Firm / Organisation

Studio Legale Jacobacci & Associati

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This content is provided by Studio Legale Jacobacci & Associati.

Chairman: Fabrizio Jacobacci
Number of partners worldwide: 12
Number of lawyers worldwide: 45
Languages: English, French, German, Italian, Russian, Spanish, Swedish

Firm Overview:
Studio Legale Jacobacci & Associati was founded in 1996 and now counts five offices in Italy, France and Spain (Turin, Milan, Rome, Paris and Madrid). It provides Italian, French, Spanish and international clients operating in all sectors of industry and art with transactional as well as litigation support before the national Courts, the Court of Justice of the European Community and in multi-jurisdictional disputes in intellectual property and in other areas such as copyright, personal data and privacy, information technology, media and entertainment, antitrust and competition, commercial law. The firm is particularly renowned in the field of national and international arbitration.

Main Areas of Practice:
-Intellectual Property
-Antitrust & Competition
-Media & Entertainment
-Litigation & Arbitration

IP: Patent
9 partners, 30 fee earners
France: 3 partners, 3 fee earners
Spain: 1 fee earner
■The firm obtained a favourable decision from the Italian Supreme Court defending a client against allegations of patent and know-how misappropriation and infringement
■The firm acts for clients in enforcing its EU Patent relating to Diesel engine injector technology in a high-value dispute before the Italian courts
■The firm successfully represented a leader in the EU plant varieties sector in enforcing contractual obligations with licensees both in arbitration and urgency proceedings, as well as against grower producing infringing products
■The firm represents a leader in the smart phone sector against allegations of infringement of SEP and non-SEP patents relating to telecommunication technologies
■The firm is representing a high-profile pharmaceutical client in a series of actions before the civil courts and regulatory authorities relating to a ground-breaking treatment for a chronic illness
■The firm is representing one of the principal players in the global market for train components against its main competitor in a high-value dispute relating to the enforcement of European patents
■The firm successfully requested and obtained a court description order to obtain evidence of infringement on behalf of the owner of a European patent, which led to the gathering of critical evidence for its client’s position, enabling it to reach a very favourable settlement

IP: Trademark & Design:
■The firm successfully represented its client before the Italian Supreme Court, which issued an important decision confirming freedom of use of a collective mark in the leather goods industry
■The firm obtained a victory for a well-known producer of chocolate products before the European General Court in the protection of a famous mark that has been the subject of numerous cases before the EUIPO and European Courts, which will set a new direction in legal precedents for the particular mark at issue
■The firm successfully defended the trademarks of a US leader in women’s ready to wear fashion against a claim of invalidity, establishing that a trademark holder can demonstrate genuine use even without physical points of sale in Italy
■The firm successfully represented a well-known producer of scooters, in first instance proceedings and now on appeal, in enforcing its 3D trademarks against the producers of imitation products, setting a new precedent for the protection of 3D trademarks in Italy and in Europe
■The firm successfully represented an iconic luxury footwear brand in the enforcement of its non-traditional EU trademark in PI proceedings
■The firm provides ongoing support for a world-famous producer of alcoholic beverages for brand and anticounterfeiting support for the Italian Territory
■The firm assisted a Dutch trademark holder in the removal of an identical trademark filed in bad faith from the Italian register, obtaining a very favourable settlement
■The firm assisted an Italian client to enforce its EU trademarks in PI proceedings, ultimately obtaining a favourable settlement in which the opposing party changed its trademarks and reimbursed court fees
■The firm is assisting a client in a high profile trademark cases relating to one of the most well-known marks in Italian and European sports culture
■The firm successfully defended its client against allegations of infringement by its client’s packaging for pasta of a European registered design and 3D trademark owned by the opposing party, obtaining an interlocutory determination of non-infringement that lead to a favourable settlement of the matter
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: +39 011 241 3087
Email: [email protected]

IP Transactions & Strategy:
■The firm provides ongoing strategic anti-counterfeiting support for the Italian market to one of the leading jewellery and luxury products companies in the world
■The firm represents a leader in the coffee production industry in a dispute that seeks to define what constitutes trade secrets in an employee-employer relationship under Italian law
■The firm acted for an Australian producer of sun screens in negotiations with the Italian consumer board to obtain the correction of a publication containing incorrect information about our client’s products
■The firm provides ongoing advice to an Italian company that is a leader in the sector for water-heating technologies, assisting the client to manage its worldwide network of distributors and agents and drafting/ negotiating all relevant contracts
■The firm provides ongoing transactional support to a well-known Chinese smartphone company, regularly advising on opportunities and risks connected with the launch of new trademarks in Italy and the European Union
■The firm provides assistance to various Italian clients in the development and use of internal know-how and IP management policies
Key Clients: Large and small, Italian and non-Italian companies that are active in cross-border transactions, and those involved in activities that require IP due diligence services.
Contact: Fabrizio Jacobacci
Tel: +39 011 241 3087
Email: [email protected]

Copyright & Entertainment:
■The firm provided assistance to a world-famous fashion designer with IP preparatory and compliance activities involved in the organisation of a runway show in Milan, including advice on image rights, copyright and privacy regulation, as well as the rights of minors
■The firm provides ongoing advice to one of the world’s top luxury brand conglomerates, and recently assisted it in relation to the copyright, image right and privacy issues involved in a new initiative by one of its brands
■The firm successfully enforced a EU design registration and copyright on behalf of a producer of high end luxury jewellery against an imitator
Key Clients: Designers, artists, production and media companies.
Contact: Claudia Scapicchio
Tel: +39 06 4201 3332
Email: [email protected]