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Editorial

Index of tables

  1. Brand management
  2. Leading individuals

Baker McKenzie LLP’s ‘responsive, pragmatic and commercially focused team’ attracts praise for its ‘impressive strength in depth’. Highlights included Michelle Blunt’s advice to Unilever on the IP aspects of four strategic acquisitions in the skincare market, and Ben Allgrove’s work for Google, Pinterest and Warner Bros on a variety of IP issues. Michael Hart heads the IP department and Jessica Le Gros is the firm’s head of trade marks. Paul Rawlinson and of counsels Helen Brown and Julia Hemmings are also recommended. Other clients include British American Tobacco, L’Oréal and Dreamworks Animation.

Bird & Bird LLP’s large and well-regarded team includes Peter Brownlow, who successfully represented Merck as the claimant in a trade mark dispute in the High Court with Merck Sharp & Dohme; and Morag Macdonald, Phil Sherrell and Allan Poulter, who continued to represent Mattel in infringement and passing-off proceedings against app developer Zynga. Also recommended are Mark Holah, who manages Fabergé’s global trade mark portfolio, and Felicity Reeve, whose highlights included advising Principality Building Society on its sponsorship agreement with the Welsh Rugby Union. Philip Morris and Yahoo! are also clients.

Bristows LLP’s team is noted for its ‘breadth of experience and prompt, relevant advice’. Clients include McDonald’s, which Paul Jordan advises on its advertising campaigns, and the BBC, which Paul Walsh assists with the management of its IP portfolio as well as handling disputes in Turkey relating to the protection of Doctor Who and its characters. Jordan’s other highlights included advising Nicoventures on the branding and marketing of its electronic cigarette products. Theo Savvides continued to represent Marks & Spencer as the claimant in a dispute with Interflora that ultimately settled.

Lewis Silkin LLP delivers ‘excellent response times, solid industry knowledge and good strength in depth’. The ‘commercial, insightful and creativeBrinsley Dresden advised TripAdvisor and Booking.com on Advertising Standards Authority (ASA) investigations, and acted for Abbott Mead Vickers BBDO on the creation of a Christmas television advert for Sainsbury’s. The ‘very confident and solution-focusedGiles Crown represented BT in a trade mark infringement claim brought against it by Virgin Media. Also recommended are the ‘knowledgeable, flexible and passionateJo Farmer, who acts for a number of advertising trade bodies, and IP expert Dominic Farnsworth.

Lawyers at Olswang LLPpride themselves on delivering what the client wants’. Iain Stansfield leads the firm’s dedicated marketing services team, which pulls in the multi-disciplinary expertise of corporate head Mark Bertram, trade marks head Sarah Wright and ‘pragmatic’ IP head Joel Barry, who ‘can always be relied upon to come up with imaginative solutions’. The firm advised Sky on its worldwide protection and enforcement policy, and undertakes all of Microsoft’s European trade mark prosecution and opposition work. Other clients include Unilever, M&C Saatchi and Jeremy Clarkson.

Osborne Clarke’s practice is led by Nick Johnson, who assists clients with a range of advertising law issues. The firm has acted for Facebook, News UK, Expedia and Cancer Research UK.

Led by the ‘extremely responsive and pragmaticRobert Wegenek, the practice at Squire Patton Boggs provides ‘solid, technically astute advice’ to corporates and trade bodies. Highlights included advising the Institute of Practitioners in Advertising on its proposed standard media agency contract, assisting Chelsea FC with its shirt sponsorship deal with Yokohama Rubber Company, and managing the trade mark and design portfolios of Zippo, Cath Kidston and Clarks Shoes. Carlton Daniel and ‘highly accomplished, technical lawyerFlorian Traub are also recommended.

Clients rate Taylor Wessing LLP for ‘truly having their best interests at heart and knowing how to apply the law to the world of business’. The practice acts for trade mark owners such as Burberry, Cisco and DC Thomson, advertising agencies such as Aegis Media and Omnicom group, and advertisers such as Ferrero, Eidos and Visa. Key figures include brand management head France Delord, the ‘attentive and responsive’ Charles Lloyd, who is head of trade marks, copyright and media, and IP experts Jason Rawkins and Roland Mallinson.

The ‘excellent’ practice at CMS attracts praise for providing ‘expert advice that takes into account the relevant commercial risks and benefits’. The ‘client-focused and strategicSusan Barty heads the advertising and marketing team and provides advice on copy clearance, sales promotions and advertising complaints. The ‘commercially focusedTom Scourfield heads the IP group and has experience of comparative advertising claims and a broad range of trade mark matters. Clients include Nestlé, Burger King, Amazon, and Douwe Egberts.

