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The Legal 500 Hall of Fame Icon The Legal 500 Hall of Fame highlights individuals who have received constant praise by their clients for continued excellence. The Hall of Fame highlights, to clients, the law firm partners who are at the pinnacle of the profession. In the United Kingdon, the criteria for entry is to have been recognised by The Legal 500 as one of the elite leading lawyers for eight years. These partners are highlighted below and throughout the editorial.
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For some, Boult Wade Tennant is ‘the best’ – its team has ‘a winning combination of knowledge and commercial nous, and is an absolute pleasure to work with’. Emma Pitcher advised Newton Investment Management and Walter Scott & Partners on their worldwide trade mark portfolios, which involved performing due diligence and advising on ongoing oppositions at the EUIPO; she also acted for Regis Corporation on a bad faith opposition action in the UAE in which the client does not hold any registered trade marks. Other highlights included John Wallace’s advice to Talley Group on a number of EUTM oppositions; Charlotte Duly’s advice to Soap & Glory on the prosecution of its applications, dealing with oppositions to third party applications and due diligence aspects arising from the client’s acquisition by Boots; and Tony Pluckrose’s work for Wild Bunch media on the registration of a women’s running trade mark in the UK. The ‘extremely professional and knowledgeableCatherine Wolfe is noted for her specialist knowledge of Chinese trade marks.

Carpmaels & Ransford LLP’s longstanding experience in trade marks makes it a top choice for a diverse range of clients, which it advises on the full range of trade mark matters. Highlights included assisting Xeros and 4D Pharma with their trade mark portfolios; representing a global pharmaceutical company in a global trade mark and unfair competition dispute involving trade mark oppositions and cancellation actions; and advising Shire Pharmaceuticals on EU trade mark matters. Furthermore, litigator Jonathan Day assisted Biogen with settling a dispute with a German company regarding the use of the name in one of Biogen’s key products, and is advising The Walt Disney Company on a number of EU trade mark matters, including trade mark clearance, registrations and disputes matters. The ‘pragmatic and knowledgeable’ Roger Lush continues to represent Bear Grylls Ventures on clearance, filing, prosecution, opposition and contentious matters. Litigator Ian Kirby and associate Lara Elder are also recommended. Paul Howard retired in 2016.

D Young & Co LLP’s ‘very professional and responsive’ team acts for a large number of British super brands across a broad range of industry sectors. It handles the full range of matters including development and clearance of new brands, registration strategy and use and exploitation, as well as enforcement. It also has notable experience of domain name disputes and community design registration. Key figures within the ‘very professional, very approachable and helpful’ team include Jeremy Pennant, who successfully represented an internationally known luxury fashion brand in opposing a company on the use and registration of a similar mark; and Matthew Dick, who is ‘responsive and knowledgeable, and combines an excellent understanding of trade mark law with just the right amount of assertiveness to support clients, whether in the course of prosecution or dispute resolution’. Dick is acting for a US fashion retailer in a number of trade mark matters, including overcoming registration objections at the UK registry, opposition proceedings before the EUIPO and multiple infringement and counterfeiting matters. Dick is also advising new client Hard Rock International on trade mark oppositions, litigation and filings within the UK. Tamsin Holman and Jackie Johnson are ‘very good at responding to clients’ queries and requests very promptly, and always find the best commercial solutions possible’. Also recommended are Flora Cook, Anna Reid and Gemma Kirkland, who was promoted to the partnership in 2016 and counts a number of household multinationals as well as start-up companies as clients. All named individuals are based in London and Southampton.

Dehns assists clients with the protection of their UK and overseas trade marks, and advises on company names, domain names, registered designs and unregistered design rights. Practice head Roberto Calamita counts Pret a Manger among his longstanding clients; he advises the client on its global IP strategy and oppositions at the EUIPO and the General Court of the European Court of Justice (CJEU). Calamita is also assisting a large pharmaceutical company and its subsidiaries on filing and prosecution as well as opposition proceedings. Elaine Deyes and Alison Hague in London, Philip Towler in Oxford, and Brighton-based Joseph Letang and Clare Mann are also recommended.

