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Baker & McKenzie

World IP Survey Coverage: Print-friendly version

Rankings

Australia

Argentina

Brazil

Canada

Russia

Chile

China

Colombia

Czech Republic

Germany

Hong Kong

Hungary

Japan

Kazakhstan

Mexico

Poland

Spain

Sweden

Switzerland

Taiwan

Thailand

Ukraine

Venezuela

Vietnam

United Kingdom

Texas

Editorial coverage

Australia

Baker & McKenzie is a big brands IP practice which excels in the trade mark area. The firm's global presence is an obvious advantage in gaining work from major international names and the Australian offices play a significant part in the management of many global client relationships, such as Mars, Harley-Davidson, In-N-Out Burgers and Hasbro.

Andrew Stewart and Ryan Grant led a team acting for SingTel Optus in proceedings against the Australian Football League, Telstra and National Rugby League. The high profile case was commenced by the AFL and NRL alleging that SingTel Optus infringed the copyright in their matches, which were broadcast on free to air television and joined by Telstra, which claimed that its exclusive rights to broadcast those matches were violated.

Baker & McKenzie acts for Louis Vuitton in its enforcement programme in Australia. Since it began working for Louis Vuitton, the company has been successful in arranging the publication of recognition of rights statements published in a national newspaper. Previously, Louis Vuitton had been unsuccessful in persuading infringers to publish such statements in Australia.


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Argentina

The IP practice of Baker & McKenzie in Argentina has managed to grow from one attorney in 1998 to a team of five attorneys and 12 paralegals currently. Headquartered in the Argentine capital, Baker & McKenzie represents well-known companies such as Yamaha Motor, Walt Disney, Unilever, Bausch & Lomb and Honeywell International.

Clients praise the firm for its quality of work. "They have given their support and advice on every critical issue regarding IP and we're quite satisfied with them," one client said.


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Brazil

Baker & McKenzie's IP group offers clients the full range of IP services, but is particularly strong in trade marks. The majority of its 16-member team is based in the Rio de Janeiro office, while a smaller group serves clients through the São Paolo office, which focuses more on transactional work, such as copyright, licensing and franchising. Clients include Motorola Mobility, Sony Latin America and petrochemicals company Braskem.

The firm also represents companies from the pharmaceutical, auto and retail sectors. It manages the trade mark portfolios of Unilever, Abbott Laboratories and Nokia.

"Our experience could not have been better," says one client. "They are fast, have a very good knowledge of the issues and also general matters involving contracts, such as tax impacts," the client adds.

São Paolo-based partner Flavia Rebello also earned praise from the same client, who describes her as "excellent."


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Russia

Baker & McKenzie is an international law firm with a large presence in the Russian market. Its strong IP practice has 30 lawyers across the CIS region, with three partners and two of counsel in Moscow including CIS IP head Eugene Arievich. It has two offices in Russia, in Moscow and St Petersburg. Its clients include big names such as Richemont, Intel, Kraft Foods, Ford and Pfizer.

The firm is especially renowned for its trade mark expertise, both in prosecution and contentious, as peers acknowledge: "It is very strong on trade marks. I have no concerns with Baker & McKenzie being that high up [tier 1]."

"Baker & McKenzie in the top tier here [trade mark contentious] is definitely right," says a partner.

Another big client for the firm is Diageo, for whom it worked on one of its disclosable cases. In this, Denis Khabarov led the team that successfully gained a cancellation of the mark Smirnov Table Wine No. 21 on the grounds of non-use. The mark was also confusingly similar to Diageo's own Smirnoff trade marks, and after going to the court of arbitration and court of appeal, the decision was made final in April 2012.

In terms of prosecution, the firm has been managing and filing portfolios for the likes of Nissan, including oppositions arising from its marks and clearance work.


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Chile

While Baker & McKenzie has been present in Chile for the past 50 years, its IP practice was established a little over a decade ago. During that time, the firm has grown in that practice area and now has a team of four IP attorneys and four paralegals. The firm has made strides in anti-counterfeiting and trade mark litigation representing companies such as Wilson Sporting Goods, Nokia, HP, Sony and Caterpillar.

