Intellectual property in East Anglia
Mills & Reeve LLP handles IP matters in its core industry sectors - technology, life sciences, automotive, food and agriculture, education and sport. Whether for advisory work or litigation, the firm acts for a national and international client base. Practice head Mark Pearce works in both Leeds and Cambridge, but Cambridge-based head of life sciences James Fry has in-depth knowledge of research and technology collaborations, and intellectual property licensing. Alasdair Poore, principal associate Richard Plaistowe and trade mark attorney Nicola Hanglin are also recommended.
‘Mills & Reeve’s lawyers have expert knowledge in the area of intellectual property with the added advantage of working with universities and thus understanding their nuances.’
‘James Fry has expert knowledge of IP, transfer and patents in relation to universities. James provides a great customer service and expert knowledge in the area.’
‘Richard Plaistowe provides pragmatic commercial advice and reasonable charging.’
The Binding Site
IELTS Australia Pty Limited, the British Council, and University of Cambridge Local Examinations Syndicate
Queen Mary University of London
AVEVA Group PLC
The Sanger Institute
Ninja Theory Limited
K&S Partners on behalf of The Agricultural and Processed Food Products Export Development Authority (APEDA)
- Managing the IELTS international trade mark portfolio on behalf of the IELTS Partners which consists of trade mark applications and registrations in around 135 jurisdictions. The work includes advising on registrability issues, filing and managing of new trade mark applications and renewals and prosecuting applications through to grant including dealing with examiner objections.
- Advising The Binding Site, a global business developing and commercialising specialist diagnostic assays and instruments to clinicians and laboratories worldwide, on the development of new products for protein analysis with third-party providers.
- Advising early-stage oncology therapeutic company Calypso Biotech on a range of CRO/pharmaceutical product development agreements and IP matters.
Stobbs IP launched in Cambridge in 2013 and has grown rapidly ever since. A niche intellectual property practice specialising in trade marks and brand management, it focuses on intangible asset management, which covers IP and commercial services, as well as technological solutions. Among its clients are world-leading brands in fashion, technology, publishing, telecoms, social media, food and beverage, finance and sports. The firm now has its own in-house valuation team focused on brand valuation. Founder Julius Stobbs and partners Chris Sleep, litigator Geoff Steward and Chris Hawkes are the key contacts.
Other key lawyers:
‘The Stobbs IP practice is very skilled at balancing the legal landscape against commercial realities and imperatives. As a result, they consistently provide helpful, cost-effective and easy to follow advice.‘
‘Julius Stobbs stands out not just among competitors in the UK but also among the lawyers we deal with globally. He is extraordinarily knowledgeable and personable. He is also highly effective in guiding his staff to provide advice that reflects his style and overall philosophy on what it is to provide valuable legal advice.‘
AB InBev (Becks, Budweiser, Corona, Hoegaarden, Leffe, Stella Artois, etc.)
AG Barr (Irn Bru, etc.)
Beiersdorf AG (Nivea, etc.)
British United Provident Association (BUPA)
Brown Forman (Jack Daniels, etc.)
Cancer Research UK
Faber & Faber
Facebook (including key subsidiaries: Instagram, Oculus VR and WhatsApp)
Garrard & Company
Great Ormond Street Hospital
GVC Services Limited (Ladbrokes, Coral, etc)
Kiely Rowan Plc (Orla Kiely)
The Leys & St Faith’s Schools Foundation
Links of London
Marks & Spencer
Pip & Nut
Sanrio (Mr Men)
Snap Inc (Snapchat)
Tottenham Hotspur FC
Upfield (inc. Flora, Becel, I Can’t Believe It’s Not Butter etc.)
- Acting for Facebook and its subsidiaries (Instagram, WhatsApp and Oculus) in relation to all UK and EU brand strategy and enforcement matters, including full clearance searches on proposed new brands and products.
- Acting for Combe International in a High Court claim for trade mark infringement of its VAGISIL brand of moisturising cream against Dr. August Wolff, the manufacturers of VAGISAN; part of a wider multi-jurisdictional dispute between the parties.
- Acting for Harley Davidson in relation to online and offline anti-counterfeiting and enforcement of trade marks and copyright in all global (territorial) divisions (EMEA, APAC, and US).
'They were very personable and trustworthy and we felt that they were there to protect our company's best interests,' says a client of Taylor Vinters. The firm has particular strength in the life sciences and technology sectors, and there is a strong international component to its work, both advisory and contentious. Working between London and Cambridge, practice head Patrick Farrant, trade mark and brands specialist Louisa Dixon, litigator Gareth Dickson, senior counsel David Rainford, emerging companies partner Chris Keen and senior associate Jo Eales are the main practitioners.
