Barker Brettell LLP is consistently among the most active filers of trade marks in the UK and the EU. Post-Brexit, the firm’s office in Sweden has become the main hub for the handling of EU trade mark applications. Practice head Catherine Wiseman in Birmingham and her team offer particular sector experience in the food and beverage, higher education, cosmetics, consumer product and automotive sectors, and impress with a well-rounded portfolio of expertise, including strategic portfolio development advice, contentious matters such as opposition, cancellation and enforcement proceedings, transactional matters and licencing and assignment agreements. Counterfeiting matters, including assistance with customs and excise issues, are also handled. For design matters the firm has joined forces with Simple Design Works, a design agency.
PATMA: Trade mark attorneys in London
Other key lawyers:
Tracy Arch; Lucy Walker; Rosanne Farmer; Louis Pittortou; Ian Pearce; Lisa King; Rosalyn Newsome; Becky Knott; Stephen Lowry
‘The best part of Barker Brettell is that they have a solid team that has vast experience in their domain and therefore you are always in safe hands while working with them. They understand their clients, are open to discuss and provide an expert opinion on a variety of topics related to TM, IP rights, copyright. They always put their clients before them, are always ready to accommodate our requests and give you a custom-tailored approach to manage your portfolio or way forward. The people are warm, down to earth and always eager to resolve any issues. Since our collaboration with them we have been able to significantly reduce our TM costs and budget.‘
‘Every person I have worked with at the firm has been responsive, practical, and provided clear options and guidance on recommended strategies. They view our relationship as always striving to do what is best for the clients overall, not necessarily for a particular case or for their firm.‘
‘Their knowledge of our trade marks’ history is encyclopaedic! We rely on their expertise because of the excellent service they consistently provide.‘
‘Tracey Arch is an expert with an in-depth and sound knowledge in her field who has always been able to resolve our queries and provide new insights on a variety of topics. Her strengths are that she is an expert who knows her domain really well, has hands-on practical experience in the industry, always put the client’s needs before the firm’s, worked according to our tight deadlines and always delivered before the deadlines and is always accessible and energetic to talk to.‘
‘Catherine Wiseman is my ‘go-to’ person at the firm for trade marks. She is easy to work with, practical, and provides expert assistance with developing global strategies for clients. She also has an outstanding team of people and has developed many junior trade mark lawyers over the years. She is a pleasure to work with.‘
‘Stephen Lowry is an approachable, committed and collaborative member of the team. He worked well with us to guide us through a challenging process. Stephen is knowledgeable, encouraging and incredibly helpful. His humanity and respect shone through.‘
‘We find Rosalyn Newsome fast, efficient, very pragmatic in her assessment of our portfolio strategy. She deals with each matter with great care and attention to detail. We respect her advice immensely and feel that she is part of our team.‘
‘Becky Knott is an exceptional trade mark attorney. Excellent service.‘
International Flavours and Fragrances
British Racing Motors Limited
Wolverhampton Wanderers FC
Carma Laboratories, Inc, – Carmex
Automobile Club Di Brescia
Pizza Hut UK Limited
Rich Food Products (LAW)
University of Chicago
University of Notre Dame
Kingston Technology Corporation
Fender Musical Instruments Corporation
Bit Bio Limited
The Binding Site Group Limited
Sheltered Wings dba Vortex
Marston’s Brewing Company (Carlsberg Marston) and Marston’s PLC
Severn Trent Water
Epson Europe B.V
Fine Agrochemicals (De Sangossi)
Schlumberger ( UK& EU)
- Advised longstanding client Marston’s PLC on the filing, prosecution, management and strategy relating to its trade mark portfolio, comprising a large beer/brewing portfolio and a portfolio of pub businesses, building on domestic and overseas filing programs, complex acquisitions and many disputes, in particular oppositions around the world.
- Advised Modere on the development of its trade mark protection throughout the UK and EU, overseeing large filing programmes, searching and clearing a number of different trade mark names in the US, EU, UK, Canada, New Zealand, India, Australia and Japan, and assisting with the filing and prosecution of the applications for these names, including dealing with the examination objections and third party oppositions which often arise with a portfolio of this size and nature.
Boult Wade Tennant LLP's European platform with offices in the UK, Germany (Frankfurt, Berlin) and Madrid has attracted a number of prestigious new clients. The firm excels in domestic UK and international trade mark, design and domain name matters, with its growing trade mark caseload for Indian and Chinese clients illustrating the team's good reputation in these markets. In addition to its comprehensive trade mark offering the practice also provides assistance with domain name, copyright and design matters. The dedicated renewals department illustrates the firm's commitment to efficient and cost-effective solutions. London-based practice head John Wallace and his team act for a very diverse list of clients, including multinationals and start-ups, family businesses, government entities, charities and individuals. Anusha Arunasalam in London made partner in November 2020.
Other key lawyers:
Emma Pitcher; Catherine Wolfe; Tony Pluckrose; Anusha Arunasalam; Rachel Conroy; Felicity Hide
‘Very intelligent, attentive client relationship managers who make the world of trade marks fascinating and deliver advice promptly and always in good spirits!‘
‘They really are the best of the best. Pragmatic, knowledgeable and helpful. Always there when you need them.‘
‘They are the top of the tree. Knowledgeable, skilled and thoughtful, team players and great with clients.‘
‘Catherine Wolfe and Tony Pluckrose are brilliant. Both have a great sense of humour alongside extremely detailed and extensive knowledge on all things trade marks. They are always available at the other end of the phone or email. It is always a pleasure to speak to them and I always come away with the facts needed to progress the matter at hand.‘
‘Emma Pitcher is extremely bright and thoughtful. A joy to work with. Tony Pluckrose: I am not sure there is anything Tony doesn’t know in the world of IP.‘
‘Tony Pluckrose has enormous experience, a wonderful way with clients and a mind that is both ingenious and pragmatic. He is a problem-solver. Catherine Wolfe is super brainy and knowledgeable. Emma Pitcher has great commercial flair as well as being very bright.‘
Essity Hygiene & Health AB
Sony Interactive Entertainment Europe Ltd (SIEE)
Lloyd’s of London
Tyco Fire & Security GmbH
PUIG FRANCE, Société par Actions Simplifiée.
Les Roches Blanches SA
D Young & Co LLP has seen a significant increase in UK trade mark applications, partly thanks to German and European clients that arrived through the firm's growing Munich office and entrusted the team with their UK matters. The group's clients benefit from the combined attorney and solicitor teams and increasingly instruct the practice for contentious matters, in particular opposition proceedings before the UKIPO, including appeals before the Appointed Person, the EUIPO and the German trade mark and patent office. The size and experience of the team allow for wide sector coverage, with the food and drink, fashion, luxury goods and pharmaceuticals sectors among the core areas of expertise. Domain name disputes and disputes before the Company Names Tribunal are another significant part of the group's caseload. Jeremy Pennant in Southampton and solicitor Tamsin Holman in London are the joint heads of the practice.