In June 2012, Baker & McKenzie won an infringement case on behalf of its client Caterpillar. The firm filed an opposition against an application for the domain name respuestos-caterpillar.cl, on the grounds that its client is the owner of the trade mark and trade name Caterpillar.

In another notable matter, Baker & McKenzie amended the international licence agreements of all Nextel-related trade marks and patents to comply with local law. The firm also filed for these agreements – which involved more than 80 patents and five trade marks – to be recorded with the Chilean trade mark office.


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China

Loke-Khoon Tan leads the China and Hong Kong IP team at Baker & McKenzie. The firm has offices in Beijing and Shanghai, with a team of seven partners, one special counsel and 18 associates. Prominent clients include Applied Materials, Bausch & Lomb, Pernod Ricard and Starbucks. One of the staple IP international law firms established in China, it is also has a highly praised anti-counterfeiting practice.

Chris Smith is highlighted by clients for his accomplishments in trade mark and brand protection. One client commends the partner: "He is very responsive; he understands our business and gives well-reasoned practical advice."

Partner Shih Yann Loo led the group in representing Schneider Electric subsidiaries in China in trade secrets and trade mark litigation that progressed to the Supreme People's Court. Opposing party Zhongkong accused Schneider Electric's subsidiaries of trade mark infringement, asking for a permanent injunction, public apology and monetary damages. Schneider saw unfavourable judgments until it reached the highest court that overturned trial and appeal court decisions. The case reaffirmed the standard of determination of similarity of goods and the likelihood of confusion.

Isabella Liu handles various patent portfolios for numerous global clients, offering clients technical and legal advice on IP ownership and inventorship issues under Hong Kong and PRC law. The firm handles both inbound and outbound patent work that includes initial drafting, patent counselling and prosecution management.

Tan and special counsel Andrew Sim acted for Hasbro, the American toy company, in its first trade mark enforcement litigation in China before the Guangzhou Intermediate People's Court. Tan and Sim presented convincing evidence of widespread infringement where infringing toys were found on sale around China. The court decided in Hasbro's favour, resulting in damage awards of Rmb 160,000 ($26,000).


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Colombia

With an office in Bogota, Baker & McKenzie has maintained a presence in Colombia of more than five decades. Its IP group of 11 IP lawyers and six technical experts represents such clients as Diageo, Novartis and Stryker.

Baker & McKenzie was able to save its client, radio broadcaster Caracol, $4.4 million in damages demonstrating that the plaintiff's allegations of unfair competition were not valid. Resolution of the case also put an end to a long-standing dispute between D2 Publicidad and the defendant.

In another notable case, the firm succeeded in returning trade mark rights to its client FG Wilson – a Caterpillar brand. The defendant, Inversiones Jambalaya, had filed applications for the trade mark FG Wilson in several Latin American countries, without having any relation to FG Wilson or Caterpillar. Based on these registrations, Inversiones Jambalaya then requested border measures in connection with an import of FG Wilson generators at the Colombian port of Cartagena. Baker & McKenzie won a favourable decision for its client, ending a case that had been in court and handled by other firms for more than 10 years.


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Germany

Financial and corporate firm Baker & McKenzie has a full-service IP practice of 16 lawyers split between four offices. Trade marks is the firm's main strength, and it handles contentious work, filing and transactional advice in this area, but it has also been expanding the patent practice. The firm's trade mark expert is the respected Michael Fammler, who heads its Europe IP steering committee. "He has built up a good trade mark practice, and he is well known," says one peer. Hasbro, The Body Shop, Calvin Klein and Tui are among the major brands the firm represents.

After numerous recommendations, Baker & McKenzie joins tier 4 for trade mark contentious. A recent example of its work in this area was Rembert Niebel and Carolin Steuer's advice to K-Swiss in its suit against Künzli, which it claimed had infringed its five-stripe mark. The Court of Appeals found for K-Swiss in February 2012. Another case saw Fammler representing Calvin Klein in a dispute with competitor Carl Kött, which it claimed had infringed its CK mark. The case was settled in March 2012.

The firm has been developing the patent practice, which is headed by Günter Pickrahn, and recruited litigator and partner Jochen Herr from Field Fisher Waterhouse in January 2013. In addition to helping clients with licence agreements, the patents team has been advising an engineering client in a dispute with a competitor over technology the client uses in its power plants.