‘The team was friendly and helpful. They seemed knowledgeable on IP and seemed to have quite a lot of experience dealing with this. I think they were helpful in maintaining our cool when our case became frustrating due to the opposing person.‘
‘They were very personable and trustworthy and we felt that they were there to protect our company’s best interests. They were also forceful when they needed to be and handled the opposing lawyer very well.‘
World Trade Centers Association
Bridgestone Americas, Inc.
Adventure Forest Group Limited t/a Go Ape
Royal Society of Chemistry
The Estate of Professor Stephen Hawking
Four Reasons Legal, LLC
Meridian Audio Limited
Escape Fitness Limited
Bactevo (now Nanna Therapeutics)
- Advised the World Trade Centers Association in relation to multiple trade mark opposition proceedings before the EUIPO.
- Advised the Estate of Professor Hawking on the international protection and enforcement of the STEPHEN HAWKING brand and image.
- Acted for Adaptate Therapeutics in negotiating a worldwide collaboration and licensing agreement for the discovery and development of new antibiotics.
Legal directors Nellie Jackson in Ipswich and litigator Maria Peyman in Cambridge are the lead practitioners at Birketts LLP. They, along with Ipswich-based trade mark attorney Annie Blake, 'provide a clear and comprehensive service with efficient and valued liaison within other jurisdictions'. Cambridge-based commercial and technology partner Quentin Golder is also heavily involved in the practice. The firm handles trade mark and brand portfolio management, as well as litigation, and it is steadily increasing its flow of international work.
‘Nellie Jackson and Annie Blake provide a clear and comprehensive service with efficient and valued liaison within other jurisdictions.‘
‘I am not sure if this is unique but Birketts provide a support service to help us with IP applications and protection covering trade mark, domain and company names on an international basis. They work with individual “watch providers”, as well as trade mark lawyers and agencies in many companies. Birketts maintains a comprehensive database as a control over applications and renewals generating required documentation to meet requirements.‘
‘Our company has years of experience working with Birketts which I’d dedicate to their knowledge, expertise and helpfulness. They went out of their way to help with any question or query I personally had.‘
‘The firm provides fast responses from a dedicated team.‘
‘Responsive, commercial and excellent value for money. Nellie Jackson is extremely helpful.’
‘Great attention to detail and a wide range of interesting cases.‘
‘Maria Peyman has run a range of cases extremely well during the last year, including a patent entitlement dispute, an EU trade mark infringement case and a copyright and database right infringement case. Her approach has been consistent and she has drawn in expertise from colleagues where necessary.‘
Greene King Plc
UKTV Media Ltd
Caterham Cars Ltd
Orchard Toys Ltd
CPL Aromas Ltd
Inspectorate International Ltd
Tobar Group Trading Limited
Escape Hunt IP Limited
Hayman Group Ltd
UltraSoc Technologies Ltd
Off Road Kids Limited
Stage Event Security Limited
Rocket Foods Limited
- Overall management of the IP portfolio of Big Drop Brewing Company Limited, including a roll out of the key brands internationally over the past year, comprising multijurisdictional clearance searches, followed by an international trade mark filing program.
- Assisted in the assignment of IP rights and official recordal of the same for Simplifie Limited, along with the recordal of the corresponding changes of company name, at various Registries, following a company restructure.
- Overall management of the IP Portfolio of Tobar Group Company Limited, including migration of additional portfolios, as well as conducting its contentious work in all forums (TM Registry, High Court) and implementing a strategy for protection of their IP assets and defending proceedings/actions against them.
The Cambridge office of Eversheds Sutherland (International) LLP is a key hub in the firm's national IP practice. Simon Crossley is the key partner and he has more than 20 years' experience in areas such as open source software and open innovation, establishing licence models for app stores, and the use of technology in healthcare. Adrian Toutoungi joined Taylor Wessing LLP but the firm retains a strong associate team handling national and cross-border matters.
Goodwin joins the ranking having hired a team of experienced partners and associates from Taylor Wessing LLP. Partners Malcolm Bates andTim Worden, and associates Georgia Powell and Talitha Shkopiak are well versed in the protection and commercialisation of IP rights. Focused on the technology and life sciences sectors, the firm acts for a growing roster of high-growth start-up companies, investors and global brands such as Oxford Biomedica. Clients remark that the firm is 'completely responsive to our business needs and works as a team'.
