Brand management in London
Allen & Overy LLP is best known for its strong reputation in brand litigation and counts international household brands such as Coca-Cola, 20th Century Fox and McDonald's among its recent clients. David Stone spearheads the practice and is 'one of the best experts in EU design law'. Nigel Parker and Jim Ford's practice straddles the interface of non-contentious IP and commercial matters, where they advise on brand acquisition, licensing and joint ventures. Neville Cordell is another experienced litigator. Karla Hughes, who joined in March 2019 from Hogan Lovells (Alicante) SL & Cia, leads the portfolio management and trade mark prosecution practice for the Belfast office.
Other key lawyers:
‘Allen & Overy are very responsive and open to discussing strategies. Good awareness and knowledge of worldwide filing strategies and requirements.’
The Coca-Cola Company
20th Century Fox
- Advised 21st Century Fox on the laws and regulations relating to IP, consumer issues, advertising and prizes for a promotional website relating to the Bohemian Rhapsody film.
- Advising Marks and Spencer Group plc on its 50/50 joint venture with Ocado Group. Under the terms of the transaction, M&S will acquire a 50% stake in an existing Ocado entity and, from completion, operate Ocado’s UK retail business.
- Advised News UK on the Ozone Project, a joint venture with Guardian News Media, Reach plc, and Telegraph Media Group, creating a new digital marketing platform to sell online advertising in the publishers’ UK titles.
- Acted for 21st Century Fox on various trade mark disputes including in relation to “Duff Beer”, the fictional beer drunk by Homer Simpson; “Dan the Weatherman”; “The Mick”; and multiple disputes relating to the mark “Avatar”, in light of James Cameron’s forthcoming series of sequels to the 2009 film.
- Provided the Coca-Cola Company with trade mark advice in relation to a number of the brand’s key advertising campaigns, including the launch of the new Diet Coke packaging, branding and four-flavour range, which used the slogan “Because I can”, and the use of “Be the 12th”, Coca-Cola’s promotion with the Premier League.
The brand management practice at Bird & Bird LLP is best known for its strong capabilities and 'superb reputation' in trade marks, patents, copyright and designs. The six-partner team offers multi-jurisdictional advice in relation to trade mark protection, enforcement, strategic portfolio management, advertising and the commercialisation of IP rights. Head of media, entertainment and sport Phil Sherrell has significant expertise in reputation management, media law and contentious IP, often being instructed by well-recognised brand owners in the music, publishing and advertising industries. Trade mark attorneys Mark Holah and Allan Poulter focus on non-contentious and contentious brand protection issues, while Felicity Reeve is a name to note for commercial partnership and sponsorship, particularly in the sports sector. Peter Brownlow is 'one of the best IP litigators in London'.
Peter Brownlow; Phil Sherrell
Other key lawyers:
‘Incredibly diligent. Have an unparalleled knowledge of the sports industry in relation to brand management.’
- Advised Arsenal FC on the appointment of its new technical partner and kit manufacturer, Adidas, for the 2019/20 season onwards.
- Advising on the International Paralympic Committee’s trade mark and design portfolio, which recently included working with the Australian office to successfully overturn a refusal to register the mark “Para”.
- Advised Orlen, a large Polish petrochemical company, on its sponsorship agreement with the Williams Martini Racing Formula 1 team to coincide with the return of Polish driver Robert Kubica to the team.
- Represented SC Johnson in a breach of contract claim against a successor company to Sara Lee’s global shoe care business, for failing to transfer trade marks for “Kiwi” in the Middle East under a sale and purchase agreement.
Bristows LLP has 'a tremendous amount of knowledge and expertise' in trade mark and design portfolio management, advertising and marketing, sponsorship arrangements and other commercial ventures. The practice has a niche speciality working with major advertising and publishing houses such as the WPP Group, the Financial Times and Guardian News and Media. On the advertising side, Paul Jordan is experienced in multi-platform advertising clearance, regulatory matters, advising on influencer and promotion agreements and defending against Advertising Standards Authority (ASA) complaints, such as defending Gtech in a high-profile comparative advertising complaint brought by Dyson. Trade mark attorney Ian Gruselle is a soft IP specialist and leads the management of worldwide and European trade mark (EUTM) portfolios. Design expert Simon Clark focuses on copyright and design rights, database rights, trade marks, passing off and domain names. Also of note are Paul Walsh, 'an excellent all-round brands expert'; Jeremy Blum, who leads on the contentious IP side; and associate Andy Butcher.
Simon Clark; Ian Gruselle; Paul Jordan
Guardian News and Media
British American Tobacco
- Acting for Gtech in defending a trade mark infringement claim brought by Dyson, in the context of comparative advertising.
- Managing the worldwide trade mark portfolio of the Financial Times, conducting clearance searches for new brands, filing applications to expand the protection of the iconic “FT” and “Financial Times” brands around the world, and assisting in the protection of new brands and products.
- Assisting British American Tobacco’s campaign clearance and defending the client against ASA complaints, such as those in connection with e-cigarette brand Vype.
DLA Piper's wide-ranging expertise in brand management spans trade mark protection and enforcement, and commercial exploitation of IP rights through advertising and licensing. Sponsorship, media and sports comprise a particular area of strength where the team are 'industry renowned' for acting in high-profile campaigns, such as advising Unilever on football sponsorship arrangements with Chelsea FC, Manchester City FC, La Liga and the South American federation CONMEBOL. Noted partners in the sizeable team include Nick Fitzpatrick for exploitation of media rights across all platforms and sponsorship; John Wilks for advertising regulatory work; Duncan Calow for adtech, licensing and commercial matters in publishing, music and television; and Patrick Mitchell for sponsorship arrangements. Associate Désirée Fields is recommended for trade mark and design portfolio management. Ruth Hoy chairs the practice.
‘Everyone from partner level to associates at DLA Piper is truly fantastic; a dedicated team of experienced lawyers who are able to seamlessly coordinate international work and provide outstanding results‘
FA Premier League
- Advising Nike on a complex trade mark and passing off dispute with Frank Industries in relation to Nike’s multimillion-pound “Nothing Beats a Londoner” advertising campaign.
- Advising Bajaj Auto, the India-based motorbike manufacturer, in relation to its partnership with Triumph motorcycles, which will see Bajaj and Triumph collaborate at various levels on the manufacturing and distribution of Triumph-branded motorbikes.
- Assisting the Premier League with the creation, launch and operation of its inaugural eSports league (the ePL), including arrangements with an event promoter, game publisher (EA Sports) and media rights partner.
- Advising Emirates and companies in the Emirates Group on a number of matters relating to protecting the Emirates brand (including use of the brand by third parties on unauthorised websites and domain names) and representing the Emirates Group in litigation.
- Advising Rakuten on a global endorsement deal with Spanish professional footballer Andrés Iniesta.
Fieldfisher's integrated IP and advertising, marketing and sponsorship group provides a one-stop shop for brand owners, and is increasingly sought after by international and US-based advertisers, promotions agencies and legal counsels to advise on international advertising campaigns. David Bond leads the advertising team; his experience covers advising on media buying contracts, claims substantiation and defending against complaints with the ASA and Ofcom. Leighton Cassidy's practice spans soft IP, filing and prosecution, trade mark licensing, and IP rights exploitation. Nick Rose, Hastings Guise and Sonal Patel Oliva are the other figures to note for contentious IP and promotional activity.
David Bond; Leighton Cassidy
Align Technology (Invisalign)
Guthy-Renker/Nestlé Skin Care (proactiv +)
- Advising Hasbro on website content, advertising to children, various marketing activities, e-commerce and GDPR compliance, and the terms of its template agency contracts for creative services and media buying.