An interesting copyright matter for the firm saw Constanze Ulmer-Eilfort and Benjamin Koch advising publisher Alfred Kröner Verlag, which won in its dispute with the Open University of Hagen after it made parts of publications available on the university Intranet.

The IP practice saw one notable departure in 2012 when partner Stefan Dittmer moved to DLA Piper.


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Hong Kong

Loke-Khoon Tan leads the IP team at Baker & McKenzie. The team is made up of 24 fee earners including five partners, one special counsel and 18 associates. Prominent clients include Bausch & Lomb, Hasbro, Pernod Ricard and Starbucks. The core strength in Hong Kong is IP litigation and the team has achieved significant wins in the past 12 months.

Partner Shih Yann Loo acted on behalf of Nokia in investigating and commencing a civil action against infringing mobile phones and accessories traders in Chung King Mansion, a location infamous for counterfeit goods. This marks the first time a mobile phone company has launched large scale legal action against numerous infringers for trading in counterfeit mobile phones.

In patents, Loo advised a global pharmaceutical company on its legal action against an infringer in Hong Kong. The infringer was a wholesale exporter of a pharmaceutical powder containing an active ingredient of one of the most popular drugs used to treat male erectile dysfunction. The team proceeded to take civil action against the infringer after collecting compelling evidence illustrating their infringing activities, and is seeking damages and a permanent injunction order from the courts.


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Hungary

International firms are pretty thin on the ground in Hungary, but Baker & McKenzie is gaining more and more visibility in the market. It has one office, with three lawyers led by Zoltan Hegymegi-Barakonyi, a partner who also acts as head of the competition and IP work. Senior associate Zsofia Lendvai is recognised as a rising star in the market.

Baker's clients include Eli Lilly, Milipol and Apple, and its work has been quite varied over the past 12 months. In one case, the team has been advising a leading IT company with regards to the copyright implications of a new product, while in trade marks it has been acting for an international confectionery company in a dispute over the copying of its packaging by a competitor.


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Mexico

Baker & McKenzie has been present in the Mexican market since 1961. Headquartered in Mexico City, the firm also has offices in Monterrey, Guadalajara, Juarez and Tijuana. Its team of 15 IP professionals is active in all areas of intellectual property but particularly strong in trade mark prosecution. The firm manages the trade mark portfolios of GoreTex, Unilever, Limited Brands and Salesforce.com. It also handles the majority of Procter & Gamble's patent filings in Mexico and recently acquired SAP as a new client.

On behalf of its client Caterpillar, the firm's IP group succeeded – through negotiations – to put an end to nine different infringements against the client's Caterpillar and CAT trade marks. Achieving a resolution without having to go to court, Baker & McKenzie saved its client $300,000 a year in litigation costs and at least $3 million in damages resulting from continued infringement.


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Poland

The international firm Baker & McKenzie has one office in Warsaw. It is a tier 1 trade mark prosecution firm and is ranked in the second tier of the contentious tables. Led by Marek Rosinski, the IP team is made up of 19 fee-earners. Apart from trade mark prosecution and litigation, the firm is strong in TMT, patent litigation, advertising and pharmaceutical regulatory work. The firm has three patent attorneys and its growing trade mark portfolio has over 2,000 trade marks. This includes the portfolios of Unilever, Estée Lauder, Nokia, Abbott and Givenchy. "Baker has big trade mark portfolios," one peer says. "It has Paul Rawlinson in the UK who manages the international portfolios."

In patents, the firm acted for Novo Nordisk in a patent litigation case over a pen for injecting insulin. The client contended that a Polish competitor, Bioton, infringed two of its European patents. In trade marks, the firm acted for Liberty Mutual in a trade mark litigation case that concerned the use of its Statute of Liberty logo by an insurance company. Finally, in copyright, the firm advised LG on copyright levies in Poland.


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Spain

In Spain, Baker & McKenzie is ranked in the second tier of the copyright and trade mark contentious tables. "Baker has lots of cases and a big portfolio in trade mark litigation," one peer says. The firm has 23 fee-earners and two offices located in Madrid and Barcelona. José María Méndez is the head of the IP practice in Madrid and Carles Prat is the head of the practice in Barcelona. It acts for clients such as EMI, Disney and Danone.