J A Kemp is singled out for its ‘excellent technical knowledge, strength in depth, commercial awareness and responsiveness’. It is increasingly recognised as one of the go-to firms for complex trade mark advice and trade mark related litigation, with growing caseload in the pharmaceutical and med-tech sectors. Practice head James Fish, who is based in Cambridge, ‘offers plenty of relevant advice early on to stop clients going down blind alleys and guides through the process with customary charm’. Key figures include Oxford-based Ben Mooneapillay and London-based Tom Albertini, who is ‘an excellent adviser’; their clients include household names in the luxury goods, film, sporting equipment, foot and fashion sectors, as well as SME clients in the retail, automotive, drinks, charity and trade association sectors. Recent highlights include assisting Gain Capital UK with its global trade mark prosecution, portfolio management and multi-jurisdictional litigation, advising Intrexon and its subsidiary Oxitec on its adoption of the trade mark Friendly Aedes, and advising Electronic Arts on trade mark filings and prosecutions, as well as a number of contentious matters.

Kilburn & Strode LLP continues to be sought out for its expertise in handling trade mark filing and prosecution, global portfolios and complex and often multi-jurisdictional disputes. Its trade mark opposition practice is highly regarded and its client list includes BlackBerry, NBC Universal, DreamWorks Animation and Geneva Laboratories. The team is led by the ‘responsive and personableCarrollanne Lindley, who is experienced in all aspects of trade mark prosecution and enforcement both in the UK and abroad. In 2016, Lindley and Ryan Pixton assisted easyGroup with its worldwide trade mark portfolio of around 900 marks covering the group’s high-profile ventures including easyJet, easyHotel, easyGym and easyFoodstore. Iain Stewart is particularly experienced in handling trade mark opposition and dispute resolution. Stewart recently assisted La Perla Global Management (UK) with trade mark portfolio management consisting of approximately 800 trade marks. Dual-qualified patent and trade mark attorney Jim Miller is recommended for his ‘solid technical knowledge’. The team was further expanded with the arrival of senior associate Cara Baldwin, who joined from Maucher Jenkins in January 2017.

Marks & Clerk Solicitors’s sizeable trade mark team is ‘absolutely first class’. It is ‘quick to pick up instructions and has great processes to ensure nothing slips’. The highly regarded Matthew Sammon is advising a supermarket chain on its expansion into Asia, including advising on filing and strategy regarding adoption of marks suitable for local markets and subsequent registration strategy. Edinburgh-based Campbell Newell ‘knows his onions’; he continued to act for Harris Tweed Authority on the registration of trade marks to expand its brand portfolio, assisted with revoking conflicting third party marks, and acted alongside Burness Paull LLP on enforcement of its trade mark rights. Newell also assisted Wood Group, an energy service provider, with its brand portfolio and trade mark strategy for its recent rebranding project, including filing 39 trade mark applications across eight jurisdictions. Alison Melling is advising a British retailer on its international portfolio and oppositions. Aidan Clarke is also a name to note. Associate Erika Coccia joined from Reddie & Grose LLP in January 2017.

Maucher Jenkins, formed through the combination of RGC Jenkins & Co and its longstanding German partner firm Maucher Börjes Jenkin, is a pan-European IP firm that advises a range of clients spanning start-ups to FTSE 250 companies and Fortune 500 corporations including Black Entertainment Television, Societé des Produits Nestlé, Tinder, Paramount Pictures Corporation and Brainloop. Katie Cameron has notable experience in handling opposition proceedings before the EUIPO. She is recommended alongside solicitor and chartered trade mark attorney Angela Fox and attorney Tim Pendered, whose practice areas include trade marks, designs and copyright, domain names and who are ‘excellent litigators’.

Nottingham-based Potter Clarkson LLP handles all aspects of branding and trade mark clearance, protection and enforcement. In an illustration of the depth and breadth of its capability, Sanjay Kapur is assisting a manufacturer of computer gaming equipment in nine EUTM oppositions, and successfully defended Mariage Frères in an opposition against its Casablanca trade mark application in the UK. In other highlights, John Peacock advised King Features Syndicate and Fleischer Studios on counterfeiting and unauthorised use and applications of Popeye and Betty Boop trade marks, and assisted Authentic Brands Group on trade mark oppositions and domain name disputes. Senior associate Lucy Mills has particular expertise in UK and CTM oppositions, and in negotiating co-existence agreements. Mills and Peacock count Hanesbrands as their client; in 2016 they assisted it with trade mark and design portfolios in the UK and the EU following its recent acquisition of three further portfolios of brands.

