Mr Mariano Santos > Bird & Bird > Madrid, Spain > Lawyer Profile

Bird & Bird
Paseo de la Castellana 7, 7th floor
28046 Madrid
Spain
Mariano Santos photo

Work Department

Intellectual Property

Position

Mariano Santos is a Partner and leads the Bird & Bird’s Brand Management Prosecution team in the Madrid office.

He has more than 25 years of experience within the Intellectual Property field. He specialize in trademark, design, patent and copyright and advertising law, with a particular focus on cases involving trademark matters and handling many proceedings at the SPTO, EUIPO and Latin American jurisdictions.

He has developed particular experience in pan-European prosecution and enforcement strategies of trademarks, patents and designs, including customs and parallel import enforcement strategies, especially in Latin American countries.

He has advised and developed intellectual property consultancy projects in national and international companies. Furthermore, he has acquired extensive experience on all aspects relating to trademarks portfolios, IP legal advice, franchises and licensing. This includes defining and implementing intellectual property management policies in companies (management of R&D; marketing activities; policies on employee’s inventions, among others), and analysing, auditing and organizing intellectual property portfolios.

Languages

English, Spanish

Memberships

He is a Marques Member of the Anti-Counterfeiting & Parallel Trade Team.

Education

Mariano is a qualified lawyer and member of the Spanish Bar (Ilustre Colegio de Abogados de Madrid) since 2005.

Lawyer Rankings

Spain > Industry focus: Food

Bird & Bird offers food and beverage clients a ‘one-stop-shop’ for a wide range of legal services, including competition, intellectual property, data protection, and transactional matters. Lourdes Ayala leads the corporate and M&A department, while Antonio Cueto handles IP issues. Manuel Lobato and Mariano Santos are also experts in IP issues, with Lobato specialising in patent litigation and Santos focusing on trade mark prosecution. Santiago Lardies oversees the private equity practice.

Spain > Intellectual property: Trade marks

(Leading partners)

Mariano SantosBird & Bird

Regarded as an ‘agile legal team that fully adapts to the client’s needs’, Bird & Bird‘s IP practice maintains a strong reputation in the Spanish market due to its deep expertise across trade mark litigation, regulatory, and contractual issues, as well as prosecution and enforcement issues. While particularly strong in the pharmaceutical, technology, and cosmetics sectors, the firm advises clients across a wide range of industries. Heading up the department are José Miguel Lissén, an IP litigation and licensing specialist, and Mariano Santos, who focuses on prosecution, enforcement, and anti-counterfeiting matters. Other active practitioners in the team include Manuel Lobato, a key contact for medical devices, pharma, media, retail and fashion clients, María Fernández, who focuses on trade mark protection in Spain and the EU, and Manuela Mendigutía, who specialises in brand prosecution issues.

Spain > Intellectual property: patents

With a robust offering that covers patent litigation, prosecution, and advisory services, the IP group at Bird & Bird is well placed to advise on domestic and cross-border matters across an array of sectors, most notably tech,  pharmaceuticals, and life sciences. José Miguel Lissén, who has a wealth of experience in the licensing and protection of patents, heads the team with IP prosecution and enforcement expert Mariano Santos; both practitioners are regularly called upon by clients from the biotech, electronics, and life sciences sectors. The department also benefits from the aptitude of Manuel Lobato, who shines in multijurisdictional patent litigation involving pharmaceuticals,  and Cintia Bernhardt, who focuses on patent litigation and enforcement in the media, telecoms, and e-commerce industries.

Spain > Intellectual property: Copyright

Bird & Bird‘s IP group offers a comprehensive range of services, including advice on copyright litigation, licensing, enforcement, and regulatory and contractual matters. With extensive cross-border experience and strong expertise in the pharmaceuticals, food technology, and cosmetics sectors, the team continues to attract engagements from high-profile clients. José Miguel Lissén, who has in-depth knowledge of tech and life sciences-related matters, co-heads the practice alongside Mariano Santos; Lissén is proficient in infringement matters and litigation, while Santos is adept in prosecution and enforcement mandates. David Fuentes stands out for his expertise in both contentious and non-contentious IP matters, including licensing, transactions and litigation.