- Advising eBay in relation to online promotions; its media buying contract; key adtech contracts; and a proposed listings distribution agreement with US-based company adMarketplace for the UK, French and German ‘my eBay’ websites.
- Advising longstanding client Align Technology (trading as Invisalign) on advertising and marketing matters across the EMEA, Asia and Australasia regions.
- Continuing to advise EY on its global IP strategy and substantial IP portfolio, enforcement and the recovery of domain names.
- Advised Sport England in relation to the high-profile ‘This Girl Can’ campaign.
Lewis Silkin LLP is lauded for its 'excellent commercial and practical advice' and 'outstanding reputation in advertising and marketing', which saw the team work alongside Abbott Mead Vickers BBDO in negotiations for Elton John to appear in the John Lewis Christmas advert. Brinsley Dresden is regularly instructed by leading brands and advertising agencies to advise on all aspects of advertising law and regulation. Giles Crown has a niche specialisation in comparative advertising issues and is particularly active on the contentious side. Jo Farmer is described as 'one of the most knowledgeable lawyers in advertising' and is often the 'go-to' adviser for media agencies and tech platforms in relation to social media campaigns and media buying. Dominic Farnsworth and Geraint Lloyd-Taylor (who was promoted to partner in April 2019) are also of note.
Brinsley Dresden; Giles Crown; Dominic Farnsworth
‘Lewis Silkin remains a market leader for its in-depth knowledge of the advertising industry, not only in terms of the technical legal theory informing their decisions, but equally importantly their practical interpretation and real-world application of the law, allowing agencies to achieve the best creative possible.‘
‘Lewis Silkin has a marvelously strong, deep and knowledgeable adlaw team that is always extremely responsive to client needs and not only legally savvy but also business savvy.‘
‘Lewis Silken are real experts, with a real breadth and depth of experience. Hands down the best firm in London for TMT. ‘
‘Brinsley Dresden and Geraint Lloyd-Taylor provide excellent, practical and pragmatic legal advice across a wide range of TMT issues, all while understanding the realities of tight deadlines and being excellent communicators. ‘
‘Giles Crown is an excellent all-round adviser who is a true IP expert whilst offering commercial and pragmatic advice for clients.’
‘Jo Farmer is prompt, efficient and extremely client-friendly. She takes time to understand the client’s business needs and explain things in a simple and approachable manner.’
Abbott Mead Vickers BBDO
Wieden & Kennedy
- Working with Abbott Mead Vickers BBDO on a major campaign for their sanitary products brand, Essity, which involved challenging the regulatory authorities’ unwillingness to permit the showing of menstrual blood in ads for sanitary protection products.
- Advised Abbott Mead Vickers BBDO on the advertising and marketing clearance for Visa’s Fifa World Cup campaign, featuring high-profile football player Zlatan Ibrahimović.
- Assisted the Incorporated Society of British Advertisers with drafting a new version of the UK’s first-ever industry standard template contract for use when brands are engaging with influencers for their marketing campaigns.
- Worked with Adam & Eve, John Lewis’ creative agency, on the drafting and negotiation of the talent agreement for Elton John to appear in the John Lewis Christmas advert, including advice related to the music licensing.
- Advised on all aspects of News UK’s new quiz app, Q Live, including software agreements, talent agreements, regulatory issues (related to broadcast and advertising) and game rules.
Mishcon de Reya LLP fields 'a strong team of experienced IP and brands specialists' who assist leading international clients such as Sky, eBay and Ralph Lauren with the full range of IP-related matters, from trade mark and design protection, enforcement and portfolio management to advertising clearance and commercialisation through franchising and licensing. The firm has a strong reputation for acting in high-profile trade mark protection and enforcement matters, demonstrated by its continued representation of Iceland Foods in invalidity applications filed against the client's EUTM by the Icelandic government, and of Sky plc on trade mark enforcement. The practice is led by Jeremy Hertzog, a specialist in IP protection and enforcement, with Sally Britton heading the brands team; David Rose, Ray Black and associate Cassandra Hill are also of note.
Other key lawyers:
- Advising international dating-focused social networking sites Badoo, Bumble, Chappy and Lumen on their worldwide trade mark portfolios.
- Advising Tesco on its international franchise arrangements for its F&F clothing and accessories range.
- Advising Ralph Lauren on its UK and EU trade mark portfolio.
- Advising Castore Sportswear on its major endorsement and partnership agreements with Andy Murray and his brand management company, 77 Management.
RPC is described as 'the pre-eminent practice' for advertising and brand management work, and is regularly sought after by well-known consumer brands and social media platforms such as Google and Instagram to assist on international campaigns and launches. The practice is spearheaded by Oliver Bray, 'one of the best known figures in the advertising space', with Ciara Cullan and Jeremy Drew advising on contentious and non-contentious IP matters, and recently promoted partner Nicola Cain advising on media regulatory issues.
‘The depth in the team is very impressive: they are able to provide quality advisers from trainee through to partner level. ‘
‘Oliver Bray is simply amazing – the best in this field‘
Shiseido Group (Dolce &Gabbana and bareMinerals)
Google and YouTube
Coca-Cola European Partners
- Continuing to advise Facebook on high-profile ad campaigns, such as the “Here Together” campaign featuring across all media, as well as advising on challenging regulatory decisions; collaborations with advertising agencies and clients to develop social media-focused advertising across the Facebook and Instagram platforms; engaging influencers; and sports streaming.
- Advising brands within the Pernod Ricard Group on major endorsement deals, including assisting with global partnership and sponsorship arrangements with Chivas and Manchester United Football Club, and advising GH Mumm on its highly publicised digital campaign to launch the first champagne which could be drunk in space, featuring Usain Bolt racing in zero gravity.
- Advising Ovo Energy on a high-profile campaign featuring images of Donald Trump lookalikes attacking green energy schemes.
- Advising Pizza Express on national marketing campaigns and commercial partnerships, including long-term arrangements with TasteCard and Compare the Market.com.
Taylor Wessing LLP's team continues to be at the forefront of the brand management sector, with 'top-tier expertise' in trade marks, advertising, designs, technology and the commercialisation of IP rights. The 'outstanding' team includes France Delord, who focuses on th management of large international trade mark portfolios; 'all-round IP specialist' Charles Lloyd; and head of brands Roland Mallinson, who handles contentious and transactional IP matters. Adam Rendle, who made partner in May 2019, specialises in parallel trade mark litigation and in commercialisation through advertising, sponsorship and endorsements. Others to note are practice co-head Mark Owen, Jason Rawkins and 'talented associate' Simon Jupp.
Roland Mallinson; Mark Owen
‘Mark Owen is pragmatic, to the point and insightful. He’s also consistently very responsive. Really strong on solving legal problems for technology businesses.’
Hard Rock International
- Managing the global trade marks portfolio of Orange, including, most recently, advising in relation to a trade mark infringement action relating to the adoption and use of the mark “Human Inside” and the issue it created with the mark “Intel Inside”, owned by Intel.
- Managing the international trade mark portfolio of the Omnicom Group, one of the world’s largest advertising agencies.
- Acting for recording artist Dame Vera Lynn on her opposition to a trade mark application for “Vera Lynn” for gin by Halewood Brands.
- Continuing to advise Micro Scooters on the protection of its design and branding, and successfully securing a rare 3D shape trade mark for the shape of the client’s Mini Micro scooter.