Jeremy Pennant; Tamsin Holman
Other key lawyers:
Helen Cawley; Matthew Dick; Anna Reid; Gemma Kirkland; Richard Burton; Jackie Johnson; Flora Cook; Jake Hayes
‘D Young is a unique practice because of their ability to manage matters with high sensitivity for the commercial needs of the customers. This also associates with great communication skills: they are always straight to the point and eliminate any unnecessary frills or overabundance of qualifications in their opinions.‘
‘The D Young trade mark team is knowledgeable, responsive, professional and friendly. They understand the clients’ business and offer practical advice in addition to their expertise in the sometimes prosaic art of obtaining trade mark registrations. They are very good at managing expectations and dealing with both expected and unexpected developments in the course of prosecution, oppositions, and even cancellation proceedings. They are one of our go-to firms for trade mark work in the UK and the EU, because they simply get the job done – and they are a pleasure to work with.‘
‘The team has solid knowledge of the trade mark prosecution system and effective in opposition matters with outstanding level of bringing a case to success whether through amicable means or through resolving a dispute.‘
‘The individuals we work with are highly knowledgeable, very responsive and very professional and thus are a pleasure to turn to each time around. I specifically note Matt Dick, Flora Cook and Anna Reid from the London office.’
‘We work and have worked closely in particular with Tamsin Holman and Anna Reid. They stand out because of their very personal touch in handling matters. They do not overdramatise problems and almost never approach a new case with doubts about the outcome of a case (doubts are understood when it comes to the law) but immediately shed a different light, show a possible alternative view with a fair degree of positive creativity.‘
‘Matt Dick is extremely savvy, with a great combination of legal knowledge and experience with a practical understanding of what is needed to achieve the client’s goal in any given case. He is responsive, friendly, and very good at client management; we very much enjoy working with him. Anna Reid and Flora Cook are both excellent practitioners with whom we are always happy to work and in whom we have faith. The fact that most members of this group are women is something that I appreciate and approve of.‘
‘Jackie Johnson and Anna Reid provide straightforward and clear advice.‘
Cosmetic Warriors (Lush)
Crockett & Jones Shoes
Dabur India Ltd
Exxon Mobil Corporation
Grays of Cambridge
Hard Rock International
Jo Loves Limited
Johnson & Johnson
SEGA and Sports Interactive
Sony Music Entertainment
SOP International Limited
The Dow Chemical Company
Tropic Skincare Ltd
Zoopla Property Group
- Represented Procter & Gamble at the EUIPO Boards of Appeal in the long-running dispute over the BABY-DRY trade mark, securing a success for the client.
- Acted in High Court proceedings for Sega and Sports Interactive, publishers of the ‘Football Manager’ game series, defending a trade mark claim brought by Manchester United FC.
- Advised Lush (Cosmetic Warriors) on international enforcement, litigation and trade mark registry proceedings.
HGF Ltd continued to be one of the most prolific filers of UK and EU trade marks in 2020, in addition to shouldering a strong WIPO filing practice. With its wide geographical presence in Europe, including several UK offices and offices in Germany, the Netherlands, Switzerland, Austria and Ireland, the firm attracts prestigious multinationals for portfolio management, opposition and cancellation proceedings and litigation matters. The complementary expertise in internet and domain name disputes and online rights enforcement is another key asset. The deep bench has developed particular expertise in the pharmaceuticals, automotive, food and beverage, media, finance and retail sectors. With three new trade mark director promotions in November 2020, namely Lauren Somers in Manchester, Katie Goulding in Leeds and Sheffield, and Claire Jones in London, the firm continued its growth. David Potter in Leeds is the head of the trade mark practice. Paul Sanderson is the firm's CEO, Jason Lumber is the firm's chairman and Alastair Da Costa is the strategic development director and EDI board sponsor.
Paul Sanderson; Jason Lumber; David Potter; Alastair Da Costa
Other key lawyers:
Rigel Moss McGrath; Jonathan Thurgood; Claire Jones; Lauren Somers; Katie Goulding; Rachel Fetches; Geoff Smith; Richard Wylie; Stephanie Loeffler-Reading; Rebecca Field;
‘They are extremely responsive, and provide pragmatic and practical advice that is always suited to the needs of our business. Their knowledge and understanding of our business is invaluable in prosecuting our trade marks. They work closely with their litigation department, and bring significant knowledge and value to any litigation we have. Excellent knowledge. Practical advice. Quick responses and cost-effective.‘
‘Clear-eyed, organised, helpful.‘
‘Lauren Somers is extremely approachable and a really good sounding board on both trade mark and design issues faced by the business. Her advice is always solution-focused and practical. Personable and excellent understanding of the client and its operation – which in turn means quick, practical and cost-effective advice.’
‘Rebecca Field is a clear communicator.‘
The Hut Group
AGA Rangemaster Group Ltd
Thomson Reuters Global Resources
Holland and Barrett International
Dunelm (Soft Furnishings) Limited
Portmeirion Group Limited
- Assisted Emirates with the full range of European brand defence.
- Acting for sports nutrition brand The Hut Group in a multi-jurisdictional trade mark infringement against a multinational food company.
- Advised AGA Rangemaster Group Limited on UK and European trade mark operations as the client’s exclusive, full IP service providers.
J A Kemp‘s deep bench is highly experienced in the management and strategic development of global trade mark and design portfolios, with several new prestigious clients joining the client roster in 2020. In addition to clearance, prosecution, opposition and appeal matters, both in the UK and in the EU, the practice also offers extensive experience in domain name disputes and brand enforcement matters, including anti-counterfeiting matters. The firm’s dedicated IP litigation support team, consisting of solicitors and attorney litigators, is another asset. A significant portion of the caseload consists of instructions from US and Japanese clients, including attorney firms from these jurisdictions seeking advisers for UK and European soft IP matters. In Europe, the group is especially active for clients from Spain, France and the Nordics, while maintaining its strong presence in the UK. The offices in Paris and Munich ensure seamless EU services post-Brexit. James Fish directs the trade mark practice, while Tom Albertini is the head of the design practice.
