PATMA: Trade mark attorneys in London

AA Thornton

AA Thornton offers a combined attorney and solicitor team that is experienced in the full range of trade mark services, including due diligence, audits, portfolio development and management, representation in opposition proceedings, and litigation. The fashion and technology sectors are core pillars of the group's wide-ranging caseload, which recently also included work for consumer product, energy and pharmaceutical players. Well-versed in domestic and cross-border matters alike, the team of practice head Ian Gill is especially active for clients from the UK and other European countries, as well as those from North America, India and the Far East. The arrival of former Bristows LLP solicitor Simon Spink and barrister Daniel Byrne, previously at Gide Loyrette Nouel LLP, strengthened the IP litigation wing of the firm.

Practice head(s):

Ian Gill

Other key lawyers:

Simon Spink; Daniel Byrne; Sarah Darby

Testimonials

‘We have used the services of AA Thornton for many years, and have no hesitation in recommending them to other commercial entities who have sought advice on IP or trade mark matters.’

‘We have every confidence in the advice given from the team at AA Thornton, not only on technical aspects we might not have considered, but also on practical approaches to solutions.’

‘What sets Ian Gill apart from other professionals I have met is his unique combination of being very approachable and having an extensive knowledge of all areas we seek advice on, and the ability to explain often complex matters in a way we can then understand from our perspective in the commercial world.’

‘Ian Gill is dependable, brilliant, great fun, a total expert in his field and good to have as part of our wider team.’

‘A great team of specialist trade mark attorneys and practitioners. Down-to-earth, business-friendly advice from people who not only know the technicalities of trade mark law and practice here and elsewhere, but understand how trade marks work for businesses.’

‘Ian Gill is very calm, knowledgeable and thinks outside the box to provide solutions. He gives advice and not just options. He is very accessible and responsive and you feel that you really get his attention.’

‘Knowledgeable, communicative, punctilious.’

‘They have a great team. Knowledgeable, clear and good communicators. They understand our business.’

‘Ian Gill is excellent in his specific fields.’

‘Business oriented, fast and efficient.’

‘The AAT team is extremely talented and their technical IP expertise is impressive. They are great at adapting to the client’s business needs and they appoint the most appropriate team member to each matter.’

‘Sarah Darby is a particular star as she is extremely bright and technical but can explain legal issues effectively and without unnecessary complication. In short, she sorts the wheat from the chaff brilliantly. Sarah manages her team well and is an expert on long-term strategic thinking for the business.’

‘Very professional and approachable organisation that carefully and clearly takes you through the complexities of legal issues.’

‘Ian Gill has demonstrated solid commercial acumen and has a practical, pragmatic approach, which differentiates him from most other practitioners I’ve come across in this sector. Most practitioners will execute what has been asked for without necessarily running their own commercial rule over what they think makes sense for the business. I know with Ian that if he has doubts commercially he’ll express them.’

Key clients

Virgin Enterprises Limited

Admiral Group

J. Choo Limited

Associated British Foods Plc

R. Twinings and Company Limited

Jordans, Dorset, Ryvita Company Limited

Primark

Calor Gas

CK Hutchinson

Work highlights

  • Advised Primark regarding an unusual pan-European dispute over its mark ‘DENIM CO’, securing dismissal of the case due to the strength of the counterclaim as to the invalidity of the claimant’s registration.
  • Acted for Virgin Enterprises Limited in a successful High Court appeal of a UKIPO opposition decision in relation to the proposed mark ‘VIRGINIC’ for the client, the first UK trade mark case concerning adjectival suffixes.
  • Advised ABP Technology Limited on a complex matter which involved unusual questions surrounding passing off and trade mark invalidity in relation to a range of virtual reality headsets.

Barker Brettell LLP

Barker Brettell LLP counts an impressive number of major UK and international companies among its clients, with the medical, food and drink, higher education, cosmetics and automotive sectors as core areas of expertise. The group offers the full set of trade mark services and fields a particularly busy UK and EU trade mark filing caseload. The development and implementation of global trade mark strategies is another key strength. With its main office in Birmingham, a second UK office in Southampton and, since 2019, an office in Sweden, the firm is well placed for domestic and cross-border work, including post-Brexit trade mark matters. Birmingham trio Catherine Wiseman, Tracy Arch and Lucy Walker are the heads of the practice.

Testimonials

‘The team have given a lot of time to getting to know our business, our risk profile and what we are trying to achieve. They are always available, quick to respond and knowledgeable. I cannot fault their level of service.’

‘Catherine Wiseman stands out for her dedication, accessibility and overall understanding of the needs of our business. She is an invaluable team member for our business rather than a supplier.’

‘Commercial, with real depth of technical knowledge (within sector-specific areas of technology). Barker Brettell is filled with people who I am delighted to introduce my clients to and there are some real stars in the junior ranks too. With the opening of their Swedish office, they are now moving in a fuller service – and are keeping apace with their competitors on this front.’

‘The senior trade marks team of Catherine Wiseman, Lucy Walker and Tracy Arch is superb to work alongside in brand management matters. They have fantastic international connections and a crop of junior talent to boot. Straight-talking and solution-focused, this team is not just about numbers of filings, but about monetising and exploiting IP portfolios.’

‘The communications we receive are always clearly and simply written, delivered in a timely manner and, above all, drafted with the specific client and their needs in mind.’

‘We have been working with Lucy Walker for several years and find her to be an exceptional trade mark attorney – responsive, technically excellent and always provides a commercial solution to the client’s problems. She is also personable, easy to work with and a great mentor to her junior colleagues and trainees.’

‘Louis Pittortou is very helpful when it comes to specific transactions (e.g. M&A, divestments, joint ventures), where he provides key IP advice tailored to us and our transaction. He also takes a very commercial and pragmatic approach to difficult issues, and is willing to give his opinion.’

‘I’ve always valued Tracy Arch’s judgement and she has particular insights which are effective and have stood the test over a long period of time.’

‘The team is very responsive and provides the most thorough analysis when requested to do so. I am always amazed by the depth of their briefing on a question. They are very skilled in both trade mark and patent prosecution.’

‘Lisa King and Rosalyn Newsome are standout attorneys who care deeply about doing a good job. I can trust that I will have an answer in a timely way every time.’

Key clients

Grenade

IMI Plc

Jaguar Land Rover

Maple Mountain Group dba Modere

Newell Brands

The Binding Site

Sheltered Wings

Severn Trent Water

Natural Environmental Research Council

Ocupeye

Algebris

Bit Bio

University of Nottingham

International Fragrances and Flavors

Work highlights

  • Assisted Bit Bio with the searching, filing, prosecution and strategy of its new trade mark ‘BIT BIO’ and a suite of other trade marks all around the world.
  • Assisted global asset management firm Algebris Investments (Luxembourg) S.à.r.l. with the fight against a bitcoin scam impersonating its business online.
  • Assisted Modere with bolstering its trade mark protection throughout the UK and internationally, including overseeing large filing programmes and defending worldwide opposition proceedings against one of its marks.

Bird & Bird LLP

Bird & Bird LLP stands out through its wide geographical network and its focus on providing comprehensive brand management services, including a strong design practice. Portfolio filing strategies, clearance research, and the prosecution of trade mark and design applications are as much part of the group's skill set as anti-counterfeiting matters and the commercial exploitation of trade marks and designs. The team consists of trade mark attorneys and solicitors and was joined by Frederick Mostert, formerly chief IP counsel and chief legal counsel of luxury group Richemont, as of counsel in January 2020, further strengthening its credentials in that sector. Other core sectors include consumer products, retail, media, hospitality and entertainment. Mark Holah and Allan Poulter are the heads of the practice.

Practice head(s):

Mark Holah; Allan Poulter

Testimonials

‘Bird & Bird LLP is a large, full-service firm that feels very personal.’

‘Mark Holah is both incredibly smart and has very good judgement in how to handle thorny prosecution matters in a strategic and practical manner. He provides sound, thoughtful advice in every situation. He handles all UK and EU prosecution matters for us and understands our business, always taking it into consideration when devising strategy.’

‘Excellent sector-specific knowledge.’

‘Patricia Collis is a standout practitioner.’

‘B&B invest a lot of time to really get to know and understand their client, what their priorities and needs are, and how they like things done. We find them very approachable, reliable and pragmatic. They also provide value-added services such as regular bulletin updates, seminars/webinars and regular catch ups to ensure that we are not missing anything we need to be aware of.’

‘Mark Holah is very good at assisting in putting together and discussing how best to structure our IP trade mark strategy. This includes challenging what we sometimes think is necessary and helping us in putting together a robust and cost-effective approach. He has a very good understanding of our business to provide this pragmatic advice.’

‘Mark Holah has a deep knowledge of our business, having worked with us for a number of years. His advice is excellent and always tailored to our business, brand-aware and budget-sensitive. He makes a concerted effort to keep abreast of developments in our fast-moving business which enables him to keep delivering a first-class service.’

‘A very knowledgeable team on trade marks and designs. The advice is pragmatic and the team is down to earth and easy to work with.’

‘I mainly work with Patricia Collis on UK prosecution work and UK trade mark searches. She is very knowledgeable and gives pragmatic and commercially minded advice. Patricia is also very personable and great to work with.’

Key clients

Monster Beverage Corporation

Philip Morris Group

Daily Mail and General Trust Group

Made.com

Belmond

Simba Sleep

Aspinal of London

Marv Films

Faberge

Fosun

Work highlights

  • Acted for Daily Mail Group with respect to managing its global trade mark portfolio and advising on IP issues.
  • Advised Fosun on its acquisition of Thomas Cook’s brand and its intellectual property assets for £11m.
  • Carried out a wide range of trade mark and design work for Kingfisher Group across multiple territories, including assisting with strategic advice, product clearance searches, applications, renewals, oppositions and enforcement work regarding both trade marks and designs.

Boult Wade Tennant LLP

Having opened offices in Madrid and Berlin in 2018 and 2019, Boult Wade Tennant LLP further expanded in continental Europe with the launch of its Frankfurt office in early 2020. The team continued to grow its trade mark filing practice, especially in the UK but also at the EUIPO and internationally, not least thanks to its successful win of several major new clients. With a number of country desks, including the particularly significant India and China desks, the group is an excellent choice for complex cross-border work. The team assists with the full spectrum of trade mark services, including the management and development of large international trade mark portfolios and assistance in high-stakes trade mark infringement and passing off matters, domain name disputes, and design and copyright matters. The London-based John Wallace is the head of the practice. Charlotte Duly joined Charles Russell Speechlys LLP in November 2019.

Practice head(s):

John Wallace

Key clients

Bauer Media Group

Lloyd’s of London

BNY Mellon

Fortnum & Mason

Liberty London

Gusto Telecom Ltd

John Guest International

H Huntsman & Sons Ltd

V&A Museum

W Series

The Boots Company PLC

L’Escargot (Soho) Ltd

Newton Management Ltd

Walter Scott & Partners Ltd

The Board of The Pension Protection Fund

Sony Corporation

CompareEuropeGroup

oneWorld alliance

Fastpay Associates

Vodafone

Help for Heroes

Work highlights

  • Provided extensive trade mark prosecution advice to Vodafone, including assistance with multi-territory branding and trade mark strategy development in relation to the branding of broadband services.
  • Represented Signa Sports IPCO GmbH in UKIPO opposition proceedings regarding the UK trade mark ‘Alex and Ani’ for perfume, jewellery, leather goods and clothing.
  • Assisted Oncimmune Ltd with the issue of trade mark infringement and passing off proceedings at the Irish High Court and the takedown of a website in a similar field called ‘ONKIMMUNE’.