Baker McKenzie has notable strengths in trade mark portfolio management and enforcement, and is often sought after by recognised international brands in the consumer goods, media, retail, technology and financial services sectors; L'Oreal, Google and Hitachi are among its recent clients. Jessica Le Gros heads the trade mark registration and disputes team, where she is supported by Ben Allgrove, Michael Hart and Paul Rawlinson, who advise on the full range of contentious and non-contentious IP matters, including trade secrets and copyright. Michelle Blunt focuses on commercial transactions in IP.
Jessica Le Gros; Michelle Blunt
‘Baker McKenzie are efficient and on the ball at all times‘
- Advising a global bank on implementing a global brand strategy for its trade mark portfolio, as well as on domain name disputes, trade mark licensing, music licensing, image rights and sponsorships.
- Advising a major client in the consumer goods sector on trade mark portfolio management, as well as the acquisition of multiple brands, such as the recent €4.6bn acquisition of the health food drinks portfolio of GSK in India, Bangladesh and 20 other predominantly Asian markets
- Assisting a financial services group with global portfolio management, including infringement strategy, branding issues following a merger, and the handling of settlements and disputes.
Charles Russell Speechlys LLP acts for a diverse range of brand owners in the media, sports, retail, and food and drink industries; Nike, wagamama and World Rowing are among its active clients. The arrival of Nick White and his team from Couchmans LLP has significantly bolstered the brand management practice, particularly in the sports and leisure arena, with further expertise in licensing and franchising, e-commerce, broadcasting and marketing. Mary Bagnall leads on the soft IP side and is particularly noted for her extensive experience in the protection and enforcement of trade marks and design rights; she is continuing to act for Cadbury in attempting to trade mark its iconic purple packaging against opposition from Nestle. Kate O'Rouke moved to Mewburn Ellis LLP.
Chocoladefabriken Lindt & Sprüngli AG
- Advised Moore Stephens in respect of its global trade mark portfolio, as well as a global rebrand and restructuring of the entire network.
- Continuing to advise Fitbit on various IP issues, including advertising clearance and compliance matters, dealings with the ASA and prize competitions.
- Advised the International Tennis Federation on its high-profile project with sports investment group Kosmos to revamp the Davis Cup.
CMS has notable strengths in trade marks and advertising, and is particularly active in the adtech and media buying space, as well as advising on ASA complaints. As head of advertising and marketing, Susan Barty handles complaints to regulatory bodies and also advises on disputes with competitors, ambush marketing, sales promotions and other comparative advertising issues. Iain Stansfield is likewise recommended for media buying and advertising arrangements. IP partner Tom Scourfield and associate Alex Dixie are also names to note, while Sarah Wright heads the IP department and divides her time between the London and Warsaw offices. Joel Barry left the practice.
Dentsu Aegis Network
- Advised Shark Ninja/Euro Pro in relation to comparative advertising litigation over misleading advertising
- Advised Microsoft on copyright litigation and trade mark portfolio work.
- Managing the global trade mark portfolio for Thomas Cook.
- Advising a number of companies in the MacAndrews & Forbes group on various trade mark prosecution, infringement and cancellation matters, as well as related issues. Recent instructions include advising Revlon/Elizabeth Arden on infringement matters relating to the “Shellac” and “American Crew” brands in the UK, and on trade mark clearance, filings and oppositions for various new sub-brands.
- Advising Cambridge Weight Plan in relation to its global trade mark portfolio and general IP matters.
Harbottle & Lewis LLP combines trade mark and soft IP expertise with big-ticket advertising and sponsorship work, as well as advising on the regulatory aspects of marketing and promotions, adtech and contentious proceedings before the UK and EU Intellectual Property Offices (IPO). As head of the advertising group, Michael Lister primarily advises on the commercialisation of IP rights, sponsorship and collaborative arrangements, as well as regulatory issues. Andy Millmore is also a name to note for work in the digital media space. On the IP side, Shireen Peermohamed advises on trade mark registration, portfolio management and prosecution, while Sacha Wilson has 'excellent, in-depth knowledge of the advertising and media buying sector'. Senior associate Kostyantyn Lobov is likewise recommended for trade mark enforcement actions and media regulatory work. Jeremy Morton departed to Temple Bright LLP.
Andy Millmore; Michael Lister
‘The team at Harbottle & Lewis have specialist knowledge and practical experience of the transactions, participants and the technologies that underpin the media and advertising industry. They understand and speak the language of the internal clients and counter-parties.’
‘Excellent team with exceptionally good knowledge and experience of this sector; a top value-for-money team‘
‘Harbottle & Lewis are impressive due to the specialisms they have brought in – from talent litigation to trademark creativity.’
‘Sacha Wilson has an extensive knowledge of the sector and the participants in it. He has an excellent team of associates. Transactions happen quickly and efficiently.’
‘Michael Lister is a great lawyer – very humble in his approach to clients but exceptionally assertive when facing adversaries in a calm, collected manner.
‘The efficiency and tone of the associates we have dealt with shows they are very capable, and much more experienced than at other firms.’
The Pokémon Company International
- Advising Vita Coco in relation to various brand ambassador agreements, influencer arrangements and its strategic partnerships.
- Advising Soul Machines, an innovative artificial intelligence technology company, on a series of commercial brand tie-ups, sponsorship arrangements, promotional activities and data issues, including partnerships and brand collaborations with RBS.
- Advised David Beckham on the negotiation of his agreement with new digital sports content platform OTRO.
- Continuing to manage the intellectual property portfolio of Sir Terry Pratchett’s estate.
Osborne Clarke LLP
Osborne Clarke LLP is a recognised name in the field of adtech, advertising and media, where it continues to be active in advising clients on compliance with international regulations in the advertising and media space, as well as assisting with structuring commercial transactions and soft IP. Advertising specialist Nick Johnson has wide-ranging expertise which spans defending clients against ASA complaints and advising on prize promotions, sponsorship arrangements, adtech, comparative advertising and compliance with data protection law. Arty Rajendra leads on contentious IP, and Mark Foreman's practice covers the management of trade mark portfolios as well as the enforcement and exploitation of brands through commercial ventures. Advertising, marketing and sponsorship specialist Anna Williams is also noted.
- Advised Facebook in relation to various trade mark oppositions in the UK trade mark registry and the EUIPO (formerly the OHIM).
- Advised Omnicom Media Group on privacy and regulatory issues in the context of targeting and programmatic advertising.
- Advised Sonos on advertisement and promotional advertisement issues in the UK, Germany, the Netherlands, France and Belgium.
Stobbs IP's unique position as one of the few specialist brands practices enables it to attract major international clients such as Liverpool FC, Marks & Spencer, Barclays and Uefa. The sizeable practice is spearheaded by Julius Stobbs and was recently joined by the former head of IP at Macfarlanes LLP, Geoff Steward, who adds complementary litigation expertise to a team made up of over 20 highly experienced trade mark attorneys and IP specialists. The firm advises on all aspects of soft IP, commercial matters, brand licensing, online monitoring and litigation.
- Assisting Uefa in the acquisition of domain names for the Euro 2020 football competition.
- Managing the IP portfolio for Marshall Amplifiers, which also includes advising on licensing negotiations with Marshall’s key licensee, which manufactures Marshall headphones and speakers.
- Managing the trademark and IP portfolio of Just Eat.
- Acting for Glencairn Crystal – the company behind the “Glencairn Glass” whisky glass endorsed by the Scotch Whisky Association – in relation to a claim for design right infringement against Dartington Crystal.
