Jacobacci & Associati

Firm Details: 

Chairman: Fabrizio Jacobacci
Number of partners worldwide: 17
Number of lawyers worldwide: 40
Languages: English, French, German, Italian, Russian, Spanish, Swedish

Firm Overview:
Studio Legale Jacobacci & Associati was founded in 1996 and now counts 6 offices in Italy, France and Spain (Turin, Milan, Rome, Paris,Madrid and Valencia).

Always forward-looking and eager to embrace innovation, in any of its expressions. With lawyers specialized in all areas of Intellectual Property, our Contemporary IP philosophy has brought us to where we are today: one of the premier European law firms in the field of Intellectual Property with a multinational presence in Italy, France and Spain.

We provide Italian, French, Spanish and international clients operating in all sectors of industry and art with guidance in commercial transactions and IP litigation support before the national Courts as well as the European Court of Justice and in multi-jurisdictional disputes.

Main Areas of Practice: 

• Intellectual Property
• Information Technology
• Antitrust & Competition
• Regulatory
• Commercial Contracts
• Copyright & Art
• Media & Entertainment
• Personal Data & Privacy
• Dispute resolution

- Commercial IP: Patent 

Italy: 11 partners, 35 fee earners

France: 3 partners, 4 fee earners

Spain: 3 fee earners, 3 fee earners

■ The firm represented a high-tech Chinese company, which intervened in an SEP patent dispute to assist in the defense of its Italian client, involving a complex dispute regarding the application and calculation of FRAND royalties
■ The firm successfully represented a patent owner in litigation concerning the validity and infringement of the Italian portions of two European patents
■ In a case valued at millions of Euros, the firm obtained an important victory for a client in a case regarding a patented technology for vehicle speed cameras, convincing the Italian Supreme Court to overturn a lower court ruling and remand the case for further review
■ The firm successfully represented a leader in the field of plant varietals in enforcing its rights against all actors in the supply chain selling products gained from infringing plants
■ The firm represented a client in a precedent-making case regarding the limits and protections applicable to applications for description orders in the Italian territory
■ The firm successfully represented a client in a multinational litigation effort, seeking a declaration of invalidity a European patent for medical devices
■ The firm successfully assisted an Italian client in defending itself against infringement of a US patent, raised by a Canadian commercial partner.
■ The firm represented a world-renown fashion brand before the CJEU in relation to the burden of proof of use for figurative trademarks marks
■ The firm successfully represented its client in a dispute regarding the ownership of the trademark for a musical group between former band members
■ The firm represented a leader in the cosmetic and perfumery industry, successfully protecting its selective distribution network in the age of global marketplace commerce
■ The firm assisted a famous Tuscan watch maker in a complicated nullity action, and then settlement, against trademarks filed by an Italian journalist that shared a name with the watch brand for similar products.

Key Clients: The firm acts for a variety of clients in practically every economic sector, from fashion to automotive, from electronics to pharmaceuticals, from insurance companies to software developers.

Contact: Fabrizio Jacobacci
Tel: +39 011 2413087
Email: [email protected]

IP Transaction & Strategy:
■ The firm manages the anti-counterfeiting activities for a major luxury goods conglomerate, advising primarily on trademark, design, copyright and unfair competition issues
■ The firm acts as Italian counsel for a well-known US company specialised in the medical device field, in multijurisdictional litigation, in which the national teams must stay in close coordination to ensure proper enforcement of the client’s patents in the EU and the US
■ The firm represents a well-known Dutch producer of beer in complex negotiations regarding the balance of rights of a geographic indication and a prior-filed and used trademark
■ The assisted its client with the due diligence and transfer of a portfolio of patent rights that is part of the client’s $75 million acquisition of a foreign company
■ The firm acts as Italian trademark counsel for a leading social media company in the Italian territory
■ The firm assisted with the drafting and completion of the transfer of the trademark portfolio for a now- bankrupt Italian airline
■ The firm assisted its client in setting up a joint venture, in identifying key IP issues to be considered and performing a complete due diligence of the valuable IP resources contributed into the NewCo.

Contact: Fabrizio Jacobacci
Tel: +39 011 241 3087
Email: [email protected]

Copyright & Art:
■ The firm successfully assisted an Italian client in an action for infringement and misappropriation of its software copyrights by a former employee, customers and partners
■ The firm was victorious in obtaining a PI for a famous producer of interior concept furniture, obtaining a rare victory on the grounds of copyright for objects of industrial design
■ The firm successfully defended a leader in the printing software sector against accusations of software copyright infringement filed by a competitor operating in the IT sector
■ The firm successfully represented a leading Italian company, specialized in the design and production of jewelry, which is famous for its innovative creations, especially for its bracelets, against allegations of copyright infringement by a French competitor.

Key Clients: Artists, foundations, museums, collectors and art galleries.

Contact: Claudia Scapicchio
Tel: +39 06 4201 3332
Email: [email protected]