D Young & Co LLP

D Young & Co LLP remains one of the most successful practices in the market, achieving significant growth through its client commitment and the breadth and quality of its services. The group excels in contentious and non-contentious matters and offers a combined team of trade mark attorneys and solicitors, as well as a well-staffed office in Munich. Opposition and appeal proceedings before the EUIPO, the UKIPO and the DPMA are an area of particular strength. The luxury, fashion, pharmaceutical and cosmetics, food and drinks, entertainment and sports, and household products sectors are the firm's mainstays, but the team's experience covers a much wider sector range. Practice heads Jeremy Pennant, who splits his time between London and Southampton, and Tamsin Holman, a solicitor who operates from the London and Munich offices, are key contacts.

Practice head(s):

Jeremy Pennant; Tamsin Holman

Testimonials

‘We were happy to work with the D Young & Co LLP team on various trade mark cases. We appreciated their transparency and the team effort put into diligently and rapidly solving conflicts, as well as their out-of-the-box and forward-thinking approach.’

‘Richard Burton’s expertise and friendly approach was crucial in solving a conflict in a way that was beneficial for both parties.’

‘Great team with impressive skills. An excellent approach to the client. Very business oriented.’

‘They are practitioners whose skills are out of the ordinary.’

‘Efficient. International capability. Good knowledge.’

‘Jackie Johnson is responsive, a good communicator and good to work with.’

‘The team provides excellent legal advice at reasonable rates. They consistently take a business-friendly position, not always relying on technicalities, but focusing on what the client needs.’

‘Jeremy Pennant is responsive and always provides excellent and useful advice. He is very easy to work with, and given his vast experience, his billing rate is quite reasonable. I consider Jeremy one of my top outside counsels.’

Key clients

AkzoNobel

Al Futtaim

Burger King

Ceuta Group

Crockett & Jones Shoes

Dabur India Ltd

Exxon Mobil Corporation

Grays of Cambridge

Groupe Canal+

Hard Rock International

Jo Loves Limited

Metro Bank

Skechers

SOP International Limited

Sunseeker International

The Dow Chemical Company

Tropic Skincare Ltd

Turner Entertainment Network

UPS

Teva

Work highlights

  • Represented Sega and Sports Interactive in a High Court trade mark dispute brought by Manchester United.
  • Represented Hard Rock Café in preventing a third party in a different industry using the Hard Rock logo and name.
  • Successfully overcame an objection in trade mark registration proceedings at the UKIPO for Genomic Health Care.

J A Kemp

J A Kemp specialises in strategic, high-stakes trade mark work for clients from the UK, the EU (especially Scandinavia, France and Spain), and further abroad, with US and Japanese clients accounting for a particularly significant number of instructions. Adept at assisting start-ups, global corporations, SMEs and renowned academic institutions alike, both in contentious and non-contentious matters, the firm offers combined trade mark attorney, patent attorney and solicitor services from its UK offices in London, Oxford and Cambridge, and its offices in Paris and Munich. Another standout feature is the dedicated designs practice, led by Tom Albertini. James Fish directs the trade marks practice. Both attorneys are based in London.

Practice head(s):

James Fish; Tom Albertini

Testimonials

‘Totally professional. Good systems in place.’

‘They understand the client’s goals and provide very pragmatic, commercially focused advice to help reach those goals.’

‘Strong, strategic and practical advice on the legal aspects of trade marks as well as an efficient registration/renewal process.’

‘Charlotte Stirling is responsive, knowledgeable and personable in equal measure.’

‘We have had dealings with J A Kemp over a long period of time. What makes them an outstanding partner is the quality of their people and of the advice they provide. They are always happy to work with you swiftly to rule in or out new concepts and thus minimise wasting money. And once we proceed with a project the service is always first class.’

‘James Fish is a tremendously talented individual as well as having an extremely open and warm disposition. He is always available to chat, responds swiftly, and his advice is clear and to the point, which is exactly how we like it.’

Key clients

ADIDAS International Marketing (and their related companies ADIDAS-Salomon and Reebok)

GW Pharma

Hunter Douglas Industries

J K Rowling

JP Morgan & Chase

Mitsubishi Electric

Ricoh

Seiko Corporation

The Hershey Corporation

The Royal British Legion

Toyota Motor Corporation

Work highlights

  • Advised Imperial War Museums on the management of the entire trade mark portfolio, including the development of the portfolio in the UK, China and the US.
  • Advised The Royal British Legion on various matters relating to either trade mark or design infringement and fraud involving the iconic ‘POPPY’ logo in the run up to Remembrance Day 2019.
  • Acted for adidas in due diligence work, trade mark and design filing and prosecution, contentious work and IP advisory services across all adidas businesses including adidas-Salomon and Reebok.

Kilburn & Strode LLP

Kilburn & Strode LLP impresses with its in-depth knowledge of the management and structuring of large international trade mark portfolios. It offers the full spectrum of trade mark services, from clearance searches and the drafting and prosecution of trade mark applications to assistance with infringement and passing off matters and advice on the commercial exploitation of trade marks, for example in licensing, due diligence and enforcement processes. The group is distinctly versatile in its sector experience, with recent highlights including work for automotive, fashion, technology and consumer product clients. In addition to its London headquarters, the firm offers an experienced trade marks team in its Dutch offices in Amsterdam and The Hague, as well as a liaison office in San Francisco. The renowned Carrollanne Lindley and Iain Stewart are the heads of the practice.

Key clients

easyGroup Limited

Colgate-Palmolive

NBC Universal (including DreamWorks Animation)

La Perla

NewsWeek

Penguin Random House

E.ON

Blackberry

Netnames

Abbott

Work highlights

  • Conducted clearance searches and new name filing programmes for AT&T in the context of the client’s merger with Time Warner.
  • Acting for fashion brand Molly Bracken in respect of its new brand for larger sizing, Gabrielle, involving proceedings in the UK, the EU and elsewhere.
  • Successfully represented various clients, including DM Drogerie, easyGroup, BlackBerry, Colgate-Palmolive, University Hospitals Birmingham, NBC Universal, La Perla, Brook Sports, Flow International, Revo Corporation and Porsche, in opposition and cancellation proceedings.

Maucher Jenkins

Maucher Jenkins sets itself apart through its focus on UK and European cross-border work, the growth of its office in Shenzhen, and its combined prosecution and litigation offering for trade marks, designs, copyright and domain names. The group is skilled in assisting start-ups, SMEs and major international players, most of which come from the pharmaceutical, medical device, food and beverage, cosmetics, financial services, transport, and media and entertainment sectors. Former practice head Tim Pendered retired, with Katie Cameron and Angela Fox remaining as heads of the trade mark department. Medical device and life sciences trade mark specialist Tanya Buckley joined the partnership in January 2020.

Practice head(s):

Katie Cameron; Angela Fox

Other key lawyers:

Tanya Buckley

Key clients

Viacom Media Networks

Paramount Pictures Corporation

Black Entertainment Television

GREE Inc

English UK Ltd

Brightstar 20:20 Ltd

Duke of Edinburgh Award

Albion Cosmetics

BTG International Limited

MTV

IAG/British Airways

Warner Bros. Entertainment Inc.

Work highlights

  • Successfully represented the Duke of Edinburgh Award in a complaint under the Uniform Domain Name Dispute Resolution Policy (UDPR) with the WIPO to contest a domain name that infringed the client’s ‘D of E’ trade mark.
  • Advised GREE, Inc and successfully carried out additional trade mark searches and filings in the UK and Germany following its acquisition of Pokelabo.
  • Filed a substantial number of trade mark applications on behalf of Albion Cosmetics; conducted trade mark searches in the EU and UK; and negotiated a worldwide settlement after two of its trade marks were the subject of opposition proceedings.

Potter Clarkson LLP

Potter Clarkson LLP has successfully consolidated and grown its practice after several years of significant change following the introduction of its licensing and litigation teams in 2016. With offices in the UK, Denmark, Sweden and Germany, the group has a distinctly international outlook and is able to assist its prestigious client list with complex cross-border matters. The group's portfolio of expertise includes brand clearance and trade mark prosecution work, including representation in contentious proceedings at the UKIPO and the EUIPO, transactional work, and enforcement and litigation matters. Since February 2020, the firm has offered a specialist IP consultancy service to better assist with IP audits, due diligence matters and strategic IP mandates. The Nottingham-based Sanjay Kapur and Janella Barr and London duo Sarah Talland and Emmy Hunt are the practice heads in the UK. Stephen Kinsey retired.

Other key lawyers:

Lucy Mills; John Peacock

Testimonials

‘Excellent one-stop shop for litigation advice/support, IP registration work and general IP advice. Combines brilliant academics with practical commercial advice and understanding of the needs of our business. They feel like a part of our in-house team.’

‘John Peacock has endless knowledge and enthusiasm. One of the nicest people you will meet in the business with fantastic experience and comprehensive understanding of issues.’

‘Friendly and efficient.’

‘Very professional, quick to respond and easy to work with.’

Key clients

INEOS Automotive Limited

ABG EPE IP LLC (Elvis Presley Estate)

Wadworth & Co. Limited

LRC Products Limited

Reckitt & Colman (Overseas) Hygiene Home Limited

HBI Branded Apparel Limited, Inc.

DHP Family Ltd

Hyundai Motor Company

Work highlights

  • Represented Ineos Automotive Limited in multiple oppositions before the UKIPO and an appeal to the High Court against Jaguar Land Rover Limited’s applications to register various 3D shapes of its Defender motor vehicle for motor vehicles in Class 12 and other merchandising goods and ancillary services.
  • Represented ABG EPE IP LLC (Elvis Presley Estate), the trade mark owning company of the Elvis Presley Estate, in an EUIPO opposition to prevent registration of the trade mark ‘BREWDOG ELVIS JUICE’ for beer.
  • Successfully defended Wadworth & Co. Limited against an opposition brought by Home Box Office Inc., the owner of various rights in the mark ‘GAME OF THRONES’, against the client’s application for label mark ‘WADWORTH GAME OF STONES’.

Stobbs IP

Trade marks and brands boutique Stobbs IP has offices in Cambridge, London, Sheffield and Alicante. The practice led by Julius Stobbs offers a unique combination of trade mark prosecution services, commercial advice, litigation and technological support. Its portfolio of expertise includes investigations, conducted by the in-house Brand Intelligence Team, anti-counterfeiting matters and online enforcement of IP rights, an area of particular strength along with domain name disputes. The group's stellar track record in the management of large trade mark portfolios and its experience in contentious proceedings, especially oppositions and appeals before the UKIPO and the Appointed Person, have attracted an impressive client roster that includes multinationals and major UK companies, primarily from the social media, publishing, fashion, entertainment and sports sectors. Michelle Phua joined from an in-house position at Square Enix in November 2019 and Esther Jolley, formerly an independent brand consultant and coach, joined in February 2020 to bolster the licensing team.

Practice head(s):

Julius Stobbs

Testimonials

‘Commercial, accurate and easy to use.’

‘An impressive group of dedicated and hardworking trade mark attorneys.’

