Josep Carbonell Callicó - Partner - Industrial and Intellectual Property - Fieldfisher Spain | Fieldfisher
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Professional background

Professional background

As an expert in Intellectual and Industrial Property, I am recognised as one of the most experienced patent and trademark attorneys in Spain.

As head of Fieldfisher’s Intellectual and Industrial Property department, I have advised and guided clients on matters of Unfair Competition, Antitrust and Information and Communication Technologies.

I advise national and multinational companies on registration strategies and on the protection of trademarks and inventive modalities. My years of experience allow me to handle the negotiation of licensing agreements, the assignment of all types of industrial and intellectual property rights, and the defence of those rights in litigation.

My professional career as a leading lawyer in this area has earned me recognition from international legal directories such as Chambers & Partners, The Legal 500, World Trademark Review (WTR1000) and Best Lawyers. According to Chambers, my expertise — and my work with Fieldfisher’s Intellectual Property department — has enabled me to understand technical issues in the patent field that exceed client expectations. WTR1000 also highlights that my extensive experience as a specialist in international trademark protection is supported by a solid knowledge of competition law.

For two decades, I have been a member of the International Association for the Protection of Intellectual Property (AIPPI), and since 1999 I have served as legal advisor to the Terrassa Business Confederation (CECOT). I am also a member of ASIPI and INTA.

Before joining Fieldfisher, I was managing partner at March & Asociados and a director at Clarke, Modet & Co. Since November 2008, I have been a member of Fieldfisher’s Board of Directors.

Education

Education

Master’s Degree in Intellectual Property

Master’s Degree in Intellectual Property, Pompeu Fabra University (1994).

Member of the Barcelona Bar Association since 1988.

Member of the Barcelona Bar Association since 1988.

Law Degree

Law Degree, Autonomous University of Barcelona (1983–1987).

Notable deals

Notable deals

Act in front OEPM, EUIPO, EPO, PCT i WIPO

We act directly in front of the OEPM, EUIPO, EPO, PCT and WIPO.

Defense in front of the General Court of the EU

We represent various clients before the General Court of the European Union.

Global trademark and patent protection

We advise the world’s leading bakery company on trademark and patent registration strategies in Spain, as well as on the enforcement and defense of its trademark and patent rights before the courts.

International trademark strategy and enforcement

We represent several companies in the alcoholic beverages sector in the design of trademark registration strategies and the enforcement of their rights across different jurisdictions.

International image rights management
We coordinate and advise on the acquisition and protection of the industrial property rights of the greatest football player of all time.
Anti-counterfeiting platforms for the fashion sector

We advise on industrial property matters by designing enforcement platforms to combat counterfeit fashion products in Asia.

IP asset protection and contractual advisory

We advise one of Europe’s leading toy companies on distribution and licensing agreements, as well as on the protection and enforcement of its intellectual and industrial property assets.

Global protection against counterfeiting

We advise the world’s leading manufacturer of manual ceramic tile cutters on the acquisition and maintenance of its rights worldwide, as well as on the enforcement of those rights in multiple international counterfeiting cases.

Preventive anti-counterfeiting enforcement

We represent the world’s leading cap manufacturer in Spain, implementing preventive enforcement strategies aimed at preventing the commercialization of counterfeit products.

Global protection and enforcement of industrial assets

We advise one of the world’s leading manufacturers and distributors of brake discs and brake pads on the protection, management and global enforcement of its industrial property assets.

Awards & recognition

Awards & recognition

Josep puts himself in our shoes and adapts to our needs. I appreciate his empathy for us as a client; he's solution-oriented and creative in his defence

Empathy and creativity

He has a long proven track record of experience and is very skilful.

Experience and expertise

Josep is technically very good. He meets our standards and is always available, offering practical advice.

Technical rigour and availability

Josep has given us a personalised, rigorous and effective treatment in all the issues we have dealt with together.

Rigorous and effective approach
Chambers & Partners
His intellectual capabilities are impressive and he is a hard-working lawyer.
World Trademark Review 100
A brilliant international brand protection specialist who backs up his trademark expertise with robust competition law know-how.

Authored pieces

All Resources
Press Release

Fieldfisher Spain recognised for leading expertise by Chambers and Partners Europe 2023

29.03.2023
Our Spanish offices are consistently ranked for their standout specialisms in corporate M&A, dispute resolution, life sciences, restructuring and insolvency and tax.
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Publication

World IP Day 2021 – From innovation to growth

23.04.2021
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A digital illustration featuring abstract lines and glowing dots, reminiscent of light trails or neural networks. The colors transition from pink to purple and blue, creating a dynamic and futuristic aesthetic against a dark background.
Press Release

Fieldfisher's European IP team named in the 2021 World Trademark Review rankings

25.02.2021
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What others say…

Empathy and creativity

Josep puts himself in our shoes and adapts to our needs. I appreciate his empathy for us as a client; he's solution-oriented and creative in his defence

Experience and expertise

He has a long proven track record of experience and is very skilful.

Technical rigour and availability

Josep is technically very good. He meets our standards and is always available, offering practical advice.