Intellectual property in Ireland
At A&L Goodbody, practice head John Whelan is particularly adept at handling patent matters, and acted for clients operating in the pharmaceutical and healthcare sectors, including defending Boston Scientific in a patent infringement case pertaining to transcatheter heart valves. The team also advised on a number of trade mark matters, with John Cahir and Claire Morrissey assisting Heineken with trade mark protection.
Regarded as ‘go-to IP lawyers’, the members of Mason Hayes & Curran’s team are ‘knowledgeable, responsive and commercial’. The team is well versed in dealing with contentious matters, especially in the trade mark and patent areas, with new head of IP Gerard Kelly defending Harmony Timber in patent infringement proceedings concerning the construction of a timber frame wall panel product. New partner Brian McElligott, who joined from William Fry in July 2018, strengthens the firm’s non-contentious IP side.
Matheson is considered ‘a great co-counsel for US firms to use for their Irish law and EU law trade mark and privacy matters’. Besides being ‘pragmatic and constructive when dealing with opposing counsel’, ‘terrific’ practice head Deirdre Kilroy not only ‘knows a lot about local trade mark law and practice’, but is also ‘extremely knowledgeable about GDPR’. Litigator Michael Finn is another name to note.
McCann FitzGerald is known for its strong patent and trade mark litigation and its ‘dedicated partners’, who are ‘capable of clear analysis, innovative thinking and reliable representation’. Practice head Fiona O’Beirne, ‘a practitioner of vast experience with extensive specialist knowledge in this area’, is acting for Gilead Sciences in three ongoing cases regarding its supplementary protection certificates for HIV medicine Truvada. Paul Lavery handles non-contentious matters, including advising on licensing provisions. Adam Finlay is noted for his ‘wealth of experience across the areas of intellectual property, technology and data-related issues’.
Whitney Moore has established a reputation as one of the leading firms in the market for intellectual property. It has a very substantial patent litigation practice, and has 'a strong track record' acting for major players in the medical device and pharmaceutical industry; clients include Edwards Lifesciences, F Hoffmann-La Roche and Genentech. Practice head Aoife Murphy, whose 'deep understanding of the law' is complemented by her 'knowledge about the courts' inner workings', is representing plaintiff Merck, Sharp & Dohme in patent infringement and injunctive proceedings relating to the client's supplementary protection certificate for a combination drug used in cholesterol treatment. Robin Hayes’ recent highlights include acting in a number of trade mark infringement cases for the Shamrock Gift Company. Murphy and Hayes are 'both personable, easy to work with, practical and very helpful'.
William Fry covers the whole range of IP work, which is evidenced by Carol Plunkett defending a company in the travel industry in trade mark, copyright and passing-off claims. Adept at handling large-scale trade mark and patent litigation with a focus on the pharmaceutical, biotech and medical device areas, Laura Scott is representing a renowned pharmaceutical company in patent revocation proceedings in the Commercial Court. The firm also has a dedicated trade mark and design registration and portfolio management practice. Further team members include Leo Moore and senior associates Charleen O’Keeffe and Colette Brady.
Relatively new IP boutique Acuatus offers ‘great experience and in-depth knowledge about IP issues’ in contentious and non-contentious matters. The ‘very reliable’ Alistair Payne is valued for his ‘very good strategic view, especially in litigation’, where his recent caseload included defending Mylan in patent proceedings concerning the validity of Gilead Sciences’ supplementary protection certificate for its HIV drug Truvada, and acting for plaintiff Home Store and More in trade mark infringement and passing-off proceedings. The firm also provides brand protection and trade mark portfolio management services, including filing and prosecution.
Arthur Cox has a busy IP litigation practice, with experienced litigator Gavin Woods defending Coolmore Stud in a copyright infringement case to prevent the sale of a book by a former employee, while Isabel Foley is defending Dunnes Stores in an alleged trade mark infringement action against Aldi relating to comparative advertising. Newly promoted partner Olivia Mullooly and practice head Rob Corbet are active in the non-contentious space, with Corbet advising Trinity College Dublin on a number of copyright and trade mark cases relating to photographic and image rights.
Bringing a ‘personalised involvement to every case that it works on’, Byrne Wallace has put together ‘an excellent, practical and pragmatic team that focuses on solving problems’. In the contentious realm, litigator Jon Legorburu was successful for LUK Pan European in thwarting threatened injunction proceedings due to alleged trade mark infringement. Department head Darren Daly advised Codec on copyright and trade mark issues pertaining to brand redesign and brand protection. Brendan Gavin made partner.
DFMG Solicitors handles a wide variety of IP matters for a number of major players. On the contentious front, Patricia McGovern is representing plaintiff Uhlmann Pac-Systeme in patent infringement proceedings, as well as acting for BMW in a High Court trade mark infringement and passing-off case. In the non-contentious area, the firm handles IP portfolios for the likes of Gilead Sciences and Philip Morris.
Taking a partner-led approach when it comes to IP matters, Beauchamps’ Maureen Daly is representing international clothing company BiBA in trade mark infringement proceedings against House of Fraser. Other reputable instructions included acting for Volkswagen in an IP dispute which was resolved without having to commence proceedings, and advising My Pillow on brand protection.
Eugene F. Collins advises clients across a range of industries, including the agri-food, pharmaceutical and life sciences sectors as well as retail and telecoms. While department head David Hackett is representing British Sky Broadcasting in copyright enforcement proceedings relating to its sports broadcasts, his practice focuses more on the non-contentious side, where he advises clients like Johnson & Johnson and Juice+ Plus on their trade mark portfolios.
Eversheds Sutherland’s wide-ranging offering includes work on patents, trade marks, designs, copyright and domain names in the contentious and non-contentious sphere across the food and beverage, manufacturing, media, retail and technology industries. Practice head Marie McGinley has been particularly active in the non-contentious field, advising Wärtsilä on the IP aspects of its acquisition of Transas, and also assisting a number of clients with licensing agreements relating to trade marks, patents and copyrights.
The IP team at Hayes Solicitors is very active on the advisory side, particularly in the advertising sector, where Laura Fannin is advising various advertising agencies on the potential infringement of proposed advertisements and other marketing activities for well-known brands. Practice head David Phelan, who is also a registered trade mark agent, advises Primark on copyright, design and trade mark matters. Jeremy Erwin was promoted to partner in May 2018.
LK Shields Solicitors is a ‘good, solid mid-sized firm that knows its way around IP law’, and its lawyers have ‘a real passion for their work’. Ciaran Markey handles IP litigation, which encompasses patent, trade mark and copyright litigation, and acts for Mars. In addition to being involved in trade mark portfolio management work, department head Peter Bolger advises clients on the IP aspects of various transactions, including licensing and distribution agreements. Jeanne Kelly has expertise in trade secrets.
Ronan Daly Jermyn has a ‘knowledgeable, accessible and flexible’ IP team, which advises a number of third-level education institutions on collaboration agreements with private sector players. JP Gilmartin and ‘solution-focused’, ‘easy to work with’ practice head Diarmaid Gavin advised private sector clients on IP licence agreements. Darryl Broderick handles IP litigation, acting in trade mark, copyright and passing-off claims.