Intellectual property in East Anglia
Mills & Reeve LLP has a large roster of regional, national and international clients in the technology, life sciences, automotive, food and agriculture, education and sport sectors. Its work includes corporate support, IP protection and commercialisation, R&D and collaboration contracts, branding, technology transfer, licensing and contentious matters. The practice is led from Leeds but the firm's Cambridge office houses key lawyers in consultant and patent attorney Alasdair Poore, IP and life sciences partner James Fry and principal associate Nicola Hanglin who is a Registered Trade Mark Attorney and leads the firm’s trade mark filing and prosecution practice.
Alasdair Poore; Kevin Calder
‘An experienced team that have the breadth to cover all legal aspects of intellectual property challenges in the life science sector both in the UK and through their network of associates worldwide.’
‘Alasdair Poore really gets into the detail, really tries to understand the issue, and is client friendly.’
‘James Fry always gives pragmatic advice.’
Bernard Matthews Foods Limited
IELTS Australia Pty Limited, the British Council, and University of Cambridge Local Examinations Syndicate
Queen Mary University of London
AVEVA Group PLC
Department for Education
Cowan, Liebowitz & Latman
University of Nottingham
Ninja Theory Limited
University of West London
Nottingham Trent University
Birmingham City University
Kidney Research UK
Wellcome Sanger Institute
University of Exeter
Health Data Research UK
King’s College London
- We manage the IELTS international trade mark portfolio on behalf of the IELTS Partners which consists of approximately 80 trade mark applications and registrations in around 135 jurisdictions (including ARIPO, OAPI, International and EU trade mark registrations).
- Mills & Reeve acted for the sellers in relation to the acquisition by Huws Gray of Ridgeons, a Cambridge-based timber and builders merchant trading throughout East Anglia, with several trading arms, such as PlumbStock and Anglia Tool Centre, a transaction which established the UK’s largest independent builders’ merchant; IP, in particular the Ridgeons trade mark portfolio, was material to the transaction.
- Calypso is an early stage oncology therapeutic company and we have assisted on a range of CRO/pharmaceutical product development agreements and IP matters.
- Our IP team initially advised on a trade mark claim, and implemented a strategy to secure trade mark protection for the UK company in opposition to a US company’s trade mark registrations .
- We manage all of AVEVA’s international trade mark portfolio, which covers in various jurisdictions, including the EU, the USA, Australia, India, China, Brazil, Colombia, Chile, Mexico and Russia.
Stobbs IP is a specialist IP boutique based in Cambridge that, with 64 fee earners, has by far the largest practice in the region. Among these are both solicitor and trade mark attorneys, all of whom are focused on brand management, which includes a growing caseload of contentious matters. The firm has a huge roster of clients that grew still further in 2018, and among its new clients are Liverpool FC, Raspberry Pi, Marks & Spencer, AB InBev, FIFA and Mars Wrigley. The breadth of the firm's service offering sees it compete with both specialist Trade Mark Attorney firms and large international IP law firms.
Julius Stobbs; Chris Sleep
Other key lawyers:
Bruce Alexander; Geoff Steward; Chris Hawkes
Cancer Research UK
Faber & Faber
Garrard & Company
Great Ormond Street Hospital
Kiely Rowan Plc
The Leys & St Faith’s Schools Foundation
Tottenham Hotspur FC
- We continue to work for Facebook and its key subsidiaries (Instagram, Oculus and Whatsapp) in relation to their UK and EU brand strategy and enforcement matters, receiving instructions directly from the US.
- We were appointed to manage the global brand portfolio of Upfield Europe BV following their acquisition of the Flora Foods Group business from Unilever.
- Acting for a Defendant/ Counterclaimant in relation to a dispute over the use of the mark PIP & NUT on nut milk products by our client, where the other side assert rights in relation to the word PIP for juices and other related products.
- We act for AG Barr in the management of their brand portfolio which includes a number of well known soft-drink brands including IRN BRU, RUBICON, ROCKSTAR and SNAPPLE, as well as strategic advice in relation to brand protection and enforcement.