The firm carried out the global rebranding process for two new companies that arose out of the spinoff of ITT in 2011. Moreover, the firm is noted for its strong international network. "We work a lot with Baker in quite a few Asian countries and we're happy with its work," one client says.


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Sweden

In Sweden, Baker & McKenzie's Stockholm office has a small presence with only three IP fee-earners. The IP team is led by Stefan Brandt who acted for Villeroy & Boch Gustavsberg in a dispute involving copyright infringement and marketing regulations. Before the Market Court, IFÖ Sanitär alleged that the clients copied the design of IFÖ's product. The firm also acts for clients such as Concorp, Karamellpoj-karna and the Swedish Post & Telecom Agency.


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Switzerland

Baker & McKenzie is an international law firm with an IP team of nine lawyers, eight in Zurich and one in Geneva, including partners Michael Treis and Nicolas Passadelis. Focusing on legal IP work, its clients include names such as British American Tobacco, Estée Lauder and Aston Martin.

"Bakers could maybe go up. It does a lot of trade mark litigation. Treis is there, he is good, and he has a good team," comments one partner.

The firm also grew its numbers this year, taking on three new associates.


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Taiwan

International law firm Baker & McKenzie has 12 people on its IP team including trade mark and patent attorneys. The firm can handle all areas of IP, but it has enjoyed a long history of handling large volumes of prosecution work, particularly trade marks. On the contentious side, the team is strong for patent litigation relating to pharmaceuticals. Philips, K-Swiss and Chung Hwa Telecom are a few of the firm's key clients.

In September 2012, the firm defended Genovate Technology, a domestic generic drug company, in a patent infringement action brought by a Japanese pharmaceutical company. The IP High Court issued a judgment in favour of its client, and the team proceeded to sue the Japanese company for patent misuse and unfair competition. The action resulted in the IP High Court awarding its client $2 million in compensation for losses suffered by applying for an illegal preliminary injunction, and the Supreme Court dismissed the Japanese company's appeal. The case is important for it is the first time a patentee has been held liable for patent misuse and unfair competition.

Philips is a longstanding client of the firm, and the team has continued to protect their client's CD-R Patent License Program.


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Thailand

Baker & McKenzie has a comprehensive IP practice. Working out of its sole Thailand office in Bangkok, the team comprises 24 lawyers focusing on IP matters. Recognised as one of the stronger IP practices, the firm performs well in the rankings this year. It maintains a loyal base of prominent clients, including Procter & Gamble, Toyota and Adidas.

The firm has had another busy year. Dhiraphol Suwanprateep and Say Sujintaya lead the team in managing large portfolios for clients such as Bristol-Myers Squibb, handling 132 of BMS's trade marks in Thailand as well as a large portion of its patent portfolio. Cargill, an international producer and marketer of food products, also entrusts a large proportion of its patent portfolio work to the firm.

Suwanprateep acted on behalf of Cartoon Network in its struggle to register the trade mark Ben 10. The application had initially been rejected on the grounds of similarity with previously registered mark Benten. Cartoon Network ultimately prevailed, convincing the court that there were distinctive differences between the marks.


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Venezuela

While Baker & McKenzie has been present in Venezuela for more than half a century, its IP practice is a bit younger, established in 1981. The firm has two offices – in Caracas and Valencia – and four IP attorneys. It provides services in all areas of intellectual property, but the bulk of its work is concentrated in trade marks. It manages the trade mark portfolios of Liberty Mutual, Limited Brands, Ingredion and Unilever. Other clients include Abbott Laboratories, Bristol-Myers Squibb, GlaxoSmithKline, Eli Lilly, Bausch & Lomb, Chanel, L'Oréal, Caterpillar and Nokia.

In 2012, the firm assessed the content and status of a client's entire trade mark portfolio due to the company's corporate changes. Baker & McKenzie provided the client with a full report and detailed advice in resolving long-standing problems within the portfolio.

In another notable matter, the firm reached a co-existence agreement on behalf of its client with an entity that had opposed the company's two trade mark applications, thus preventing a product launch.

