Italy Trademark Attorney  Firm of the Year: Barzanò & Zanardo

Q: Can you tell us about your firm (eg, size, practice focuses and key individuals)?

A: Since 1878, we have been a leader in the field of intellectual property. Among the wide range of highly customised services that we offer to our clients are trademark, patent, copyright and design protection, as well as strategic and legal advice, IP due diligence and evaluations, and brand protection.

Our team comprises more than 60 professionals based at seven locations throughout Italy. Our experts combine a solid legal background with specialisation in various commercial and production sectors – from mechanics to electronics, construction to energy, and chemistry to biotechnology, not to mention pharmaceutical, luxury, food and beverages, large-scale retailers, fashion and design, banking, financial and institutional.

In almost a century-and-a-half of activity, more than 85,000 national and international companies and bodies have entrusted us with the protection of their intangible assets and we have managed over 70,000 patents and 50,000 active trademarks.

Q: What factors do you feel have made the firm successful over the last year?

A: The human factor is our added value. We truly believe that the success of our firm is due to the formidable team that we have built over the years. Every day at Barzanò & Zanardo, more than 200 dedicated team members collaborate and support each other in our offices throughout Italy.

The careful selection of resources and the way that we keep ourselves up to date – through participation in conferences, training courses and academic projects in Italy and abroad – have shaped our team. Over the years, we have succeeded in identifying a wide spectrum of talents in a variety of fields.

The axiom “the whole is greater than the sum of its parts” highlights the idea that when individual parts are connected together to form one entity, they are worth more than if the parts were separated in silos. We believe that our success is due to the incredible synergy that our people create.

Q: The firm is one of the top filers in the European Union and one of the top e-users. What are the key steps to maintaining a successful filing practice?

A: The changes driven by the digital revolution have undoubtedly transformed various industries. Thanks to huge worldwide marketplaces, small and medium-sized businesses can now sell their products in foreign countries without the need to develop their supply chains abroad. In this historic moment, we are seeing numerous companies – including Italian companies – realise how vital it is to have their intangible assets protected, at least at the European level.

One of our key steps to success is that when working with clients, our consultants do not consider themselves merely executors but rather strive to become proactive partners. As a result, our clients trust us and continue to seek our advice throughout their expansion – not only to file new trademark applications, but also to get a 360-degree view of their intellectual property. Our expert professionals are then capable of taking all the synergistic actions necessary to effectively protect the brand and its products and services.

Alfredo Zanardo, CEO

Q: Alongside IP strategy and brand protection, the firm offers finance-related services, such as IP due diligence and evaluations. How has it set about developing and evolving the skill sets of team members in order to offer this 360-degree view of intellectual property?

A: With the belief that it is essential to work out an all-embracing IP strategy with our clients, over the years we have created a team with multidisciplinary expertise. With this view, we started amplifying our range of services by, for example, opening our brand protection department and developing our own set of finance-related solutions.

Concerning IP due diligence and evaluations, we have created a hybrid team of consultants that have learned – through both select training courses and seminars, as well as hands-on experience – how to combine their authority in the legal field with solid economic-financial experience.

Our experts utilise finely honed managerial, financial and tax-based skills to provide our clients with a wealth of experience in national and international evaluations – from tech start-ups to large industrial groups. Thanks to an in-depth knowledge of brand valuation practices, we constantly help institutions and companies to identify their competitive advantages.

Q: What are the some of the advantages of working in an IP boutique?

A: Bigger does not always mean better, especially in the legal world. We consider ourselves a high-quality boutique law firm focusing on customisation. Because our team members have extensive experience and deep knowledge of particular fields of law, we provide a very personalised approach to our clients.

Being a boutique firm means that we enjoy more flexibility and direct and authentic relationships with clients. In today’s fast-moving environment, we believe that receiving immediate answers and being able to connect at all times is vital for all business people everywhere.