- We have been advising well-known motorcycle brand, in relation to enforcement strategy against counterfeiters and infringers in the UK.
Taylor Vinters has a deep bench of talent in its Cambridge and London offices, with key partners often working in both locations. The firm, which focuses largely on the life sciences and technology sectors, handles all aspects of IP from the registration and licensing of IP rights, through commercialisation and protection to litigation. Patrick Farrant leads a practice that acts for regional, national and international clients. In 2018, the practice extended its capabilities with the introduction of a patent filing and strategy practice. Louisa Dixon is the key partner for brand protection and trade mark matters, and Gareth Dickson takes the lead on contentious matters.
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)
- Representing the World Trade Centers Association in relation to UK and EU trade mark matters.
- Representing the Estate in its enforcement and protection of Professor Hawking’s brand and image.
- The firm was appointed by the US-based Bridgestone Americas, Inc. in 2016 to act on its behalf in respect of UK and EU trade mark clearance and registrations and portfolio maintenance matters.
- Representing Meridian Audio Limited in relation to all trade mark matters around the world.
- The firm has taken over representation of the entire RSC trade mark portfolio, including all legacy registrations.
The Cambridge office of Taylor Wessing LLP houses specialists in technology and life sciences, many of whom have in-house experience at leading pharmaceuticals companies. The transactional team led by Malcolm Bates and Tim Worden frequently handles complex global licensing and collaboration deals, as well as disputes. Its strong venture capital practice often advises on the IP aspects of venture capital financings, joint ventures, M&A deals and IPOs.
Malcolm Bates; Tim Worden
Other key lawyers:
Tasmina Goraya; Georgia Powell; Samantha Deacon;
“The team was always up-to-date on every aspect of our needs and never lost sight of unique details. As a result, their ability to take on new developments in any particular issue was remarkable.”
“Malcolm Bates is not only possessed extensive knowledge of various IP intricacies inherent in our industry and unique to our company, he also possessed a creativity that enabled us to navigate nearly any situation we faced. This is not always a common trait with attorneys and highly valuable to any client.”
TxCell S.A. / Sangamo Therapeutics
Oxford BioMedica plc
Ceres Power plc
Artios Pharma Ltd.
Forbion Capital Partners
- We advised TxCell, a listed French cell therapy company, on an in-licence from the University of British Columbia under intellectual property rights relating to TxCell’s lead cellular immunotherapy product for chronic rejection after organ transplantation.
- Advised longstanding client Oxford BioMedica plc on an exclusive worldwide licence of its gene therapy treatment for Parkinson’s Disease.
- Advised Oxford BioMedica plc on a research collaboration and licence with Bioverativ Inc. for the development and manufacturing of lentiviral vectors to treat haemophilia. Oxford BioMedica will receive a $5 million upfront payment from Bioverativ, as well as milestone payments potentially worth over $100 million and royalties on net sales of Bioverativ’s lentiviral vector haemophilia products.
- We represented Apotex Inc on the sale of its European subsidiaries in Belgium, Poland, the Netherlands, the Czech Republic and Spain, to Aurobindo; the transaction involved advising on a range of IP-heavy commercial agreements, as well as trade mark licences.
- Advised Ceres Power Holdings plc on an equity investment from Chinese power business, Weichai Power, together with a related joint venture in China and the licensing of the intellectual property for fuel cell technology.
'They understand our business, tailor their advice and weigh up the commercial risks', says a client of Birketts LLP, which provides 'a readily available, efficient service'. Legal director Nellie Jackson in Ipswich leads the practice and has nearly 20 years' experience in trade mark and brand protection matters. Senior associate Maria-Christina Peyman in Cambridge takes the lead on contentious IP matters and has particular expertise is in civil disputes at the IPEC and the High Court involving copyright, trade marks and passing off, as well as trade mark registry disputes and Company Name Tribunal applications.
Nellie Jackson; Maria-Christina Peyman
“Nellie Jackson is a standout leader of the IP team at Birketts. She is responsive, commercial, helpful and knowledgeable, often going above and beyond.”
“The team is very solutions-oriented. They understand the needs of business and work with us to help us reach our objectives.”