Partner Dianne Phoebus is a member of the firm's Latin American IP Practice Group steering committee and head of Baker & McKenzie's Latin American Pharmaceutical and Healthcare Industry Group. In 2012, she served as panellist at the first Latin American Pharmaceutical and Medical Device Compliance Congress held in São Paolo, Brazil.


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Vietnam

Baker & McKenzie is an international firm of lawyers with two offices in Hanoi and Ho Chi Minh City. The Vietnam IP team is made up of 22 fee earners and offers clients well-rounded expertise in protecting IP rights. However, the firm is best known for its anti-counterfeiting and trade mark practices. Ikea and Hugo Boss are two clients.

"The firm has an extremely good network relationship with Customs," said one client. Minh Tri Quach, an associate at the firm, is a highlighted talent. "He is very hands on, very thorough in his recommendations on what actions to take and is very practical," said one client.

Another client praised the firm's international expertise: "Baker & McKenzie is one of the best in terms of conducting research. It has sources of information from all around the world, so you can get information quickly. I think of the firm when I have international issues and need international experts."

In May 2012, the firm partnered up with local IP boutique BMVN International to represent all of its clients before the National Office of Intellectual Property.

Manh Hung Tran and Vu Hong Yen represented a global audio equipment seller in its cancellation action against similar a mark. After years of persistent efforts, the team was victorious in 2012 receiving a favourable decision from the National Office of Intellectual Property (NOIP). NOIP accepted the cancellation petition in addition to recognising its client's brand to be a well-known trade mark.


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United Kingdom

Baker & McKenzie is one of the preeminent international IP law firms. Its team in London is led by Michael Hart, who oversees 36 professionals doing work for clients such as Sportingbet, Meltwater and L'Oréal.

Peers acknowledge the firm's standing in the market too: "Baker & McKenzie has great clients, and excellent people," comments one partner, while another singles out a partner for specific praise: "Stephen Jones at Baker & McKenzie definitely knows his stuff."

Clients share this high view of the firm: "We use a number of top-notch international legal firms, and it is a fact that Baker & McKenzie is the first firm both I and my colleagues tend to go to when we are in need of expert advice and assistance in a variety of matters," says one, who adds: "Definitely very happy. What impresses me most is their professionalism."

The firm is renowned for its trade mark expertise in particular, and it has been doing more portfolio management work over the past 12 months. Partner Paul Rawlinson also led on Baker's successful defence of Sportingbet as its www.wallstreet.com address came under attack, a case that concluded in September 2012.

Other notable work includes Ben Allgrove, Julia Dickenson, Iona Harding and Hart acting for Meltwater and the Public Relations Consultants Association with regards to the Newspaper Licensing Agency's plans to make news aggregator sites pay a fee to access free newspaper sites. This important copyright case goes to the Supreme Court in February 2013.


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Texas

Founded in 1949, Baker & McKenzie is one of the largest international law firms in the world, employing more than 4,000 attorneys across 72 offices around the globe. The U.S.-based contingent of the firm's IP group is comprised of more than 50 lawyers located across eight offices – two of which are Houston and Dallas. The firm's IP lawyers in the Lone Star State are known for bringing deep knowledge in commercial and corporate law to their work representing both plaintiffs and defendants in patent litigation. Baker's lawyers also handle a substantial amount of cancellation proceedings and trademark prosecution among other practice areas. Clients and peers say one of the firm's distinguishing features is its extensive international footprint across more than 45 countries. "We were very happy with the work they provided," says one client. "They have a global network and reach in relation to lawyers with the relevant expertise. Ours is a global company with operations and business in numerous territories and it is important that we are able to react appropriately and in an expedient manner when required, as IP matters so often do." In one recent contentious matter, the firm, representing Macronix and other defendants, obtained a stipulation and judgment of non-infringement after two years of litigation over a disputed patent. Attorneys also obtained a favorable settlement on behalf of View Sonic following an ITC investigation involving digital photo frame patents.

Nicole Emmons and John Flaim are two of the firm's lawyers in Texas singled out for mention. Emmons focuses her practice on worldwide trademark protection and brand management. She is a former vice chair of the Intellectual Property Owners Association's Trademark Law and Practice (International) Committee. Flaim heads up Baker's global IP group and concentrates his practice on patent and trademark litigation, licensing and prosecution work.


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Firm contact

This firm does not have a profile in the 2013 Handbook