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Who Represents Who

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The team at Boyes Turner provides ‘expert advice’ in IP disputes, the exploitation of IP rights, and the protection and commercialisation of brands. Electronics and IT sector expert Bill Gornall-King heads the practice and provides ongoing advice to Red Fox ID; thus far, his work has included patent licensing and IP rights protection pertaining to launching new software products and services. The data elements of IP are a further strength of Gornall-King, who is handling copyright and database rights protection for Accelya Holding World. Recently promoted partner Sarah Williamson is bringing a European trade mark opposition action against a US company on behalf of a high-profile jeweller, and Mark Blunden provides ongoing advice to Bullitt Group on patent licensing and preventing patent troll claims. Senior associate Stephen Baker is well respected for litigation and has been representing real estate and IT sector companies in parallel import and trade mark invalidation cases. Other clients include Auto Trader, Pentax and the Chartered Institute of Journalists.

A standout firm for disputes, DMH Stallard LLPgets the best possible results for its clients’ in brand and IP right enforcement actions. Dividing his time between London and Brighton, senior litigation partner and practice head Tim Ashdown has ‘long experience in his field’ and is representing Havaianas – a brand owned by the firm’s client Alpargatas – in numerous infringement and parallel import cases in the Intellectual Property Enterprise Court and High Court. Robert Ganpatsingh is also recommended for contentious matters, including unregistered design rights, copyright and passing off claims, and recently promoted senior associate Sarah Cook is ‘a clear thinker, who is able to identify the real issues in a case’. John Yates handles non-contentious matters and advised Premier Medical Holdings on trade mark licensing during its acquisition of Capita Medical Reporting from Capita plc. Arcadia, Gusto Telecom Solutions and SECRETSALES are also clients. In 2017, the firm merged with Rawlison Butler LLP.

EMW Law LLP excels in disputes relating to patents, industrial design and trade mark infringement. James Geary leads the practice with Mark Finn, who is acting for Ethypharm UK in bringing a parallel import and trade mark infringement action against Star Pharmaceuticals and Drugsrus. The firm is also handling an appeal on behalf of ATLAS ELEKTRONIK, relating to a patent invalidation action filed by Saab Seaeye. Recently promoted principal Matthew Holman advises Rightmove on IT matters as well as licensing and brand protection work. The experience of the team also extends to passing off, domain name matters and joint venture IP development agreements. Senior solicitor Felix Dodd joined from an in-house position at SThree.

Maier Blackburn LLP’s team has ‘a wealth of knowledge’ in the publishing sector and counts Oxford University Press, Portland Press and Simon & Schuster as clients. Outside this space, Marvel Entertainment and The Cochrane Collaboration also feature on the roster. The ‘pragmaticSteven Maier focuses on IP disputes and represented The Tolkien Estate in several matters, including filing a copyright infringement claim against a jeweller, who inscribed rings with a verse of Elvish script from The Lord of the Rings trilogy, and bringing action against Our Lady’s Abingdon regarding the release of two unpublished poems; the case went viral and the firm also took action against a number of media organisations. In other work, Hudson Shoe Agencies instructed Maier in filing a design infringement claim against fashion retailers based in France and the Netherlands in relation to an ankle boot for women. Cathleen Blackburn is ‘excellent’ for non-contentious work and has notable strength in international copyright and trade mark licensing work.

The team at Penningtons Manches LLP builds a ‘long-lasting, trusting and successful cooperation’ with its clients, which include Jimmy Choo, Vaccitech and IKEA. Retail sector expert Rachael Barber is a ‘standout star’ for litigation; she represented Bosch and its group companies in a trade mark and copyright infringement, domain name recovery and trade libel cases. On the non-contentious side, the firm has advised Bosch on patentable inventions and licensing matters. Trade mark specialist Gavin Stenton was promoted to partner and handled several mandates for Oxford United FC, including cross-border trade mark filing and portfolio management; defending against UK Intellectual Property Office opposition proceedings; and advising on brand protection following the club’s League One promotion. Life sciences, engineering and publishing sector expert Chris Shelley jointly heads the practice with London-based Anna Frankum, and advised Chronos Therapeutics on buying three pre-clinical programmes from a subsidiary of Shire, in which IP, know-how, development and marketing rights were acquired globally for programmes focused on addictive behaviours and fatigue in Multiple Sclerosis. Joanne Vengadesan, who splits her time between Basingstoke and Reading, is also highly regarded, as is associate Holly Strube, formerly of Boyes Turner. Another personnel change saw Sam De Silva depart for Nabarro LLP (now CMS).

