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: 14
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 5 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 and art law, 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
-Copyright & Art
-Media & Entertainment
-Litigation & Arbitration
-Personal Data & Privacy
-Information Technology

IP: Patent
11 partners, 35 fee earners
France: 3 partners, 4 fee earners
Spain: 2 fee earners
■The firm successfully represented a multinational pharmaceutical client in an action for preliminary injunction arising from the alleged infringement of a European dosage patent, obtaining an interim declaration of invalidity of the patents at issue
■The firm assisted a leader in the technology sector in mediation initiated by an Italian national, successfully demonstrating that the claim was without merit
■The firm assisted the client in designing and implementing a defensive strategy following criminal counterfeiting investigations instigated by a nonpracticing entity, which attempted to assert its rights in various SEPs through the criminal courts, obtaining a favourable conclusion
■The firm represented a leader in the smart phone sector in the Italian portion of multi-jurisdictional litigation against allegations of infringement of SEP and non-SEP patents relating to telecommunication technologies
■The firm successfully represented a pharmaceutical client to defend against allegations of infringement of a competitor’s SPC, which was held to be invalid
■The firm was victorious in a PI on behalf of an owner of a patent covering an oral nutritional supplement, filed against an Italian company that sold its product in Italy via public tender
■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 client in an action seeking a declaration of invalidity of the Italian portions of two European patents covering medical devices
■The firm successfully represented a well-known American sports federation in enforcing its trademarks against infringers in Italy
■The firm successfully represented a world-renown champagne brand against an Italian company for infringement of the client’s famous EUTM colour mark, which distinguishes not only its products, but the company’s overall brand image
■The firm successfully defended its client in a complex case involving both Italian and European law as applied to registered designs in the hardware sector
■The firm successfully enforced its French luxury shoe brand client’s unregistered design rights in urgency proceedings against an Italian infringer
■The firm represented the client in the successful settlement of a 10-year dispute relating to a well-known dairy producer, which had let its historic patronymic trademark registration lapse, permitting a third party with the same surname to register an identical trademark for overlapping product categories
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 Transactions & Strategy:
■The firm coordinates and executes anti-counterfeiting strategies for an American luxury jewellery company in Italy, targeting entities and individuals that sell products infringing the client’s IP rights, particularly trademark and design rights
■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 firm represented the client in drafting distribution and licensing agreements related to new variety of kiwi fruit, which were necessary to open a new market for the client
■The firm successfully represented a luxury cosmetics company in a landmark dispute regarding selective distribution agreements in Italy
■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 acted for a world-renown Italian coffee brand to implement and exploit the Italian patent box system that provides tax breaks for companies producing IP, which involved extensive due diligence and strategic advice 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 & Art:
■The firm negotiated a complex settlement for its client, the estate of a well-known author, which acted against an Italian designer who produced goods that replicated IP rights belonging to the client
■The firm successfully asserted our client’s 3D trademark and copyright protection for industrial design covering its iconic scooter in an action brought in Italy by Chinese competitors, obtaining a rare victory for copyright covering industrial design and 3D marks in the EU Key Clients: Artists, foundations, museums, collectors and art galleries.
Contact: Claudia Scapicchio
Tel: +39 06 4201 3332
Email: [email protected]