“Nellie Jackson has been fantastic to deal with throughout. She is a strong and prompt communicator and is an excellent listener – she spends time understanding our situation and needs and provides advice tailored to that.”
“Nelli Jackson is always pragmatic and positive.”
“Nellie Jackson is commercial, pragmatic and a pleasure to deal with. I highly recommend her.”
Greene King Plc
UKTV Media Ltd
Elektron Technology Plc
Caterham Cars Ltd
Servest Group Ltd
Orchard Toys Ltd
CPL Aromas Ltd
Inspectorate International Ltd
Tobar Group Trading Limited
Escape Hunt IP Limited
Hayman Group Ltd
Monty’s Bakehouse UK Ltd
Sanctuary Personnel Limited
Jewers Doors Ltd
Monarch Water Ltd
Inskin Media Ltd
UltraSoc Technologies Ltd
C4 Carbides Ltd
- Worldwide Trade Mark Portfolio Management, noting an allegation of trade mark infringement and passing off by way of an example matter.
- UK and EU Trade Mark Portfolio Management, noting a UK trade mark opposition proceeding as an example matter.
- Management of worldwide IP portfolio for the Hayman Group (including Hayman Distillers, Burlington Drinks and Haymankimia), noting a UK and EU trade mark opposition proceeding as an example matter.
- Management of UK/EU trade mark portfolio and contentious IP matters, including design rights, noting an EU trade mark opposition by way of an example matter, and High Court proceedings brought by Rubik’s.
- Representing Clayton Horsnell and its director in defending an infringement of trade marks and database rights claim brought by Distinctive Wholesale Limited.
Eversheds Sutherland (International) LLP's Cambridge office is home to a substantial part of the firm's national IP practice, which comprises six partners. Simon Crossley is the key partner in Cambridge 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 has extensive experience in all aspects of intellectual property but has a particular focus on complex patent litigation.
Other key lawyers:
Adrian Toutoungi; Alexa Parry; Victoria Clissold; Sara Patel
Hewitsons acts for clients ranging from small businesses to multinational corporations, including well-known brands and Cambridge colleges, in IP licensing, development contracts and contentious matters. Clients praise 'the breadth of IP knowledge from accessible partners at keen rates'. Practice head Andrew Priest handles IT, outsourcing, technology transfer and general commercial contracts, while key partner Mark Elmslie's work for national and international clients includes research and development arrangements and technology licensing contracts.
Other key lawyers:
Mark Elmslie; Bill Thatcher; Tania Saigol; Carole Mahoney
“In intellectual property matters the expertise available via the team is second to none.”
“Mark Elmslie has a unique knowledge of the regulatory framework established by IPReg, the regulator for the IP profession. He is calm and measured in his advice.”
“Andrew Priest is a really valuable addition to the firm’s IP expertise, with deep industry understanding and a sharp legal mind.”
- We are acting for a soft drinks brand, active in a number of markets outside the UK, in a trade mark dispute involving multiple proceeding in the EU and UK trade mark registries and a UK passing off and trade mark dispute.
- We are acting for a UK company in complex patent litigation involving a claim for infringement of a patent in the field of engineering, against our client and others by an EU company alleging patent infringement, the claim is complicated by the fact that proceedings have been brought against multiple parties involved in producing, selling and using the patented product .
Marks & Clerk Law
Managing associate Simon Portman is the lead lawyer in Cambridge for Marks & Clerk Law, though partner Michael Moore spends time in both Cambridge and London. The firm is an IP boutique and advises on the commercialisation of IP, strategy, risk limitation, due diligence, brand protection, portfolio management, commercial contracts and industry-specific regulatory issues. Among the clients of the Cambridge team are small start-ups, prestigious universities and large multinationals, as well as companies with a technology or life sciences focus. Commercial contract lawyer Rayyan Mughal is recommended as a rising star.
New England Biolabs (UK) Ltd
May Ball Co Ltd
DAAL Noise Control Systems AS
- Advising on branding and trade mark filing strategy for the provision of various types of assays for researchers in academic, pharmaceutical and veterinary research.