Dividing his time between London and Milton Keynes, Shoosmiths LLP’s department head and retail expert Gary Assim is ‘a very skilled lawyer’, who is defending H&M in high-profile matters, including a breach of contract and patent infringement dispute with Stretchline Holdings regarding fusible yarn used in underwired brassieres. Mercedes-Benz retains Anastasia Fowle in brand protection mandates and she recently acted for the company in a dispute with another vehicle manufacturer, which used similar advertising and trade marks for a national campaign. Other key clients include TK Maxx and Red Bull Racing. Stuart Malcolm now works in-house at M Squared Lasers and Laurence Kaye became a consultant.

Stevens & Bolton LLPpunches well above its weight’ in all manner of work, including patent disputes, database rights and trade mark instructions. ‘Astute’ practice head Tom Lingard routinely acts for food and beverage sector companies in protecting, enforcing and exploiting their IP rights; he recently represented food manufacturer Bakkavor in a High Court misuse of confidential information case. In other work, he acted for Acro Aircraft Seating in filing a counterclaim to invalidate a patent following a dispute that had been brought by RECARO Aircraft Seating regarding the alleged infringement of its patents for a passenger aircraft seat. The ‘very strong’ and recently promoted partner Charlotte Tillett leads the life sciences group and has advised clients from this sector on patent infringements and licensing, copyright and a broad range of other matters. A fashion company also instructed Tillett to assist with licensing arrangements and its acquisition of an international trade mark portfolio. TGI Fridays and Cineworld also instruct the practice, as do SMEs and start-ups. Senior associate Elaine O'Hare is another name to note with technology, media and communications practice head Gary Parnell, who advises on IP-related matters concerning software solutions.

Blake Morgan LLP shines in brand protection matters; associate Ben Evans is a chartered trade mark attorney, who is advising Be Wiser Insurance on brand protection, IP right enforcement and its portfolio. With ‘carefully thought out advice’ and a ‘commercial approach’, practice head Jill Bainbridge, who also leads the trade mark prosecution team, is well regarded for cross-border work and has been retained by US practice Gluck Law Firm, P.C. to handle the UK aspects of a claim brought by the estate of Dash Snow against McDonald’s for allegedly reproducing the late artist’s work and graffiti signature in its restaurants. Bainbridge has also brought a trade mark infringement and passing off claim against Navigate Travel on behalf of Sail Week Croatia, which alleges that the defendant used the brand Sail Week in a sector that competed with its brand. Feelunique, Sutton and East Surrey Water, and Rapier Employment are other clients. Alison Patten-Hall and Sheilah Mackie are also recommended.

Osborne Clarke is highly regarded for IP heavy transactions and advised Oxford Photovoltaics Technology on IP rights protection and licensing arrangements. Practice head Russell Bowyer concentrates on non-contentious work and in a recent highlight, he advised Hyundai Motor UK on matters concerning its sponsorship of the UEFA European Football Championship, and continues to advise the company on trade mark and branding matters. In other work, the firm handled Pedigree Dolls & Toys’ re-launch of the Sindy doll under licence to Tesco in 2016. MetGen, The Book People and Cambridge Display Technology are additional clients of the group, which includes recently promoted senior associate Joanne Loveridge.

Modern and very professional’ boutique firm Palmer Biggs IP, Solicitors is ‘a one-stop shop for IP’, with an emphasis on trade marks, passing off, design and copyright disputes. Dawn Osborne is ‘a good litigator, who is very thorough and good at client management’, and senior partner and registered trade mark attorney Steve Palmer is ‘well known in the industry’. The firm acted for Abercrombie & Fitch in bringing a trade mark infringement and passing off action against an individual who sold counterfeit clothing online, and filed trade mark infringement and passing off claims against Technosport and an individual on behalf of BMW; the case is now subject to appeal. Leading fashion, footwear and luxury good companies such as Michael Kors, Nike, Tommy Hilfiger and various Richemont brands, including Cartier, Chloé and Montblanc, also instruct the firm.