James Fish; Tom Albertini
Other key lawyers:
Ben Mooneapillay; Charlotte Stirling; Aaron Newell
‘There is a depth of knowledge within the team and clearly expertise running through at every level.‘
‘J A Kemp has an amazing trade mark prosecution team. I have found them to be highly professional, prompt, detail-oriented, knowledgeable and to top all this, reasonably priced.‘
‘Aaron Newell is great on strategy, ‘thinking round a problem’ and achieving creative solutions which work for us. Selina Chan offers thoughtful and thorough support to Aaron. Both Aaron and Selina are really personable and enjoyable to work with.‘
‘Charlotte Stirling is organised, professional, extremely knowledgeable and a pleasure to work with. She’s extremely responsive and has supported us on our trade mark portfolio for many years now. I would highly recommend her to anyone needing assistance with trade mark issues.‘
‘Charlotte Stirling is a fantastic trade mark attorney. She offers real, practical advice, proposing solutions instead of simply identifying problems. The solutions she proposes are consistently great, and save our company’s attorneys significant amounts of time, as often we simply need to sign off on the solution she proactively proposed to the issue she identified.‘
‘Ben Mooneapillay is smart, responsive, collaborative, practical and relaxed. A rare and excellent blend of qualities in a trusted adviser. Would recommend him, and J A Kemp, unhesitatingly.‘
‘Aaron Newell is the star performer I have always preferred to work with. I wonder if Aaron ever sleeps! No matter what time of the day or night you send an email, he responds without delay. His opinions are always thorough and leave no gaps.‘
‘Aaron Newell is an incredibly hard worker with a great knowledge and creativity. He is able to think out of the box which is a great asset for any of his clients. He is extremely fast and very thorough. Thinks in opportunities and possibilities rather than problems. A joy to work with.‘
Aston Martin Lagonda
Roja Parfums Holdings
Royal British Legion
Sealed Air Corporation
Taylor Made Golf Company
Kilburn & Strode LLP combines a strong UK and European trade mark practice with a growing number of US clients. With three offices in the Netherlands, one office in Munich and one office in San Francisco, the firm is undeniably international in outlook. The European practice is developing particularly well, especially matters involving major horticultural and agricultural clients. Known as one of the UK's and EU's most active filers of EU trade mark applications, the firm specialises in assisting international and UK clients with the management and development of often substantial soft IP portfolios, including copyright and design portfolios. Domain names disputes are also handled. Practice head Carrollanne Lindley, who trained as a barrister and also has extensive in-house experience, was active in several multi-jurisdictional disputes in 2020. The firm has a growing anti-counterfeiting practice and is developing its niche expertise in medicinal cannabis work. Jeffrey Parker joined the firm as a consultant in November 2019 from his own IP boutique Jeffrey Parker & Company, adding a number of prestigious multinationals to the firm's client list.
Other key lawyers:
Iain Stewart; Ryan Pixton; Jeffrey Parker; Rachel Harrison; Ben Scarfield
NBC Universal (including DreamWorks Animation)
Penguin Random House
Mewburn Ellis LLP specialises in strategic brand management advice. On the prosecution side, the practice assists with the full range of trade mark services, including oppositions and appeal proceedings. For disputes and commercial agreements, the group frequently joins forces with the firm's litigators. The growing Munich office illustrates the firm's dedication to remaining a key player in the European IP market. With a track record that includes handling trade mark prosecution matters for major international brands, but also start-ups, education sector clients, investors and international firms seeking EU and UK representatives, the team is very versatile. With Kate O’Rourke in London at the helm, the practice has one of the market's most experienced practitioners. The Bristol-based Rebecca Anderson-Smith made partner in April 2021.
Other key lawyers:
Jacqueline Pang; Rebecca Anderson-Smith; Edmund Harrison; Sofia Arenal; Andy King; Sean Jauss
‘Very responsive and very knowledgeable; keen understanding of client needs.’
‘The firm has a very experienced trade mark team that really knows and understands our business.’
‘The individuals we work with have an unrivalled passion for what they do and the care they show for us as a client. Nothing is too much trouble, and they happily make our problems their problems. Sofia Arenal and Jacqueline Pang always know what’s going on.’
Alliance Pharma plc
Astex Therapeutics Ltd
Axon Enterprise, Inc. (formerly Taser International, Inc.)
Banhams Patent Locks Limited
Bennett Jones LLP
Bentley 1962 Ltd
Binney Jones LLP
Bioline Reagents Limited
Capital Group Companies
Chiesa Shahinian & Giantomasi PC
Coventry Building Society
Dechra Pharmaceuticals Plc
Defected Records Limited
Dogs Trust Trustee Limited
Dotcom Retail Limited
Fox Rothschild LLP
Greenberg Traurig LLP
Halo Lifestyle LLC
Intersnack Group GMBH & Co
Kabushiki Kaisha Bandai Namco Entertainment
Karsten Manufacturing Corporation
Mi-Pac Trading Limited
Morrison & Foerster LLP
Novadaq Technologies Inc.
S.R.G Apparel Plc
Scott Bader Company Limited
Smart Technologies ULC
The Swatch Group
The Museum of Modern Art
Valent BioSciences Corporation
- Acted for longstanding client Alliance Pharmaceuticals on protecting and enforcing key brand names, including LYPSYL, ANBESOL and HYDROMOL in over 100 countries around the world, including the coordination of registration, opposition and cancellation actions in Australia, India, USA and Brazil while handling direct proceedings in the EU, including a seminal case on interpretation and construction of specifications of goods.
- Acting for The Dogs Trust Trustee Limited on the enforcement of its rights in the key brands ‘A Dog is For Life’ and ‘A Dog is For Life, Not Just for Christmas’, previously successfully brought to registration, taking into account the reputational risks to the client to ensure its associations with third parties are carefully vetted to maintain the client’s charitable status and ability to enter into appropriate third party licensing arrangements.
- Assisted Beauty Bay Ltd with strategic commercial issues, managing its large and growing trade mark portfolio with a recent focus on protecting the expanding beauty range, prosecuting applications in multiple countries, and including rights enforcement around the world, including through trade mark oppositions and domain watching.
Potter Clarkson LLP expanded its Danish presence in July 2020 with the addition of three new trade mark experts, adding to the existing offices in Sweden, further growing the firm's market share in the Nordics. In November 2020 the firm launched its new IP consultancy division. Staffed with patent and trade mark attorneys, licensing specialists and experts, the consultancy is aimed at start-ups, small and medium-sized enterprises and investors that seek assistance with the commercialisation of IP assets. The group offers experience in the strategic management and development of extensive trade mark portfolios, a powerful contentious practice, including EUIPO specialists and litigators, and good sector coverage, including in the food and beverage, automotive and entertainment sectors. The lead quartet consists of Janella Barr and Sanjay Kapur in Nottingham and Emmy Hunt and Sarah Talland in London.
Janella Barr; Emmy Hunt; Sanjay Kapur; Sarah Talland
Other key lawyers:
Lucy Mills; Cameron Malone-Brown; Chris Baume
‘Very organised and helpful. The advice given is always reliable and well grounded.’
‘Good personal interaction with a stable team.’
‘Chris Baume is helpful and always responds fast to our emails and queries. Also, Chris provides good reports and reliable advice in simple and complicated cases.’
‘Knowledgeable, prompt and personable.’
ABG EPE IP LLC (Elvis Presley Estate)
Aplas Pty Ltd
Bosco Brands UK Ltd
Bourne Leisure Limited
BRC Trading Limited
Qurate Retail, Inc.
Ineos Automotive Limited
Ineos Industries Holdings
Oregon Brewing Company
- Assisted Ineos Automotive Limited with its global filing strategy for a new 4×4 vehicle brand and with the management of the worldwide trade mark portfolio.
- Represented ABG EPE IP LLC (Elvis Presley Estate) at the EU Board of Appeal in appeal proceedings, securing a decision upholding the opposition against EUTM application for BREWDOG ELVIS JUICE.
- Successfully represented defendant Ineos Industries Holding in High Court Appeal against trade mark application Jaguar Land Rover regarding the registration of the shapes of the Land Rover Defender 90 and Land Rover Defender 110 as trade marks.
