Intellectual property in East Midlands

Browne Jacobson LLP

Browne Jacobson LLP supports both national and international heavyweight clients, to obtain 'the best possible position in the market' by offering a full host of contentious and non-contentious services for patents, trademarks, designs, copyrights, licensing, co-branding and collaboration agreements. The 'personable and friendly' team is headed by IP and technology specialist Declan Cushley and trademark specialist Mark Daniels, and has particular expertise in the retail sector. Selina Hinchliffe is noted for being 'extremely capable', particularly in regard to IP matters in a transactional context. Paula Dumbill gives 'easy to follow explanations' on IP protection and exploitation strategies.

Practice head(s):

Declan Cushley; Mark Daniels

Other key lawyers:

Selina Hinchliffe; Paula Dumbill

Testimonials

‘Client focused, client driven. The Browne Jacobson team do not think twice about going the extra mile to make matters work for the client and to embed their approach and team in the best way possible to make the client’s life easier.’

‘Selina Hinchliffe is driven, insightful and energetic, Selina can always be relied on to get a job done. Extremely capable and exudes confidence, a great addition to any client team.’

‘Paula Dumbill provides instant responses with easy to follow explanations for those without a detailed knowledge of the rules and acronyms in this sector.’

‘Pragmatic, professional, responsive.’

‘IBrowne Jacobson’s approach to working in partnership and as an extension of the in-house team is their USP. I’ve seen other firms attempt this, but ultimately fail. They are always prepared to work flexibly and hand-in-glove with the in house team and will say ‘yes’ to novel and challenging proposals or ideas. They truly add value and offer more than just the role of a panel lawyer.’

‘The individuals at the firm all have the same DNA running through them of flexibility, openness and support. Selina Hinchliffe is our client partner and I can’t fault her support to us. We are open and frank with each other and she truly tries to understand what we need.’

‘We always appear to get sensible advice whenever it is requested and the staff are always friendly and approachable and mindful of the costs we are incurring.’

‘The staff are approachable and give good advice.’

‘Personable and friendly. Interested in me as a person, not just my role.’

Key clients

Loughborough University

Albumedix

Bollin Group

GKN Aerospace

King’s College London

Aston Martin Lagonda

Prominent (Europe) Limited

Dark Horses Technologies

Greenwood Academies Trust

Brunel University London

University of Hertfordshire

Games Workshop

PAMIA Limited – Thomas Miller

Mace Group

PZ Cussons

A-Ward Attachments

Goodyear Dunlop

Lotus Cars

Marston’s PLC

DPD

Bestseller A/S

Work highlights

  • Advised and negotiated a licensing deal with a major US pharma company, which involved significant know-how and chemistry related to the storing and preservation of DNA samples for saliva samples (particularly relevant to Covid-19 testing).
  • Detailed analysis of IP contained in software products developed by an in-house IT team, followed by advice on various exploitation routes for the trust to commercialise its IP assets.
  • Advised Loughborough University on the future exploitation of key know-how and IP linked to elite level sports nutrition and fitness through a unique software platform.

Howes Percival LLP

Howes Percival LLP's intellectual property practice acts for a broad range of clients, many of whom are from the clothing, IT and food and drink sectors - a particular area of specialism of practice head Matthew Talbot. The team is commended for being 'very approachable and friendly' while offering an 'efficient service' on all things relating to IP, including trademark portfolio management, registrations, applications as well as representation in disputes. Hannah Steggles is noted for her expertise in patent, trade mark and design right litigation. Jenna Bruce 'gives good solid commercial advice' on matters pertaining to software licenses and brand enforcement.

Practice head(s):

Matthew Talbot

Other key lawyers:

Jenna Bruce; Hannah Steggles

Testimonials

‘Expert and highly personable, combining excellent legal and commercial insight with real personality and warmth.’

‘Extremely easy to get along with, with practical and helpful advice at every stage of litigation. Always a pleasure to pick up the phone to any of the team. My principal contacts are Matthew Talbot, Hannah Steggles and Jenna Bruce, all of whom I enjoy working with.’

‘Everyone at Howes Percival has the same proactive approach – regardless of the department. Communication is totally on point, they tell you they are going to do something and its done and on the odd occasion its not possible, they update you.’

‘Their approach to business, the way they engage with you makes it easy to work with them. Their knowledge, willingness to share, and analysis are fantastic and support us in making the best-informed decision. The fact that we could do all our business online with them has been truly remarkable, and they are swift to respond to our queries and making themselves available for a call or an online meeting.’

