Luigi Fontanesi

Partner

Luigi Fontanesi represents clients on judicial and non-judicial matters in the fields of industrial law, intellectual property, trademarks, advertising, unfair competition, information technology, privacy, and media, as well as commercial issues related to company reorganization and insolvency law.

Luigi has deep experience in drafting, negotiating, and setting up domestic and international franchising; master franchising, merchandising, distribution, research; and licensing contracts concerning trademarks, patents, software, register design, industrial design, and know-how.

He has assisted clients in several high-profile litigations related to industrial law and intellectual property, as well as data and software protection. Luigi has also dealt with a variety of complex joint venture operations as well as national and international commercial transactions.

Luigi’s clients have included companies active in the fields of large-scale distribution and fashion, well-renowned pharmaceutical companies, high-profile operators of the agricultural-industrial sector, software creators, and many other high-tech companies.

Concentrations

  • IP Judicial and Extrajudicial Assistance
  • Franchise, Agency and Distribution Agreements
  • Research and Technology Development Agreements
  • Copyright Law
  • Life Science
  • Unfair Competition
  • IP Litigation
  • IP Merger & Acquisition
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Capabilities

Experience

  • Advise of a pharmaceutical company, operating in the Life Science sector, in very complex proceedings relating to trademark infringement and unfair competition, before the Section for Intellectual Property in the Court of Rome, also assisting the client in the drafting of new agreements as well as in the day-by-day company activity.°
  • Assistance of a leading Hotellerie Company in litigations regarding trademark decadence and provided legal advice also in the day by day activity with reference to IP issues.°
  • Assistance of a Dutch company, leading manufacturer of backpacks for kids, in proceedings relating to trademark infringement and unfair competition before the Section for Intellectual Property in the Court of Milan.°
  • Assistance of a primary casual wear Italian company throughout all its compositions with creditors procedure.°
  • Assistance of a primary Oil and Gas Company on complex litigations and corporate and IP issues.°
  • Assistance of a primary pharmaceutical company in a very complex international litigation in Switzerland.°
  • I have been appointed by the Bankruptcy Court of Milan to assist the bankruptcy proceedings of an Italian fashion company, with particular reference to the defence of trademarks and the drafting of opinions, as well as the drafting of a license agreement that allows the company to dispose of its brands through a public contract.°
  • Assistance of a Gas supply Company of integrated systems and instruments for the analysis of gases and liquids with reference to contracts and litigation regarding hardware and software for the energy sector.°
  • Assistance of a leading multinational company operating worldwide in the production and distributions of accordions in a very complex proceedings involving international trademark and IP issues against an Italian company.°
  • Assistance of a leading French company in the electronic sector, in the purchase of a primary Italian company, also overseeing all the aspects of the deal related to know how, trademarks, domain names, trade secrets, privacy, antitrust. I also assisted such company in complex transactions concerning the purchase of branches of business from Italian companies operating in the same sector.°
  • Assistance of a primary pharmaceutical company in the transfer of a part of its branch of business.°
  • Assistance of a primary Italian casualwear company in the sale to a Chinese company of all its business.°
  • Assistance of Italian leading companies in the Italian hygiene and beauty market in the licensing of its trademark portfolio.°
  • Assistance of a primary pharmaceutical company with reference to the agreement of a new award project aimed at young Italian researchers who are doing their work abroad in the field of "flow chemistry". The initiative is promoted by the pharmaceutical company in collaboration with Milan Polytechnic Foundation and the Polytechnic University of Milan.°
  • Assistance of a primary sports and casual wear Italian company in drafting several (more than 200) international franchise, distribution and agency agreements. I assisted such company also in drafting the sponsorship agreements with several famous tennis players.°
  • Assistance of fashion wear and jewellery companies in drafting of patent and trademark license agreements.°
  • Assistance of a primary Italian Research Consortium and University in drafting research and patent license agreements. For such entities I revised the spin-off and patent regulation.°
  • Assistance of primary food companies (wine, vinegar and rice and corn companies) in complex trademark litigations and drafting of license and supply agreements.°
  • Assistance of a leading company operating in the software enterprising in a complex international transaction concerning the development of software and the supply of IT services with an Italian primary company operating in the telecommunication system.°

°The above representations were handled by Mr. Fontanesi prior to his joining Greenberg Traurig Santa Maria, an affiliate of Greenberg Traurig, P.A. and Greenberg Traurig, LLP.

  • Visiting Professor, Intellectual Property and e-Business, Bicocca University of Milan, 2003-2012
  • Visiting Professor, Intellectual Property, Biotechnology, and e-Business law, Various Organizations, 2001-2010
  • Master, “The Patents,” BioBresso Consortium, 2009
  • Lecturer, Master in Biogiuridica of BioGem, in cooperation with Lumsa University of Rome, 2008
  • Master in Information Technology, Bicocca University of Milan, 2002-2005
  • Master in Bioinformatics, Bicocca University of Milan, 2004
  • Lecturer in EU Trademark Law, Master on International Law, ISPI (Italian Institute for International Political Studies)

Recognition & Leadership

  • Le Fonti Awards Italian “Law firm of the year - Trademarks and Patents,” 2019
  • Legalcommunity Award as Italian “Life Science firm of the year,” 2016-2018
  • Legalcommunity Award as “Trademarks and Patent law firm of the years,” (3rd place), 2014
  • Member, Milan Bar Association
  • Member, International Trademark Association
  • Member, LES Italia
  • Member, Scientific Committee, Master in Biogiuridica of BioGem, in Cooperation with Lumsa University of Rome, 2008

Credentials

Education
  • J.D., University of Milan, 1991
Admissions
  • Italy (admitted to Supreme Court)
Languages
  • Italian, Native
  • English, Fluent
  • French, Basic Conversation