Stobbs IP is a unique outfit in the market that has integrated its trade mark prosecution practice into a wider soft IP offering that covers the entire range of soft IP management, including disputes, investigations, commercial contracts, designs and copyright, anti-counterfeiting and online brand enforcement. Founder and owner Julius Stobbs heads up the prolific practice that includes a dedicated solicitor team under the lead of Chris Sleep and a dedicated litigation team led by Geoff Steward. The newly opened Munich office keeps the firm's foot on EU ground for EU trade mark application proceedings which account for a substantial percentage of the overall filing caseload. In the UK, the practice is among the most active for UKIPO hearings and appeals before the Appointed Person. The team also handles a busy domain name dispute caseload.
Other key lawyers:
Chris Hawkes; Louise Goodsell; Emma Pettipher; Lewis Whiting; Claire Breheny; Victoria Leach; Richard Ferguson; Chris Sleep; Geoff Steward
‘An elite team of experts in their field. We rely heavily upon them for all of our IP advice which is always provided quickly, at a good price and to our needs.’
‘Adaptability and real understanding of IP/TMs and the host of services that clients need.’
‘We value their pragmatic, commercial advice and their availability to discuss matters, even those with an international angle, over the phone or via Zoom when needed.’
AG Barr (Irn Bru)
Automobil Lamborghini SPA
Beiersdorf (Nivea etc.)
Brown Forman (Jack Daniels etc)
Cancer Research UK
Capri Sun GmbH
Corelle brands LLC
Energizer Holdings Inc.
England and Wales Cricket Board
Faber & Faber
Garrard & Company
Great Ormond Street Hospital (GOSH)
GVC Services Ltd
Harley Davidson USA Inc.
Iglo Foods (i.e. Birdseye, Findus, etc.)
Liverpool Football Club
Marks and Spencer
Olive and Orange Ltd
Raspberry Pi Foundation
Sanrio (Mr Men)
Skip the Dishes Restaurant
Slater and Gordon (UK)
Snap Inc. (Snapchat)
SSAT (The Schools Network)
Stanley Black and Decker Inc.
Tommy Hilfiger Europe BV
Tottenham Hotspur FC
Treasury Wine Estates
Unit 4 NV
Verizon Media (including Yahoo/Oath)
Ford Motor Co
- Acted for H&M on a major online brand enforcement programme.
- Represented Facebook in a high number of EUIPO opposition cases to protect the FACEBOOK brand.
- Successfully defended Liverpool Football Club against an action brought by New Balance regarding breach of sponsorship agreement.
AA Thornton offers a combined attorney and solicitor practice. The versatile team has been very active for retail, insurance and pharmaceuticals clients, but is also experienced in a wide range of other sectors, including the fashion, technology, energy, food and beverage and consumer product sectors. Under the leadership of practice head Ian Gill, the team assists with the development and implementation of trade mark portfolios, transactional matters including due diligence and audits, as well as opposition proceedings to take applications to grant or defend brands. Domain name and design matters are also handled.
Other key lawyers:
Rachel Havard; Sarah Darby; Suzanne Power; Louise Foster; Sarah Neil
‘The AA Thornton team are knowledgeable, commercial, responsive and extremely professional. They are genuine partners to our business in all things IP. Their billing systems are innovative and generally make our lives very easy. All the focus is on great quality advice and not having to worry about admin.‘
‘The team at AA Thornton takes the time to understand our requirements from a commercial perspective, employs the appropriate expertise to best serve our requirements, and then ensures we are kept fully up to date throughout the whole process.‘
‘Ian Gill is excellent – sensible, commercial, pragmatic, responsive. Suzanne Power is clearly following in the same footsteps.‘
‘Ian Gill is a genuine expert, great guy and proper business partner to all of us. Sarah Neil is a super star. Knowledgeable and great to work with!‘
‘Sarah Neil never let us down. Always follows up files appropriately and answers urgent requests when needed.‘
‘Great communicators, taking a pragmatic approach to our legal issues and offering excellent advice at all times: Louise Foster and Rachel Havard stand out.‘
‘They don’t just do what you’ve asked – they’ll challenge you to consider whether what you’re asking for is what you should be asking for. Very useful point to have, which isn’t common in the industry.‘
‘Louise Foster responds to queries quickly and also ensures we don’t miss deadlines on our replies at times. She has shown to have very good connections to local attorneys in all our core markets, and has very good understanding of us as a business which helps enormously.’
Virgin Enterprises Limited
J. Choo Limited
Associated British Foods Plc
R. Twinings and Company Limited
Jordans, Dorset, Ryvita Company Limited
Equip Outdoor Technologies
- Assisted Admiral Group with the IP side of the sale of the Penguin Portals and Preminen businesses to ZPG’s comparison division RVU.
- Acted for Virgin in numerous successful UDRP and DRS complaints against domain names used in a manner abusive to Virgin’s trade mark rights in the VIRGIN brand, including scams involving unauthorised domain names that exploited aspects of the Covid-19 situation.
- Defended Merck in two oppositions filed by Monster Energy against Merck’s UK trade mark applications for versions of its house logo; advising Merck on a cost-effective defensive strategy.
Appleyard Lees is a specialist IP firm with a strong presence in the North of England and Cambridge. The team is composed of attorneys and solicitors, including many dual-qualified practitioners, for example Chris Hoole in Leeds who made partner in April 2020. The practice assists with strategic portfolio management matters as well as contentious proceedings, opposition and appeal proceedings, anti-counterfeiting matters and litigation, both in the UK and multi-jurisdictional disputes. Managing partner David Clark and Robert Cumming in Leeds head up the practice. In April 2020, the firm launched Greenshoots, a series of IP-related insights published through different channels, including a podcast and a digital library and platform.
David Clark; Robert Cumming
Other key lawyers:
Chris Hoole; David Moy; Rachel Garrod
‘Responsive and informative. Keep explanations simple.‘
‘Knowledgeable and lots of relevant examples to draw on when devising a strategy of problem-solving. Experts in a very specialist field.’
‘Rachel Garrod and David Moy are a pleasure to deal with, communicate well, provide expert advice.‘
‘David Moy provides clear and consistent advice which is simple to understand and (mostly) jargon-free. Responsive and happy to help.‘
‘Robert Cumming is excellent with clients, very reassuring and quietly confident in his own abilities. An expert in his field, he seamlessly aided my firm through multi-jurisdictional matters on time and to budget. Robert also provides excellent accessibility, and with quick responses.‘
Fit Kitchen Ltd.
- Acting for long-term client Moncler on worldwide trade mark strategy and prosecutions and in multiple disputes.
- Advised ThinCats on the use of trade marks as a secure asset.
- Representing Fit Kitchen Ltd in proceedings against Scratch Meals Ltd, Waitrose Supermarkets Ltd and Sainsbury’s Ltd in one of the first trials to be heard by the IPEC remotely due to the exigencies of the current pandemic.
At Baker McKenzie, practice head Jessica Le Gros and her team are in charge of a substantial trade mark portfolio management and brand clearance practice. In addition to an active UK trade mark and design filing practice and, thanks to the firm's international practice, the ability to maintain a strong EU trade mark caseload, the group assists with domain infringement matters and trade mark enforcement issues, including anti-counterfeiting matters. The firm's litigators, including Julia Dickenson who made of counsel in August 2020, complement the prosecution practice well. Core sectors include the pharmaceuticals, retail and consumer product sectors. Advising digital content platforms and providers on soft IP issues is a fast-growing area of the practice. The London team benefits from the firm's office support teams in Manila, Belfast, Tampa and Buenos Aires.