Dedicated IP firm Sipara fields dual-qualified solicitors and trade mark attorneys including Rebecca Kaye and Robert Furneaux. The practice was particularly active in the retail sector, and recent highlights included registering a trade mark in China and establishing a new brand by acquiring a trade mark registration. Advising a publishing sector client on reclaiming brand ownership was another significant highlight for the practice.

At asb law LLP, practice head Debbie Venn has ‘a wealth of knowledge’, and handles trade mark and image right protection, among other matters, for Captive Minds. Solicitor Louise Bevan is another key figure, as is associate Nicola Billen, who is highly regarded for disputes concerning IP infringements and domain names. Clients include Pets Corner, Macro 4 and In2action, and the team now advises new client Canon UK on a range of matters, including protecting IP rights for licensing software and hardware.

BrookStreet des Roches’s Hugh Tebay has ‘outstanding legal acumen’ and is ‘highly trusted and very well respected’ for retail, franchising and technology sector work. In conjunction with senior associate Claire Jacques, Tebay advised SportPursuit on acquiring and licensing IP rights from two European companies. Toni & Guy, McDonald’s and GMDN Agency are also clients, as is Oxford Innovation, which was recently added to the roster.

Clarke Willmott LLP’s recent workload includes IP disputes, counterfeiting mandates and advising on IP rights and portfolios. Daniel Berry was made up to senior associate and is advising the Association of Chartered Certified Accountants on its trade mark and domain name portfolios. The firm also represented Organix in various matters, including trade mark opposition work and a dispute with a large food manufacturer pertaining to its use of a particular brand. Other clients include TOMY and Dixy Chicken. Manchester-based Roy Crozier now leads the practice following Paul Cox’s departure to Foot Anstey.

Pete Kenyon leads Cripps LLP’s practice and is often retained by software and online companies as well as businesses that focus on commercialising IP rights for their business models. Kenyon assists Holiday Extras with exploiting and protecting its IP rights, and recently handled IP licensing contracts with airport, airline and travel companies. Kathryn Rogers made partner and advises on annual license renewals and brand development for Coregeo; Irfan Baluch filed a copyright infringement and passing off claim on behalf of a global consultancy in the public sector against a Canadian company and a Dutch individual; and managing associate Joanna Ford is representing a designer, manufacturer and supplier of wristbands, lanyards and badges in a dispute with another wristband supplier, which allegedly infringed the claimant’s patent for wristbands and a locking mechanism. Will Charlesworth was promoted to senior associate and is also highly experienced.

White & Black Limited is a ‘superb choice’ for technology companies and also acts for clients from industries such as retail, food, life sciences and manufacturing. Praise abounds the lawyers too: recently promoted partner Victoria Wright is ‘client-focused and takes the time to ensure she understands the aims of her clients’; Nicholas Mitchell (also recently promoted) leads the contentious IT practice and ‘is a detail-focused lawyer’; and ‘outstanding lateral thinker’ Nick Mathys heads the Japan practice, standing out for his ‘amazing cross-cultural skills’. Following the sad passing of Henry Mendus, Mitchell remains the key contact for disputes with Wright, who acted in patent and design infringement actions, and various advertising cases. Recent highlights for Mathys included acquiring trade mark portfolios, advising on domain names and protecting IP rights, while ‘very approachable and commercially minded’ practice head Phil Thompson handled brand exploitation and the licensing of IP rights.

Barlow Robbins LLP is advising Volume on trade mark and copyright matters to protect its cutting-edge artificial intelligence software products, which are being launched in multiple jurisdictions. Vision Engineering also instructed of counsel Laurie Heizler regarding design rights, confidential information matters and manufacturing agreements relating to whether the company could produce and market a new design for ergonomic stereo microscopes. Fireproof Studios, Special Products and Kallo are also clients.