Boutique trade mark firm Stobbs IP is singled out for its ‘fresh, modern twist on trade mark agents’. Established in 2013, the ‘very classy outfit’ is ‘excellent across every category’ and to some, is ‘right at the top of the market’. Key figures within its highly regarded team include Julius Stobbs, who ‘gives great advice that is both practical and honest’; ‘knowledgeable and experienced’ senior attorney Emma Pettipher, who has particular expertise in CTM proceedings and procedure, especially in contentious CTM proceedings and settlement negotiations; Claire Sugden, who is highly experienced at trade mark clearance, and ‘works hard to deliver results in a form that is succinct, commercial and useful’; Harriet Berridge, who is ‘very dedicated and always keen to tailor her advice and ways of working to clients’ needs’; and Jessica Wolff and Louise Goodsell, who represent ‘excellent value for money’. Geoff Weller and Claire Jenkins are also highly recommended. Recent instructions include assisting Nomad Foods Europe with filing and prosecution matters, as well as opposition and enforcement issues and a review of its filing strategy; representing Springer-Verlag in a series of cancellation and non-use invalidity actions at the EUIPO in respect of the mark Birkhäuser; and assisting ASOS in contentious trade mark proceedings and filing and prosecution matters. Other clients include Faber & Faber, Yahoo!, Barclays, Nike and Tesco.

2016 saw A.A. Thornton & Co.’s team handle a large volume of trade mark matters for longstanding and a number of new clients. The firm is praised for its ‘good level of industry knowledge and service’ and for its ‘extremely professional approach’. Ian Gill successfully represented eHarmony in its opposition to the registration of the Matchedharmony mark, while Vanessa Lawrence is assisting a British designer clothing brand on the trade mark aspects of the establishment of a new brand. Rachel Havard is representing a UK-registered charity in trade mark oppositions and negotiations in multiple jurisdictions and, in a separate matter, successfully defended against a non-use cancellation application at the EUIPO cancellation division for a well-known US brewery. Another highlight saw litigator Geoff Hussey and Gill successfully assist an international fashion retailer with defeating an invalidity action at the EUIPO and in the General Court. Senior associate Sarah Darby is another name to note.

According to clients, Appleyard Lees’s team comprises ‘a lovely bunch of people that delivers highly professional and commercial advice’. The team has a strong track record managing large international portfolios and complex multi-jurisdictional disputes for clients including Samsung Electronics, Multibrands International and PUMA. Robert Cumming is an excellent trade mark attorney and IP solicitor; the ‘commercially focused’ Cumming’s recent highlights include representing a manufacturer of a consumer product in a dispute involving eight simultaneous sets of opposition proceedings before the EUIPO and two in Germany, and acting for a gaming software client on a multi-jurisdictional copyright dispute. David Moy, who is qualified in both patent and trade mark matters, is singled out for his expertise in handling contentious proceedings including oppositions and appeals. IP litigator Chris Hoole is also highly recommended, as is Olivia Gregory, who is ‘one to watch for the future’.

Birmingham-headquartered Barker Brettell LLP won 78 new trade mark clients in 2016, including Keller Group, Domino Printing and Perry Ellis International. As well as advising on the full breadth of trade mark matters, the ‘communicative and professional’ team also has experience in domain names, customs applications and Companies House queries, and is praised for its ability to ‘think ahead on how the IP strategy of the company needs to develop, anticipating needs and suggesting ways to better protect clients’ trade marks’. In 2016, the ‘pragmatic and solution-orientatedCatherine Wiseman assisted IMI with its trade mark filing strategy for the new IMI brand and the new brands of the subsidiary business, which involved filing more than 20 marks in 60 countries; and Lucy Walker handled a trade mark infringement matter for a well-known automotive manufacturer. Sarah Lait heads the trade mark team, which includes Rosalyn Newsome, who is ‘very prompt in her responses and accommodating to the needs of every matter’, and Tracy Arch, who has particular experience advising on protection strategies around trade dress issues.

Bristows LLP further enhanced its trade mark capability with the hire of three trade mark attorneys from Berwin Leighton Paisner LLP, including Ian Gruselle, who has notable experience in handling global portfolio management. It has a fully-integrated team of trade mark attorneys and solicitors, enabling the group to advise on the full range of trade mark work, with particular expertise in contentious issues including trade mark registry disputes and litigation. Paul Walsh heads the ‘excellent’ team, which includes litigators Paul Jordan and Jeremy Blum. Jordan continues to manage the UK trade mark portfolio for McDonald’s, and is acting in a trade mark opposition against The Scottish Salmon Company, which has applied to register the mark MacSalmon; he is also assisting Royal Mail Group with its worldwide trade mark portfolio. Walsh’s recent highlights include assisting a British-headquartered multinational on UK and EUTM clearance searches, and on a number of EU design invalidation actions arising from a dispute with a major competitor.