Focusing on media, technology and intellectual property, Wiggin LLP continues to be among the 'best known' brand management practices in London. The practice offers the full range of portfolio management services, led by Gurminder S Panesar; the team is supported by INCOPRO, a company co-founded by the firm, which offers online brand protection strategies to manage online content and tackle parallel import, counterfeiting and other infringement issues. The team is led by Anna Carboni, a 'well-known figure and all-round expert in trademark issues', who is also able to handle hearings and try cases in-house. Simon Baggs, Sara Ashby and Rachel Alexander are the other highly qualified partners. Director John Colbourn and associate Joanne Gibbs are also recommended for soft IP.
‘Wiggin are strategic, focused and continuously deliver excellent service and strategic guidance. They are real experts across the entire IP practice. ‘
‘Gurminder S. Panesar is a standout and very talented lawyer‘
Motion Picture Association
- Continuing to advise on Endemol Shine Group’s portfolio of trade marks worldwide, in addition to brand clearance, strategic portfolio advice and registry matters.
- Advising Gucci on a mix of clearance, enforcement and contentious registry work, predominantly related to Gucci’s iconic “Gucci” and figurative double G marks.
- Acting for Microsoft in conducting most of its brand clearance work in the UK across goods and services, as well as managing Skype’s UK and EU trade mark portfolios on the prosecution side.
- Representing Warner Bros in connection with its contentious registry disputes in the UK and EU relating to trade marks in the world-famous Harry Potter films.
Addleshaw Goddard's full-service brand management practice combines the expertise of trade mark attorneys, advising global brand owners on the protection, maintenance and enforcement of their brand portfolios, with commercial legal advice in relation to sponsorship and licensing. Paul Bentham head the brands and designs practice from Manchester, where James Whittaker also advises on IP rights acquisition and licensing, media, and sponsorship, with a focus on the retail and consumer goods sector. On the contentious side, Emma Armitage and associate Rachel Cook are particularly active in IP and design disputes in the retail sector.
‘The team have a wide variety of in-house skills which enables them to advise easily across legal disciplines on complex contracts.’
The Co-operative Group
- Assisting Diageo with the drafting and negotiation of a trade mark licence and beer manufacturing agreement with Heineken in Ghana.
- Successfully defending Primark in Intellectual Property Enterprise Court (IPEC) proceedings for trade mark infringement brought by Phil Smith Be Gorgeous Ltd over the trade mark “P.S. Love Your Hair” used by Primark for hair care products.
- Continuing to advise brands within the PZ Cussons Group on promotional and brand licensing activities, such as the recent promotion of Original Source toiletries products on E4’s Made In Chelsea.
Bates Wells' wide-ranging expertise spans advising on advertising regulatory issues, prize draws and promotions, copy clearance, and privacy and data protection matters, and it is 'one of the few firms' with a 'tremendous amount of expertise in the third sector'. Rupert Earle, a 'well-respected figure in the advertising and marketing space', leads the practice, which also includes Mathew Healey, who was promoted to partner in April 2019 as head of trade marks, covering portfolio management, registration and enforcement matters in the UK and internationally. Senior associate Catharina Waller assists with international re-branding programmes and soft IP issues.
‘Mathew Healey and Rupert Earle make a phenomenal team: both are valued advisers as well as being practical, responsive and commercially minded.’
‘The entire team provide outstanding advice, expertise and dedication. It feels like Rupert Earle and his team are an integral part of the brand‘
‘Rupert Earle is a brilliant mind, strategic and calm under pressure. He knows the industry inside out as a regulator and we are able to count on his team at Bates Wells to consistently provide excellent service and results.’
Advertising Standards Authority Limited
Committee of Advertising Practice
Royal Commonwealth Society for the Blind (‘Sightsavers’)
Battersea Dogs and Cats Home
- Advising the Booker Prize Foundation on a wide variety of matters, including branding, trade mark issues, licence agreements, sponsorships and corporate structures.
- Advising on Sightsavers’ international trade mark portfolio, which covers multiple brands spanning over 30 jurisdictions.
- Managing the extensive trade mark portfolio of Battersea Dogs and Cats home, including its recent rebranding and the expansion of its activities into new business areas.
- Advising the National Osteoporosis Society on obtaining “royal” status and its major rebrand to the Royal Osteoporosis Society.
Browne Jacobson LLP has a strong national reputation for its trade mark dispute work, having recently represented LEVC (formerly the London Taxi Vehicle Corporation) in a widely reported trade mark dispute with Frazer-Nash and Ecotive involving the famous shape of black cabs. Declan Cushley leads the national practice from Birmingham and focuses on non-contentious IP. Other key figures include IP litigators Cerryg Jones and Mark Daniels and transactional lawyers Alex Watt and Selina Hinchliffe, who advise on licensing, sponsorship and advertising issues and portfolio management. Bonita Trimmer and associate Giles Parsons are the other names to note for IP and designs disputes.
Other key lawyers:
‘Browne Jacobson are very responsive with good commercial understanding of clients’ business‘.
‘The team have in-depth experience across the full range of TMT fields and their team works well with their commercial and IP department to provide excellent full-service comprehensive advice. ‘
‘Valued qualities from the group at Browne Jacobson are their speed of response, professionalism, commercial acumen, and technical ability. Individuals to call out are Declan Cushley, Giles Parsons and Alex Watt.’
‘Declan Cushley is a first-class litigator – he has sound judgement and is not afraid to get into the detail.‘
‘Bonita Trimmer has excellent legal knowledge and produces top-class written work. Giles Parsons is another name to note; he is very good at dealing with difficult opponents without losing his cool.‘
Triumph Motorcycles Ltd
London EV Company Ltd
- Acting for Danish fashion brand Bestseller (owner of brands including Vila Clothes and Vero Moda) in relation to a number of trade mark oppositions across its full brand range, both defensive and protective.
- Advised PZ Cussons on a range of IP-related agreements, including brand ambassador contracts and event sponsorship agreements, as well as infringement matters regarding the St. Tropez and Fudge Hair brands.
- Advised Triumph Motorcycles on a global deal with the famous street artist D*Face by which he created three bespoke bikes with imagery that Triumph licensed from him.
- Advising Wicked Healthy on its expansion into the UK by licensing the brand to Tesco supermarkets.
Cooley (UK) LLP advises a wide selection of brands, from start-ups to household names, across a broad range of sectors and is able to count LinkedIn, Nikon Europe, SpaceX and Abercrombie & Fitch among its active clients. The team is particularly strong on the trade mark side, where it assists with the registration, prosecution, protection and enforcement of trade marks and related rights in the UK and EU IPOs. The team is also able advise on licensing, sponsorship agreements and promotions. The practice expanded its capabilities with the hire of Charlie Winckworth, who advises on the strategic aspects of obtaining, protecting and commercialising intellectual property rights, from Hogan Lovells International LLP in January 2019. Nicholas Bolter chairs the practice.
- Obtained a favourable settlement for Jackson Family Wines in a trade mark enforcement action involving its famous “La Crema” mark.
- Advising on trademark matters for Twitter and assisting in disputes relating to the launch of the Periscope platform.
- Managing the worldwide trade mark portfolio for Yelp!, the highly popular user review and social networking site
- Advised Coca-Cola Bottling Company in connection with various sports-related marketing and promotional campaigns.
Eversheds Sutherland (International) LLP is able to assist with the exploitation and monetisation of IP rights through licensing, promotions and commercial agreements, as well as handling the core aspects of trade mark portfolio management, enforcement and prosecution, including advising on the seizure of counterfeit goods and managing online content. Andrew Terry advises on all aspects of trade marks, copyright, design rights, advertising and reputation management matters. Head of brands Kate Ellis is another name to note. Neil Mohring left for Apple Corps and Harrisongs in February 2019.