Blandy & Blandy LLP’s Joanne Frearsbrings an extremely high level of professionalism, clarity and structure’ to technology, biotech and creative sector mandates, covering patent infringements as well as the protection and exploitation of IP rights. A significant highlight saw Frears advise Holition on commercial agreements and licensing relating to augmented reality software, which involved IP ownership, US copyright and patent issues; the firm also handled the provision of a software interface and technology solution for internal image mapping on behalf of the company, which was used for the art installation Dress For Our Time. Practice head Debbie Brett advised on patents, IP rights protection and a collaboration agreement with a scientific research and testing organisation for a health and beauty product manufacturer in relation to developing a new product. Contentious work for the practice included passing off claims, trade mark infringements and patent disputes. Retail Marketing Group, CareerConnect and CreatorUp are additional clients.

Finance, healthcare and retail sector companies instructed Brethertons LLP’s Brian Auld in a broad range of mandates, including advising on domain names, copyright, distributing products under registered trade marks, and licensing IP and image rights. The firm’s extensive client list features education, technology and security sector companies.

The team at Coffin Mew LLP is ‘effective in achieving results’. The ‘extremely knowledgeable’ Mark O'Halloran heads the practice and has been advising Wessex Technology Opto-Electronic Products on font protection and a developing a licensing model, which was used to launch its Countermark system in 2017. Companies from industries such as hospitality and finance also retained the practice in a series of matters, including IP right validation, infringement actions and licensing work.

Led by Cathrine Ripley, Field Seymour Parkes LLP’s team has recently handled trade mark matters that arose out of corporate transactions and IP ownership work for food sector and social media clients. Media, manufacturing and marketing companies also feature on the extensive client list. Senior associate Bettina Phillis was a key hire from Reliance High-Tech and leads the firm’s sports practice.

At Howes Percival LLP, James Howarth ‘ensures that the client’s needs are kept in mind’ and excels in disputes concerning copyright, trade marks, patents, database rights and other IP rights. Obtaining a High Court interim injunction for FibreFab was a highlight, which saw the firm bring trade mark infringement and passing off claims against multiple defendants; the proceedings are ongoing. Publishing and manufacturing are also key sectors for the practice, which counts Lion Hudson, The Quarto Group and TAG Pipe as clients.

IBB (Iliffes Booth Bennett) has been handling patent, licensing and trade mark matters, among other work, for clients from diverse industries, ranging from healthcare to manufacturing. Corporate and commercial consultant David Clark, solicitor Bharti Moore and senior solicitor Rosie Brass are the key contacts following the departure of practice head Chris Hayes to Lewis Silkin LLP.

Irwin Mitchell’s Sarah Birkbeck is singled out for IP and IT disputes. However, on the advisory side, Kim Walker is the name to note for non-contentious work, including trade mark and design applications, licensing, brand protection and exploiting IP rights. The practice has experience in acting for companies from a range of sectors, including healthcare, media and retail.

Tristram Moore is ‘an outstanding commercial lawyer’ at Moore Law, where sector expertise spans the digital, media, technology, life sciences and retail industries. RocketRoute instructs the practice in trade mark registrations, cross-border licensing and a range of other matters; P1Vital and P1vital Products receive advice on IP protection and exploitation; and John Cullen Lighting turned to the team for registering a European trade mark, protecting IP in contracts with subcontractors, and handling trade mark infringement and passing off matters. Atomic Smash, Cloud21 and Technogym are also clients.

At Paris Smith LLP, ‘fierce litigator’ and ‘no-nonsense negotiator’ Laura Trapnell made partner and has ‘many years of experience’. In addition to handling unregistered design rights and passing off matters for manufacturing and real estate companies, the practice advises Hobbycraft Trading on its international registered design portfolio and also represented the company in a dispute with a Chinese supplier. The firm is also instructed by Southampton FC, Stannah and Meachers Global Logistics.

Spratt Endicott’s client list spans sectors such as distribution, software and technology. In addition to selling and acquiring IP rights, the firm has been handling the licensing of software and trade marks in other countries. Chairman and practice head John Spratt advises on the IP aspects of corporate transactions with Hitendra Patel, and associate Catherine O’Riordan is particularly strong in domain name and other IP matters that affect websites.

Kevin Sullivan advised fintech companies on software licensing, copyright, database ownership and commercial agreements at Warners Solicitors. Pharmaceutical, healthcare and energy companies instructed the practice in IP right infringements, breach of confidential information cases and other complex mandates. Barilla Holding, 21st Century Technology and FSI (FM Solutions) appear on the varied client list.

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