharmaceutical industry has attracted mandates from leading corporations. It is acting for Johnson & Johnson on cross-border counterfeiting and criminal prosecution in Guilin. Bristol-Myers Squibb also uses the firm in criminal and administrative actions against the sale of counterfeit pharmaceuticals in China.

"Hogan Lovells certainly belongs among the best because of its international experience and working attitude, its strategic approach and good technical understanding," affirms a client who is working with the firm on several contentious matters.


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France

Hogan Lovells has most recently developed a name for itself in resolving its clients' domain name issues under Marie-Aimée de Dampierre, who leads the team. The firm acted for brands such as Facebook, Amazon, MySpace and eBay on IP matters. The merger of Hogan & Hartson and Lovells also brought the knowledge of litigator Xavier Buffet Delmas, a well-known technology expert. Buffet Delmas's experience extends to his representation of consumer brands, where he regularly acts for the healthcare businesses of Danone and L'Oréal. More generally, the team including patent specialist Dominique Ménard assisted Honda on a campaign against unauthorised parallel imports of American and Asian motorbikes, as well as handling Juicy Couture's trade mark action against Lancôme.


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Germany

Hogan Lovells is a leader in the German market and is consistently praised by competitors, domestic and international, as a quality service. One peer says: "We come across them a lot, they are certainly one of the top firms. Their confidence and niche knowledge is impressive." The firm's Hamburg office manages more than 80,000 trade marks in over 190 jurisdictions for both national and international clients. The firm has been involved in one of the largest trade mark portfolios worldwide, that of Deutsche Telekom. Hogan Lovells also expanded its operation last year, with Morten Petersenn appointed as partner in May 2010. The firm's patent practice in Munich expanded with Steffen Steininger appointed as partner in May also. Steininger and his team have been involved in advising national and international clients in patent litigation matters and nullity proceedings as well as advice on protection strategies, licensing, employee inventions and IP transactions. Burkhart Goebel advises Anheuser-Busch on trade mark litigation, which last year involved successful representation before the Court of Justice of the EU in a referral from the Commercial Court of Vienna in connection with the use of the client's trade mark Bud in Austria. Munich-based Steininger and Benjamin Schroer have been involved in one of the largest pending series of trade mark litigation before the Court of Appeal of Hamburg and district courts. The work for All Star, Converse's licensee for Germany, Austria and Switzerland involves trade mark litigation against parallel imports and counterfeits of Converse's All Star Chuck Taylor footwear.


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Hong Kong

"The firm has been really, really excellent," says a client of Hogan Lovells. "It is taking charge of all the different work for us and it comes up with trade mark strategies in other countries as well. Its performance is very outstanding and we have consolidated everything to Hogan Lovells." Led by head of IP Asia Henry Wheare, the firm has always been a key player in the IP market in Hong Kong. Last May, Deanna Wong, who splits her time between Hong Kong and Beijing, became a partner.

Wheare, Wong and Gabriela Kennedy, another IP partner in the team, all win accolades from different clients. "I work regularly with Henry Wheare and consultant Andrew Cobden in Hong Kong and I find them to be extremely knowledgeable, responsive and helpful. I am very satisfied with its services and will recommend it to any person who needs IP advice here," says one. "I would like to recommend Gabriela Kennedy and Deanna Wong. They are professional and always understand our needs," notes a client of the duo.

As the regional hub of the firm's Greater China practice, the Hong Kong office handles and coordinates much of the IP work, for example the trade mark portfolios of Prudential, Costa Coffee, Stella International, Motorola and Citigroup. In terms of litigation matters, the team is advising Merck in a patent dispute related to a range of pharmaceutical products, acting for Nintendo on copyright infringement issues against sellers of devices that allow the copying and playing of counterfeit Wii and Nintendo DS games, and representing accounting network BDO on a trade mark infringement and passing-off action against a Philippines bank. The BDO case in Hong Kong is part of a worldwide dispute involving parallel actions in the US and the Philippines.