Gowling WLG advises on all facets of branding, and is well known for its strong capabilities in marketing and advertising, where recent mandates included advising the Volkswagen Group on various campaigns such as Audi's 'You CAN own an Audi' on Snapchat and Seat's 'Marcella' competition alongside ITV. The team has experience in international portfolio management, multi-jurisdictional trade mark and design enforcement, and anti-counterfeiting and parallel import matters. Key practitioners include Birmingham-based Kate Swaine, who leads the trade marks, brands and designs team, and Dan Smith, who focuses on advertising and sponsorship.
Volkswagen Group (Volkswagen, Audi, Skoda, Seat, Volkswagen Commercial Vehicles)
Marks & Spencer
- Advising Mothercare and Early Learning Centre on IP enforcement and design project clearance and portfolio management worldwide.
- Advising Weetabix on all aspects of its trade mark portfolio protection and enforcement.
- Operating a global hub for Dyson Technology, managing the enforcement of its IP rights in the Dyson Bladeless fan range in over 40 countries.
- Successfully defended Audi against ASA complaints about its ‘Snow Mode’ TV ad, screened over Christmas 2017, and the ‘Clowns’ TV advert in a precedent-setting case.
Hogan Lovells International LLP assists global brand owners such as Proctor & Gamble and Estée Lauder with European trade mark and design issues. The practice is divided between London and Alicante, where it enjoys a close working relationship with the EUIPO, and remains active in trade mark opposition and cancellation proceedings. Sahira Khwaja assists brands with the registration of new IP rights, trade mark enforcement and prosecution, and is also able to advise on licensing and franchising opportunities. Senior associate Anneka Dalton is particularly recommended for trade marks and the recovery of domain names. Charlie Winckworth left for Cooley (UK) LLP in January 2019.
- Acting for a drinks manufacturer in High Court trade mark litigation regarding a market-leading brand
- Acting for Walkers in High Court trade mark litigation concerning the packaging of its market-leading crisps products.
- Advising on franchising arrangements for retail clients, including Post Office Limited.
K&L Gates LLP
K&L Gates LLP is praised for its ‘international mindset' and 'great knowledge of trade marks in the UK and EU'. As head of the group, Arthur Artinian advises on strategic brand management, registration, portfolio management, enforcement, litigation, and international sponsorship. The firm also has niche expertise in advising well-known fashion houses and architectural firms on cutting-edge branding and IP issues, such as new technologies, digital products and building information modelling.
‘Arthur Artinian and his team are outstanding lawyers, all with high levels of expertise and outstanding case management skills.’
‘Arthur Artinian and his team are straight to the point, outstanding in quality and have a great sense for business, all paired with a very fair billing policy.’
‘K&L Gates are definitely one of the top ‘go-to’ firms for IP expertise‘
‘Arthur Artinian is extremely articulate, knowledgeable and also very pragmatic in approach‘.
General Mills (Yoplait, Haagen Dazs, Green Giant, Cheerios, Betty Crocker)
Renzo Piano Building Workshop
- Recently appointed as global IP counsel for British shirt maker Thomas Pink, advising on the client’s global portfolio of trade marks and designs, enforcement, litigation, e-commerce and collaborations.
- Advising General Mills on the overseas expansion of its Yoplait business through IP licensing and franchising arrangements, which included assisting with licence/franchise agreements in Brazil, Colombia, China and New Zealand.
- Advising Renzo Piano Building Workshop, the firm of iconic Italian architect Renzo Piano, on global IP strategy and licensing, including advising on a range of cross-border IP issues in connection with global projects, such as The Shard, The Whitney Museum of Art in New York, the new Paris Court House, the Paddington “Cube” project in London and other upcoming projects.
- Continuing to advise TripAdvisor in respect of its EU and UK IP issues, including trade mark oppositions, clearance and infringement issues. The team assisted on the launch of various advertising and branding campaigns, a significant dispute relating to the TripAdvisor “owl” logo, and a number of enforcement and opposition actions at the UK and EU IPOs.
Lee & Thompson LLP's full-service capabilities in trade mark portfolio management enable it to act for well-known brands and celebrity figures in the media, technology and creative industries, such as David and Victoria Beckham, McDonald's and National Geographic. The firm is known for its experience in managing IP rights and advising on endorsement and sponsorship arrangements for clients in the retail, performing arts and music, television production and gaming industries. Key figures include Dominic Bray, Gordon Williams, Huw Morris, Mark Stafford and Julian Ward.
Dominic Bray; Gordon Williams
David and Victoria Beckham
- Advised McDonald’s on several advertising and marketing matters, including its major autumn 2018 campaign promoting its support of the UK farming industry; the Fifa World Cup social media campaign in association with McDelivery; and an agreement for reality TV stars to promote McDonald’s products online, in restaurants and at major music events.
- Acted for Alfama Films Production and Paul Branco in their dispute with Recorded Picture Company over an option to produce The Man Who Killed Don Quixote.
- Handling the worldwide management and enforcement of the trade mark portfolios of Victoria and David Beckham.
- Assisting Little Mix with all brand management-related matters, IP portfolio issues and endorsement deals with various brands
- Advising the artist Steve McQueen on the IP aspects of his recently announced Year 3 project at Tate Britain.
Pillsbury Winthrop Shaw Pittman LLP is well known for its 'outstanding' capabilities in marketing and advertisement law. As chairman of the UK Ad Law Group and head of practice, Rafi Azim-Khan is 'the go-to adviser' for brand owners looking for advise on the launch of new products and services, social media and data use, rebranding, comparative advertising claims and competitor disputes. Recently promoted partner Steven Farmer advises on product launches, advertising clearance, helping brands comply with direct marketing codes and prize competition regulations, in addition to handling ASA complaints.
Other key lawyers:
‘The teams is up to date and savvy about current practices and commercial angles.’
- Advised Velvet (part of the SCA group) on disputes with rival Kimberly-Clark via the ASA over unfair competitor claims. The team also advised Velvet on new media communications through Facebook, social media platforms, website marketing and general e-commerce issues.
- Advised Cushelle on allegedly misleading marketing claims by rival Andrex, specifically the softness aspects, which negatively impacts Cushelle’s core messaging.
- Advising Holland America Cruise Lines on EU marketing advice, including website and social media issues, new EU rules for consumer contracts, and digital marketing.
- Advising Burt’s Bees on various UK marketing campaigns, cosmetic product claims, comparative adverting, ASA issues and substantiation requirements.
Shoosmiths LLP's national full-service practice combines IP brand management and multi-jurisdictional trade mark, copyright and design dispute work with commercialisation through joint ventures, licensing and franchising. Key figures include the department co-heads, Manchester-based trade mark attorney Rachel Nicholls and Gary Assim, an expert in trade marks and designs within the retail industry. Andrew Brennan leads the national IP practice from Birmingham.
Rachel Nicholls; Gary Assim
H&M Hennes & Mauritz GBC AB
Kurt Geiger Ltd
TJX Europe T/A TK Maxx
- Acting for H&M in defending claims of breach of contract (settlement agreement) and patent infringement by Stretchline Holdings Ltd relating to the use of fusible yarn in the under-wiring of brassieres.
- Advising Game Retail on its international trade mark portfolio and assisting with large commercial projects, such as the launch of in-store gaming arenas.
- Advising Solent Brands on the terms of trade mark licensing and supply of general merchandise contracts.
- Advising Ann Summers Ltd on a wide range of IP matters, including trade mark infringement and counterfeit goods, passing off, design rights and copyright infringement, as well as the protection of confidential information.