- Representing singer/songwriter in all aspects of her music career, including sourcing and negotiating management agreements, major label record deal and $250,000 music publishing agreement.
- Advising client with existing presence (in other technical fields) in the oil and gas sector on setting up a new commercialisation vehicle for new concept, acquiring the rights from a range of inventors, patent filing and branding strategy and subsequent product development and commercialisation strategy.
- Advising the client on joint development agreements with a range of parties, ensuring the client owns or has access to IP generated in its field
- Advice on patent filing strategy and drafting, negotiating and advising the client on agreements to evaluate and further develop its technology with motorcycle manufacturers in Europe and Japan, including advice on suitable KPIs and outline licence option terms.
Penningtons Manches Cooper LLP joins the ranking thanks to the growing workload of senior associate Rachel Bradley in the IP, IT and commercial practice. She has more than 13 years' experience in the publishing and life sciences sectors, and handles a range of non-contentious IP matters including trade mark, patent, know-how and copyright licences for the publishing industry, as well as software licences. Her clients range from small biotech and technology companies to large pharmaceutical companies, NHS Trusts, charities and academic institutions.
“The team at Penningtons Manches has lawyers who have worked in-house which means they have a great understanding our commercial concerns.”
“They are able to respond to our queries efficiently and highlight any commercial and legal concerns appropriately.”
“Rachel Bradley and the team have great understanding of our sector and the issues that we as an organisation face. With their experience in the sector and detailed knowledge of our business needs, the team are able to provide us with a tailored service for our company.”
“They are able to meet with challenging deadlines, and are able to turn work around quickly should the need arise.”
“Rachel Bradley has a detailed knowledge of the publishing sector. Having Rachel as a central point of contact means that the advice is always tailored to our organisation, given her knowledge of our business.”
“Queries are responded to promptly, and with a pragmatic approach.”
The Company of Biologists
Cytocell Limited and Oxford Gene Technology Limited
Grey Wolf Therapeutics
- Advised The Company of Biologists on a range of commercial agreements, including an agency agreement with a European publishing agent.
- We drafted template trade mark licence agreements for the grant of trade mark licences by Cambridge Commodities to third party manufacturers of products to use Cambridge Commodities’ trade marks on their products.
- Acted for Astrid Media on a licence agreement relating to European publishing rights.
- Acting for the Charity relating to the drafting of a collaboration agreement with NHS Trusts for the provision of admiral nurses.
- Represented a biotech company in its Research and Option agreement with a large global pharmaceutical company.
The intellectual property practice at Greenwoods GRM is led by corporate partner David Woods and is best known for its in-depth knowledge of the media sector. It frequently advises magazine and online publishers on IP matters. The firm also has growing expertise in the technology sector. Litigation associate Jamie McConnell has a strong track record in contentious matters, which recently included successfully protecting the infringement of the trading name of ta large online sports supplement store, and defending a multimillion-pound design right infringement claim.
Other key lawyers:
- Defending a multi-million-pound design right infringement claim in the marine industry.
- Successfully enforced and prevented the further infringement of a UK based manufacturer’s CTM.
The business law practice at Steeles Law, led by corporate partner Richard Bailey, has a niche in acting for clients in the hi-tech engineering sector, particularly those involved in cycling, automotive and motorsport. Bailey also advises publishers on copyright and trade mark issues, and the firm is increasingly active in assisting clients in the creative industries with copyright matters, design rights, patents, trade marks and the law of confidentiality. Denise Traube and Rachel Sims are also building up the firm's profile in contentious IP matters.
Broadland Guarding Services Limited
- The team is advising Sustain on refuting the allegations of breaches of the UK Code of Non-broadcast Advertising and Direct & Promotional Marketing (CAP Code) and the misleading and comparative advertising Directive, as well as trade mark infringement and breach of copyright.
- Rachel Sims acted for the design agency in two cases of infringement of copyright.
- Defence of intellectual property rights against misuse by a competing manufacturer.
- Breach of design for a large agriculture plant.
- Intellectual property advice relating to contractual agreement of employees, agents and sub-contractors.