CMS, which merged with Olswang LLP and Nabarro LLP in 2017, acts for an impressive client list that includes ITV, Sky, W Chump & Sons and Hakkasan, for which the sizeable team handles the full range of trade mark matters. Sarah Wright assisted W Chump & Sons with clearance searches to secure trade mark protection of the name The Grand Tour across Europe and six additional jurisdictions, and continues to act for Microsoft on its European trade mark prosecution and opposition work. Joel Barry is ‘strategically brilliant, and is able to advise on all aspects of prosecution and litigation’. Barry and Wright have been assisting Sky with its worldwide trade mark protection and enforcement strategy, which involves handling 600 oppositions, revocations or invalidity actions, as well as managing pending litigation. Kelly Clarke is ‘an attorney clients trust to get things done with sound technical ability’. Another name to note is Tom Scourfield, who focuses on IP enforcement work and on the consumer products, life sciences, energy and TMT sectors.

In April 2017, IP firms Cleveland IP and Scott & York IP merged to form Cleveland Scott York, with offices in London, Reading, St Albans and Brussels. The well-regarded trade mark team advises on all areas of brand protection, including domain names, company names and designs. Recent highlights include assisting an internet company with negotiating the settlement of a CTM opposition, and representing a global pharmaceutical company in UK trade mark opposition proceedings. Key figures include Jonathan Clegg, who specialises in contentious matters, including handling oppositions and appeals across a number of jurisdictions; Sophie Maughan, (a qualified patent and trade mark attorney) advises clients on all aspects of IP protection and enforcement relating to trade marks and designs; and Imogen Wiseman, who advises on trade mark and design prosecutions, and is particularly experienced in UK and EU opposition and validity proceedings. Lorna Hobbs is a further name to note.

Elkington + Fife LLP’s team is ‘clearly at the top of its game; always available, quick to acknowledge instructions and quick to turn around responses’. The team has handled a large number of trade mark applications, oppositions and other disputes in several jurisdictions for BASF and its subsidiaries; in 2016 it acted as the lead counsel in relation to worldwide opposition and cross-cancellation proceedings involving more than 40 jurisdictions. Another highlight saw the team assisting PANalytical with its clearance and registration of new product trade marks and existing trade marks in new territories, as well as conducting opposition and cancellation actions in the UKIPO and EUIPO. The ‘very knowledgeable and savvy’ Chris McLeod (a former ITMA president) is ‘a trusted adviser and industry expert’; according to on client, ‘there is little (if anything) that he hasn’t seen or advised upon before’. Sevenoaks-based Peter Charlton is also recommend, as is associate Daniel Sullivan, who is singled out for his ‘client-focused service’.

Gill Jennings & Every LLP has significant experience across a wide range of sectors and acts for leading brand owners including World Wrestling Entertainment, MasterCard, Pfizer, Under Armour and Yamaha. Key figures include trade mark specialist Rowena Price, who is praised for her ‘superb manner and fantastic knowledge, always delivering on-point, strategic advice’, and Alasdair MacQuarrie, whose expertise includes brand portfolio management, oppositions and revocation actions as well as on infringement and anti-counterfeiting matters. MacQuarrie represented Sinclair Pharmaceuticals on the IP aspects of the disposal of its non-aesthetics business to Alliance Pharma, while Price continues to assist Premier Foods Group on clearance searches and filing programmes in a number of jurisdictions, as well as on passing-off and infringement matters related to copycat products.

HGF Limited has a wealth of experience in oppositions and appeals, as well as IP litigation. The Leeds-based David Potter heads the 10-partner team, which includes Antony Gold, who impresses with his ‘non-confrontational but firm approach, which keeps legal grandstanding to a minimum without portraying weakness and assists in orderly discussions to reach satisfactory settlement’. Lee Curtis is ‘experienced, practical and solution-oriented’. Curtis manages the trade mark and IP portfolio of Laura Ashley globally, which includes handling more than 1000 trade mark registrations, and has advised on a number domain name disputes. Halfords Group and Dunlem Group are also Curtis’s clients. Richard Wylie is regularly called on to manage the trade mark portfolios of clients including high streets retailers, household names and leading entertainment and publishing companies. London-based Stephanie Loeffler-Reading is also highly recommended.

