The Legal 500

Work Department

Intellectual property/trade marks.

Position

John co-chairs the international trade mark and copyright group at the firm. With more than 30 years’ experience in intellectual property law and in particular trade mark law, 25 of those years practising in Europe, John advises clients on selection, acquisition, exploitation and enforcement of trade mark rights throughout the world. His hands-on approach is unique in helping clients to understand the inter-relationship of IP rights worldwide and to ensure that their trade mark enjoys as much exclusivity as possible. John advises individuals through to multinational companies. John manages brand protection programmes for large global brands, including Tumi Inc, Elizabeth Arden and others. John and his team have been at the top of The Legal 500 since the year 2000. The Legal 500 and Chambers & Partners recommend John as a leading IP lawyer. John Olsen is referred to as ‘world famous’ in the International Who’s Who of Trademark Lawyers 2009 and is listed as a highly recommended lawyer. He managed the programme to reclaim rights to the trade mark RITZ, acting on behalf of the owners of the Ritz Paris Hotel. He designed and implemented a programme to acquire rights in the RITZ trade mark, utilising litigation where necessary. Acting against companies with registrations and use of the RITZ trade mark, his programme of repatriation of rights enabled the Ritz Paris Hotel to roll out a successful licensing programme. Lead the team clearing the name DIAGEO as the new name of the entity created by the merger of Grand Metropolitan plc and The Distillers Group. The searches involved every country in the world. The goal was to clear the name for use and registration in every country in the world, and prevent third parties from registering or using in advance of the official launch. As a result of the plan, the selection and launch were carried out flawlessly. John has been involved in more than 1,500 contested trade mark cases at the second level of appeal or higher in more than 80 countries around the world, for many household names. He has litigated in more than 50 countries worldwide.

Career

Admitted to practice in California, US Patent & Trademark office and Court Admissions in England and Wales. Partner Edwards Angell Palmer & Dodge 2009. Publications include: co-author, ‘What users really think of trade mark offices’, Managing Intellectual Property (1 May 2010); ‘Caring Counsel: Working in a Creative Partnership with the IP Client’ (pamphlet by Aspatore Books); co-author with contributing editor Cristina Garrigues ‘Trade Marks, Trade Names and Unfair Competition: World Law and Practice’ (Sweet & Maxwell); editor ‘Domain Names: Global Practice and Procedure’; on the editorial board of the ‘European Intellectual Property Review’. Lectured on intellectual property topics for many organisations and in many countries on virtually every continent.

Languages

French, social German and Spanish.

Member

International Trademark Association; APRAM; AIPPI (British and French Groups); AIPLA; ABA; IBA; ASIPI; ECTA; IPIC; ITMA; LES; LAIPLA; NYIPLA; TIPLO.

Education

University of California (BS Physics); Loyola University (BA); London School of Economics and Political Science (International Law Certificate); University of Notre Dame Law School (JD).

Leisure

Patron of the Royal Academy of Arts, London.

Practice Areas

Intellectual property