Key clients

7-Eleven

ABInBev (Budweiser, Stella Artois, Corona, Becks, Hoegaarden, Leffe, etc)

AG Barr (Irn Bru)

ASOS

Balfour Beatty

Barclays

Beiersdorf (Nivea etc)

BullGuard

Brown Forman (Jack Daniels etc)

Cambridge University

Canada Goose

Cancer Research UK

Channel 4

Citco Converse

DKNY

Eton College

Faber & Faber

Facebook

Federal Mogul

Ford Models

Garrard & Company (jewellers)

Glencore

GoPro

Grandmaster Flash

Great Ormond Street Hospital (GOSH)

Iglo Foods (i.e. Birdseye, Findus, etc)

Informa Plc

Instagram

Just Eat

Orla Kiely

LADBible

McDonalds

MacMillan Publishers

Marshall Amplification

Mars Wrigley

Meyer Bergman

Monster Inc

Mothercare

Nike

O2

Oculus

PepsiCo

PurpleBricks

Quintessentially Group

Sanrio (Mr Men)

Snap Inc (Snapchat)

SSAT (The Schools Network)

Ted Baker

Tottenham Hotspur FC

Tumblr

Upfield

Verizon Media (including Yahoo/Oath)

Whatsapp

Wilmington Plc

YouView

Marks & Spencer

SkiptheDishes Restaurant

Olive and Orange Ltd

The Liverpool Football Club

Capri Sun GMBH

Unit4 N V

Raspberry Pi Foundation

Automobil Lamborghini S P A

Stanley Black &Decker

Energizer Holdings Inc

Corelle Brands LLC

General Mills

Moonbug Entertainment

Harley Davidson U S A, Inc

Tommy Hilfiger Europe BV

England and Wales Cricket Board

Paramount Pictures

GVC Services Ltd

Treasury Wine Estates

Slater and Gordon (UK)

Work highlights

  • Advised Ringside Boxing in trade mark invalidation proceedings brought by fashion brand Honey Punch against the client’s trade mark registrations for ‘HONEYPUNCH’ in the UK and the EU.
  • Acting for Tottenham Hotspur FC in relation to its global brand strategy and enforcement matters, including particular projects around its new stadium and reaching the Champions League Final.
  • Took over responsibility for the management of the global brand portfolio of GVC Holdings, including over 1,200 active trade marks in over 70 territories, with over 30 active disputes.

Appleyard Lees

Appleyard Lees offers a combined bench of trade mark attorneys and solicitors, including several dual-qualified patent and trade mark attorneys, allowing for the provision of the full range of trade mark prosecution services, from strategic portfolio advice, the filing of trade mark applications and representation in potential opposition and appeal proceedings all the way to litigation matters and transactional work. With four Northern English offices in Manchester, Leeds, Halifax and Alderley Park and another office in Cambridge, the firm counts a string of renowned British companies as well as start-ups among its clients, but its client roster also includes a substantial number of well-known international brands. Leeds duo Dick Waddington and Robert Cumming direct the practice.

Practice head(s):

Dick Waddington; Robert Cumming

Key clients

British Steel

DName-iT NV

Donnigan

Smile Direct Club LLC

Jemella (GHD)/Coty

Moncler

Pukka Pads 2000 Ltd

Puma

Walmart Inc./Asda

Work highlights

  • Represented one of Michael Gleissner’s companies in a dispute with President Trump’s IP holding company in relation to the trade mark ‘TRUMPTV’.
  • Represented Moncler in anti-counterfeiting matters, working with the in-house legal team to develop a global strategy to address online and offline counterfeiting and assisting with the strategy’s implementation, including court litigation, in the UK.
  • Acted for Smile Direct Club in relation to an ongoing dispute with Your Smile Direct Limited concerning five opposition proceedings at the EUIPO and the issuance of proceedings against Your Smile Direct for trade mark infringement.

Bristows LLP

Bristows LLP continues to excel in brand management trade mark matters, providing strategic advice on portfolio structuring, clearance searches, registration proceedings, commercialisation matters and litigation. The group's caseload is highly international, including managing the trade mark portfolios of a significant number of high-profile clients and a substantial amount of opposition and appeal work at the EUIPO. The trade mark attorney team is part of the firm's renowned wider IP offering, allowing clients to draw on the experience of attorneys and solicitors for complex matters involving contentious and non-contentious elements. Ian Gruselle is the head of the trade marks portfolio practice. Solicitor advocate Simon Clark directs the brands, designs and copyright practice.

Practice head(s):

Ian Gruselle; Simon Clark

Other key lawyers:

Jennifer Dzafic; Abigail Wise

Testimonials

‘The Bristows team are always extremely proactive and get to know their client’s business inside-out. They really are an extension of the in-house legal team.’

‘The work of the team shows a strong sense of responsibility, and replies are very clear and targeted. The most important thing is the team has a strong sense of mission, that is, it must help clients achieve their goals.’

‘Ian Gruselle is very good at proposing strategies for clients. He is so kind and cares about the interests and benefits of the clients. He always does work proactively.’

Key clients

Mondelez International (brands include Cadbury, Kraft, Oreo, Kenco, Carte Noire, Milka and Halls).

Vice Media

Fidelis Underwriting Ltd

Vectura Group PLC

Telefonica Brasil SA (VIVA)

NIO NEXTEV Ltd

GTech

The Guardian News and Media

WPP Group

The Financial Times Ltd

BAFTA

FatFace

Diageo

Work highlights

  • Represented Vectura Group PLC in one of the largest passing off cases in recent times with a 14-day trial in July 2019.
  • Successfully fended off an opposition from one of the companies controlled by Michael Gleissner on behalf of Telefonica Brasil SA (VIVA).
  • Assisted WPP Group with the coordination and management of its worldwide trade mark portfolio (except in the US), including assistance with trade mark infringement matters and domain name disputes.

Carpmaels & Ransford LLP

The team at Carpmaels & Ransford LLP recorded further growth in its trade mark prosecution practice, taking over a substantial number of valuable trade mark portfolios for international and domestic clients. In addition to assisting with clearance matters, registration proceedings, and transactional and commercial matters, the team offers in-depth knowledge of contentious trade mark issues. With the team well versed in opposition and appeal proceedings in the UK, the EU and elsewhere, and noticeably more active in trade mark litigation, the success of the practice's strategic shift towards high-stakes contentious work is becoming increasingly apparent. Roger Lush and Jonathan Day form the duo at the helm of the practice.

Practice head(s):

Roger Lush; Jonathan Day

Other key lawyers:

Lara Elder

Testimonials

‘Great people, great listeners, understand the client’s aims.’

‘Roger Lush has helped us manage a deeply complex range of marks across the globe with ease and while managing costs.’

Key clients

Allergan (JUVÉDERM & Botox)

Deere & Company

Umarex GmbH & Co. KG

The Royal Automobile Club Motor Sports Association Limited

Western Digital, Inc.

Celgene

Manzanita Capital (SpaceNK, Diptyque, Byredo, Kevyn Aucoin, Eve Lom, Susanne Kaufmann)

McIlhenny Company (i.e. TABASCO)

Compass Pathways Limited

Aphria Inc

Belron International

Biogen MA Inc

Work highlights

  • Handled English High Court litigation and pan-EU litigation for Allergan, as well as over 200 trade mark oppositions and cancellations around the world, in relation to its leading dermal filler, JUVÉDERM.
  • Acted as UK counsel for the world’s largest entertainment company, including assistance with numerous clearance, filing, opposition and litigation matters.
  • Acted as UK counsel for John Deere and its agricultural product business, assisting the client with general advisory and dispute work, including against unauthorised third-party use of its iconic colour scheme and logo.

Cleveland Scott York

Cleveland Scott York advises domestic and international SMEs and multinationals on strategic matters and portfolio management as well as, increasingly, on contentious matters. Able to assist clients from a wide range of sectors, including the food and beverage, financial services, transport, tobacco and pharmaceutical sectors, the team of led by Jonathan Clegg increased its heft in the market with the promotion of the Hatfield-based Alicia Instone to partner in October 2019.

Practice head(s):

Jonathan Clegg

Testimonials

‘Very knowledgable and responsive at very good prices.’

Key clients

Bramley & Gage Ltd

Transport for London

Prism FP Analytics

The Zockoll Group

Buro Global Ltd

Starr International Company, Inc

Rolls Royce plc

Laboratory Corporation of America

Flowers Bakeries

DiamondAir International

Work highlights

  • Conducted clearance searches in the US which identified potential problems for Prism FP Analytics LT, working closely with US attorneys to limit the specification of the client’s application in order to avoid formal opposition by a third party, securing successful registration of the application.
  • Negotiated a co-existence agreement with the opponent on behalf of The Zockoll Group following an opposition filed against the client’s UK application, ensuring that the client’s mark proceeded to registration.
  • Successfully secured the cancellation of an earlier mark cited against Buro Global Ltd’s application in South Korea, thus removing an obstacle to the registration of the client’s application.

CMS

CMS stands out through the breadth of its trade mark offering, its clear international outlook - the EU trade mark and designs practice has been led from the firm's Warsaw office since March 2019 - and its strong track record in high-stakes brand protection and management work. Under the leadership of practice head Sarah Wright, the group assists clients from a wide range of sectors with the management and development of their trade portfolios, with the consumer product, technology, financial services, media, real estate and retail sectors generating a particularly busy stream of instructions. The firm's strong litigation offering is another key asset. Anna Brackenbury made partner in May 2020.

Practice head(s):

Sarah Wright

Other key lawyers:

Anna Brackenbury

Key clients

Legal & General

MacAndrews

Sky

JTI

Microsoft

Dentsu Aegis Network

Nestle

The Crown Estate

eBay

Floris London

Hakkasan restaurants & nightclubs

Imagination Technologies

The Ivy restaurant group

Work highlights

  • Assisted Sky with clearance, prosecution and opposition matters worldwide alongside multiple disputes both in the UK and internationally.
  • Assisted Legal & General with a wide variety of matters, including securing a settlement in respect of a multi-jurisdictional dispute on commercial terms favourable to the client.
  • Advised The Crown Estate on all branding and other IP matters, including on the brands ‘REGENT STREET’, ‘WINDSOR ESTATE’, ‘CAFÉ ROYAL’ and ‘CROWN’.

Dehns

Dehns's key assets include its longstanding experience in advising clients on cross-border matters involving trade mark trolls, especially cases involving the jurisdictions of China, South America and the Middle East. With its broad sector coverage, proven strength in opposition and appeals work and disputes, and ability to assist various types of clients, ranging from large multinationals all the way through to individuals, the team has built an impressive client list, counting many well-known brands as long-term clients and handling the management of their trade mark portfolios. Practice head Roberto Calamita is based in the London office. The firm has other key trade mark hubs in Brighton and Munich.

Practice head(s):

Roberto Calamita

Testimonials

‘Dehns is always my first choice for trade marks work. They are very capable, adaptable and good value.’

‘Joseph Letang is brilliant at turning things around quickly for registrations, and giving pre-registration advice that is clear, concise and easily understandable.’

‘Our trade mark needs are somewhat complex and Dehns have a great team that respond quickly with great enthusiasm and, importantly, timely and intelligent advice.’

‘The individuals involved have an understanding of our brand and seem to genuinely take an interest in our company. Joseph Letang is a standout.’

‘Comprehensive service and expertise in their area.’

‘Clare Mann is very diligent and manages our portfolio effectively.’

‘Dehns offer a fully comprehensive service which perfectly meets the needs of our company. They offer us a name-watch service as well as keeping us updated with new legislation and changes to existing legislation. We find the team at Dehns to be reliable, approachable and transparent, and we are confident that any information we receive from them will be accurate.’

‘Elaine Deyes is extremely knowledgeable on all aspects of trade marks, not just in the UK and Europe but worldwide. She always responds promptly, but thoroughly and accurately, to any requests or queries we may have. She liaises well on our behalf with other agents and seems to pre-empt situations before they become problems.’

‘Clare Mann is pragmatic and resourceful.’

‘Strong knowledge and skills, highly responsive with both detailed and pragmatic advice, proactive.’