Keltie’s trade mark expertise covers the full lifecycle of trade marks, from searching and filing through to opposition and litigation. The four-partner team acts for a variety of clients globally including London Taxi, Ocean Trawlers, RBS and Fever-Tree. The ‘helpful and knowledgeable’ Rosemary Cardas recently acted for Mediatek on the invalidation of the Gambling Commissions’ crossed fingers logo. Manuela Macchi’s client base covers a broad spectrum of industries, with an emphasis on pharmaceuticals, fashion and sports. In 2016, Macchi represented a manufacturing company in a design infringement against an Italian jewellery company. The highly recommended Alistair Gay has considerable experience in enforcement and the management of international trade mark portfolios. Ben Britter has particular experience in managing worldwide search programmes, as well as handling due diligence exercises in support of mergers and acquisitions. Director Azhar Sadique, whose practice spans trade mark, copyright and design, is also a name to note.

Mathys & Squire LLP is singled out for its ‘technical ability, prompt responses, excellent client service and broad and in-depth industry knowledge’. Clients also praise its ‘ability to think laterally and create excellent, forward-thinking trade mark strategies’. The team is led by Manchester-based Gary Johnston and is supported by a number of highly regarded attorneys, including dual-qualified solicitor and trade mark attorney Margaret Arnott, who has notable experience of filing and prosecuting trade mark and design applications, as well as managing large portfolios of trade marks; the ‘highly personable’ Emma Reeve, who demonstrates ‘great aptitude in exploring IP issues overseas, recommending appropriate steps’; the ‘diligent and pragmatic’ Robert Hawley, who is assisting new client Müller on its UK and Ireland trade mark portfolio management; and Laura West, who is ‘very clear in communicating and very quick at getting back to clients’. Other recent highlights include assisting British Gas with oppositions against trade marks filed by Ecotricity Group for the marks British Green Gas and Green British Gas.

Key figures in Mewburn Ellis LLP’s Bristol office include Sofia Arenal, who is recommended for complex opposition and other contentious work as well as handling large trade mark portfolios; the ‘commercially-minded’ Edmund Harrison, who is noted for his experience in clearance searches, filing applications and prosecuting oppositions; and Michael Foster, who is ‘concise in the expert guidance he provides’. Cambridge-based Stephen Hodsdon ‘displays evidence of his very good background knowledge of the respective industry’; his written and presentational work is ‘of a very high standard’. Other key figures include London-based Andy King, who is ‘very reliable and forward thinking’. It acts for a wide range of international blue-chip companies, as well as SMEs, universities and research institutions; representative clients include Axon, Dotcom Retail, Citymapper and Greggs. The team recently assisted TauRx Therapeutics with a number of international trade mark portfolios, and represented a fast food restaurant chain in trade mark oppositions.

Key figures at Reddie & Grose LLP include Aidan Robson, who handles prosecution and opposition matters and regularly represents clients at hearings before the EPO’s Technical and Appeal boards; Alice Findlay, whose expertise covers clearing marks for use, through to filing and inter partes issues pre- and post-registration; Simon Goodman advises a wide range of clients in patent, trade mark and design matters; Tom Sharman is recommended for filing oppositions and settlement negotiations, as well as online infringement of trade marks and designs; and Helen Wakerley gives ‘very comprehensive advice with a commercial viewpoint’. In 2016, the team assisted Gift Universe with trade mark clearance, registration of own-label product names and logos and filing strategy abroad, and advised an automotive company on UK and CTM opposition and trade mark infringement matters. Erika Coccia joined Marks & Clerk Solicitors, while Dale Carter joined from Rouse IP Limited.

Urquhart-Dykes & Lord LLP’s ‘excellent’ team is praised for its good business acumen and industry knowledge, and for its ‘clear understanding of the way clients use trade marks, which enables it to deliver commercially focused and sensible advice’. 2016 saw the team undertake an increasing number of clearance searches for pharmaceuticals companies, in addition to handling a steady flow of UK and EUTM trade mark filings and prosecutions. It acts for more than 800 UK and overseas clients in relation to their trade mark and brand strategy matters; representative clients include Toyota Motor Corporation, JD Sports Group, Ministry of Sound and the Royal Society for the Protection of Birds. The team is co-led by Alison Simpson and Alan Fiddes (‘an excellent trade mark attorney’) from its London and Leeds offices, respectively. Simpson has particular expertise in trade mark searches, freedom to use matters and oppositions. Also recommended are Gareth Price, who ‘responds quickly and is concise with his advice’; Anna Szpek, who demonstrates ‘an excellent degree of emotional intelligence when dealing with cases of potential infringement’; and Ian Byworth, who is ‘excellent, providing practical and well-thought-out advice’.