Other key lawyers:
‘Completely responsive to our business needs. We work as a team – not all firms do this.‘
‘They are pragmatic and have an excellent understanding of the issues.‘
‘Malcolm Bates and Talitha Shkopiak are both excellent.‘
Oxford Biomedica plc
Avacta Life Sciences Limited
Hewitsons in Cambridge 'understands the client's needs and customises the solution rather than just rolling out standard template documents', remarks one client. The firm acts for small businesses and major multinationals, as well as Cambridge University Colleges and academics in both non-contentious and contentious IP matters. Practice head Andrew Priest and experienced IP partners Bill Thatcher, who handles R&D agreements and other commercial IP matters, and Mark Elmslie, who mainly handles disputes, are highly recommended.
‘Hewitsons has an expert team of different, complementary individuals. Their style tends to be interactive with a phase of information and context gathering before they make specific recommendations. I think that is a great way to understand the client’s needs and customise the solution rather than just roll out standard template documents – which is what some legal firms seem to do.‘
‘Hewitsons’ billing is very visible and easy to review and they represent superb value for money. They understand how to structure commercial deals in our sector such as R&D collaborations, patent option agreements, patent licence agreements and much more.‘
‘Bill Thatcher. Gentle in nature but shrewd. He puts the client at ease and uses his excellent intellect and communication skills to identify the client’s needs and their exact legal solution. He also writes legal documents in clear, legal language which is easy to understand by the client and third parties. Bill is always on time and is appreciated for his professionalism and clear legal contracts. He also has a board expertise in the type of contracts needed for our sector (biotechnology/life sciences).‘
‘Mark Elmslie has a very good knowledge of IPReg’s rules and procedure.‘
‘Mark Elmslie has a calm and considered approach to disputes.‘
- Acted for a soft drinks brand, active in a number of markets outside the UK, in a trade mark dispute involving multiple proceedings in the EU and UK trade mark registries and a UK passing off and trade mark dispute.
- Acting for a leading professional indemnity insurer of patent and trade mark attorneys in professional negligence claims and regulatory investigations and proceedings.
Marks & Clerk provides specialist IP and commercial contract services ranging from the initial filing and registration of rights through to litigation and commercial exploitation. The Cambridge office is central to its commercial IP practice, handling IP strategy, risk limitation, due diligence, brand protection, portfolio management, commercial contracts and industry-specific regulatory advice. Simon Portman in Cambridge and Michael Moore, who splits his time with the London office, are the key practitioners. Associate Rayyan Mughal is also recommended.
Other key lawyers:
DAAL Noise Control Systems
Streetworks Software Ltd
DS Smith Packaging
- Advised AKA Media on the development of a VR training program with a collaborator involving VR content, software and biometrics analysis. This involved complicated IP ownership issues regarding who will develop and own the content, the software and the algorithms for measuring biometrics the patent filing strategy and how the different elements will be commercialised.
- Advised Tecnelec, a small company dealing with big multinationals, on numerous collaboration and licensing deals with competing customers for its silent motor technology.
- Advised IDEA, which performs the role of EU Representative for non-EU sponsors conducting clinical trials in the EU, on contracts with customers requiring careful negotiation to ensure that liability is allocated appropriately and that the customer’s ownership of IP arising from the trial does not encroach upon IDEA owning new IP relating to its areas of expertise.
Penningtons Manches Cooper LLP has a strong commercial IP and life sciences practice in Cambridge. Partner Rachel Bradley is co-head of the practice, which is also led from the firm's Oxford and London offices. Bradley has specific experience in the life sciences sector, though her broad experience includes the technology sectors and publishing sectors, and she is frequently seconded to a not-for-profit scientific publishing organisation. Associate Natasha Bowyer Irvine joined from Taylor Vinters.
Other key lawyers:
‘I have a good impression of the firm. I believe it has done a good job for us. The firm has been a good fit for us – they are reasonably priced, very knowledgeable in the areas we need help and are sufficiently flexible to work around our own weaknesses.‘
‘Rachel Bradley has produced good work, mostly on time. I don’t think we are the easiest client and on the modest evidence I have, she handles us well. Rachel is quite obviously trying to build a solid relationship with us and I think she is going about this in a natural and unforced way. She communicates well and strikes the right tone, not overly formal or stuffy, but very professional.‘
‘Rachel Bradley is straightforward about what she can deliver, for what price and when and has almost always stuck to that. I believe she works very hard and I trust her.’
‘Rachel Bradley explains things well and asks the right questions. She communicates clearly by email and on the phone and delivers on promises. She is personable and patient.‘
‘The work Victoria Wright produced for us has been of high quality.‘
The Company of Biologists Limited
Wren Therapeutics Limited
Scarab Solutions Ltd
Royal National Orthopaedic Hospital
Panacea Charitable Trust
- Providing regular commercial and IP advice to Cytocell Ltd, including protection of the company’s IP through drafting intragroup agreements, master services agreements and a material transfer agreement with an NHS Trust.
