Dressed to bill
28 September 2009 | By Tom Phillips
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As the design capital of the world, Milan’s IP market is still thriving. But will the industry be forced to modernise in the near future? asks Tom Phillips
The darlings of the catwalk may saunter out of the city at the close of London Fashion Week, but their influence will linger longer on the nation’s designers. And none are more influential than the fashionistas from Milan. Home to designers of handbags, cars and cutlery, the Italian city remains the world’s style capital.
With creativity its biggest export, Italy’s manufacturers need an army of lawyers to protect its brands from copycats.
Step forward one of the world’s most sophisticated IP markets.
The market is made up of various tiers (see box on page 27), which include IP professors, boutiques, consultants and law firms and their dedicated practices. Like stilettos, IP is something that the Italians do very well.
“IP is especially important for a city such as Milan. The publishing and design sectors are also definitely strengths in this city,” says Paolo Bertoni, counsel and head of the IP practice at Freshfields Bruckhaus Deringer in Italy.
According to IP heads at Italy’s law firms, the recession has not taken the shine off the country’s flagship practice area. Not yet.
“We’re more worried about the near future than the past,” says Professor Giovanni Guglielmetti, head of the nine-lawyer IP practice at Bonelli Erede Pappalardo. Guglielmetti, who joined Bonelli as a partner in 2006, says his team is yet to feel the pinch. “In the final part of 2009 we might have some freeze on the work. IP has probably suffered less than other practice areas. We’ll be able to recover the work faster.”
Bertoni agrees, saying Freshfields has benefited from the increase in disputes. “Overall, market conditions are good because we’ve not suffered from the economic climate,” he says. “In the litigation scenario in particular, clients are often knocking on our door because, clearly, in bad economic conditions there’s an increase in litigation, which includes specialised
IP litigation. However, the traditional corporate support side is suffering a bit.”
Bertoni believes that this optimism will convert into more work, more billings and the hiring of more lawyers - if the economy was better and conditions were right for the firm, that is. It seems that although Freshfields’ IP practice is performing well and could hire some junior lawyers “if things continue as they are”, worries about costs may hold the firm back for a little while yet.
The traditional model of the Italian IP market, ranging from academics to IP boutiques, will be put under increasing pressure during the recession and demands from clients may change the current model.
“In Italy there’s still a strong presence of IP boutiques, frequently led by law professors,” explains Bertoni. “However, things are changing. While the professors are extremely skilled in lawyering, I think they’re quite reluctant to embrace some of the requirements of the client at the moment, in terms of their responsiveness and business-minded approach. There’s an opportunity for international firms such as ours to expand our activity.”
The saving grace for academics is the pace of change in IP law. The laws surrounding industrial and intellectual property change as frequently as the hemlines on the catwalk, with near-constant revisions to reflect the industry’s international presence.
Gaetano Arnò, an IP professor and head of the legal services department at TLS Associazione Professionale di Avvocati e Commercialisti, a law firm owned by PricewaterhouseCoopers, sees the transformation as part of a trend already seen elsewhere in law firms.
“The IP market in Italy is facing a change similar to what already occurred in the past with other practice areas, such as corporate, IT and banking,” says Arnò. “Such change should lead to an alignment of the Italian IP market to that of the other countries.”
Arnò believes that the model may change in the near future due to the decisions of several full-service firms to set up an IP department led by lawyers specialising in IP. This new approach, he says, will favour firms with international networks.
“The advantage [of international firms] is their capacity to meet the needs of the client in terms of timing and level of service, which are usually more competitive than those offered by the IP professors and consultants. I deem that the ‘shift’ from the IP professors model to the multidisciplinary law firms in the Italian IP market is moving forward and it will increase in the near future,” Arnò says.
Luca Toffoletti, a partner in NCTM’s IP practice, says recent changes have seen a more “US-like” enforcement of the laws, including a shift in the approach taken, for example, to e-discovery. Such an increase means more work for lawyers as emails and memos become more important in disputes.
“The laws around e-discovery are changing and still surrounded by some uncertainty, but if the influence of these laws grows, they will create more incentives for companies to work in a more structured way in terms of who is responsible for what,” he says. “Should [Italy] come up with a system similar to the one in the US, we’d need a large amount of people reviewing a large amount of documentation in a short amount of time.”
Bertoni recalls a discussion he had with an IP law professor at a university: the experienced academic admitted that some years ago he knew all of the answers to the questions in his students’ exams. Now he does not even understand the questions.
“There are constant changes in the law,” Bertoni adds. “Everything is changing so rapidly. Our research and professional studies regarding these matters have to be constantly revamped because we have to be up to date every single day. These changes create opportunities because it’s a challenge to keep clients up-to-date and provide them with advice that takes into account legislative changes but also business changes and new technology.”
Toffoletti says the amount of damages in IP cases is increasing, making litigators more important than before, but leaving old-style litigators out of the loop.
Reflecting this, NCTM recently boosted its 10-lawyer IP practice with the addition of Brussels firm O’Connor and Company. Name partner Bernard O’Connor specialises in international trade and the euro, but also has an expertise in IP-related matters such as border enforcement - a key tool in enforcing IP law when dealing with import and export.
NCTM is also proud of its consultancy work, especially with respect to key client Ferrari, which it acts for on complex cross-border trademark protection.
“We believe the integration between IP on one side and international trade and competition on the other is a really important change for us over the past year,” adds Toffoletti.
With constantly changing legislation, Italy’s lawyers need to be as creative as their clients. And much like their clients’ designs, the influence of Milan’s IP lawyers is seen in law firms from London to New York.
The Italian IP Market
Reflecting the quality and high volume of work available, the Italian IP market is broken into three tiers. The fashion houses, designers and publishing professions mean the country remains a focus for IP litigation and law, with layers of assistance available for clients depending on their need.
In no particular order, these layers include: a large group of law professors who provide an unrivalled academic knowledge of IP, some employed by law firms, such as Paola Frassi at Bird & Bird, Luigi Mansani at Lovells and Giovanni Guglielmetti at Bonelli Erede Pappalardo. Other, often older professors, work independently in their own firms, such as Adriano Vanzetti, Giuseppe Sena and Giorgio Floridia.
Then there are IP boutiques such as Trevisan & Cuonzo - whose client list reads like a millionaire’s shopping list - Franzosi Dal Negro Pensato Setti and Rapisadi, which ply their trade through solid relationships with a few big-name clients. Also, at least one major fashion brand has lawyers from a boutique working permanently in their head office.
Finally, there are IP consultants such as Jacobacci & Partners, Modiano & Partners, Notarbartolo & Gervasi and Perani, which operate like full law firms but market themselves like consultancies.