‘Elaine Deyes is extremely capable. She is able to provide both comprehensive advice as well as pragmatic solutions. Not everything is on the clock, so she is happy to provide initial advice/recommendations.’

‘A wealth of knowledge, consistency in who you deal with, quick turnaround times, accuracy as to detail and a friendly nature. Looking after a portfolio for a large organisation is made so much easier with Dehns.’

‘Often the demand we have for branding and trade marks is reactive, which requires advice and action on tight deadlines, and I have every confidence that Dehns will resolve our issues within our timescales. They are very thorough and transparent. I can get an idea on future costs which makes my life easier. Most importantly, I have a great working relationship with our attorney so it’s always a pleasure to deal with them.’

Key clients

Pret a Manger

Trainline.com

Avon Products

Honda Motor Europe

Tullet Prebon

Apple Corps

Brighton & Hove Albion Football Club

Marley Limited

Playboy

QIC Global

No1 Lounges

Work highlights

  • Represented Drum Workshop, Inc. in UKIPO trade mark registration proceedings regarding the sign ‘THE DRUMMER’S CHOICE’, successfully proving acquired distinctiveness after provisional refusal and securing UK registration of the sign.

Gill Jennings & Every LLP

The Gill Jennings & Every LLP team is experienced in international clearing searches, strategic advice on trade mark portfolio development, matters involving trade mark squatting, both in the UK and abroad, and trade mark registration proceedings, including contentious work. It has a strong track record of assisting with domain names issues, complementing the team's trade mark expertise extremely well. The group, which is led by Alasdair MacQuarrie, fields a varied caseload in terms of sector coverage, with recent highlights including advising clients from the pharmaceutical, food and beverage, fashion, hospitality, and games sectors.

Practice head(s):

Alasdair MacQuarrie

Other key lawyers:

Edward Carstairs

Testimonials

‘GJE provide us with great advice on our trade mark portfolio. They are highly commercial and help us to decide which battles are worth fighting. Of all the law firms we use, across all areas, GJE represent the best value for money.’

‘Ed Carstairs provides excellent and highly commercial advice.’

‘GJE have been acting for us over a number of years on all legal matters in relation to trade marks. The firm’s specialism in intellectual property means that we have total confidence in their expertise and pragmatic advice. The fact that they have dealt with most issues before allows them to give informed opinions and respond quickly to all enquiries. This efficiency also ensures that costs are minimised.’

‘All of the individuals that we have dealt with at GJE have been professional, but personable. They have a genuine interest in our business. They took the time to understand our market and our company culture, resulting in more relevant advice. Edward Carstairs provides clear, detailed guidance and we trust his advice.’

‘GJE have truly acted in the capacity of trusted adviser to advise and support our business. Their team has strength and depth and has been an absolute pleasure to work with. Nothing is ever too much trouble. Given this level of client service, it has been an excellent value for money outcome for us.’

‘What stands out for me is the clarity of communication.’

‘A strong, client-focused team, particularly on the trade mark side.’

‘Ed Carstairs is responsive, providing high-quality advice and creative solutions.’

‘GJE is a rare breed, in that its patent and trade mark attorneys are as sharp and intelligent as you would expect from specialists in those fields, but are also extremely personable and commercially aware.’

‘Edward Carstairs reflects the wider firm at GJE given that his technical knowledge is exceptional and he’s also extremely personable. As a result, he delivers high standards of client care and I have no hesitation in referring my clients to him when they need trade mark advice.’

‘Very knowledgeable, professional and efficient.’

‘The team is commercial and gives useful, pragmatic advice which is appreciated by clients.’

‘Ed Carstairs and Alasdair MacQuarrie are a delight to work with. They have a wonderful manner with clients.’

Key clients

Hasbro

Pfizer

MasterCard Inc.

Focusrite Audio Engineering Limited

World Wrestling Entertainment Inc.

Premier Foods (Ambrosia, Bisto, Cadbury cakes, Mr. Kipling, OXO, Sharwood’s)

Under Armour

Arla Foods (Lurpak, Cravendale, Lactofree etc)

Yamaha

Zoetis

Eaton Corporation

GW Pharma

Integra LifeSciences Corporation

Lindt Chocolate

Mitsubishi Motors

Amazon Technologies Inc./Whole Foods Market

Work highlights

  • Advised Birkenstock on the registration of non-traditional trade marks and the complexities of evidence of distinctiveness acquired through use; separately, successfully overcame absolute grounds refusals at the UKIPO for one of Birkenstock’s important brand names.
  • Conducted IP due diligence analysis for Focusrite Audio Engineering Limited in relation to the acquisition of Adam Audio and Martin Audio, representing a combined value of £55m.
  • Continuing to represent WWE across all areas of UK and EU trade mark work, namely prosecution, opposition, enforcement and miscellaneous advice.

HGF Limited

HGF Limited fields one of the busiest trade mark filing caseloads in the UK market, and is particularly active in EU trade mark applications. The well-rounded team also has notable strength in contentious work, especially in opposition and appeal proceedings and disputes. The practice is primarily active for clients from the UK, Ireland, the Netherlands, Switzerland and Germany, but also handles a substantial number of instructions for US and South Korean clients, particularly major companies, followed by medium-sized growth companies, universities and other public sector clients. The Leeds-based trio at the helm of the practice consists of CEO Paul Sanderson, chairman Jason Lumber and David Potter as the head of the trade marks practice. Alastair Da Costa, also based in Leeds and an experienced manager, joined the firm as strategic development director and executive board member. Rigel Moss McGrath joined the Manchester office from W P Thompson & Co.

Testimonials

‘Client-focused advice for reasonable costs.’

‘Tuned in to our priorities and preferred ways of working.’

Key clients

Delphi Technologies

Morning Foods Limited

Novabiotics Limited

Thomson Reuters Global Resources

Telefonica S.A.

Fresh Trading Limited (Innocent Drinks)

Toyota

AGA Rangemaster Group

Jack Wills

Work highlights

  • Advised Delphi Technologies on a global filing programme for its new branding.
  • Managed the global trade mark portfolio for Aberdeen-based biotechnology company Novabiotics Limited.
  • Provided a full suite of services to Thomson Reuters Global Resources, including filing and prosecuting a large number of trade mark applications in the UK and EU and representing the client in various trade mark oppositions.

Keltie

Keltie offers a comprehensive trade mark prosecution service with particular experience in the pharmaceutical, sports, fashion and jewellery sectors.

Marks & Clerk Law

Marks & Clerk Law remains a key player in the trade mark prosecution market, both for domestic and cross-border instructions. With its experienced prosecution team and successful litigation bench, the firm offers a well-rounded portfolio of trade mark services. The firm has expanded its presence in the North of England with the establishment of a base in Leeds, its ninth office in the UK, to complement its existing office in Manchester; former Walker Morris LLP practitioner Heather Williams was appointed as a partner in the Leeds office in February 2020. Simon Mounteney in the London office is the firm's UK managing partner. The Oxford-based Daniel Talbot-Ponsonby has taken over as international chair from Maureen Kinsler in Edinburgh. Campbell Newell retired in 2019.

Mathys & Squire LLP

Mathys & Squire LLP expanded its office network to Germany with the opening of its Munich office in 2019. The team led by Margaret Arnott and Gary Johnston, who are based in London and Manchester respectively, is well versed in assisting large companies and well-known brands with the full range of trade mark prosecution work, including with matters involving cross-border elements. With its growing design practice, especially in the UK and Israeli markets, its established trade mark practice for start-ups and accelerators, and its teams in Shenzhen and Tokyo, the group is on track to remain a key player in its field. Its litigation offering complements the prosecution practice well.

Practice head(s):

Margaret Arnott; Gary Johnston

Testimonials

‘A partner-led service which has made a strong effort to meet our requirements and adapt to changes within the business.’

‘Margaret Arnott has played a hands-on role in managing all of our trade mark work, and promptly makes herself available to discuss matters and management issues. She has quickly adapted the way her team works to meet our operational requirements and manage costs.’

‘Margaret Arnott explains everything in plain English, which makes decision-making much more straightforward.’

‘Very much like working with people who are members of the same team as you.’

‘The team provide us with in-depth knowledge and expertise in relation to all trade mark matters and provide pragmatic advice whether we are registering new trade marks or taking steps to protect existing ones.’

‘The team under Margaret Arnott’s lead are well organised, reliable and responsive. We value their timely reminders and also that they are always keen to provide advice and support.’

Key clients

The Cotswolds Distilling Company Limited

Gymshark Limited

Edward de Bono Limited

Work highlights

  • Advised UK-based distillery The Cotswolds Distilling Company Limited on devising a means of securing the protection of ‘COTSWOLDS’ as a word-only mark, which involved a robust filing and opposition strategy.
  • Handled a full IP audit for Gymshark to protect and begin worldwide enforcement of the extremely valuable IP within the business and managed its international trade mark portfolio.
  • Managed the international trade mark portfolio of Edward de Bono Limited, the trade mark holding company of Edward de Bono.

Mewburn Ellis LLP

Mewburn Ellis LLP continued its growth trajectory with the addition of a significant number of junior practitioners to the trade mark practice. Under the leadership of practice head Kate O’Rourke, the team advises domestic and international clients, including many large foreign players, on the full range of trade mark matters, assisting with strategic portfolio development matters, registration proceedings and enforcement, including custom seizures. Additionally, the firm offers an experienced bench of IP litigators. Jacqueline Pang made partner in April 2019 and the Bristol-based Edmund Harrison was promoted to trade mark director in April 2020.

Practice head(s):

Kate O’Rourke

Testimonials

‘This practice is very knowledgeable of trade mark laws and gives detailed advice for handling matters.’

‘Andy King is excellent in providing recommendations with clear legal reasoning, plus the benefits and risks for different courses of action.’

‘We have received a professional service related to patents and trademarks from Mewburn Ellis for over 15 years. They have provided us with accurate advice and effective information. Our company and Mewburn Ellis have established a good relationship over a long time.’

Key clients

Alliance Pharma plc

Astex Therapeutics Ltd

Avec Sport

Axon Enterprise, Inc. (formerly Taser International, Inc.)

Banhams Patent Locks Limited

Bentley 1962 Ltd

Bioline Reagents Limited

Capital Group Companies

Citymapper Limited

Coventry Building Society

Dechra Pharmaceuticals Plc

Defected Records Limited

Dogs Trust Trustee Limited

Dotcom Retail Limited

Greggs

Halo Lifestyle LLC

Hilti

Huntsworth plc

In-N-Out Burgers

INTERSNACK GROUP GMBH & CO. KG

Kabushiki Kaisha BANDAI NAMCO Entertainment

Karsten Manufacturing Corporation

Mi-Pac Trading Limited

Novadaq Technologies Inc.

Purezza Limited

S.R.G Apparel Plc

Scott Bader Company Limited

Slush Puppie

Smart Technologies ULC

Swatch

The Museum of Modern Art

Valent BioSciences Corporation

Warminster School

Work highlights

  • Assisted Alliance Pharmaceuticals Limited with a successful appeal to the General Court of the EU, helping to secure a judgment that clarified  the law on the correct interpretation and construction of specifications.
  • Advised Dogs Trust on the transfer of IP assets and the recordal of those assets, the expansion of trade mark registrations for sub brands of ‘A Dog is For Life’ for additional goods and services, and in particular registration in the US and Bosnia.
  • Took over responsibility for the trade mark portfolio of Elan Holdings and assisted with developing an international filing strategy to protect its marks, including EL&N, in many countries around the world.