Jessica Le Gros
Other key lawyers:
Rachel Wilkinson-Duffy; Julia Dickenson; Vlotina Liakatou; Nadine Archer
‘They provide straightforward advice, in plain English, and have the depth of knowledge and experience to back their recommendations up. They are a one-stop shop for all our IP needs.‘
‘Both Jessica Le Gros and Vlotina Liakatou are very approachable and never make you feel that you are inferior to them, to me they are part of the IP team.‘
Jones Lang LaSalle
- Providing brand advisory and brand protection services to Unilever under an exclusive mandate to handle brand protection and disputes in the UK and EU (as well as globally).
- Represented Lilly AS in a trade mark infringement claim at the IPEC against third party use of LILLY & CHARLES in relation to bridalwear.
- Acted for Neom Organics in a UK dispute with Public Investment Fund in relation to their commence of use and attempt to obtain trade mark protection in the UK for the smart city in Saudi Arabia called ‘Neom’.
Beck Greener LLP's distinguishing features include its extensive experience in the publishing, entertainment and cosmetics sectors, its role as one of the most active representatives in UKIPO hearings, and its combined prosecution and litigation offering. Practice head Ian Bartlett, a trade mark attorney whose training as a barrister is an asset in the group's complex disputes, expertly handles with trade mark, copyright and design matters - he is known for being 'superb at gaining clients' confidence, understanding their commercial needs, and exceeding expectations'. The group's portfolio includes anti-counterfeiting matters and rights enforcement and a very active UK and EU filing practice, handled post-Brexit through the firm's Alicante office where Rowland Buehrlen is the key contact. With a client roster that includes many well-known multinationals as well as UK-based small and medium-sized enterprises and sole traders, the practice is equally at home in cross-border matters as it is in domestic trade mark prosecution issues. John Raynor switched from a senior partner role to a consultant position in April 2020.
Other key lawyers:
Rowland Buehrlen; Catherine Jewell; Deborah Selden; Duncan Morgan; Kashif Syed; John Raynor
‘Real world counsel for busy companies. Clear concise presentations of the situation with the ability to drill down and explain complex points in a manner that maintains control with us.‘
‘What makes Beck Greener stand out is the hands-on approach. We are treated as family, key strengths are their in-depth knowledge and communication skills which are vital to anyone venturing into this field.‘
‘Ian Bartlett and Kashif Syed are very creative, thorough, and careful. They have assisted with tough problems through thinking of solutions that are not always the most obvious.‘
‘Their knowledge of trade marks and patents is outstanding. Friendly, but aggressive when fighting your corner.‘
‘Catherine Jewell is exceptional in all fields – it is as simple as that. We have a fantastic working partnership.’
‘Duncan Morgan has provided us with comprehensive, yet practical advice on a wide range of matters, including contentious work. He has the ability to work at speed when necessary and is easily approachable. Managing intellectual property requires a uniform approach as it can be all-consuming, Duncan understands this clearly and tempers his recommendations to ensure that protection is given without unreasonable expense.‘
‘All points of contact with Beck Greener are excellent. Kashif Syed and Ian Bartlett look after our work and are both outstanding! Communication is excellent and often proactive, thus ensuring any statutory deadlines are always met. Basically we are totally satisfied with all aspects of this firms operations.‘
‘Kashif Syed is very responsive and Ian Bartlett is extremely knowledgeable.‘
The Condé Nast Publications (e.g. Vogue, Vanity Fair, GQ, Glamour, The New Yorker and others)
The Estée Lauder Companies (e.g. Estee Lauder, Clinique, Origins, Aveda, Bobbi Brown, Tom Ford, Jo Malone and others)
The British Phonographic Industry
Chevron Products Company
Tiffany and Company
Eminem (Marshall Bruce Mathers 111)
Tchibo Coffee International
Telehouse International Corporation of Europe
Ferdinand Bilstein UK
Preventice Solutions, Inc.
The Chord Company
- Acted as ongoing trade mark and copyright adviser to Condé Nast and other divisions of the Advance Magazine Publishers group of companies, involving contentious and non-contentious work.
- Acted as ongoing adviser to singer and songwriter James Arthur on cases related to both trade marks and copyright.
- Advising the in-house legal team at PwC on trade marks across the spectrum of PwC’s activities, including accountancy, consultancy and outreach, with recent work including freedom-to-operate and brand protection matters in addition to securing grants of trade mark applications.
Bird & Bird LLP's trade mark attorney team is well integrated into the international firm's wider soft IP offering, making it one of the best choices for pan-European issues and matters involving Asia Pacific and Middle Eastern jurisdictions. Since its inception in 2012, the practice had risen to the ranks of the UK's most active trade mark filing representatives for UK and EU trade marks as well as for representatives in UKIPO contentious proceedings, and can rely on its European office network for EU trade mark applications since January 2021. The practice has seen particular growth in the retail and consumer goods, tourism, travel and wellness sectors, and continues to handle a substantial caseload from the media, entertainment and sports sectors. Clients increasingly instruct the practice to advise on the protection of digital assets. The firm's trade mark litigation practice and design practice complement the prosecution practice well. Mark Holah, dual-qualified as a solicitor and trade mark attorney, and Allan Poulter direct the practice.
Mark Holah; Allan Poulter
Other key lawyers:
‘Very thorough, very thoughtful, very practical. A real ability to keep the business needs in mind instead of rotely prosecuting trade marks. Not a treadmill.‘
‘Ready availability. Clarity of replies – in plain English that I as a layperson can understand. Proactive in planning for future renewals well ahead of time. Diligent and cost-effective.‘
‘They provide useful, direct and practical advice.‘
‘Mark Holah is exceptional. Highly responsive with creative solutions to complicated problems.‘
Daily Mail Group
Allianz (Pet Plan)
- Advised long-term client Monster on the coordination of its European and Asian trade mark prosecution and enforcement strategy.
- Acting for Prosecco in multiple oppositions before the UKIPO and in taking action against the misuse of the Prosecco name both in Court and outside Court, successfully preventing the use and registration of several infringing marks in the UK.
- Advised Marv Films on a wide variety of branding issues, including new merchandising projects and a major licensing deal; a large number of counterfeit cases and oppositions in multiple jurisdictions; various issues connected with the third KINGSMAN film THE KING’S MAN; and new trade mark and design searches and applications for new brands as well as on the expansion of existing brands.
Bristows LLP has integrated its attorney practice into its trade mark solicitor offering, with the combined expertise of the two practices covering the full spectrum of trade mark matters, ranging from brand creation to brand protection and commercialisation, both in the UK and cross-border mandates. With its very prestigious client roster, the team is well versed in advising on high-stakes complex matters, often involving global trade mark portfolios and a high number of opposition and cancellation proceedings. The firm's in-house innovation committee is in charge of providing the firm's teams with the tools needed to better help their clients. Recent examples include an interactive data site system that allows global life sciences clients to monitor multi-jurisdictional projects; and an extranet for the management of the relationship with clients from the FMCG sector. Ian Gruselle is the head of the trade mark portfolio practice, while Simon Clark directs the brands, design and copyright practice. Paul Walsh moved on to a consultant position with the firm in 2020.