Among the other numerous advantages of working in a boutique law firm is the opportunity to foster a strong culture, with a low turnover of people. Over the years, we have successfully built a synergetic team, which has enabled us to provide service consistency and stability to all clients.

Q: Over the past few years, there has been a swathe of changes to practice as a result of European trademark reforms. What impact have these had on your team and its strategic approach to trademarks?

A: Recent EU trademark reforms have undoubtedly affected the ways in which our teams construct our clients’ portfolio protection strategies.

The end of the class-headings-covers-all approach has made it necessary to specify the precise goods or services of interest when filing trademark applications. Consequently, the conversations that our teams have with clients has deepened. Understanding a client’s specific commercial sector and business prospects is fundamental so that we arrive at the best possible IP strategy.

Moreover, following changes to opposition proceedings, we have seen a rise in the number of oppositions filed in the European Union. For instance, clients that own protected designations of origin have gained the chance to contest third-party trademark applications.

Finally, the abolishment of the graphic representation requirement has opened the door for new filings for our clients’ unconventional marks. As such, our teams have had to develop more outside-of-the-box thinking to add that extra value to our clients’ investments.

Q: What are the main IP challenges facing rights holders in Europe?

A: Because Europe has switched from an industrial-based economy to a knowledge-based one, ideas and innovation have become the first source of competitive advantage for most firms. Indeed, now more than ever, EU rights holders are striving to align their IP strategies with their businesses.

Today, rights holders need to protect their new technologies and coordinate their business projects according to the market opportunities that they face. In addition, the increased chances for collaboration between firms makes long-term protection even more crucial but inevitably more challenging.

Further, the lack of harmonisation in IP rights across countries represents a major challenge for businesses operating on bigger scales. As a side note, the uncertainty created by Brexit has undoubtedly harmed European rights holders.

Q: Italy recently introduced certification marks. How important are these likely to be and what should rights holders bear in mind?

A: The new certification mark was introduced into Italian law on 23 March 2019 by Legislative Decree 15/2019. As this institution becomes more widespread over time, we are confident that it will help Italian economic operators to protect the excellence of the national primary sector, as well as enhance consumer protection.

Rights holders need to know that the owner of a certification mark should not be involved in activities regarding the supply of certified products or services. Rather, the owner becomes the supervisor entity verifying that all users respect the certified standard and is required to file and adopt a regulation of use of the mark.

Further, unlike in the European Union, it is possible to register indications designating the geographical origin of products or services. Additionally, and importantly, rights holders of national collective marks will be able to submit an application to convert these into the new certification marks.

Q: The Barzanò & Zanardo Forest project is underway. Can you tell us a little about it and why sustainable projects should be embraced by those in the legal community?

A: We strongly believe in responsible innovation. At INTA 2019, we launched our sustainable initiative Seeding Innovation and gave light to the first Barzanò & Zanardo Forest by planting 200 fruit trees in Haiti through a partnership with Treedom. These will contribute to absorbing 25 tonnes of CO2 (enough to fill 126 lorries), generating oxygen, protecting our planet’s biodiversity and helping local people in a practical way.

We believe that protecting the planet is a task for everyone. The legal community brings together well-respected professionals and big thinkers with world-class networking opportunities. Since these people are in the position to make their voices count, it is extremely important that they promote sustainable initiatives.

We have a number of great new sustainable projects for 2020, including eliminating the 90,000 plastic water bottles consumed every year throughout our offices.

Q: Finally, what advice would you give to young practitioners looking to pursue a career in trademarks?

A: To answer this final question, we turned to our trademark trainees. According to most of them, practitioners looking to pursue a career in trademarks should be aware of the fact that this job will require them to continuously and promptly switch between a legal and a more economic, commercially oriented approach. Thus, intellectual flexibility is essential.

A career in trademarks also means being able to establish valuable relationships with clients, as well as foreign IP experts. Conventions, workshops and international conferences are always on the agenda. Therefore, practitioners should start developing their interpersonal and public speaking skills as soon as possible, in order to stand out in their career.