‘Matthew Talbot and Jenna Bruce’s ability to see the larger picture and then drill down into the detail, keeping all the puzzle pieces together, is the reason we are partnering with Howes Percival. People buy from people, and they have done a remarkable job to understand our needs, business and vision. We look forward to a longstanding partnership. With them having our backs, I know that we can reach our goals and objectives even in these uncertain times.’

‘Very approachable and friendly team. Clear advice and good transparency on fees. Efficient service and quick to respond. ’

‘Jenna Bruce gives good solid commercial advice in a timely and efficient manner pulling from other members of the firm when needed but remains in control to make sure everything gets done properly and in the timescales required. Excellent service.’

Key clients

Business Software Alliance, Inc. (“BSA”)

Coventry University

De Montfort University

Start-rite Shoes Limited

FibreFab Limited

Prokon Software Limited

Just Hype Limited

Toatee Limited

Shoe Zone Retail Limited

Robovision Limited

APT Training & Consultancy Ltd

Craft Buddy Limited

Memorial Walls Ltd

Imperial International Ltd

The National Forest Company

Autodesk Ltd

National Business Register

Internetwork Media Ltd

Samworth Brothers Ltd

Evolve IT Consulting Ltd

E-Bate Limited

Viridian International Limited

Work highlights

  • Sole UK representatives in the UK on behalf of the BSA whose members include Microsoft, Siemens, Autodesk and many other software companies and advising generally on infringement actions.
  • Acted in various contentious and non-contentious matters including cross border infringement actions, licensing and international trade mark portfolio management for Just Hype Limited.
  • Advised the South African engineering software company Prokon Software Limited on its IP strategy in the UK and Europe including obtaining trade mark protection and protection measures generally.

Potter Clarkson LLP

Clients of Potter Clarkson LLP praise the firm's 'exceptional patent prosecution work' and 'very proactive, commercial approach'. Matters involve a variety of trademark, patent and copyright disputes and the team, which has particular expertise in the automotive and pharmaceutical sectors, offers support on non-contentious issues, such as portfolio optimisation and complex intellectual property transactions. The firm sports an independent IP consultancy division to support clients with tailored IP advice. Steve Smith, Richard Bassett, Charlotte Crowhurst, Sanjay Kapur, Caroline Marshall, Nick McDonald and Stephanie Pilkington head the department. Mark Snelgrove, Richard Roberts and Oliver Laing are also key contacts.

Practice head(s):

Steve Smith; Richard Bassett; Charlotte Crowhurst; Sanjay Kapur; Caroline Marshall; Nick McDonald; Stephanie Pilkington

Other key lawyers:

Mark Snelgrove; Oliver Laing; Richard Roberts

Testimonials

‘Exceptional patent prosecution work.’

‘We use a small but very good team to assist us with IP infringement matters. The team has a very proactive, commercial approach and I trust them to provide sound, pragmatic advice.’

‘A key strength of Potter Clarkson is their combination of expert attorneys with solicitors, which gives comprehensive advice on highly technical matters using patent attorney expertise and solicitor know-how, as well as commercial and branding matters with trade mark attorneys and solicitors working together.’

‘Potter Clarkson have a strong European presence, which means our interests were well represented in Europe post Brexit. They also have a good knowledge of the US market, which has been useful for us as we explore international expansion.’

‘They are an innovative firm, having developed and launched innovative platforms for portfolio management and brand protection with have international reach.’

‘Individuals at Potter Clarkson take the time to understand your business and ask intelligent questions; on each issue they offered me a range of options with implications to consider and a lot of clarity around each of these.’

‘They are also highly responsive, which for an agile start-up, is extremely important: they can adapt their pace to mine when needed.’

Key clients

Astellas Pharma Inc.

AstraZeneca

Clippasafe Limited

General Hotel Management Limited

Ineos Industries Holdings Limited

Kymab Limited

Novo Nordisk A/S

Work highlights

  • Judgment obtained for Astellas Pharma Inc. in the High Court, and case continued to Appeal, as part of a global dispute relating to an innovative anaemia drug.
  • Successfully represented Ineos in defence of High Court Appeal.
  • Successful defence of a European patent for Novo Nordisk against six EPO oppositions; and defence of a related European patent against multiple oppositions.