Highlights for DLA Piper’s Ruth Hoy included advising Avon on trade mark filings and acting for Hermès in brand protection and infringement matters. Together with Simon Levine and John Wilks, Hoy handles civil and criminal copyright actions for the Premier League. Wilks also advised YO! Sushi and others on prize promotions. Nick Fitzpatrick assisted HCL Technologies with the formation of its global partnership with Manchester United.

Fieldfisher delivers ‘fantastic service, excellent industry knowledge and pragmatic advice’. David Bond heads the advertising, marketing and sponsorship group and Leighton Cassidy is the head of IP portfolio management. Cassidy and Nick Rose are representing the company Karen Millen in a trade mark dispute with the individual Karen Millen, and are acting for Google in relation to infringements, oppositions and invalidity actions. Advertising clients include Jessops and Align Technology.

Lawyers at Gowling WLGshow strong knowledge of their subject matter as well as pragmatism and commercial awareness’. Head of advertising Dan Smith and head of brands Kate Swaine are ‘both excellent practitioners’. Smith advised Transport for London on its sponsorship deal with Santander and Swaine assisted Mothercare and A Nelson & Co with IP matters. Cerryg Jones represented Comic Enterprises in a trade mark infringement claim against Twentieth Century Fox.

Harbottle & Lewis LLPhas impressively broad expertise and deals with all instructions promptly and efficiently’. Practice head Andy Millmore advised lifestyle management service provider Quintessentially on rules surrounding influencer marketing. Sponsorship group head Bob Mitchell is assisting Nissan following its appointment as global partner of the International Cricket Council. Other clients include Diageo, HSBC, the estate of Sir Terry Pratchett, and advertising agencies Droga5 and Proud Robinson.

Hogan Lovells International LLP delivers ‘prompt responses and practical solutions’. Richard Welfare heads the advertising and sponsorship practice, while Sahira Khwaja and the Alicante-based Imogen Fowler are responsible for trade mark matters. The ‘personable and responsive’ Charlie Winckworth advises adidas on brand enforcement and trade mark protection. The firm routinely handles high-profile disputes in this area. Other clients include Mars, PepsiCo, SABMiller and Amazon.

Oliver Bray’s team at RPC serves as lead UK advertising and marketing advisers for Google, and acts for PizzaExpress, Sports Direct and The Coca-Cola Company on a range of advertising matters. Bray also assists Associated Newspapers with promotions and related marketing for the Daily Mail. Highlights for Jeremy Drew included advising International Brand Management Limited on a global endorsement deal with British band Little Mix.

Reed Smith LLP’s clients include McDonald’s, which senior associate Huw Morris advised on a number of campaigns and projects, and FitFlop, which Morris assisted with several general commercial matters. Also recommended are Michael Skrein, who acted for a number of extremely high-profile clients in major pieces of litigation, and Emma Lenthall and Gregor Pryor, who are known for their expertise in handling advertising-related disputes.

Simmons & Simmons manages the trade mark portfolio of Twentieth Century Fox, and David Stone* is defending the client in an infringement and passing-off dispute relating to the TV show Glee. Adrian Smith provided trade mark advice to Theravance BioPharma following the separation of Theravance into Theravance, Inc. and Theravance BioPharma. The firm also handles brand protection matters for BMW, The Coca-Cola Company and Imperial Tobacco. *Since publication, David Stone has joined Allen & Overy LLP.

At Allen & Overy LLP, Neville Cordell represented Virgin Media and Virgin Enterprises in a trade mark dispute with BT. Highlights for commercial IP head Jim Ford included assisting Asahi Group Holdings with its €2.5bn acquisition of several assets owned by SABMiller. Nigel Parker advised VimpelCom on a joint venture agreement.

At Bates Wells Braithwaite, Rupert Earle defended the ASA in a legal challenge brought by UK Services & Support against a decision that the company’s passport services website was misleading, and also advised the ASA on legal issues arising from investigations into numerous high-profile advertisers. Richard Marke advises non-profits on their marketing campaigns. Other clients include News UK and Ireland and Corporate Media Partners.

Browne Jacobson LLP’s lawyers ‘demonstrate extremely high levels of business acumen and industry knowledge’. Key figures include ‘excellent’ practice head Declan Cushley, who advises Lloyds Banking Group on IP issues; Alex Watt, who acts for Belvedere Vodka and advised Triumph Motorcycles in relation to the production of the short film The Outlaws; and Mark Daniels, who represented the London Taxi Corporation in a trade mark and passing-off action pertaining to the shape of London taxis.

At Cooley (UK) LLP, Nicholas Bolter’s highlights included assisting Twitter with a trade mark filing programme, advising Timberland on its application for a 3D, colour community trade mark for a boot, and acting for Tesla Motors in a trade mark dispute with a Polish electric powerboat manufacturer. Akash Sachdeva’s clients include Nikon.