Simmons & Simmons advises on the full range of trade mark and design law matters, with in-house capabilities in filing, portfolio management and IP litigation. Adrian Smith specialises in the clearance, protection and enforcement of rights and commercial brand exploitation arrangements, while Darren Meale focuses on the management of international IP portfolios, particularly in the fintech sector, and contentious matters.
Other key lawyers:
‘This team is composed of very knowledgeable, smart and reactive people, not afraid to take a stance and provide timely advice on how to react to challenging situations. They provide a great quality of service and are able to adapt to their clients’ profile and corporate culture.’
‘Darren Meale navigates through difficult situations with remarkable grace. He is very bright and can always be trusted to provide pragmatic, reliable and unpretentious advice.’
E&J Gallo Winery
The TJX Companies Inc
- Advising and representing Hugo Boss in relation to registry oppositions and enforcement against infringers in the UK.
- Advising Monzo on IP and strategic branding expansion matters.
- Assisting Middle Earth Enterprises with the management of its IP portfolio of the world-famous The Hobbit and Lord of the Rings franchises, including all of the characters.
- Acting on oppositions in seven European jurisdictions against Linea Directa Group’s national applications for “Vivaz” trade marks, based on the client’s, 4finance’s, “Vivus” registrations for its consumer lending brand.
Squire Patton Boggs has notable expertise in the programmatic advertising field, and enjoys a close relationship with regulating bodies such as the ASA, Trading Standards and the Competition and Markets Authority. In the adtech space, the practice regularly advises media owners, buyers and consumers on developing technology across the marketing sector, digital campaigns and data protection legislation. Robert Wegenek primarily advises on non-contentious IP and monetisation through licensing programmes, sponsorships and branded content agreements, while Carlton Daniel handles sponsorship, product placement, advertising clearance and litigation.
Other key lawyers:
‘The team at Squire Patton Boggs are experienced, proactive and commercially minded. Robert Wegenek leads a very responsive, efficient and creative team‘.
‘The Squire Patton Boggs team provides technically first-rate advice with pragmatism and commerciality.’
‘Carlton Daniel has impeccable organisation and is commercially focused.’
MiQ (formerly Media iQ)
Scott Dunn Limited
Telegraph Media Group
- Acted for the Telegraph in the formation of The Ozone Project, a collaboration between various newspapers to offer premium digital advertising space.
- Acting for Scott Dunn Ltd, a luxury tour operator, in defending a copyright claim in the High Court, alleging copyright infringement in relation to photographs taken for marketing purposes.
- Advised the University of Cambridge on its strategic partnership with the Nanjing Municipal Government, creating the Cambridge University-Nanjing Centre of Technology and Innovation, a joint research centre.
- Advised Butterfly London on setting up a new targeted market research platform based on certain demographics.
Stevens & Bolton LLP provides 'superb legal services', with expertise across a the full spectrum of IP, brand management and commercial matters, ranging from trade mark registration, protection and enforcement matters to online monitoring, licensing and franchising. Tom Lingard heads the IP group; other noted team members are Charlotte Tillett for joint development agreements, licensing and contentious IP, and Nicola Broadhurst for licensing brands through franchising. Associate Elaine O'Hare continues to be active in trade mark infringement disputes, particularly in the fashion and retail sector.
Other key lawyers:
‘Tom Lingard is highly recommended. He is very knowledgeable on brand protection, comprehensive in his advice, and really easy to work with. Tom will go out of his way to be available for his clients.’
‘Elaine O’Hare is an impressive and bright lawyer. ‘
Brighton & Hove Albion Football Club
T.M. Lewin & Sons Ltd
Tyrrell Promotions Limited
- Advising Italian luxury chocolate manufacturer Icam S.p.A. on seeking to defend and enforce its trade mark “Vanini” brand in trade mark infringement proceedings against Vanini 1871 Ltd.
- Acting for Premier League football team Everton FC in relation to an online trade mark infringement and passing off claim.
- Assisting Tyrrell Promotions, the owner of rights in the famous Tyrrell Formula 1 racing team, with licensing the design and plans for the iconic P34 racing car to manufacture new reproductions.
- Advising an internationally renowned racing driver on the protection and exploitation of image rights.
Brabners LLP enjoys a 'very good reputation' in the North West, where the brand management practice, which sits within the broader media and entertainment department, also has complementary expertise in reputation management and defamation. Key areas of activity include trade mark portfolio management, the protection and enforcement of IP rights, online brand protection and assistance with commercial ventures. Sports and retail are particularly strong areas of expertise. Head of IP Colin Bell and trade mark attorney Hannah Fawcett are the main practitioners.
Other key lawyers:
Travel Jigsaw Limited (trading as rentalcars.com and Priceline.com )
TJ Morris Limited (Home Bargains)
Citadel LLC (KCG IP Holdings Limited)
FAUN Trackway Limited
- Represented England Cricket vice captain Ben Stokes across the range of the knock-on implications of his trial for affray, including implications for sponsors and media, brand and reputation management.
- Providing IP and general brand management advice to a number of fashion and retail brands, such as Regatta Great Outdoors, Craghoppers and Dare2b.
- Providing ongoing trade mark portfolio management services, including enforcement and prosecution, to a number of long-term clients such as Lancashire County Cricket Club, Gusbourne Estate Limited and International Sport Group.
- Advised Monterosa, a company which helps TV production companies build relationships with audiences using gaming, social media and interactive content, in relation to its agreements with ITV, ITV Studios and broadcasters in Sweden and Australia in connection with the Love Island reality show and an app for the programme.
Fox Williams LLP's key areas of expertise span trade mark and design portfolio management, contentious IP and strategic branding and licensing advice. The practice is particularly sought after by brand owners in the retail, consumer products and fintech sectors, for which the team regularly co-ordinates brand protection, trade mark enforcement and anti-counterfeiting strategies. Simon Bennett heads the IP practice and advises on trade mark and design matters, particularly in relation to design infringement within the fashion sector. Trade mark attorney Sarah Redmond focuses on portfolio management, prosecution and opposition work.
‘Sarah Redmond and Simon Bennnett are highly recommended for trade mark enforcement and commercial IP issues‘
Superdrug Stores plc
Fenix Outdoor AB
Glanbia Nutrition Inc.
- Advising Fenix Outdoor AB on its trade mark portfolio, brand protection and anti-counterfeiting strategy, including co-ordinating a strategy to stop the sale of copycat “Kånken” backpacks by Beechfield Brands Ltd, based on Fenix’s goodwill in the design.
- Advising Aden + Anais, maker of premium muslin cloths and swaddles for babies, on its brand protection strategy and its trade mark portfolio.
- Advised Salvatore Ferragamo on a collection themed around the wedding of Prince Harry and Meghan Markle.
- Assising Tesla Inc with the management of its trade mark filings in the UK and EU, co-ordinating trade mark strategy with US-based firms and advising on cleantech-related issues.
Hamlins LLP is particularly experienced in assisting brands and private clients in the entertainment, music, retail and leisure industries in relation to the protection and commercial exploitation of IP rights, as well as advertising issues and sales promotions. Martin Ochs heads the contentious music and IP litigation practice, while other key partner Matthew Pryke advises on IP, trade mark and design law and brand protection strategies.
PPL PRS Limited
Bravado International Group
- Assisting Oracle Racing Inc with the structuring and protection of a new global sporting series brand called SailGP, and working on a collaboration between SailGP and various high-profile luxury brands including Rolex, Louis Vuitton and Jaguar Land Rover.