Reddie & Grose LLP

Reddie & Grose LLP is particularly experienced in assisting technology and financial services clients with their trade mark matters, but fields a varied overall caseload that also involves advising clients from the consumer product, entertainment, automotive and charity sectors. Although domestic and EU trade mark matters account for the majority of the firm's cases, the group also demonstrates strength in matters with a heavy cross-border component, involving several non-EU jurisdictions. With the promotion of trade mark attorney and litigator Dale Carter to partner in April 2020, the team led by Helen Wakerley increased its weight in the market.

Practice head(s):

Helen Wakerley

Testimonials

‘Helen Wakerley is the doyenne of trade mark law. Her advice is excellent. She is very commercial and extremely client friendly. She and her team also turn work around really fast. I greatly enjoy working with them.’

‘The Reddie team provides clear, concise and practical advice with the client’s business objectives in mind.’

‘Helen Wakerley is exceptionally responsive and available. She is a great sounding board, out of the box thinker, and someone who is a team player. I rely on Helen’s strategic contributions.’

‘A good team of bright, knowledgeable people across trade marks and patents.’

‘Alice Findlay’s huge experience is reflected in her broad knowledge base, excellent commercial sense and commitment to her clients’ needs. Tom Sharman also stands out.’

‘Reddie & Grose are timely in their responses. They have been efficient and effective with our cases.’

‘With Helen Wakerley in particular, we feel confident sending requests that are out of the box. Helen is efficient when it comes to standard trade mark work, and remarkably effective in terms of helping us develop strategies to protect atypical works. She is also cognisant of our budgetary restraints and direct in terms of keeping us focused on sticking to financial goals.’

Key clients

Tomy International

Work highlights

  • Cleared and filed new trade mark applications for Tomy International, advising on the scope to cover present and future plans under the brand and extending from the narrow listings used in the USPTO.

UDL Intellectual Property

The UDL Intellectual Property team demonstrates particular strength in high-stakes strategic trade mark matters and stands out through the longevity of its relationships with a large number of well-known international brands. The food and drink, fashion, luxury, sport and leisure, creative, media and gaming sectors form the heart of the practice. The group offers a comprehensive trade mark prosecution service as well as a litigation team, covering the planning and implementation of trade mark portfolio development strategies and opposition and appeal proceedings. Alan Fiddes in Leeds and Alison Simpson in London and Milton Keynes are the firm's joint managing partners.

Practice head(s):

Alan Fiddes; Alison Simpson

Testimonials

‘In-depth knowledge of all things IP.’

‘Pay attention to detail, knowledgeable, work fast and methodically.’

‘These guys really know our business and our approach to our brands.’

‘Gareth Price provides a prompt, knowledgeable service. He is proactive and engaged, and not afraid to make recommendations.’

‘Annabel Hanratty has been an extremely competent attorney. Her key strengths include her strong, timely communication, professional and pleasant approach to work, and appropriate suggestions and reflections. I would quickly recommend Annabel for any trade mark-related work.’

‘The team provides incredibly pragmatic services. The approach is transparent, thoughtful and shows a great understanding of our business needs.’

‘They take a very collaborative approach and offer strong guidance on the best methods to cover the brand, geared to brand size and reach rather than the one-size-fits-all approach that we have experienced before.’

‘Anna Szpek is very personable and goes to great lengths to form relationships and understand the internal business complications.’

‘UDL have provided an effective strategy to address my IP challenges. The team is flexible to my demands. They have a commercial outlook, recognise financial constraints and maximise cost-efficiency. I have been delighted with how they have delivered what they promised, the timescales they operate to, and how friendly and welcoming they are to work with. I was also very impressed by the vast experience and credentials that the UDL team have in an eclectic range of sectors.’

‘Great account management and client care. They are very practical and take time to get to know your business.’

‘Alison Cole is very impressive. She took the time to meet the business and to explain the best way to protect inventions and trade marks.’

‘Alison Simpson is excellent at making complex processes accessible and translating IP for business people.’

Key clients

1000 Mile Sportswear

Abergavenny Fine Foods Limited

Alpes Marques (MONT BLANC beer and whisky)

Amino Communications

The Alumasc Group

Amity Luggage & Bags Limited

Anderson Entertainment

Angelo Galasso

Anna Park Limited

Arquer Diagnostics

Atomic Austria

Baker Ruskinn Group

Biosensors Europe

Black Neon Digital

Black Sheep Brewery

Blacks Outdoors Ltd

Blue Zoo Animation/Alphablocks

Boehringer Ingelheim

BOU Brands LLC

Breast Cancer Care

Bruce Green Ltd

Candy Hoover

Carr’s Group Plc

Chateau Tanunda

China Construction Bank

Clarion Housing Group

Cygnet Spirits Limited

David Brown Santasalo

Eczacibasi (Vitra)

Electrocomponents Pl

END. Clothing

Energie Fitness

Fruitcake Consulting Ltd

GBUK Group

Geely Holdings

Go-Ahead Group Plc

Guangdong Oppo Group

Hermès International S.A.

Hippychick Limited

Hitachi Limited

Hong Kong NETEASE Interactive Entertainment Limited

Horton Group International Ltd

Inchcape Shipping Services

Intertek Group Plc

Instant Effects/Beauty DNA/CULT 51

JD Sports

Jem + Bea Limited

JM Weston

JoJo Maman Bebe

Latchways/MSA

La-Z-Boy

Lidl

Lifecare Innovations

Liverpool Victoria Friendly Society Ltd (LV)

Lotta From Stockholm

Marathonbet

Maybourne Hotels Group (Claridge’s, The Berkeley, The

Connaught)

MB97 Limited (Marathonbet)

Nixon Peabody

No Gunk Ltd

Northgate plc

nPower

Octopus Publishing Group

Oppo

Orkla (Panda confectionery)

Pet-ID Microchips Ltd

QS Quacquarelli Symonds

Radical Sportscars

Reignwood Investments

Revolution Beauty

Rhino Design

RIBA Enterprises (NBS)

RSPB (Royal Society for the Protection of Birds)

Schneider Electric

Shane Cooper Aesthetics Ltd

Shanghai Balance Automotive Equipment Co Ltd

Skinny Brands

Snapdragon IP Monitoring Limited

Swim Wales

Switch Packaging Ltd

The Dining Card Group

The Rogue Group Ltd

The Tofoo Company

TickX

University of York

USL Group

Wanda Group

Wavin BV

Wentworth Golf Club

Woods Canada Apparel

Zilico Limited

Work highlights

  • Advised Maybourne Hotels Group (Claridge’s Hotel) on high-profile opposition proceedings, successfully increasing the strength and value of its brand.
  • Assisted Shanghai Balance Automotive Equipment Co Ltd with fighting against bad faith trade mark transfers, with which the owner tried to gain a major financial advantage.
  • Successfully reversed an EUIPO opposition division decision on behalf of two Harvard academics.

Wilson Gunn

Wilson Gunn remains among the most active trade mark filing practices in the UK and EU market, a testament to the firm's experience in assisting with the development and management of trade mark portfolios. The group is very adept at handling complex and high-stakes portfolios, often for well-known brands and companies, both domestic and international. Its pronounced focus on the sports and retail sectors, in addition to its expertise in assisting clients from the healthcare and fashion sectors, are standout features. Michael Douglas in the Manchester office is the head of the practice.

Practice head(s):

Michael Douglas

Testimonials

‘Knowledgeable, proactive team who take the right points and make a real difference to the situation for a client. Marc Lewis and Michael Douglas are particularly impressive.’

‘Marc Lewis is approachable, knowledgeable and personable. I would recommend him to anyone.’

‘The team is genuinely user friendly, down to earth and cost conscious. They are very mindful that clients don’t have an unlimited budget and work with clients to get maximum coverage for a budget price. They also have a good, broad understanding of intellectual property.’

‘Michael Douglas is the standout partner for me for user friendliness. He is down to earth and service orientated.’

‘James Robey is technically excellent.’

‘I am particularly impressed with James Robey because he always gives straightforward advice indicating the strengths and weaknesses of our position.’

‘Expert, practical and timely advice.’

‘Tim Rose is approachable, efficient and pragmatic.’

‘Wilson Gunn offer a wealth of experience in the sports sector. This adds an additional and reassuring dimension to the service they provide sports clients. Coupled with their competitive pricing structure, Wilson Gunn are a sensible choice for those in the sector.’

‘Marc Lewis’s advice is practical and takes into account the factors that are important to us as an organisation. When faced with a tight deadline he is quick to turn things around.’

‘Extremely commercial, sound and on-point advice.’

‘Very user-friendly and easy to deal with.’

‘Michael Douglas is an absolute star. He is great to work with and clients love him.’

Key clients

Boohoo Group

GO Outdoors

Jacobson Group

Manchester United

Mondelez International

Mölnlycke Health Care

Morrisons

Natural History Museum

Tangle Teezer

The Football Association

Work highlights

  • Continued to advise Manchester United FC on its global trade mark portfolio, including strategic advice on brand protection.
  • Appointed by The Football Association to manage its international trade mark portfolio.
  • Advised top-four supermarket retailer Morrisons on a range of trade mark matters.

Abel & Imray

Abel & Imray has a strong track record in strategic trade mark matters, including opposition proceedings, clearance projects and dispute management. The group covers a wide sector spectrum, with the pharmaceutical sector as a particularly important pillar of the practice.

Ashfords LLP

Ashfords LLP added dual-qualified solicitor and chartered trade mark attorney Clare Jackman, formerly at Norton Rose Fulbright, to its bench in September 2019. With its mixed team of solicitors and trade mark attorneys, the firm is able to assist with the full range of trade mark services, with a particular focus on the management of large global trade mark portfolios, especially for clients from the luxury goods sector. In addition to fielding a busy UK and EU trade mark filing caseload, the group is active in transactional work and IP disputes. Carl Steele and new arrival Jackman direct the practice from the Exeter office.

Practice head(s):

Carl Steele; Clare Jackman

Testimonials

‘Carl Steele is friendly, attentive and passionate about his work.’

‘They are a very pleasant team to deal with, and stick to their deadlines. Their communication levels are extremely good and they are generally very responsive.’

‘With Carl Steele, I never have to wait long for a response, even if it is just a holding email. When I do get the advice, I always know that it is technically spot on, and clearly thought through and structured. He is also a very nice guy.’

Key clients

Velcro BVBA

The Roald Dahl Story Company

Ginsters (Samworth Brothers)

Majestic Wine

J W Anderson

BlackRock

Post Office

The Brand Architekts PLC

Aardman Animations

Facegym

What3words Limited

Pancho Music Inc.

Beat Capital Partners Limited

Tarian Underwriting Limited

Chord Reinsurance Limited

Munitus Agency Limited

Alitus Intermediaries

Brace Underwriting Limited

Work highlights

  • Handling trade mark portfolio management for the Post Office.
  • Acted for Aardman Animations Limited in applying to invalidate an EU designation of an international trade mark registration for ‘aardman’ filed by a Chinese entity.
  • Acted for Velcro BVBA in pursuing various infringers of the famous ‘VELCRO’ trade mark, especially online retailers.

Baker McKenzie

Baker McKenzie is known for its strong trade mark portfolio management practice. Given the firm's wide geographical footprint, cross-border, often global, instructions are a key area of expertise, securing the team a high-profile client roster which includes an impressive number of prestigious multinationals. Core areas of strength include the pharmaceutical, retail and consumer goods sectors, as well as the technology, social media and digital spheres. Solicitor Jessica Le Gros directs the practice.

Practice head(s):

Jessica le Gros

Other key lawyers:

Nadine Archer

Testimonials

‘Responsive and easy to deal with.’