The ‘fantastic’ team at Wilson Gunn acts for a number of large technology companies, academic institutions and global brand owners, and has an extremely active trade mark filing practice. The team, which is spread across the firm’s Manchester, London and Birmingham offices, features a number of key individuals, including Mark Goodwin, who is advising a global beverage company on a trade mark opposition against another household company; and Michael Douglas, who is ‘exceptional – user friendly, pro-active, responsive and always provides commercial advice’. Douglas has particular expertise in the fields of sports and entertainment, fashion and industrial products, and counts Manchester United as a client, which he assists with trade mark prosecution and portfolio management. James Robey, who ‘always gives straightforward advice, clearly laying out the strengths and weaknesses of the client’s position’; he continues to act for key client Jacobson Group on managing its brand portfolio, which includes a number of well-known fashion footwear brands. Also recommended are the ‘pro-active and pragmatic’ David Slattery, and Tim Rose, who was promoted to the partnership in 2016.

Abel & Imray’s team features ‘individuals who are not only very knowledgeable and professional, but also down to earth and friendly’. It is co-led by London-based Simon Bentley and Caroline Brooks, who splits her time between Bath and Cardiff, and is particularly recommended for defending and opposing trade mark registrations in the UK and Europe, with an emphasis on the pharmaceuticals, media and electronics sectors. Brooks is ‘an absolute pleasure to work with – very attentive and accommodating to client’s needs and strategies when it comes to IP filings, searches and oppositions’. Bentley is ‘good at explaining complex matters in a simple way without excessive use of legal jargon’. Senior associate Danielle Cooksley ‘manages to blend a highly professional service with an easy-going approach’. Active clients include The Assa Abloy Group, Bayer, Fontem Venture and Cipla.

Leveraging its extensive global footprint and broad industry coverage, Baker McKenzie’s trade mark practice spans UK and EU trade mark prosecution, global portfolio management and disputes. Jessica Le Gros heads the trade mark registration and global portfolio team and specialises in global brand clearance and trade mark disputes. Recent highlights include advising British American Tobacco on enforcing its Vype trade marks against a number of third party infringers, and assisting L'Oréal with actions for trade mark infringement, passing-off and copyright infringement. Senior trade mark attorney Rachel Wilkinson-Duffy is praised for her ‘great tenacity and focused, practical advice’. Global firm chair Paul Rawlinson is also recommended.

Beck Greener is singled out for its ‘excellent, personalised service’. It is among the top filers of both UK and EU trade mark applications, and has an equally active opposition and enforcement practice. Practice head Ian Bartlett is praised for his ‘in-depth experience and practical approach to trade marks’; he is ably assisted by Rowland Buehrlen, who is particularly experienced in European CTM filings, and in trade mark opposition and infringement proceedings; and Duncan Morgan, who is noted for his ‘excellent attention to detail’. Highlights included advising a large retailer of beauty supplies on the prevention of parallel imports by a major high street retailer; acting for Tiffany & Co in a cancellation action in relation to its Lucida trade mark, and assisting Arçelik, a global domestic appliance and consumer electronics company, on prosecuting trade mark applications for its new logo.

Clients of Bird & Bird LLP praise the firm for its ‘understanding of their requirements and business needs’. The team has ‘excellent base knowledge coupled with technical brilliance, enabling it to provide helpful, tailored and accurate advice delivered in a commercial manner’. 2016 highlights included handling a multi-jurisdictional freedom to operate project for a large pharmaceutical company and acting for Kingfisher and Philip Morris International on their new products. It also handled a large number of opposition and cancellation actions before the EUIPO for clients including Facebook, Cotton Traders, EE, Tempur Sealy and Associated Newspapers. Allan Poulter assists with the full range of trade mark matters, and licensing issues regarding third party designs and infringement disputes. Dual-qualified solicitor and trade mark attorney Mark Holah is ‘very pro-active and clearly understands the retail sector’. Peter Brownlow has ‘a calm and sensible approach’, and is ‘a robust negotiator’. Also recommended are Patricia Collis, who is experienced at handling contentious matters at the UKIPO and the EUIPO, and Sau Lin Haouache, who is praised for her ‘consistent and pragmatic’ advice.