- Advice to Royal National Orthopaedic Hospital on the protection and exploitation of its IP relating to a particular methodology in a number of commercial agreements with other public sector or commercial entities.
- Regularly advising Wren Therapeutics Limited on IP and commercial matters, including protection of the company’s IP through consultancy agreements, sponsored research agreements and material transfer agreements.
The practice at Taylor Wessing LLP underwent many changes in late 2019 and early 2020, with key partners moving to Goodwin, but promotions and recruitment have helped it to maintain a strong position in the Cambridge market. The firm's life sciences and technology focus gives it a deep understanding of complex global licensing, collaboration deals and IP disputes. Newly promoted partner Tasmina Goraya leads the practice, which hired key partner Adrian Toutoungi from Eversheds Sutherland (International) LLP. Cambridge Innovation Capital and Oxford BioMedica are among their key clients.
Other key lawyers:
Cambridge Innovation Capital
- Represented Apotex Inc in the sale of its commercial operations in five European countries. This €74m deal includes a portfolio of over 200 generics, more than 80 over-the-counter (OTC) products, and an additional pipeline of over 20 products which are expected to be launched over the next two years.
- Advised Colorifix on corporate, employment, privacy, IP infringement and commercial IP matters.
- Acting as trusted adviser to iRhythm Technologies, a company dedicated to redefining the standard for ambulatory cardiac monitoring, on a range of matters pertaining to IP commercial arrangements and regulatory matters.
Through its in-house service, Fosters in Norwich increasingly handles IP matters, including advice on global trade mark and brand strategy. The service, led by partner Jamie Arnall, provides an outsourced in-house legal capability and solicitor Charlotte Darkins is developing a niche IP specialism, advising on trade mark portfolio reviews, portfolio management and the transfer of IP rights. Among their clients are a British sports league and a well-known English football club.
Other key lawyers:
‘We have engaged Fosters’ services for approximately two years. We have been hugely impressed by the level of service provided in all aspects of our interaction. The attention to detail, speed of response and understanding of our needs are always met. The level of service far exceeds anything I have received before from this sector.‘
‘We feel extremely fortunate to be looked after by Jamie Arnall and Charlotte Darkins. We feel they both regularly go over and above what could be reasonably expected to ensure we receive the best possible service. Related to this, we’ve often received responses to urgent requests significantly out of office hours – such responses being comprehensive and valuable as if in office hours.‘
‘We have found both Jamie Arnall and Charlotte Darkins to be able to quickly understand our needs and as such process any requests swiftly and at the first time of asking. Following a review of a contractual matter, they regularly take the time to go beyond the initial advice we have sought to raise other potential queries as to matters we may have missed. This has proved invaluable in many instances. Indeed, I would go as far as to describe them as indispensable to our business.‘
Nottingham Forest Football Club
- Advised Woodforde’s Limited on a significant trade mark portfolio review, including submitting 16 trade mark applications to enhance their protection. Also advised on an international trade mark and brand protection strategy.
Greenwoods GRM in Peterborough handles IP matters, notably disputes, for its clients in the media sector. It acts mainly for large magazine and online publishers, though it has a growing client base in the technology sector. Senior associate Jamie McConnell handles contentious matters, including design and trading name infringement claims. Head of corporate David Woods deals with IP commercialisation. 'They are quick, responsive and thorough in all their dealings and they offer straightforward, honest advice,' remarks a client.
Other key lawyers:
‘They are quick, responsive and thorough in all their dealings. They offer straightforward honest advice and are prepared to work with their clients to find resolutions.‘
‘David Woods is an outstanding partner. He understands our business, provides relevant advice first time around and in what is an extremely efficient time line. It is rare that I would recommend a lawyer but he is the exception!‘
Steeles Law acts for clients in the engineering, sport and publishing sectors, for which IP is a key requirement. Its work includes IP licensing deals involving the UK, US and eastern European countries. Company commercial partner Richard Bailey handles IP in support of corporate transactions, though the firm also handles some stand-alone patent and trade mark matters. The hire of solicitor Alistair Ponder from Spire Solicitors LLP added substantial experience in IP licensing. Solicitor Jonothan Broadbent from Mishcon de Reya LLP also has skills in IP and competition law disputes.
- Advising on breach of design rights advice for renewable energy sector client.
- Advising on design differentiation between client’s designs and those of a number of competitors within the agricultural and machinery sector.
- Advising on intellectual property, in particular design rights copyright, for a greeting card publisher.