‘A superbly aligned and connected team. They know which level of support is required for different types of work.’

Nadine Archer is very knowledgeable and reliable, with a huge and valuable network.’

‘Jessica LeGros is a very commercially minded and practical lawyer, and also a great people manager, who encourages and supports the personal development of her more junior team members and clients.’

Key clients

Christie’s

Cochlear

CSL/Seqirus

Dropbox

Eli Lilly

Google

HIT Entertainment

Hitachi

HSBC

Ingredion

JCB

Jones Lang LaSalle

Jumeirah

MagicLab

L’Oréal

Novartis

Novo Nordisk

Pinterest

Planet Hollywood

Rio Tinto

SAP

Sony

Sovereign Films

UBM/Informa

Unilever

Warner Bros

Work highlights

  • Continued to provide brand advisory and brand protection services to Unilever, as well as handling disputes in the UK and EU (as well as globally).

Beck Greener LLP

Under the leadership of the renowned Ian Bartlett, the team at Beck Greener LLP saw a significant expansion of its client roster between 2019 and 2020, gaining several well-known clients, including a number from the entertainment sector and a major energy multinational. The group stands out for its track record as one of the most active UK and EU trade mark filers and as an experienced representative in registration proceedings, especially before the UKIPO, in addition to its string of successfully fought IP litigation matters. In March 2019 the firm opened an office in Alicante, the home of the European Intellectual Property Office; the new base is headed up by Rowland Buehrlen.

Practice head(s):

Ian Bartlett

Other key lawyers:

Catherine Jewell; Duncan Morgan

Testimonials

‘Everybody is very laid back, but super knowledgeable. The advice provided can be very easily used and it’s to the point. Basically, they know their stuff and I can only highly recommend working with them.’

‘They are highly responsive, know their stuff and, most importantly, understand the commercial context of their advice. Other PATMAs I’ve dealt with focus on the technical aspects rather than commercial practicalities.’

‘Ian Bartlett is an excellent trade mark expert and I am always sure that I will get a positive outcome.’

‘Thorough knowledge and experience.’

‘Duncan Morgan is well versed in trade mark matters and thorough.’

‘They stand out for their sheer professionalism and enormous depth of specialist knowledge, both individually and as a firm. They are friendly, very approachable and take the time to explain complex issues in a clear and understandable way. They put the client first and ensure that we understand the risk and timescales involved before commencing any action.’

‘Top class. It was a pleasure working with them.’

‘Rowland Buehrlen and his team provide an excellent service. They are real professionals and make all IP matters as easy as a walk in the park for us.’

‘I would recommend Rowland Buehrlen to anyone looking for a great trade mark attorney. He knows what he is doing, and works hard to master what the client is looking for. I gave him a recipe of what I wanted; he took that recipe, worked with it, added to it, and turned it into a masterpiece. He works hard, and is fair with his billing. Rowland not only has that ‘big firm’ background and expertise, but he is great to work with on a smaller level for people like us.’

Key clients

The Condé Nast Publications (e.g. Vogue, Vanity Fair, GQ, Glamour, The New Yorker and others)

CrossFit

PricewaterhouseCoopers

Tiffany and Company

Arçelik

Tapestry (Coach and Kate Spade)

Tapestry (Stuart Weizman)

The Estée Lauder Companies (e.g. Estee Lauder, Clinique, Origins, Aveda, Bobbi Brown, Tom Ford, Jo Malone and others)

Tillotts Pharma

Knight Frank

Telehouse International Corporation of Europe

Sally Beauty International

Flyers Group

Ferdinand Bilstein UK

The Mitchell Group

Workspace Group

Beko

Ed Sheeran

MPL Communications (Sir Paul McCartney)

K-Kaps International

Work highlights

  • Advised PwC on trade marks across the spectrum of its activities, including accountancy, consultancy and outreach, in addition to assisting PwC with brand protection matters.
  • Acted for DTTM Operations in a High Court appeal concerning the appellant’s attempts to register the trade mark ‘TRUMP TV’, in addition to successfully representing the client in first instance proceedings before the UKIPO, in which the trade mark application was refused.
  • Providing ongoing advice to Estée Lauder on a wide range of contentious trade mark matters and representing the client in trade mark litigation, including enforcing the client’s trade mark rights in ‘Jo Malone’ against numerous third parties offering so-called ‘smell-alike’ perfumes.

Elkington + Fife LLP

At Elkington + Fife LLP, the team led by the experienced Chris McLeod continues its organic growth trajectory. The firm's offering encompasses the prosecution of trade marks in the UK and the EU - an area of particular strength - the prosecution of foreign trade marks, including representation in the respective opposition and appeals proceedings, and longstanding experience in design prosecution matters. With its varied caseload, including recent highlights from the IT, food and drink, broadcasting, toys, technology, chemical and consumer product sectors, the group demonstrates its versatility and market knowledge.

Practice head(s):

Chris McLeod

Other key lawyers:

Allister McManus; Mark Scott

Testimonials

‘Chris McLeod is fantastic. We trust him for his trade mark prosecution and enforcement skill.’

‘Chris McLeod is great, as is his colleague Allister McManus. Their prices are highly competitive. Communication with Chris and Allister is clear, helpful and prompt.’

‘The team is highly experienced and efficient. They are responsive and accessible from the most senior to junior members and demonstrate a consistent approach throughout. They have a varied client base with a strong international focus. They have particular expertise in contentious work before the UKIPO on trade mark matters thanks to Chris McLeod, who presents his clients’ arguments in a clear, concise and effective way.’

‘Chris McLeod is a well-known and respected figure in the UK IP profession. His pragmatic and considered approach is effective with clients, his opponents and the UKIPO. He has great practical experience coupled with a good feel for how a case might go. He runs his team with a light touch which allows more junior members to come to the fore rather than shuffle papers in the background. His highly professional approach is leavened by his sense of humour.’

‘Good communication and practical advice.’

‘Chris McLeod consistently provides an excellent service.’

‘We are highly satisfied with the excellent work of the team of Elkington and Fife LLP and Chris McLeod.’

‘Chris McLeod is efficient and knowledgeable, always providing a timely and clear response.’

‘Chris McLeod is extremely knowledgeable. He is truly exceptional in this area and knows the law inside and out. He makes complex tasks seem simple and approachable. He is also a great character to work with – you instantly feel like you have known him for years. He makes it his business to get to know his clients, which makes for a great working relationship.’

‘E&F is, in my view, an excellent, unpretentious, hardworking, talented shop and all the people with whom I have worked have provided excellent support to me. I trust these guys, and find them practical, down to earth and always available to me.’

Key clients

Independent Vetcare Limited

Old St. Andrews Limited

Formula One Management Limited

Koninklijke Philips N.V.

Signify Holding B.V.

BASF SE

Acer Incorporated

Evonik Industries AG

Knijff Trademark Attorneys

Blank Rome LLP

Citation Limited

Appelsdrift Farm (Pty) Ltd/Bruce Jack Wines Limited

Slaughter and May

Farrer & Co LLP

Malvern Panalytical B.V.

Vohkus Limited

Fujifilm Speciality Ink Systems Limited

Corning Incorporated

Decon Laboratories Limited

GZ Systems Limited

Fulham Football Club

Corsearch

Chaos Fashion Limited

The Juice Master Limited/Jason Vale

Memery Crystal LLP

Collyer Bristow

DLA Piper (US)

Work highlights

  • Continued to assist Independent Vetcare Limited/Evidensia with growing and protecting its large portfolio of over 700 trade marks.
  • Successfully defended an appeal from O2 to the Appointed Person relating to the mark ‘CXO2’ on behalf of Vohkus Limited.
  • Continuing to represent Toys R Us/ TRU Kids Inc. (via Blank Rome LLP) in multiple oppositions and other third-party disputes in the UK and EU, primarily in relation to trade marks containing the element ‘R US’.

Fieldfisher

Fieldfisher is exceptionally experienced in the management of large international trade mark portfolios, including the coordination of clients' international development through the registration of new trade marks and, where necessary, representation in the corresponding contentious proceedings. As a key part of the firm's integrated international prosecution and litigation offering, the team is particularly well suited to handling complex matters involving cross-border aspects and contentious and non-contentious elements. John Linneker and Leighton Cassidy, both solicitors, direct the practice.

Practice head(s):

Leighton Cassidy; John Linneker

Other key lawyers:

Hastings Guise

Testimonials

‘The team is incredibly responsive, knowledgeable, and genuinely practical. They think ahead and own the matter. I rely on them implicitly to keep me in the loop on the matters they are handling. Their advice is always detailed and proficient.’

‘Expertise, commercial and market knowledge, always responsive.’

‘Fieldfisher’s team covers the entire range of needs for international clients. Their advice is always commercial. They always seem to have experience of what a client thinks is its unique problem, which gives clients confidence that the lawyers are not learning at the expense of the client. They have an excellent international presence and network which is vital for this area of the law.’

‘Leighton Cassidy has one of the finest intellects in this area of law and unsurpassed experience across the widest range of issues. He is one of Europe’s top lawyers. He manages the team effortlessly and will always find the right expert for the job. He makes the legal analysis of commercial problems seem easy and straightforward, which is a real gift, and is therefore able to create the right team to help the client reach a solution.’

Key clients

Samsung

Lulu Guinness

Take-Two Interactive Software

Caffè Nero

Oasis

Live Nation

Dixons Carphone

Goop

Wilkin & Sons

Sazerac UK

SkyKick Ltd

Work highlights

  • Appointed to take over the global management of the Live Nation (Music) UK group’s trade mark portfolio and brand IP enforcement, including representation in various trade mark disputes and enforcement actions.
  • Co-ordinated a range of work across the world for Sazerac Company Inc, ranging from high-volume prosecution matters to High Court infringement litigation in the UK and elsewhere.
  • Assisted the Solicitors Regulatory Authority with the roll out of the new solicitors qualifying examination (SQE), advising on appropriate IP protection strategies for the names ‘SQE’ and ‘SOLICITORS QUALIFYING EXAMINATION’.

Forresters

Forresters offers a strong EU and UK trade mark prosecution practice, providing assistance in contentious and non-contentious matters. In addition to its offices in the UK, the firm also has an office in Germany.

Haseltine Lake Kempner LLP

Haseltine Lake Kempner LLP, formed through the merger of patent and trade mark firm Haseltine Lake and specialist IP disputes and trade mark firm Kempner & Partners in May 2019, has become one of the most active UK trade mark filers in the market and grown to be a highly experienced representative in UKIPO proceedings. The team assists with the full spectrum of trade mark services, with the prosecution offering coming mainly from the London, Bristol and Munich offices, while the Leeds office is the firm's key IP litigation hub. Leeds-based solicitor Jason Dainty and the Bristol-based Martin Krause, who spends part of his time in the Munich office, form the duo at the head of the practice.

Practice head(s):

Jason Dainty; Martin Krause

Other key lawyers:

Chris Morris; Amanda Mallon

Testimonials

‘They are extraordinarily responsive and knowledgeable and are my go-to firm for matters in the UK and the EU.’

‘Chris Morris is exceptional. He is very responsive but also gets good results for clients.’

‘HLK have become an extension of our legal team, not merely an external resource. The practice have developed their own relationships with key stakeholders in our business and have worked extensively to understand our business as a whole.’

‘Amanda Mallon’s advice is always practical, tailored to the audience and with our business goals firmly in mind.’