An in-house counsel sums up her impression of Hogan Lovells: "Technically sound, focused advice, very friendly and approachable. We tend to use Hogan Lovells where sound technical advice is required and where cases are more complicated."


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Japan

A key strength of Hogan Lovells' Tokyo office is its combined intellectual property, media and technology team – among the largest of any firm in Japan. This is due in part to the international merger of the firm's two predecessors, drawing the expertise of Lloyd Parker and Eiichiro Kubota together with that of Philippe Riesen. The firm's long-standing reputation in patent litigation, considered by Parker's team as its strong suit, is shown by the infringement advice it is giving to NEC Group, as well as a famous Japanese mobile services business, a leading cell phone manufacturer and a pharmaceutical company. An added bonus often commended by clients is Kubota's stature as a leading Japanese-qualified IP specialist.

On the trade mark side, Hogan Lovells caters to Panasonic on IP enforcement and US brands such as PepsiCo on portfolio management, which includes clearance searches, registrability advice, filing and cancellation actions. The team also acts on various IP disputes previously under the oversight of Riesen's team that involve Sanyo, Toshiba and JVC Kenwood.


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Poland

Following the merger in May 2010, Hogan Lovells sustained heavy losses from its IP department including partner Ewa Rutkowska and associates Ewa Auleytner, Magdalena Bakowska and Agnieszka Zielinska, all of whom went to Baker & McKenzie. Hogan Lovells also lost Oskar Tulodziecki to K&L Gates during the merger and partner Krystyna Szczepanowska also left to head up the new IP office at DLA Piper. The team is now being led by Ewa Kacperek, who joined from Salans in January 2011. Kacperek will perform a similar role to her position at Salans as counsel for Hogan Lovells. The firm also hired associate Piotr Zawadzki and Sylwia Kacperska as assistants. The team advises Sanofi-Aventis and Brother International Europe on trade mark infringements and conflicts respectively, among a range of other clients.


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Vietnam

Hogan Lovells has deep experience of the corporate and commercial world and its distinctive strengths in litigation place the firm in a position above its peers. As a result, star practitioner Gregory Buhyoff handles an unconventional client list that includes Prudential Vietnam and Deutsche Telekom in trade mark portfolio management in Vietnam and neighbouring countries, as well as any corresponding contentious matters. Hogan Lovells, similar to other foreign affiliated firms operating in Vietnam, cannot file local IP applications. However, this is rarely a deterrent for Buhyoff's team, as it allows additional resources to be dedicated to pre-application and post-registration services, particularly in enforcement and due diligence advice to clients including Cadbury Schweppes, Sony Computer Entertainment, Anheuser-Busch, Ford Motor and Exxon Mobil. "They are proactive thinkers as they offer practical and succinct legal advice," says a US law firm.


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United Kingdom

Mars recently appointed Hogan Lovells to manage its extensive trade mark portfolio in Europe, while a team led by Stephen Bennett advised Medinol in a multi-jurisdictional litigation against a rival seeking to revoke three of Medinol's patents related to cardiovascular stent technology. The market acknowledges that the trade mark litigation team at this global firm stands a head above many peers, and the firm boasts premier clients such as Caterpillar, Merck, HTC and SABMiller. As a result of the Hogan Hartson and Lovells merger last year, the UK firm has effectively expanded its presence into the US and Asia.


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Netherlands - Benelux

Hogan Lovells represented Nintendo throughout 2010 in anti-counterfeiting cases, which received a lot of attention from the local press. But peers said that it could face greater competition from emerging firms such as Hoyng Monegier. Partner Bert Oosting, nevertheless, won high accolade from other firms and agencies. "He's a really nice guy and a good lawyer," says one litigator. The firm has also been involved with several media-related cases.


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Firm contact

This firm does not have a profile in the 2011 Handbook