Fieldfisher’s clients include Dixon Carphone, for which it advises on trade mark protection and enforcement, and for which it has successfully represented the client in a domain name complaint and trade mark disputes involving key brands such as Advent and Honeybee. It is also assisting Take Two Interactive Software on 30 pending trade mark oppositions and related appeals, non-use revocation actions and customs seizures. Google, EY, Caffé Nero Group and TES Global are also key clients. Leighton Cassidy heads the IP portfolio management team, and has a wealth of experience advising clients on clearance, filing and prosecution and contentious registry proceedings. He is assisted by Harriet Seymour, Hastings Guise and senior associate Richard Hing.

Clients of Forresters rate its practice as ‘extremely helpful, fast to respond and providing a first-class level of industry knowledge’. Its strong trade mark team handles portfolio protection and management issues, in addition to having expertise in registered designs, design rights and copyright. In 2016, Janette Hamer assisted The Sargeant Partnership with the successful registration of Handmade Burger Co., which was previously refused on the basis of lack of distinctive character; and Liverpool-based Kate Cruse assisted a global nutrition company with the transfer of a .com domain name from a third party which registered the domain name in bad faith. Diane Wardley retired in 2016.

Mishcon de Reya LLP advises clients across a wide range of sectors on issues arising from trade mark and related rights including design and domain name. Sally Britton is advising Capital & Countries on its trade mark portfolio, in particular on the management and enforcement of the Covent Garden brand following its acquisition and redevelopment of the estate. She also advised a social networking app developer on the management of its global trade mark portfolio, and acts for Grant Thornton on trade mark filing, prosecution and management issues. IP litigator David Rose is representing a property manager on enforcement activities against third parties including filing and defending trade mark oppositions, and responding to third party company name infringements. Jeremy Hertzog is another name to note; he acted for a supermarket chain in relation to an invalidity application filed against its EUTM registration.

Murgitroyd is ‘quick to respond with well-reasoned and commercial advice’. Clients also find the advice to be ‘clear and efficient’. 2016 saw the team handle a steady flow of filings and prosecutions, opposition proceedings, and cancellation actions for clients in the food and beverage, fashion and financial services sectors. Oil and gas is a particular strength; its Aberdeen office features a team with ‘good in-depth experience’ of this area, including practice head Jamie Allan, who is praised for his ‘brilliant attention to detail’; the ‘hugely impressive’ Mike Vettese, who is ‘a fountain of knowledge on trade mark law and practice, and always on-the-ball strategically’; and Wendy Crosby and James Brown, both of whom are ‘extremely experienced’ according to clients. London-based trade mark practice head Mark Hickey and Glasgow-based director Jacqueline McKay are singled out for their ‘superior knowledge and experience of UK and European trade mark law; they demonstrate a diplomatic and tactful approach to client care’.

Venner Shipley LLP enhanced its trade mark offering with the recruitment of senior associates Gloria Parmesan and Camilla Sexon from Wildbore & Gibbons in August 2016; and the hire of James Tumbridge and Paul Harris from Pillsbury Winthrop Shaw Pittman LLP. They join a team that includes David Birchall and Yoann Fouquet, who assisted My Healthcare Clinics on filing non-use cancellation actions against a third party’s three UK registrations, resulting in the subsequent cancellation of another party’s trade mark registration. Other highlights included conducting due diligence on behalf of a pharmaceutical company in relation to its proposed acquisition from third parties of various worldwide trade mark portfolios. Julia McFarlane is also recommended.

Specialist IP prosecution and litigation firm WP Thompson acts for a mix of domestic and international clients, and has a strong track record in contentious registry proceedings. The team is also experienced at assisting clients in obtaining, exploiting and enforcing trade mark protection in countries outside Europe. In 2016, the team assisted a plant protection product company on parallel imports as part of its EU and trade mark infringement strategy, and represented a provider of diagnostics products in US trade mark opposition proceedings. Rigel Ross McGrath and Nicholas Manley are UK and European trade mark attorneys and are experienced in both High Court and IPEC cases. Graeme Murray is also recommended.

Bond Dickinson LLP is praised for its ‘good response times and practical approach to resolving disputes’. The team ‘communicates in language that can be understood easily and considers the issue from a business rather theoretical perspective’. The team has solid expertise in the protection, enforcement and exploitation of trade marks and designs, as well as domain name management, registration and disputes before Nominet and ICANN. Patrick Cantrill and Rachel Hearson count Petrofac as their client, which they are assisting with global trade mark portfolio matters, as well as filing and prosecuting trade mark applications and actions before the trade mark registries. The team is also representing Belmond Group in two trade mark invalidity and opposition matters before the General Court, and is assisting Bellway on its trade mark filing strategy, domain name registration and copyright issues. Will Sander joined Keystone Law in July 2017.