Ian Gruselle; Simon Clark
Other key lawyers:
Abigail Wise; Jennifer Dzafic; Paul Jordan; Jeremy Blum; Paul Walsh
‘Bristows’ team are truly the sum of their parts and when every team member is exceptional at what they do, you really can’t get better. Built on relationships and expertise gained over decades working at the cutting edge of brands and technology, the team excels where others falter.‘
‘Simon Clark, Ian Gruselle, Paul Jordan and Jeremy Blum lead the team with distinction. Their associates are second to none.’
Vectura Group PLC
The Guardian News and Media
The Financial Times Ltd
- Assisted The Financial Times with the management of its worldwide trade mark portfolio, conducting clearance searches for new brands, filing applications to expand the protection of the FT and FINANCIAL TIMES brands around the world and assisting with the protection of new brands and products.
- Acted for Dentsply Sirona on the management of its worldwide trade mark portfolio (with the exception of the US).
- Assisting Master Moley with the trade mark aspects of the film special and with the management of its worldwide trade mark portfolio.
Carpmaels & Ransford LLP has strategically shifted its practice towards a high percentage of contentious matters, including litigation for which the team joins forces with the firm's dispute resolution practice. The strong EPO oppositions and appeal practice is a stand-out practice in the market and a core pillar of the wider trade mark practice that ranges from clearance searches and filings to licencing, customs and transactional matters. Practice heads Roger Lush and Jonathan Day, who is dual-qualified as a trade mark attorney and solicitor, are also well versed in steering clients through design and copyright matters.
Roger Lush; Jonathan Day
Other key lawyers:
Penguin Random House
DN Management Ltd
Bear Grylls Ventures LLP
Align Technology, Inc.
Deere & Company
Rajinder Sharma, Recup Ltd
Takeda/ Shire Pharmaceuticals
Malin + Goet
Pacific World Corporation
- Acted for the world’s largest entertainment company on its brand protection, including clearing the names of new blockbuster films and representing the client in a high number of disputes.
- Acted for Allergan on the protection of its BOTOX trade mark in the EU, including in proceedings before the CJEU and in a global trade mark and unfair competition dispute.
- Advised Bear Grylls Ventures LLP on the expansion and defence of the brand, including general counselling, portfolio management and prosecution of brand extension-related filings pursuant to commercial partnerships and licence agreements.
Cleveland Scott York specialises in handling complex strategic issues for direct clients, both in contentious and non-contentious matters. Practice heads Jonathan Clegg and Lorna Hobbs and their team have a very good track record in opposition and appeal matters before the UKIPO and EUIPO and are experienced in High Court and IPEC litigation in the UK. The development and implementation of complex filing programmes is another area of strength. The growing domain name dispute practice, which includes cybersquatting matters, complements the trade mark practice well. Among many prestigious clients is a particularly high number of clients from the financial services, pharmaceuticals, consumer goods, transport and fashion sectors. Cathy Ayers joined Wilson Gunn in December 2020.
Jonathan Clegg; Lorna Hobbs
Other key lawyers:
Peter Houlihan; Andrew Clemson; Claire Birro; Joanna Larkey
‘Working with Joanna Larkey has only been positive. Incredibly responsive, makes herself available at short notice and provides commercial and strategic advice. I feel I’m in a safe pair of hands with Joanna. Billing is timely and regular.‘
‘With superior UK/EU trade mark law knowledge and experience, CSY work in partnership with clients, collaborating and advising on a range of complex projects, tasks and cases. Responsive, pragmatic and practical, they truly understand our business needs.‘
‘Very responsive, quick with solutions and advice.‘
‘The team are highly professional, yet friendly. I find they are quick to respond to queries and in particular the St Albans team are realistic in terms of their advice to SMEs and start-up businesses.‘
‘The trade mark attorneys we have encountered are are very bright and on the ball.‘
‘Jonathan Clegg is not only a highly intelligent individual, but he has a calm and reassuring manner which would put clients at ease knowing that they are with a trusted attorney. He stands head and shoulders above the crowd for his leadership skills, his knowledge and his organisational skills.‘
‘Andy Clemson is exceedingly responsive and provides practical, cost-effective solutions to thorny problems, while taking a holistic view of multinational disputes.‘
‘Jonathan Clegg is an industry reputed expert in UK and EU trade mark law, with a wealth of experience handling complex international commercial projects. Andrew Clemson is a highly experienced associate with invaluable specialism in domain names.‘
Laboratory Corporation of America Holdings
Saputo Dairy UK/Dairy Crest
Dorling Kindersley Limited
The National Trust
Noble Foods Limited
Tulliallan Burlington Limited
Transport for London
Iris Software Limited
Hyperion Insurance Group
Everyone’s Earth Inc
GM Cruise Holdings LLC
- Represented Tulliallan Burlington Limited in a trade mark opposition and appeal before the Court of Justice of the EU, obtaining a successful result which set new legal precedents in the field of retail services.
- Acted for a GlaxoSmithKline company in complex EUIPO oppositions against a related group of seven EUTM applications.
- Represented Utilita Energy to file a UDRP action at WIPO in a cybersquatting case, resulting in the successful transfer of a web domain name to the client.
The team at CMS is among the most active UK firms for UKIPO hearings and an excellent choice for the strategic management and development of global trade mark portfolios as well as for litigation, domestic and cross-border alike. In 2020, the practice added an impressive number of new prestigious clients to its roster, including clients in need of UK representation post-Brexit. An integral part of the firm's wider IP team, the trade mark prosecution practice unites attorneys and solicitors with longstanding experience in advising well-known international brands. Practice heads Sarah Wright and Tom Scourfield (the latter is also co-head of the firm's international IP group) split their time between the London and Warsaw offices. The firm offers a range of technology tools to its trade mark clients, including its CMS IP records extranet, an IP portfolio monitoring tool, a watch notice tool to quickly be notified of potential conflicts, and CMS collaborate, an online portal for storing and sharing documents that are required for trade mark proceedings. In May 2020, Anna Brackenbury made partner.
Sarah Wright; Tom Scourfield
Other key lawyers:
Louise Gellman; Joel Vertes; David Parrish; Kelly Saliger; Eleanor Merrett; Melanie Worsdall; Anna Brackenbury
‘They provide timely advice and also give recommendations as to how to proceed on matters, which is very useful. They are practical and solution-oriented.‘
‘Strong knowledge of trade mark law; good client management.‘
‘The CMS team is a well resourced team that uses technology well to provide an efficient and reliable trade mark service. We work with the team for brand protection work primarily in respect of trade marks. We enjoy the collaboration in determining the right approach to our business for our watch service and the effort invested by the team to continue to iterate to make the process smoother.‘
‘The team is a good mix of experience and trade mark attorneys – work well with solicitors.’
‘Excellent teamwork, capable of distilling key items to management attention always with a high degree of care as well as good rapport.‘
‘Louise Gellman is very knowledgeable, drives efficiencies by using her team well and is very personable. Louise has a large team from which to draw.‘
‘Sound advice and good reactivity and response times. Good systems for matter tracking and client updates.‘
Dentsu Aegis Network
Breast Cancer Now
The Crown Estate
Kettle Foods/Snyder’s Lance
Legal & General
- Acted for Sky on the management of its portfolio of rights, extending to over 3000 marks across more than 150 territories and related registry disputes, including around 400 pending actions falling in over 40 territories across Europe, Asia Pacific, Latin America and MENA.
