Saenz de Ormijana Silvia

Silvia Saenz de Ormijana

Associate
Baker & McKenzie Barcelona, S.L.P.

Biography

Silvia Sáenz de Ormijana is a team leader in the intellectual property department and the head of the Litigation and Contractual IP team in Baker McKenzie’s Barcelona office, where she has developed her career for more than eleven years. Her practice is defined by a strong focus on complex IP litigation and brand protection strategies for leading global companies, particularly those operating in fast moving and reputation driven industries.

She represents clients in high stakes disputes before the Spanish civil and criminal courts, as well as before the General Court and the Court of Justice of the European Union, which has given her in depth insight into European IP jurisprudence and its impact on cross border brand enforcement. Silvia frequently leads strategic matters involving lookalikes, unfair competition and digital environment risks, advising clients on how to safeguard their assets in markets shaped by e commerce, social media and emerging technologies.

Beyond her litigation practice, Silvia plays an active role in thought leadership and academic training. She teaches industrial property law at ISDE, regularly speaks at ICAB programs, publishes in specialized journals and contributes to AIPPI study groups, reflecting her commitment to the advancement of the IP field.

Practice Focus

Silvia’s practice focuses on advising companies on the full lifecycle of trademark and brand protection, from strategic planning and global portfolio management to multi‑jurisdictional enforcement and complex dispute resolution. As part of the Firm’s Commercial Practice Group and its Intellectual Property subgroup, she designs and executes coordinated enforcement strategies, including actions against lookalikes and brand imitations in the luxury, fashion and consumer goods sectors, where brand distinctiveness and market positioning are critical.

She regularly counsels clients on the optimization and structuring of global trademark portfolios, risk evaluation in key markets, and the drafting and negotiation of licensing, sponsorship and other IP‑driven commercial agreements. Her work also includes guiding companies through the IP challenges associated with e‑commerce, online platforms, emerging technologies and AI, providing practical and forward‑looking solutions for digitally intensive business models.

Silvia additionally advises on IP issues arising in parallel import cases involving medicinal and pharmaceutical products, and she frequently leads the IP workstreams of M&A transactions handled from Barcelona, overseeing due diligence processes and crafting robust contractual protections for intellectual property assets.

Representative Legal Matters

  • Represented a global infant nutrition company in patent litigation over a core infant formula composition. First instance upheld infringement; appeal on invalidity pending. Negotiated a streamlined procedure narrowing issues and positioning for follow on enforcement if validity prevails.
  • Defended a leading consumer technology company in an EU design invalidity action targeting a flagship hair styler, proving the design’s aesthetic choices were non functional and neutralising prior design citations before the EUIPO, in a high profile anti counterfeiting context.
  • Defended a global dermo cosmetics company in Italian patent litigation concerning a medical method claim and related unfair competition issues; obtained favourable preliminary opinions and positioned the case for broader market rollout if validity is upheld. 
  • Defended a global surface finishing technology group in plating technology patent litigation, securing a Spanish Supreme Court reversal of a multimillion euro damages claim and advancing a second cassation appeal, coordinating complex expert evidence and pre trial discovery issues.
  • Represented a public safety technology company in a patent dispute tied to a national law enforcement tender; prepared and filed a robust appeal, coordinating technical evidence with engineers to counter infringement allegations and protect procurement viability. 
  • Represented a global beauty company in a General Court appeal challenging an EUIPO Board of Appeal decision upholding opposition to a figurative Class 3 mark; a competitor dispute pivotal to launching a new global product line.
  • Advised a global medical technology and diagnostics company on the clearance and protection of new product names across the EU and UK, conducting extensive trademark availability reviews and coordinating enforcement, including actions to stop infringements and recover illicit domain names.
  • Advised a hotel management group in EU trademark infringement proceedings concerning two letter marks used in hospitality services, developing a distinctiveness based defence and proactive portfolio measures (filings, monitoring) despite case law challenges for short marks before EU TM courts. 
  • Advised a food products company in a trademark dispute, securing a favourable General Court ruling and subsequent cancellation of a conflicting registration, reinforcing protection for the client’s brand in EU proceedings.
  • Advised a leading food company in packaging/trade dress litigation against a competitor, obtaining wins before the Spanish courts and confirmation at EU trademark level, with findings of notoriety and parasitic conduct protecting Spanish and EU figurative marks.  
  • Advised a publishing group in a pan EU dispute over a campaign designation, negotiating a settlement with withdrawal of claims and securing a compliant framework for continued marketing use. 
  • Advised a multinational gaming and a consumer products company on global trademark enforcement and trade dress disputes against multiple competitors, coordinating parallel actions in Europe, North America and Asia. 
  • Advised a global testing, inspection and certification company on the acquisition and international expansion of trademark protection for its renewable energy business, including support in the EU, USA, UK and Latin America. The work also involved managing conflicts with third parties attempting to register similar marks in Eastern Europe and Mexico, and representing the client in a complex global negotiation against a competitor with a closely similar brand.
  • Advised a cookware company on enforcing a distinctive circular brand element against a competitor, coordinating evidence and actions to stop infringement and protect distinctiveness.

Professional Associations and Memberships

  • Barcelona Bar Association
  • APPPI - International Association of Intellectual Property

Admissions

  • Barcelona~Spain (2013)

Education

  • ESADE (Master's Degree, IP) (2014)
  • ESADE (Bachelor's Degree and Master's Degree, Law) (2010)

Languages

  • English
  • Spanish
  • Catalan

Publications

  • Author, “Spain: Boost Your Brand – Navigating English Terms in Spanish Trademarks,” InsightPlus, 2025
  • Author, “EUIPO Invalidates Trademark for Copyright Infringement – The Chubby Gorilla Case,” InsightPlus, 2025
  • Author, “Revisiting Pelham — CJEU Advocate General Weighs in on Pastiche and Artistic Freedom,” InsightPlus, 2025
  • Author, “Design Protection Beyond Functionality – The EU General Court’s Rulings in the Decathlon Mask Case,” InsightPlus, 2025
  • Author, “Spain: Judicial Trend in Favor of the Protection of IP Right Holders,” InsightPlus, 2025
  • Author, “Intellectual Property – 2024 in Review and Outlook for 2025,” InsightPlus, 2025

Firm Committee Memberships

  • Baker McKenzie Steering Committee