Couchmans LLP is a specialist sports law firm with an extensive list of high-profile clients that includes Mo Farah, whom the firm advised on the registration of the MOBOT word and silhouette as community trade marks; New Zealand Rugby Union, which it represented in a copyright dispute with a mobile app developer; and Eurosport, for which it has acted in IP matters. Nic Couchman heads the firm and Nick White heads the IP team.

Mishcon de Reya LLP is ‘excellent, and getting even better as the team grows’. New arrivals include Ray Black, who joined from King & Wood Mallesons in July 2015 and has since advised E! Entertainment Television on UK and community trade mark oppositions; and the ‘practical and tacticalDavid Rose, who joined from the same firm in May 2016. They join ‘efficient and accommodating’ practitioners Lewis Cohen and Sally Britton, who manage Tottenham Hotspur FC’s IP portfolio, and ‘outstanding’ IP practice head Jeremy Hertzog.

Nabarro LLP’s clients include Car-Freshner Corporation, for which David Parrish secured an invalidity application against a competitor’s application for a tree-shaped mark; Pepe Jeans and Hackett, for which Guy Heath undertakes international brand protection work; and Samsonite, for which Louise Gellman manages its UK and community trade mark portfolio. Levi Strauss and Diesel are also clients.

At Pillsbury Winthrop Shaw Pittman LLP, Rafi Azim-Khan and counsel Steven Farmer assist brand owners with IP matters and on their dealings with Clearcast and the ASA. Clients include SCA Hygiene Products, Chivas Brothers and The Clorox Company.

Rouse Legal is a specialist IP firm that acts for the Cabinet Office, Sony Mobile, Fred Perry, Harley-Davidson and others in respect of filing and enforcement matters. The firm secured a victory for the Ford Motor Company in a long-running counterfeiting case regarding its wheel trims. Mark Foreman heads the practice, which includes Arty Rajendra and Stuart Adams.

Wiggin LLP’s ‘very strong’ practice is led by Simon Baggs and Shaun Lowde. Baggs represented Cartier in an injunction order application requiring the five major ISPs to block websites selling counterfeit goods. Gurminder Panesar, who became a partner in April 2016, acts for BBC Worldwide in the protection of its Sherlock brand. He also advises HarperCollins on brand extension matters concerning its heritage titles.

At Addleshaw Goddard LLP, the Manchester-based Paul Bentham is the head of non-contentious IP and Emma Armitage is the head of IP litigation. Bentham advised the Brands & Designs Group on the maintenance of its members’ trade mark portfolios. Jonathan Davey assisted PZ Cussons with negotiations for a three-year official partner deal with Manchester City FC.

At Berwin Leighton Paisner LLP, Ian Gruselle heads the brand management and trade mark group, Simon Clark heads the intellectual property group and Richard Shaw advises clients such as Tesco and Travelex on advertising issues. Breville, BAFTA and the Financial Times are also clients.

Bond Dickinson LLP’s team is ‘commercially aware and able to meet very tight deadlines’. Consultant Nicky Strong advised B&Q on the use of its slogan “UK’s No 1 kitchen retailer” after it was challenged by a competitor, and assists the Post Office with its advertising and marketing materials. Other clients include Colgate Palmolive, Carlsberg and Specsavers.

Colin Bell and Nik White lead Brabners LLP’s team, which clients rate as ‘very responsive, knowledgeable and easy to work with’. The firm’s strong referral relationship with Greenberg Traurig LLP has led to European trade mark portfolio work for multinationals such as Groupon and Ideal Industries. The firm also provides sponsorship advice to well-known sports teams and represents clients in domain name disputes.

At Charles Russell Speechlys LLP, trade mark and design filing and prosecution head Kate O’Rourke acts for clients including leather goods manufacturer Tanner Krolle and sparkling wine producer Nyetimber. On the contentious front, Mary Bagnall advised Cadbury on the protection of “Cadbury Purple” and represented Nike in several trade mark disputes.

Eversheds LLP’s Andrew Terry advises The Coca-Cola Company on advertising, promotional campaigns, sponsorship and IP matters, and provides IP services to John Lewis Partnership. He and Neil Mohring act for entertainment company Apple Corps on the enforcement and protection of IP rights.

At Gordon Dadds, practice head Jim Dennis continued to act for Boxing Brands in a dispute with SportsDirect.com regarding the QUEENSBURY trade mark, and defended Rude Health in a trade mark infringement claim raised by Real Foods. Usborne Publishing, KPMG and nightclub Chinawhite are also clients.