- Advising the British Fashion Model Agents Association, Models One, Storm and Premier in connection with brand structuring, use of image rights and various commercial arrangements for high-profile individuals such as Olivia Palermo, Emma McLaren, Iskra Lawrence, Twiggy and Yasmin Le Bon.
- Assisting the English Cricket Board with development of brand protection and enforcement strategies to enable it to protect the 2019 ICC World Cup brands.
- Advising Brompton Group on various matters including licensing, structuring and joint venture arrangements for its key brands, including WhiskyMist, Mahiki, Kanaloa, Bodo Schloss and The Craigellachie Hotel.
Reed Smith LLP
Reed Smith LLP handles the contentious and non-contentious aspects of brand management, including advertising and sponsorship, reputation management and domain name issues. Michael Skrein and Carolyn Pepper are the key contacts in the practice, which was recently joined by Elle Todd, a specialist in consumer brands, e-commerce, technology and media, from CMS.
Simkins LLP continues to perform strongly in contentious IP, with a focus on trade mark infringement claims. As head of IP, Jim Dennis has particular expertise in handling disputes involving trade marks and passing off. On the non-contentious side, he is also experienced in advising clients on brand development, protection and enforcement. Commercial partners Caroline Copeland and Nick Eziefula focus on the marketing and advertising sector, advising on commercial arrangements between agencies, their clients and media owners; compliance and regulatory issues; and brands’ and agencies’ rights clearance and strategic issues in relation to their use of content.
Caroline Copeland; Jim Dennis
Rude Health Foods Ltd
The Blair Partnership
- Defending The Blair Partnership against a publishing copyright infringement claim in the IPEC.
- Successfully defended KPMG LLP in a trade mark opposition brought by Benetton against KPMG’s “Pilot” trade mark application at the UKIPO.
- Advising Lonza Inc on its UK trade mark portfolio.
- Continuing to advise Rude Health on trade mark oppositions and invalidity actions against Nude Health, Rude Cosmetics, Inc and Rude Limited.
Simons Muirhead & Burton is particularly strong in assisting clients in the media, entertainment and luxury fashion sectors. The practice continues to be sought after by clients in relation to trade mark enforcement and prosecution, particularly those affected by registrations made in bad faith by trade mark squatters. Maninder Gill heads the department.
- Advised well-known British make-up artist Lisa Eldridge Group on the creation and launch of two separate product lines
- Continuing to advise Alexa Chung, a television presenter and fashion designer, and her eponymous fashion label on its global trade mark registration and contentious matters. Recent work included working on challenging trade mark registrations made in bad faith by trade mark squatters in China and South Korea.
Taylor Vinters assists a range of clients, from medium-sized national businesses to global household brands, with trade mark clearance, filing, prosecution, enforcement and licensing. The practice also incorporates a trade mark filing practice, led by Louisa Dixon, a 'solid pair of hands' with a 'great strategic mind'. On the contentious side, Gareth Dickson is experienced in representing clients before the UKIPO, EUIPO and World Intellectual Property Organisation (WIPO). Senior associate Jo Eales is also of note for international portfolio management and prosecution work.
- Acting on behalf of US-based Bridgestone Americas, in respect of UK and EU trade mark clearance and registrations and portfolio maintenance matters.
- Providing strategic advice and enforcement support to the estate of Professor Stephen Hawking on the protection of Professor Hawking’s brand and image.
- Assisting the Royal Society of Chemistry with the management of its trade mark portfolio, including all legacy registrations.
- Continuing to advise Running with Crayons, a software development company, regarding the protection and enforcement of its mark “Alfred”.
Wedlake Bell LLP's brand management practice is able to leverage the firm's expertise in contentious IP and commercial transactions, and is particularly sought after by brand owners in the retail, sport and charity sectors, where the the team counts Gant, Surrey County Cricket Club and the British Heart Foundation among its clients. Key figures include Adrian Heath-Saunders, who specialises in trade marks, sport sector issues, advertising and sponsorship; Michael Gardner, who focuses on contentious IP; Adam Edwards, who is noted for brand protection, broadcasting agreements and digital media contracts; and IP and IT specialist Jonathan Paul Cornthwaite.
“Wedlake Bell is a West End firm with City-quality expertise and very competitive rates. The whole team are highly rated for their dedication and hard work. ”
‘Key partner Mike Gardner always gets his hands dirty. He is a very hard worker whose letter writing is exceptional.’
Pangaea Laboratories Ltd
- Acting for French outdoor brand Aigle in trade mark opposition proceedings against American Airlines Inc, in relation to the the airlines’ application to register its Eagle logo for clothing, which the client opposes as it clashes with its “Eagle” logo.
- Advising brewer Fuller, Smith & Turner on the IP aspects of its purchase of four central London bars from a well-known wine bar chain.
- Acting for Pangaea Laboratories in relation to an invalidity dispute with The Body Shop in respect of Pangaea’s European trade mark for “Glow Drops”.
- Represented Kaboodle Ltd, a company specialising in the installation of kitchen appliances, in a trade mark dispute with Homebase, which was selling a kitchen range under the brand “Kit + Kaboodle”. The claim was settled under favourable terms before hearing at the IPEC.
Womble Bond Dickinson (UK) LLP
Womble Bond Dickinson (UK) LLP focuses largely on contentious and non-contentious comparative advertising and pricing claims, advertising regulatory advice and copy clearance issues. Patrick Cantrill and Nicky Strong are the main partners and are highly experienced in IP and regulatory matters. Associates Ashley Borthwick, Rachel Hearson and Rose Smalley are also names to note for product advertising, portfolio management and contentious IP issues.
Patrick Cantrill; Nicky Strong
Post Office Limited
- Advised Specsavers on various regulatory issues in connection with NHS requirements and the Department of Health’s Code of Practice in relation to the provision of NHS-funded eye and hearing care services, including providing guidance notes and training to the marketing teams to ensure compliance, as well as significant advice on the promotional activity around National Eye Health Care Week.
- Advised Post Office Limited on the launch of Post Office mortgage products and provided significant advice on its telecoms price promotion and comparative advertising campaigns, focusing on its broadband and fibre services.
- Continuing to advise Tempur-Sealy International on a range of multi-jurisdictional marketing materials and ads, including advice on consumer perception surveys, product testing strategy, and advice on consumer and retailer issues arising out of the Consumer Rights Act.
- Advising Jamella (trading as GHD) on significant competitor complaints against GHD’s new Platinum Plus hair straightener product.
Brandsmiths primarily assists brands and corporate clients with resolving IP disputes, with an emphasis on trade mark infringement claims, trade secrets, passing-off and copyright claims. The firm's London and Manchester-based teams also advise on anti-counterfeiting matters and the enforcement of trade mark and registered design rights. The practice attracts clients from a diverse range of sectors, namely fashion, automotive and energy. The 'knowledgeable' and 'assertive' Andrew Lee and Adam Morallee - who 'inspires great confidence and morale amongst his team' - are key figures in the practice, while fellow firm co-founder Hayley Griffin recently served as acting general counsel at fashion retailer Missguided.
‘Brandsmiths are unique for two reasons: one, they sell themselves as a law firm for SMEs and small businesses. This means that they have developed a very acute commercial acumen with their whole purpose being to get what the client wants, not just to provide legal advice; and two, they give their juniors a lot of responsibility. This means that juniors at Brandsmiths are more confident and proficient than at other firms.’
‘The firm has a unique culture where each case is treated with due care and attention, however small. Its lawyers are always available and come up with pragmatic and practical advice that can help benefit your business in more ways than one. They are entrepreneurs themselves and that is crucial in understanding what needs to be done.’