- Advised new client Sainsbury’s on the protection of the SAINSBURY’S, ARGOS, HABITAT and NECTAR brands, developing a streamlined watch notice tool and settling a longstanding opposition on terms favourable to the client.
- Advised NatWest/Coutts/RBS on the management of a global trade mark portfolio of 1800 trade marks.
At Dehns, the trade marks group is now led by Elaine Deyes, who has succeeded Roberto Calamita. With a number of UK offices and offices in Munich and Oslo, the firm - which celebrated its centenary in 2020 - is among the largest in the UK and Europe. In contentious matters, the firm assists with opposition and appeal proceedings in the UK and the EU as well as with large cross-border disputes, including anti-counterfeiting matters and matters involving trade mark squatters, in particular from China, Latin America and the Middle East. The non-contentious practice includes trade mark clearance and filing matters in addition to portfolio management. Many of the firm’s clients are direct clients from the UK and the US. In January 2021 the firm acquired Norwegian IP consultancy Leogriff, growing the international trade mark, patent and design practice by two trade mark attorneys. The following May, the firm announced its merger with German attorney firm KGP, adding five further European trade mark attorneys to its bench. David Leckey retired in February 2020.
Other key lawyers:
Roberto Calamita; Clare Mann; Joseph Letang; Alexandra Nott
‘Dehns have provided excellent advice and action to protect our brand on a global basis.‘
‘Dehns always deliver on even the most unusual ideas. Sometimes as a business you may have some surreal ideas that you wish to trade mark. No idea is off limits and their ability to work with you is second to none. They are friendly, patient and bring a service we cannot find anywhere else. We continue to receive value for money and have an excellent relationship.‘
‘Dehns is a highly respected firm with gravitas. The partners and associates are very capable individuals, but combine this with practical, real world solutions that add value. They always propose solutions thereby guiding their clients at each decision point which makes their service invaluable.‘
‘Excellent team work and team spirit. Some excellent junior individuals.‘
‘Clare Mann has an exceptional knowledge of trade mark law. I know the law can be a ‘gut feeling’. Clare has excellent intuition based on her knowledge of what works and what doesn’t. Clare is patient, there are no stupid questions. Clare can get back to you quickly on even the most random enquiries. We feel like our trade marks are safe with her.‘
‘Clare Mann is a very capable and experienced trade mark attorney who provides very timely and accurate advice which adds value. Whether on matters of prosecution, litigation or acquisition, Clare provides invaluable, well thought through advice.‘
‘I mainly work with Joseph Letang. I find him to be brilliant with clients, strategically very sound and very responsive.‘
‘Joseph Letang is very experienced.‘
Pret a Manger
Honda Motor Europe
Emporia Brands Limited
- Represented CRISTALFARMA S.r.l. at the UKIPO in trade mark opposition proceedings launched against Vivo Cannabis Inc. regarding a trade mark application filed for LUMINA, securing rejection of the trade mark application in its entirety.
- Successfully represented Walter Kidde Portable Equipment Inc. before the EUIPO First Board of Appeal in appeal proceedings against UAB Fire Experts regarding the attempted registration of a EU trade mark, securing a total overturning of a decision made by the opposition division of the EUIPO, resulting in the refusal of the opposition’s trade mark application.
Gill Jennings & Every LLP offers an experienced contentious practice, which includes the core caseload of practice head Alasdair MacQuarrie who assists with anti-counterfeiting matters, brand enforcement, and opposition and cancellation proceedings in addition to advising on strategic trade mark portfolio issues. While MacQuarrie has developed particular expertise in the pharmaceuticals, entertainment, toys and games, and fashion sectors, Edward Carstairs is an expert in advising food and drink sector clients and heads up the firm's food, drink and hospitality sector group. The practice is adept at handling multi-jurisdictional matters, including major clearance and trade mark squatting matters. Domain name complaints are also handled. In addition to its London office the firm also has a growing office in Munich.
Other key lawyers:
Edward Carstairs; Nathalie John
‘GJE’s key strength is their breadth of expertise and the client-friendly manner in which they deliver it.‘
‘Full service, easy to deal with and competitively priced.‘
‘Gill Jennings & Every provides an outstanding trade mark service. We really think of them as our allies; they really know us as a company and care about our intellectual property. They always provide thorough and diligent advice, and are always available to discuss strategies and advice on what is best for our company. We are sure we could not be in better hands. Also, they provide a very comprehensive and helpful online platform where clients can monitor all their IP cases and review upcoming deadlines.‘
‘I regularly work with Ed Carstairs. He is incredibly attentive, has great knowledge and I don’t hesitate to recommend him.‘
‘Edward Carstairs- very commercial and approachable. Good at relationship building and knowledgeable.‘
‘Alasdair MacQuarrie – very approachable, commercial and pragmatic.‘
‘Gill Jennings & Every trade mark team is fantastic to work with! They are very professional, but also charismatic and friendly. Edward Carstairs is an exceptional trade mark attorney. He always provides very thorough, complete and clear advice on every matter. He is always available and keen to understand the general strategy and vision of the company. Nathalie John is a fantastic trade mark attorney. She assesses all matters from all possible perspectives and angles, providing very thorough advice.‘
Focusrite Audio Engineering Limited
World Wrestling Entertainment Inc.
Arla Foods (Lurpak, Cravendale, Lactofree etc)
Integra LifeSciences Corporation
- Represented Under Armour in respect of UK and EU trade mark matters, accompanying the growth of the portfolio, including securing protection in relation to a new logo that has been created following Under Armour’s partnership with NBA superstar Joel Embiid.
- Advised Thrasio on determining a suitable FTO strategy for Europe, with a particular focus on the UK and German markets, in addition to advising on the protection of its existing and future IP, particularly design and trade mark protection.
- Represented World Wrestling Entertainment across all areas of UK and EU trade mark work.
Haseltine Lake Kempner LLP has seen substantial growth in 2020 thanks to a significant increase in UK trade mark and design work in preparation for Brexit. The practice impresses in advisory and contentious matters alike, consistently appearing among the most active UK and EU trade mark filers as well as among the most active representatives in contentious hearings at the UKIPO. Since the 2019 merger between Kempner & Partners and Haseltine Lake, the firm also has a powerful litigation practice to offer. With its deep bench, the practice is able to assist clients from a wide range of sectors. Particularly busy areas are the chemistry and life sciences, food, hi-tech and engineering sectors, partly thanks to the firm's neighbouring patent practice whose clients also instruct the firm's soft IP experts. The duo at the helm of the practice consists of Martin Krause, who splits his time between the Bristol, London and Munich offices, and Jason Dainty, based in Leeds and London. In 2020, solicitor Brian Whitehead was chosen as an Appointed Person at the UKIPO.