Herbert Smith Freehills LLP defended two clients in a trade mark and passing-off dispute with the London Taxi Company, and is defending social networking app creator Hello Network in trade mark infringement and passing-off proceedings brought before the Intellectual Property Enterprise Court by the publishers of HELLO! Magazine. Joel Smith is recommended.

The ‘supremely responsive and helpful’ Arthur Artinian heads the ‘excellent’ IP department at K&L Gates LLP and advised General Mills on the $765m sale of its Green Giant brand. Artinian also assists Belkin International with the management of its portfolio of over 2,000 brands and designs, while sports lawyer Warren Phelops advised Formula E team Virgin Racing on sponsorship and other commercial agreements. Other clients include World Wrestling Entertainment.

In January 2016, Lee & Thompson LLP merged with the ‘consistently fantastic’ Forbes Anderson Free, taking on the ‘down-to-earth and pragmaticDominic Bray, whose clients include the Engine Group, the Marketing Agencies Association and World Wrestling Entertainment. The ‘capable and straightforwardGordon Williams acts on trade mark and sponsorship matters for clients including the Beckhams and One Direction.

Key figures at Macfarlanes LLP include practice head Geoff Steward, who has an excellent reputation for litigation, and commercial IP lawyer Jeremy Courtenay-Stamp. Clients have included Anheuser Busch, Reebok India and Pernod Ricard.

Specialist IP firm Redd acts for Philip Morris, Thermos, Vans and Microsoft. Anna Carboni acted for Skype in a series of trade mark opposition proceedings brought by BSkyB.

Sheridans acts for advertising agencies, production companies and industry bodies, and also assists celebrities such as Sir Paul McCartney with sponsorship agreements and providing trade mark portfolio management advice to individuals and companies. The practice is led by Tahir Basheer and includes Jeremy Roberts, Robin Hilton and Colin Sawdy.

Charles Swan’s team at Swan Turton LLP advises J Walter Thompson London on advertising matters and acted for Hogarth Worldwide and its clients in connection with celebrity endorsements. The firm also advises Western Union on digital media and marketing queries. Other key figures include Carolyn Burbridge and Stuart Barry.

Wedlake Bell LLP’s ‘strong’ team includes Adrian Heath-Saunders, who advised property developer Almacantar on a merchandising collaboration with Anglepoise, and assisted Hugo Boss with a proposed Black Friday promotion. The ‘excellentAdam Edwards acted for Badminton England in connection with sponsorship matters.

Highlights for Clintons included assisting advertising groups in negotiations with clients, and acting for agencies in respect of agreements with celebrities. Theatrical productions and sporting events also fall within the practice’s sphere of expertise. Philip Stinson is recommended.

Collyer Bristow LLP’s clients include the Mercury Music Prize and Sanrio, the owners of the Hello Kitty brand. Patrick Wheeler handles IP issues and Charles Braithwaite is recommended for his expertise in commercial contracts.

DWF’s clients include Lidl, Morrisons, PepsiCo and adidas. Dominic Watkins, who heads the food group, acts alongside Hilary Ross to assist advertisers in their dealings with the ASA.

At Fox Williams LLP, Simon Bennett and senior trade mark attorney Sarah Redmond assist with the management of trade mark portfolios for clients such as Supergroup, Luxottica North Europe and Plexus Holdings.

Hamlins LLP assists clients with all aspects of IP exploitation and protection. Clients include New Look Retailers, Burkes Peerage, Hilton Worldwide and HELLO! Magazine. Philip Herbert heads the department, and Matthew Pryke, Julian Ward and Laurence Gilmore are recommended.

Keystone Law’s Ian Down acts for McDonald’s in relation to IP, licensing and sponsorship matters. Other clients include HCT Europe and Biscuiterie Jules Destrooper.

Key figures at King & Wood Mallesons include Jeremy Schrire, who acts for Ladbrookes and assisted Associated British Foods with the launch of Primark in Italy and the USA. David Rose joined Mishcon de Reya LLP in May 2016.

Penningtons Manches LLP’s clients include Levi Roots, whom Anna Frankum advises on licencing matters, infringements and domain name disputes. Gordon Murray Design is also a client.

Simkins LLP’s practice is led by Caroline Copeland, who is ‘a pleasure to work with’, and includes Ed Baden-Powell. The team advises an international advertising group on commercial contracts, regulatory matters and IP.

Simons Muirhead & Burton’s clients include Getty Images, childrenwear designer Rachel Riley and Alexa Chung. Maninder Gill’s team advises on IP acquisition and protection and domain name matters in the media and entertainment and e-commerce sectors.

At TLT, IP specialist Nick Fenner advises Merlin Entertainments, University of Leicester and Delos Living. Other clients include BGL, which the firm advises on the management of IP related to comparethemarket.com, and WHSmith.

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