Shakespeare Martineau LLP

Shakespeare Martineau LLP acts for clients from a wide variety of sectors, with particular experience in life sciences, manufacturing, engineering, education, retail as well as media and broadcasting, advising on all types of IP related issues. The practice is jointly headed by 'highly efficient partners' Ed Wright and Martin Noble and is noted for being 'very collaborative and quick to respond'. Noble specialises in online infringements, including domain names disputes and on social media sites. Wright focuses on advisory work, such as creation, protection, ownership and exploitation of intellectual property, particularly for the healthcare, biotechnology and life sciences industries.

Practice head(s):

Ed Wright; Martin Noble

Testimonials

‘This firm is highly specialised trademark and patent solicitors with great connections with competent international partners.’

‘They dealt with a dispute for us and we had a very satisfactory outcome. They were recommended by another highly skilled solicitor UK practice due to the level of specialism they could offer. Would I use them again? Yes of course; first choice for complex trademark/copyright disputes.’

‘A small team but highly efficient partners.’

‘Very collaborative and quick to respond.’

‘Martin Noble – very much at the top of his game. Gives sound advice.’

‘I have worked with Martin Noble on an IP matter for over a year. He is very organised and very easy to work with.’

Key clients

Emma Bridgewater

Cenex

Cambridge Weight Plan

JDS Foods Limited

Midland Caliper Centre Limited

Moviebox Megastores (International) Limited

Oriental Star Agencies Limited

Willsow

Source Bioscience

TSJP t/a Nativve

Replay Maintenance

PRQR

University of Nottingham

Spirit Health Group

BPR Medical

Future Health Technologies

Purpose Media

Quensus

Recresco

Creative62

Work highlights

  • Advised on cobranded rollout of the University of Nottingham’s Ingenuity Programme to use with other UK universities, to enable them to create a regional Ingenuity Programme under the Ingenuity name.
  • Advised Moviebox on several successful injunction cases involving disputes over the removal of copyright takedown notices issued through YouTube.
  • Advised a university on a £15m plant variety licensing deal reached with seed specialist.

Eversheds Sutherland (International) LLP

The specialist intellectual property practice at Eversheds Sutherland (International) LLP advises on all contentious issues, including patent infringement claims, as well as trademark, domain name and copyright related disputes and co-existence agreements. Further, the team offers a full array of non-contentious services, advising on portfolio management, performing risk assessments and audits as well as supporting on the IP aspects of corporate transactions. Rupert Bent leads the practice, is an experienced litigator with an impressive track record of High Court litigation and also advises on branding, licensing and research and development agreements.

Practice head(s):

Rupert Bent

Key clients

National Grid PLC

University of Westminster

Tombola Limited

Manchester International Festival

Halewood International Limited

Genting Casinos UK Limited

Work highlights

  • Undertook significant contractual work relating to the research and development activities of National Grid in the UK. Contracts concerned technology in the sector, such as innovative hydrogen projects. The work involved drafting and negotiating collaborative agreements often with many counter-parties.
  • Provided advice in relation to the University of Westminster’s IP policy, employment contracts and lecture capture policy to ensure that all documents worked together to achieve the University’s overall IP strategy.
  • Advised Halewood International Limited in relation to a number of IP disputes. One of these issues has involved allegations of passing off from the producers of the BBC TV series ‘Peaky Blinders’ in relation to Halewood’s ‘Peaky Blinder’ products (including beers and spirits) which is a brand of Sadler’s Brewery (owned by Halewood).

Gateley Plc

The intellectual property team at Gateley Plc advises on all manner of issues, including trademark registries, applications, comparative advertising and online takedowns as well as various disputes relating to copyrights, designs and passing offs. The department is 'a pleasure to work with' and acts for clients ranging from start-ups to listed companies and has a specialism in the media and entertainment industry. Practice head John Buckby has a background in the music industry and assists clients from the industry to commercialise and protect their IP rights.

Practice head(s):

John Buckby

Testimonials

‘Gateley are a forward thinking legal practice. They are innovative in their range and network of support activities for our students and graduate businesses – they really understand the needs of this demographic. They are a pleasure to work with and add real value to our community.’

‘John Buckby has supported our community of start-up businesses in a number of ways including one to ones, workshops and webinars. He has always been on hand to offer support and advice. He recently did an IP audit for one of our start ups via the Innovation Enabler – we all agreed it was the best IP audit report we had ever seen – a really in depth and valuable piece of work.’