‘Very knowledgeable and experienced IP litigators. Very competitive pricing, especially compared to comparable London firms. Handles complicated multijurisdictional cases, with many causes of action. Innovative as to causes of action in order to secure jurisdiction.’
‘Small boutique firm with a strong focus on enforcement of their client’s rights. They have proven very effective not only from a litigation perspective, but also from attitude, ideas for resolution and general management of a case, making both us and the client feel secure. Communication, personalities and technical expertise.’
‘Andy Lee is assertive and willing to do whatever is necessary to get the client what they want.’
‘Hayley Griffin has a proficiency well beyond her years and was a great help in court as she was exceptionally familiar with the papers.’
‘Availability, can-do attitude and advice and practical thinking. Always trying to find solutions rather than merely identify risk which makes them unique.’
‘Andrew Lee is very good at handling clients. Very knowledgeable on all aspects of civil procedure, especially trade mark litigation.’
‘Adam Morallee is experienced, personable, knows a lot of unusual facts. Inspires great confidence and morale amongst his team.’
‘Not only is Andy Lee brilliant at what he does, we have great events with him as well and would not hestitate to recommend. Clients like his commercial attitude and no frills approach.’
Beverly Hills Polo Club
- Representing Beverly Hills Polo Club in the High Court in a claim of trade mark infringement against the Sports Direct Group.
- Assisting the BMW/Mini Group on a range of anti-counterfeiting matters, enforcing trade mark and registered design rights.
- Successful acted for Gladiator Nutrition in defending the IP rights over the use of “Warrior” trade marks for bodybuilding supplements.
- Advising Faulty Towers the Dining Experience (Imagination Workshop) in a claim of passing off, defamation and other torts around the Fawlty Towers TV series scripts.
Following the merger of Ince and Gordon Dadds in October 2018, the combined brand management practice of Ince has a strong focus on contentious work, with media and IP-related disputes a key area of activity. The practice also houses a trade mark filing practice and offers portfolio management services, led by Matthew Hiscox. As head of disputes, Nick Goldstone's practice covers IP enforcement involving trade marks, infringement, passing off, design rights and domain names.
The Angel Foundation/Dream Brands Limited (GOD TV)
Sportpesa Holdings Limited
Usborne Publishing Limited
Marc John, a film producer
- Advising Sportpesa (sponsors of Everton and Southampton Football Clubs) on its worldwide trade mark portfolio.
- Continuing to advise Usborne Publishing, the UK’s leading publisher of children’s books, in relation to contentious trade mark, passing off, copyright and domain name issues.
- Assisting with the management of Covent Garden Market Authority’s trade mark portfolio, rebranding and enforcement services.
Penningtons Manches Cooper LLP boasts a strong domestic and international client base of well-known brands in a variety of sectors, from retail, food and drink and professional services through to education and biotech. Gavin Stenton handles all aspects of trade mark and design filing, prosecution and enforcement, and cross-border disputes. He also advises brand owners on the commercial exploitation of their brands, as well as on the acquisition of third-party brands. Anna Frankum co-heads the national IP, IT and commercial group and is particularly noted for her work in prosecution, oppositions and invalidations before the UKIPO, EUIPO and WIPO.
‘Penningtons Manches’ trade marks team is extremely responsive, and their advice very pragmatic. The lawyers in the team are very experienced specialists.’
‘They join the dots between all their different disciplines – there is one point of contact that keeps things simple and manageable for their client. They keep in regular and constant communication, making sure the client has all the tools and advice needed to make an informed decision.’
‘Gavin Stenton provides thoughtful, strategic advice at reasonable rates‘
‘Anna Frankum and Gavin Stenton are first class, very competent and easy to work with.’
All Saints Retail Ltd
Compass Box Delicious Whisky Ltd
Institute for Fiscal Studies
Needle & Thread Design Holdings Ltd
Roots Reggae Reggae Sauce Ltd
- Acting for Needle & Thread Design in relation to a broad range of contentious trade mark, design right and copyright matters, often with an international dimension.
- Advising celebrity chef and owner of Roots’ Reggae Reggae Sauce Ltd, Levi Roots, in relation to all domestic and international brand management and enforcement matters. Recent mandates included filing opposition proceedings (in the UK) to defend the “Rasta Pasta” brand, and prosecuting new UK trade mark applications for the new “Reggaenaise” brand.
- Instructed by South Korean trade mark counsel, First Law PC, on behalf of the leading South Korean entertainment company BigHit Entertainment Co Ltd to register and enforce the UK trade mark rights of world-famous K-Pop boy band BTS. This involved extensive UK trade mark filings, undertaking coexistence negotiations with numerous third parties and taking action against conflicting third party trade mark applications and/or usage.
At Purdy Smith, a boutique practice specialising in advertising and marketing law issues, Mark Smith advises brands and private clients on IP and marketing-related issues, including ad copy clearance, prize draws and competitions, social media, data privacy, e-commerce, advertising-related commercial contracts and regulatory investigations.
‘Mark Smith at Purdy Smith provides practical, reasoned and prompt advice. He is business driven in his solutions and strategic advice. ‘
‘Mark Smith is excellent. He gives quick, smart and business-driven advice that translates easily to US clients.’
- Advising Expedia on advertising-related commercial agreements, including media services agreements, creative services agreements and direct agreements with media owners.
- Advising celebrity make-up artist Charlotte Tilbury on a number of advertising-related matters, such as drafting a template agreement with social media influencers, a product placement agreement and copy clearance.
- Advising InsideAsia Tours on ambush marketing issues relating to a website promoting tours of Japan during one of the world’s major international sporting events.
- Advising Promotion Watch on a proposed pan-European sweepstakes, sponsored by a well-known Italian food company, which was to be promoted in the in-flight magazine of a popular airline.
Swan Turton LLP
Advertising and marketing specialist boutique Swan Turton LLP primarily advises private clients, start-ups, SMEs and international household brands in the media, marketing and technology sectors. Name partner Charles Swan assists marketing and design agencies, advertisers, photographers, publishers and artists with copyright and trade mark protection, competitions and prize draws, agency agreements, ASA complaints and data protection issues.
J Walter Thompson London
The Hershey Company
The Association of Photographers
Friends of the Earth
- Advising J Walter Thompson on a large-volume UK and global advertising clearance.
- Advising The Hershey Company, one of the largest chocolate manufacturers in North America, on its UK advertising and marketing.
TLT has strong capabilities in online brand enforcement, where the team continues to be involved in the takedown of unauthorised merchandise and infringing sites, as well as domain and company name recoveries. Other areas of expertise include trade mark portfolio management, advising on complex celebrity image rights issues and IP disputes. IP and technology expert Nick Fenner leads the department.
British Telecommunications (BT Sport)
TUI Travel Limited
Camden Dining Group
- Advised Chris Frappell, founder and managing director of Tru Tension, on the completion of a £75,000 investment from retail entrepreneur Touker Suleyman, as featured on the BBC’s Dragons’ Den. Work included advising Tru Tension on how to maximise its most valuable assets, including its global IP portfolio, and strengthening the ownership structure of Tru Tension’s international patents and trade marks to reduce the risk of infringement.
- Managing the international trade mark portfolio and providing general IP advice to Compare The Market.
- Advising Starling Bank on a range of IP issues as it launches new products to markets, as well as managing Starling Bank’s IP portfolio.
- Assisted BT Sport with developing and implementing a system for taking enforcement action for copyright infringement against commercial premises that show BT Sport without the appropriate commercial licence.