Key clients

Nomad Foods Europe (Birds Eye, Findus etc)

Tesco Stores Limited

Kurt Geiger

Hewlett Packard Enterprise

Swatch

Farrow & Ball

Kellogg

JD Sports

Siemens

Roche Diagnostics

Callaway Golf

Jet2.com

Pathway IP Sarl (‘Regus’)

Osram

Ascential

Wren Kitchens

Finastra International (previously ‘Misys’)

Gianni Versace S.r.l.

Giorgio Armani

Imerys

The Restaurant Group

Work highlights

  • Acted for Regus in the High Court on appeal from the UKIPO against Easy Group, in relation to the registered trade mark ‘Easy offices’.
  • Advised Wren Kitchens on a huge international trade mark filing programme, involving over 350 new trade mark filings around the world.
  • Represented Guangzhou Wanglaoji Grand Health Co. Ltd in ten invalidity actions at EUIPO, four oppositions in the UK and two non-use cancellations at the UKIPO.

Lewis Silkin LLP

Lewis Silkin LLP's mixed solicitor and trade mark attorney practice has particular experience in advising marketing and creative sector clients on trade mark matters. The management of international brand disputes and international trade mark clearance searches are areas of particular strength.  The group provides a strapline and slogan protection business and a domain name management offering. Through the acquisition of Ablett & Stebbing in summer 2019, the firm integrated senior trade mark attorney Helene Whelbourn into the team. In addition to its London office, the firm also has an office in Dublin. Dual-qualified solicitor and chartered trade mark attorney Dominic Farnsworth heads the practice.

Practice head(s):

Dominic Farnsworth

Other key lawyers:

Helene Whelbourn; Steven Jennings

Key clients

Sainsburys, Argos, Nectar

Habitat

Arsenal Football Club

Saga

The Vivienne Foundation

Britvic

Monsoon

Omnicom International

Lush

Walker Books

Publicis

Harvey Nichols

Work highlights

  • Handled IP and trade mark matters for Sainsbury’s, Argos, Nectar and Sainsbury’s Bank, advising on global IP strategies and assisting with new trade mark filings and disputes.
  • Managing Saga’s global trade mark portfolio.
  • Managing Britvic’s global trade mark portfolio.

Mishcon de Reya LLP

Mishcon de Reya LLP is known for its strong comprehensive brand protection and development practice. The group is primarily active in cross-border matters, including for US firms seeking counsel for their clients in the UK and Europe, but also fields a busy domestic practice. With its wide sector coverage and especially created brand management business, MDR Brand Management, the team remains a preferred choice for an impressive string of high-profile clients. Sally Britton is the head of the practice. Ray Black retired in 2019.

Practice head(s):

Sally Britton

Key clients

Sky

Iceland

WeWork

Global

NBC Universal

Ralph Lauren

Bet365

MagicLab t/a Badoo, Bumble

Annco t/a Ann Taylor

Capital & Counties (CapCo) – Covent Garden

Alexander McQueen

The Wombles

eBay

Lion Capital

Eve Sleep

Sanofi

Third Space

Grant Thornton

Dua Lipa

Foxtons

Huel

Levi Strauss

Work highlights

  • Represented Iceland Foods in relation to invalidity proceedings filed against its EUTM registration for ‘ICELAND’  (word mark) by Islandsstofa (Promote Iceland), the Icelandic Ministry for Foreign Affairs and SA Business Iceland, and against its EUTM registration for ‘ICELAND’ (logo) by Icelandic Trademark Holding.
  • Instructed by Global to manage its global trade mark portfolio and advise on strategic brand protection and related enforcement issues.
  • Advised MagicLab on brand protection relating to its highly successful apps (Badoo, Bumble, Chappy and Lumen).

Murgitroyd

Murgitroyd impresses with its extensive office network in the UK and wider Europe. The practice is especially well versed in assisting clients from the media, entertainment, food and drink, and labelling and packaging sectors, but fields a varied overall caseload. Thanks to its dedicated IP support services offering, the group has seen an uptick in work for US clients. The practice assists with the management and enforcement of global trade mark portfolios, including handling anti-counterfeiting matters. The London-based Mark Hickey heads the trade mark practice, which includes the Scottish trade mark team led by Jacqueline McKay from the Glasgow office.

Practice head(s):

Mark Hickey; Jacqueline McKay

Testimonials

‘First-class advice and service with particularly strong international connections.’

‘Mike Vettese is a reassuringly rigorous and reliable practitioner.’

‘Murgitroyd have proved to be excellent in responding to the needs of our business to protect our brands and markets. They have a wide network of contacts who can service our needs worldwide.’

‘We have worked with the same individuals for many years and during that time they have developed a clear understanding of our requirements – so much so that they actively suggest ways in which we can protect our brands in a cost-effective manner.’

‘We enjoy working with Murgitroyd because they go over and above to be helpful – often we don’t have great knowledge of legalities and they help us navigate this, make suggestions for best practice and guide us through the process in a way we can understand.’

Key clients

Candy Hoover

Elixair International

Halma Water Management

Historic Environment Scotland

La Fée

Paisley Originals

Scot Young Research

Spectrum Collections

TCS John Huxley

Work highlights

  • Assisted Superior Essex Inc with a trade mark clearance and registration programme for the mark ‘ENDUROTEMP’ for a new product in multiple jurisdictions.
  • Conducted global clearance searches for the client logo and a filing strategy for future protection on behalf of a celebrity cosmetics and fashion brand.
  • Achieved key UK and EU wins for La Fée against Bacardi regarding the ‘Angel’s Envy’ name and logo.

Osborne Clarke LLP

Osborne Clarke LLP's trade mark portfolio practice sits within the firm's wider IP disputes team. Specialised in strategic trade mark development and commercialisation matters, the group excels in cross-border matters, especially in cases involving the entry of a client into a new market, with particular expertise in the Chinese, Russian and Middle Eastern markets. The technology, financial services, beauty, and oil and gas sectors accounted for a number of recent highlights, demonstrating the group's wide sector range. The fashion, new media and entertainment sectors also merit particular mention. Solicitor Arty Rajendra is the head of the practice.

Practice head(s):

Arty Rajendra

Testimonials

‘Exceptional white-glove personal attention.’

‘Brilliant team and good outcomes in cases.’

‘Richard May and Arty Rajendra are outstanding attorneys.’

Key clients

PopSockets LLC

Reckitt Benckiser

JPMorganChase (We Pay)

Ubisoft

LolaVFX

McLaren Construction

Compliance Online

Infinity Reliance

my 1st Years

Quack

Autodoc

TLG

FreemarketFX

Bristol Water

Howdens

Mobike

Miniclip

Spartan Race

PA Consulting

Pegasus Life

Wood plc

Fred Perry (Holdings) Limited

Katten Muchin Rosenman (US Law firm) on behalf of their client Axalta Coatings (Axalta)

Work highlights

  • Acted for leading global liquid and powder coatings company Axalta in invalidity proceedings against Spanish competitor Adapta against four of Adapta’s trade marks.
  • Advising on the management of the worldwide brand portfolio of Fred Perry, including the iconic laurel wreath design.
  • Advising on the management of the worldwide brand portfolio of multinational energy services FTSE 250 company Wood plc, including the legacy brands of Amec Foster Wheeler plc.

Venner Shipley LLP

Under the leadership of David Birchall, the team at Venner Shipley LLP offers the combined clout of trade mark attorneys, solicitors and barristers, allowing the firm to handle the totality of clients' trade mark matters. Based on a core commercial outlook, the practice demonstrates strength in contentious and non-contentious matters alike, with the development and management of UK, European and international trade mark portfolios and the representation of clients in opposition and appeals proceedings as core pillars of the practice.

Practice head(s):

David Birchall

Other key lawyers:

Gloria Parmesan; Yoann Rousseau

Testimonials

‘Everyone on the team is always up to date on where the case is and what the next move is. You don’t have to worry that you are going to have to fill someone in. They are all very knowledgeable and work well together.’

‘All the partners seem to be experts in their own fields. In addition to their great knowledge and guidance, they have a natural ability to understand and work with the client in a manner that both relaxes and gives the client confidence. This is so much better than my experience with other firms.’

‘Yoann Rousseau is particularly good. He takes the time to explain things in detail to a level where I can understand him rather than talk in purely technical jargon. He is also very persistent when dealing with issues and keeps me updated. Furthermore, he shows me all the options on the table and explains the merits and downsides of each one and thus enables me to make decisions based on the best possible advice.’

‘The team are very responsive and provide an excellent level of support. Also, their international knowledge and global relationships with other agents make them a one-stop shop, particularly on the trade mark side.’

‘David Birchall provides a very responsive service with a great level of clarity of advice.’

‘The Venner Shipley intellectual property law team is sharp, responsive and committed to excellence.’

‘David Birchall and Yoann Rousseau provide unparalleled support for US clients.’

‘They provide practical, business-minded advice and are very good at devising strategies that align with budget and business goals.’

Key clients

Ava May Aromas

Aviva

Brooke (Greville) Casino

Clinigen Group Plc

Dulwich College

Epicurean Dairy & Others

Equine America

FIVE PERCENT NUTRITION LLC

FxPro Financial Services Ltd

Glowmade

Livias Health Foods Limited

Mental Health First Aid England

Mitel Networks Corporation

Neuro-Bio

Roarr Norfolk Dinosaur Park

SPECCHIASOL S.R.L. – proprietor of EU TM VERADENT.

Stockeld Park

TalkTalk

The AA (formerly The Automobile Association)

THE PROJECT BAND LTD

Vedanta Resources

Work highlights

  • Successfully represented WH Selfinvest SA in an appeal to the Appointed Person against the decision to revoke its UK trade mark protection on the basis of non-use.
  • Managed The AA’s trade mark portfolio in the UK and Europe.
  • Managed Aviva’s worldwide trade mark portfolio.

Bates Wells

Bates Wells stands out through its focus on assisting clients with strong social responsility credentials, for example well-known non-profit organisations. The practice is experienced in domestic and international brand management matters and certification and assurance marks, and is able to provide the full range of trade mark prosecution services, including trade mark clearance searches, portfolio management, and IPO and IPEC contentious matters. Transactional and licensing matters complete the firm's trade mark offering. Mathew Healey directs the practice.

Practice head(s):

Mathew Healey

Other key lawyers:

Catharina Waller

Testimonials

‘The trade mark team works as a responsive and cohesive unit in support of our varied needs. They are very experienced in international affairs and have a broad reach through their extended network in overseas territories.’

‘Catharina Waller and Mat Healey are our go-to trade mark attorneys. They are very experienced and knowledgeable and, importantly, they condense and communicate complicated subject matters so that we, as lay people to this specialism, can make sensible and well-informed decisions.’

‘The team at Bates Wells provided a very thorough trade mark service. They were also proactive and diligent in staying in touch and seeing our various trade mark applications through to the end.’

‘Catharina Waller was very thorough in her work and her advice on which trade marks to secure and how to surmount hurdles was clear and accurate. Furthermore, Catharina explained complex information clearly and was easy to speak to on the phone.’

‘I have worked mainly with Catharina Waller and her team for the past year and there hasn’t been a time where I had to chase for updates/outcomes. The services provided are consistent and timely. Great client service.’

‘The PATMA team is unique in that the team are able to appreciate the subleties of trade marks and when no action is the best action. I feel confident that I can talk through the options and that all aspects are being considered, not just those that will incur more fees.’

‘Mathew Healey is particularly strong. He is technically very knowledgeable but also has a sense of humour which is a big help.’

‘They understand our brand and our business and have tailored their service approach to us accordingly – they actively engage with us.’

‘Courteous, professional, considered and supportive.’

‘The team are reputable, professional and knowledgeable.’

‘Catharina is very responsive, flexible and clear in her communications.’