Key clients

MYBA

AeroCloud Systems Ltd

Leicester Tigers

AF Global Brands / Al Fakher

Katapult Limited

NFPS Limited

Global International Trading Limited

The Institution of Occupational Safety & Health

Confederation of Professional Golf

DSL Group

Gunnebo UK Limited

Fakro Group

Work highlights

  • Acted for Total Motion Limited (“TML”) in an appeal of a trade mark opposition and cancellation before the Appointed Person. Not only defeated the opposition against the client’s application, but also successfully invalidated the opponent’s core trade marks for ‘AFFINITY’ and ‘AFFINITY LEASING’. The opponent appealed this decision. The appeal was decided in our client’s favour. The invalidation of both of the opponent’s marks was upheld, leading to the terms ‘Affinity’ and ‘Affinity Leasing’ being free for use by others in the market.
  • Advised Gymshark on the IP aspects of its high-profile investment by General Atlantic, which valued the business at over £1bn. The deal took many months to complete, and trade marks and IP rights were central to the value of the business and the negotiations with General Atlantic.
  • Advised Chaaye Khana, a well-known café chain in Pakistan, on trade mark clearance searches in the UK, and the protection of their copyright and trade mark assets. Advised Chaaye Khana on an effective trade mark filing strategy to navigate the protection of their brands in face of numerous potential opponents in the UK. Following negotiation with potential opponents, the work resulted in the successful protection of the Chaaye Khana brand in the UK.

Geldards LLP

Geldards LLP's practice acts on various IP related matters, such as licensing agreements, quasi-franchising and partnership arrangements, and has particular experience in trademark related work, including advising on applications, potential infringement risks, commercialisation and transfers of trademarks out of insolvency. Practice head Jamie Goldberg has a specialism in the sport, media and entertainment sector and regularly acts for individuals on matters such as endorsement deals, image rights, sponsorship arrangements and licensing agreements.

Practice head(s):

Jamie Goldberg

Key clients

Arctic Cabins Limited

AXS Europe Limited

Chartered Institute of Procurement and Supply

Commify UK Limited

Derby County Football Club

Elite KL Limited

Formidable Media Limited

Genius Performance Limited

Halo X-Ray Technologies Limited

Heart Church

Paul Cummins Ceramics Limited

Physiolab Technologies Limited

Realsense Solutions Limited

Right Legal Group Limited

Sevco 5112 Limited

XCAM

Work highlights

  • Advised Formidable Media limited on all of its commercial agreements including media planning and buying agreements (and similar) with Amazon, Verizon Media, Betbull and Allison & Partners LLC as well as various clip licences, social media ambassador agreements and player appearance agreements.
  • Advised Rogue Ignite Limited on its role to provide digital marketing and business transformation services for The Arcadia Group (pre-administration) and then for the Administrator of The Arcadia Group.
  • Advised Radar Advisors Limited, a tax consultancy specialising in making R&D tax rebate claims on behalf of sports clubs, in relation to its appointments by a Championship football club and two Premiership rugby clubs.

Nelsons Solicitors Limited

Nelsons Solicitors Limited is said to offer 'the best service in term of quality, timing and customer services' when advising on intellectual property matters pertaining to trademarks, including international registrations and series applications, patents, designs and licenses. Emma Ward heads the contentious offering of the firm, dealing with, among others, breaches of confidence and associated issues pertaining to post termination restrictions, and is lauded for her 'proactive and hands-on approach'. Harpreet Sandhu heads the non-contentious offering advising on the ownership, exploitation and protection of intellectual property and has particular expertise in product and software development matters.

Practice head(s):

Emma Ward; Harpreet Sandhu

Testimonials

‘They were easily able to handle communication with whatever media we suggested and were well equiped for a situation with COVID-19 as we are experiencing it.’

‘Emma Ward excelled when it came to showing all different possibilities we were facing. She is very creative in what laws we could use in our favour.’

‘The team is very flexible and dedicated in what they are doing. They provide the best service in term of quality, timing and customer services.’

‘Emma Ward is extremely hardworking and ambitious. Her efficiency and thoroughness means she will never let anyone down and is a true asset to any company and team. She is not only very clever and determined, but she is also friendly and caring towards others. She is detail-oriented and would always complete her tasks with diligence. We are very happy with the services we are receiving.’

‘Although we primarily deal with one person, it is evident that there is a support team should we need additional assistance, especially in other matters/specialities. The billing system is very good and they understand the needs of our business and the importance of accurate and fair billing.’

‘The person we deal with is very professional whilst at the same time a real person that has a great personality and a great deal of empathy.’

‘Emma Ward leads the IP team of the law firm. Her proactive and hands-on approach is really an added value. She provide very good technical advice, but is always thinking about the bigger picture and is very pragmatic.’