Chapman IP is recommended for trade mark registration, portfolio management and opposition proceedings. Clients span start-up companies, owner-managed businesses, SMEs and multinationals including Hoover, Alpha Coatings, Pitts & Lake and Bomb Cosmetics. Trade mark specialist Rebecca Dobson has significant experience in working with foreign attorneys in UK, European and foreign trade mark filing applications for multinationals. Dual-qualified patent and trade mark attorneys Helga Chapman and Huw Evans are also recommended.

EIP attracts praise for its ‘excellent client service’. The combination of trade mark attorneys and specialist IP litigators places it in a good position to handle all stages of trade mark protection and rights enforcement in Europe and the US, including cross-border litigation in the UK and Germany. Paula Flutter, Laura Foster, Carissa Kendall-Windless and Sharon Daboul are ‘approachable, professional and quick with responses’. Recent instructions include assisting Octo Telematics with trade mark clearance issues and a number of third party oppositions, advising SPX Corporation’s UK subsidiary on trade mark management issues and opposition proceedings, and acted for HEMA on filing and prosecuting trade mark applications in ten jurisdictions.

Lewis Silkin LLP is singled out for its ‘good technical knowledge, commercial approach and responsiveness’. Dominic Farnsworth heads the trade mark and IP portfolio management group, which assists clients with securing trade marks, design rights as well as business names and domain names. According to one client, trade mark counsel Steven Jennings is ‘one of the best trade mark attorneys around; his qualities include vast experience and great client care’. Representative clients include Harvey Nichols, Aston Martin, Saga Group and EDF.

Novagraaf’s recent highlights include advising a UK-based oilrig safety equipment manufacturer on extending its trade mark protection in South America, and acting for a leading professional football club on its trade mark registration strategy. Its client list features fashion, food and retail sector clients which it assists on trade mark clearance, registration and licensing matters; it also advises on copyright and unregistered design rights. The team includes Nora Fowler, who focuses on advising pharmaceuticals companies and universities, with notable experience handling oppositions before the EUIPO and UKIPO; andMichael Freeman, who is recommended for guiding clients through the early stages of the trade mark selection and registration process. *Tom Farrand joined Marks & Clerk Solicitors in October 2017.

Osborne Clarke LLP made a strong push into the market with the recruitment in February 2017 of a team of four trade mark specialists from Rouse IP Limited. The firm advises a large number of clients from a diverse range of industry sectors, with wide-ranging expertise covering filing and prosecution, portfolio management and enforcement and litigation. Highlights included assisting Qualtex UK and Amec Forest Wheeler with their global trade mark portfolios, and representing Sapphire Brands and TPad in defending a cancellation action against the TPAD device mark by Deutsche Telekom. Toni & Guy, Fred Perry, Stanley Black &Decker and PA Consulting Group are also clients. Mark Foreman, IP litigator Arty Rajendra, Richard May and Leanne Gulliver are the main contacts.

Swindell & Pearson Ltd has notable strength in trade mark prosecution and litigation. Kieron Taylor has ‘an overall excellent grasp of trade mark matters in the UK and the EU as a whole’ and is able to ‘provide well-rounded advice when required’; he ‘takes a sensible, commercial approach and understands litigation and litigation risk’. Nicholas Womsley and associate Katy Fuggle are ‘very good at communicating legal terminology into easily understood English and explain everything clearly and precisely, without ambiguity’. Robert Saleshas the ability to pick up the technical details of the invention very quickly and therefore save valuable time in the application process’. Recent instructions include assisting a client with injunctive action, infringement and validity issues against a supermarket chain, and representing a clothing company in a series of oppositions, revocations, and cancellation actions at the UKIPO and EUIPO, as well as a High Court action.

Wildbore & Gibbons specialises in the management and protection of trade mark portfolios and designs. It handles the full range of trade mark matters, including searching, registration, licensing, cancellations, infringements and passing-off. It also manages domain name portfolios and acts for clients in domain name arbitrations and proceedings in the Company Name Tribunal. Representative clients include Elemis, Pinewood Studios, Odeon Cinemas, The Economist and Rayne Shoes. Janella Barr, Stephen Kinsey, and newly promoted partner Sarah Talland are the key names to note. Gloria Parmesan and Camilla Sexon joined Venner Shipley LLP in July 2016.

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