‘We find that Bates Wells are very practical, respond quickly, and are experts in their respective fields.’

‘Mat Healy understands our needs and tailors his advice accordingly. He doesn’t just advise on the law but on what steps to take in given situations.’

Key clients

FM Conway

Barnardo’s

The Alan Turing Institute

Freud Communications

38 Degrees

Handelsbanken

The Royal Foundation of the Duke and Duchess of Cambridge

Cruelty Free International

Fair FX

Voluntary Service Overseas

Trinity College London

International Paralympic Committee

WaterAid International

Royal Commonwealth Society for the Blind (‘Sightsavers’)

Battersea Dogs and Cats Home

Girl Effect

Guide Association

Institute of Masters of Wine

The National Gallery

Disasters Emergency Committee

Football Foundation

National Schizophrenia Fellowship (‘Rethink Mental Illness’)

The Market Research Society

Work highlights

  • Successfully protected Girlguiding’s trade mark rights and reputation at every instance before the EUIPO, including before the EU General Court.
  • Assisted the Good Business Foundation with all aspects of the establishment of the ‘Good Business Charter’ accreditation scheme for responsible business, including trade mark clearance, registration, licensing and strategic advice.
  • Assisted the Royal Foundation of the Duke and Duchess of Cambridge with strategic and trade mark registration work surrounding a change to the foundation’s name.

Dentons

Dentons' trade mark prosecution practice is one of the cornerstones of its full-service worldwide trade mark offering. Given the firm's international set-up, the group focuses on complex cross-border work, particularly the management and structuring of large trade mark portfolios and their commercialisation through licensing. The retail, technology, finance and public sectors account for the majority of instructions. Solicitor Anna Copeman directs the UK trade marks practice. Litigator Campbell Forsyth heads the UK IP group and co-chairs the global IP group.

Practice head(s):

Anna Copeman; Campbell Forsyth

Other key lawyers:

Anna Brown

Testimonials

‘I have worked with Dentons’ trade mark practice on a number of occasions. They are always engaged and responsive. A key strength of the practice is the collaborative approach – you really do feel as though you are working as part of a team. I very much enjoy working with them.’

‘Anna Brown is a senior trade mark attorney at Dentons. She is very knowledgeable when it comes to trade mark law and I was particularly impressed with her excellent client-handling skills. Very confident and approachable and she really put the client at ease.’

Key clients

BNF Capital Limited (‘BNF’)

Emtelle UK Limited

KKR

LGC Science Group Holdings Limited (‘LGC’)

Lottoland Holdings Ltd

Seraphim Space Camp Accelerator Ltd

SkyKick

Virgin

Positec

Zentiva

Kohlberg & Company LLC

Sainsbury’s

Warner Music

Virtual IP Assets (888 gaming company)

Caudwell Properties (109) Limited

BM PolyCo Limited

Upfield

Work highlights

  • Advised Cavour Limited and Lottoland Holdings Ltd on numerous complex IP disputes, including defending Cavour Limited’s rights in respect of its high-value domain name, lotto.com, in UDRP proceedings brought by a German lottery provider.
  • Assisted Virgin Group with trade mark licensing matters and intellectual property-related disputes.
  • Advised Kohlberg & Company LLC alongside a US firm on its acquisition of Nelipak Corporation Inc and Bemis Healthcare Packaging Europe, investigating the various intellectual property rights of each target company.

EIP

The EIP team is known for its transatlantic trade mark prosecution offering, which combines the expertise of European and US trade mark attorneys. With solicitor Claire Lehr at the helm, the practice added a number of increasingly high-profile companies to its client roster, demonstrating the group's strength in domestic and cross-border trade mark prosecution.

Practice head(s):

Claire Lehr

Other key lawyers:

Paula Flutter

Testimonials

‘I strongly recommend Claire Lehr. Claire is extremely dedicated, hardworking and knowledgeable.’

‘Full-service IP capabilities.’

‘Claire Lehr is experienced and knowledgeable in brand protection and commercialisation, with an international mind-set.’

‘I would describe them as efficient, practical and cost conscious. They don’t just know the law, but also how to apply it.’

‘Claire Lehr is great to work with. I very much like her thoroughness, attention to detail and client focus. She combines knowledge with practicality.’

‘The team is very well qualified and experienced and proactively suggests practical solutions to issues.’

‘EIP are unique because of their business-focused advice. They are efficient, incredibly responsive and practical. I know I can trust them to provide real advice and not just safe advice.’

‘Claire Lehr is a total standout. She is personable, intelligent, diligent and responsive. She provides very practical and business-focused advice. She has become a trusted adviser.’

‘EIP provides fabulous trade mark services and broad intellectual property advice. They are experts in their field and are amazing to work with. They really know their stuff.’

‘Claire Lehr is professional, intelligent and a pleasure to work with. Claire impresses her clients with exceptional advice, and always goes above and beyond to achieve successful outcomes. She is clever and strategic about her advice, always with the client’s best interests at heart.’

‘EIP have built a strong team and quite rightly deserve their excellent reputation. We know that we can put our queries to anyone in the team and that they’ll provide the help that we need. Costs are always set out clearly so there are never any surprises when the bill arrives. Everyone we’ve dealt with has been helpful and efficient.’

‘We really enjoy working with Claire. Her expertise in global intellectual property matters is excellent and she is able to provide useful insights into the idiosyncrasies of the international trade mark industry. Claire offers business-focused, pragmatic legal advice and always operates with the utmost discretion. She is very detail oriented, really listens to us and provides tailored solutions that work for our business.’

Key clients

Failte Ireland

Ovo Group

Genius sports

StreetTeam

TIC CC Ltd

Pollinate

Work highlights

  • Acted for TIC CC LTD in its UK trade mark matters, including advising on applications and disputes.
  • Advised OVO on all aspects of its intellectual property portfolio, with a particular emphasis on its trade mark portfolio, including building up the portfolio and assisting with numerous oppositions in a variety of jurisdictions.
  • Assisted Streetteam with the full range of trade mark portfolio services, including advising on pre and post-registration disputes in a number of different territories.

Novagraaf UK

Novagraaf UK's key distinguishing feature is the size of the trade mark portfolios under its management. The firm is among the leading teams for the management of EU and WIPO trade marks and operates in the UK, the Netherlands, Switzerland, France and Belgium, with other key offices in the US, China and Japan. In late 2019, the firm and its sister company PAVIS launched NovumIP, an IP service provider company. The Manchester-based Vanessa Harrow has led the practice since June 2019.

Practice head(s):

Vanessa Harrow

Testimonials

‘The turnaround time is excellent, we receive responses to queries usually within the same day. This is very reassuring when we have matters arise which pose a risk to our business.’

‘The team I work with at Novagraaf in Manchester and London are responsive, practical and follow instructions from in-house counsel with regard to budget, management of cases and internal procedures.’

‘Vanessa Harrow is practical, responsive and diligent. She is always a pleasure to work with, provides pragmatic advice and is very conscious of the client’s needs and budget constraints.’

‘Accurate, prompt, commercial and pragmatic guidance.’

‘Vanessa Harrow is a fantastic font of knowledge, is down to earth and easy to engage with, and always provides a great level of service.’

Key clients

Stock Spirits Group

TI Automotive

The Vita Group

Work highlights

  • Advised Stock Spirits Group on trade mark prosecution strategy, including a defensive EU opposition which led to registration and an award of costs for the client.
  • Advised TI Automotive on a worldwide filing project and strategy for new trade marks.
  • Advised The Vita Group on a strategy for overcoming obstacles to trade mark registration in China, which led to a successful outcome in a dispute against a market disrupter.

Swindell & Pearson Ltd

Swindell & Pearson Ltd combines a strong UKIPO opposition practice with longstanding experience in the development and management of domestic and international trade mark portfolios, disputes expertise and a busy design rights caseload. Recently, the practice saw an increase in UK trade mark filings and in UKIPO and EUIPO opposition proceedings. It also handles appeal proceedings before the High Court. The group acts for regional, national and international clients. Nick Womsley directs the practice from the Derby head office.

Practice head(s):

Nick Womsley

Testimonials

‘Kieron Taylor communicates in a manner that I can easily understand, and his knowledge of IP is excellent and very up to date. If an issue arises he reacts to it professionally and promptly.’

‘Kieron Taylor is excellent. He manages and protects our whole portfolio and treats it as if it were his own. He is extremely trustworthy, reliable and commercially astute.’

‘Professional approach. Broad knowledge.’

‘Profound legal knowledge combined with knowledge of how businesses really work.’

‘Nick Womsley and Katy Fuggle are both personable, professional, knowledgeable and grounded in the real world. They are a pleasure to deal with.’

‘We’ve worked with Swindell and Pearson for many years now and have always had great service. Staff are always very polite and responsive. Both trade mark and patent attorneys are extremely knowledgeable and have helped our company build a IP portfolio which is well maintained and managed.’

‘I favour the team because of its professionalism, responsiveness and willingness to help.’

‘Kieron Taylor and Shaun Sherlock are excellent attorneys. They always manage to respond to my inquiries in a timely manner, understand my position so well and are willing to go the extra mile to exceed my expectations.’

‘The work is always done quickly and efficiently. The firm doesn’t require endless reminders to acknowledge our instructions and to act upon them.’

‘Kieron Taylor always provides timely and comprehensive instructions for all matters. If he believes that a brief discussion is warranted regarding a matter, he doesn’t hesitate to pick up the phone for a quick call. This makes him both accessible and available which can’t always be said about other law firms.’

Key clients

The Mentholatum Company

Work highlights

  • Provided an audit for ProtectaPet as part of a scheme run by the IPO, assisting with the evaluation of the costs and benefits of protecting its innovations and intellectual property.

W P Thompson & Co

W P Thompson & Co has a particularly strong track record in advising pharmaceutical, food, electronics, fashion and sports sector clients on the protection of their brands. Rigel Moss McGrath joined HGF Limited in February 2020.

Womble Bond Dickinson (UK) LLP

Womble Bond Dickinson (UK) LLP's acquisition of IP boutique James Love Legal in July 2019 significantly strengthened its prosecution, licensing and enforcement practice. The retail, consumer goods (especially FMCG), manufacturing, technology, and hospitality and leisure sectors are the firm's mainstays. Thanks to the firm's global platform, the team's caseload has become noticeably more international. James Love leads the practice, working with senior counsel Patrick Cantrill and managing associate Rachel Hearson, all of who are based in Leeds.

Practice head(s):

James Love

Other key lawyers:

Patrick Cantrill; Rachel Hearson

Testimonials

‘Strong technical skills combined with a commercial approach and a can-do attitude makes this my go-to team for contentious and non-contentious matters. Advice is always practical and solutions to problems meet our business needs.’

‘They get things done while avoiding an overly aggressive approach.’

‘James Love is highly responsive, offering technically adroit and clear commercial advice. He delegates well to his team so the service offered gives excellent value for money.’

‘Rachel Hearson has managed with aplomb a variety of contentious and non-contentious trade mark matters. Her advice is clear and she works well as a team with counsel on complex matters.’

Key clients

GoCompare.com

Alexander Duckham & Co., Limited

ME + EM

Immediate Media

Petrofac

Transdev Blazefield

H&M

Kilfrost Group Plc

North of England / Sunderland Marine

Places for People Group

Bellway Group Plc

Atom Bank

Tetra Pak

Vertu Motors Plc

In The Style Fashion Limited

Denby Brands

TomTom International B.V.

Serif (Europe) Ltd

Wizz Air

Spirit of Yorkshire Limited / Wold Top Brewery Limited

Decathlon SA