Martin Krause; Jason Dainty
Other key lawyers:
Amanda Mallon; Chris Morris; Michael Conway; Brian Whitehead; Martin Delafaille; Sanjeet Plaha; Richard Kempner
‘Excellent support, always available and clear advice.‘
‘Martin Delafaille – attentive and diligent. Richard Kempner – huge know-how and great client support.‘
Nomad Foods Europe (Birds Eye, Findus etc)
Tesco Stores Limited
Mamas & Papas
Farrow & Ball
Pathway IP Sarl (“Regus”)
Gianni Versace S.r.l.
The Restaurant Group (Wagamama, Frankie & Benny’s etc)
- Acted for defendant Tesco PLC and Tesco Stores Limited in High Court proceedings against Lidl regarding alleged infringement of trade marks and copyright as well as passing off in relation to Tesco’s relaunched ‘Clubcard prices’ marketing strategy.
- Advising The Royal Mint Limited on brand protection, as well as providing clearance advice for new services, merchandise and promotions, including advice on the trade mark protection of the strapline ‘The Original Maker‘, securing registration of the strapline as a UK trade mark.
- Acted for Mamas & Papas in litigation in addition to advising the client on trade mark, design and patent portfolio matters.
Keltie has grown its internet soft IP practice in 2020. The well-known IP specialists increasingly advise on the registration and renewal of domain names in parallel to the development of its clients' trade mark protection. Correspondingly, the group is also more active in domain name recovery matters and social media and online marketplace takedowns. The second notable area of growth is the sports trade mark practice. The practice assists with the full range of trade mark services, including due diligence, portfolio management and enforcement proceedings. Thanks to its Irish office, the firm is able to maintain its EU trade mark caseload. Rosemary Cardas, Manuela Macchi and Alistair Gay are at the helm of the practice. Director Nick Bowie joined Lewis Silkin LLP.
Rosemary Cardas; Manuela Macchi; Alistair Gay
Other key lawyers:
Azhar Sadique; Shakeel Ahmad
‘They are knowledgeable, responsive, flexible and innovative (in terms of approach and ideas).‘
‘The trade mark team are responsive and provide clear, pragmatic advice on brand protection. Their fee proposals are clear and transparent. Any billing queries that arise are dealt with promptly and usually by the partner managing the matters. We are kept regularly updated on matters.’
‘Having worked with dozens of European IP firms over my many years of trade mark practice, Keltie is by far the best. Their trade mark practice led by Rosemary Cardas is top notch and the supporting staff members handle the details of both contested and non-contested trade mark matters with skill and efficiency.’
‘Shakeel Ahmad – a truly impressive individual, with a vast knowledge and an enviable ability to make difficult issues easy to follow. Alistair Gay – bright, responsive and approachable.‘
‘Rosemary Cardas responds promptly to my enquiries and manages her team well, ensuring that our work is done by fee earners at the right level and within appropriate timescales. Rosemary and her team do a great job of meeting client demands (who often want their trade marks filed quickly) and tight deadlines for trade mark oppositions and objections. A particular strength is Rosemary’s strategic advice on trade mark matters – we can rely on Rosemary to provide clear and pragmatic advice – she understands the commercial realities of brand protection.‘
‘Rosemary Cardas is the most competent European trade mark attorney I have worked with. Not only is she sensitive to the actions that are necessary to lead to successful resolutions, but she is aware of the business considerations and investment that may be required to reach those conclusions without undue expense or wasted time.‘
‘Rosemary Cardas is smart, practical, responsive and a pleasure to deal with.‘
Jaguar Land Rover
PGA European Tour
Camelot Group plc (National Lottery)
Bluebird Bio Inc
Esure Insurance Ltd
In 2020, Marks & Clerk became the first firm in the UK to file a multimedia motion mark. One of the largest specialist IP firms in the UK, the group has tripled the size of its EU team to continue its busy EUIPO caseload. The group acts on advisory and contentious matters, including litigation, and is well versed in advising on the IP aspects of major rebranding projects. Already in charge of an impressive number of trade marks in the UK, the firm further expanded its portfolios in 2020, not only through cloned EU trade marks, but also through new client wins and growing portfolios of existing clients. With a total of nine international offices across the EU, Canada and Asia, the firm is a good choice for cross-border matters. Chairman Daniel Talbot-Ponsonby in Oxford and London duo Simon Mounteney (UK managing partner) and Tom Farrand (head of trade marks) direct the practice. Heather Williams left the practice in spring 2021, and Elena Nicholas retired in August 2020.
Daniel Talbot-Ponsonby; Simon Mounteney; Tom Farrand
Other key lawyers:
John Ferdinand; Andrew Hawley; Michael Barrett; Amy Dunn; Jason Chester
‘Their greatest asset is their staff. At all times they have been both professional and knowledgeable in the subject matter at hand. Be it searches, applications, protection or mitigation, M&C have been able to apply the right level of support to produce a satisfactory conclusion to the brief.’
‘Efficient at responding and clear in their management of the case. Everything was done as it had been said.’
‘Friendly and approachable, always feel like I get honest feedback and pushback that keeps our brand’s protection top of mind.’
‘The trade mark team at Marks & Clerk provides excellent and unique professional service. In particular, they have a Japanese client team and offer timely responses and clear advice to Japanese clients.‘
‘Very committed team; always high performance and good results of their work; quick feedback; act in the very best interest of the client, even if the client is not available for short-term instructions.‘
‘Staff at M&C stand apart from other attorneys by their dedication to the task in hand. This allows our teams to focus on their functions with M&C contributing in a timely manner with each project.’
‘Andrew Hawley always provides clear advice that non-English speakers can easily understand. From his long professional experiences, he knows what clients wish to know and can be supportive to clients.’
‘We have had a very good experience with Andrew Hawley. His expertise is unquestionable, he always offers very profound advice and offers a range of options. Issues are dealt with in a very dedicated way. Clients are in very good hands.’
The Scottish Football Association
The Scotch Whisky Association
St Pierre Groupe
- Advised Pukka Pies on expanding/refreshing/consolidating and enforcing rights in PUKKA rather than PUKKA PIES, including advising on the IP implications of re-designing logos, the development of the brand guidelines, reviewed sample packaging designs in advance of launch and advising on the protection and maximization of the IP, how to protect and maximise IP aspects of new product developments.
- Advised Jägermeister on enforcing its trade mark rights in respect of clothing, and provided strategic advice on planning the UK’s exit from the EU trade mark system as a result of Brexit.
- Advised Panda Life on a selection of different strategies for the registrations owned by the client in the UK and EU, including acquisition of third party rights, use of assignment and licence back arrangements, negotiation of co-existence agreements and the negotiation of consents, alongside deployments of cancellation and opposition actions; additionally advised the client on which brand elements to seek protection for and the best practice for use of its marks, including the positioning of brand elements on its goods and packaging.
Mathys & Squire LLP has significantly expanded its trade mark filing practice in 2020. With major domestic and international brands on the client roster, the practice is highly experienced in high-stakes complex trade mark matters, often multijurisdictional in nature. Practice heads Margaret Arnott (London) and Gary Johnston (Manchester) and their team also regularly assist start-ups with the protection of soft IP. In addition to assisting a number of incubators and accelerators across the UK, the firm launched Scaleup Quarter in 2020, a microsite dedicated to the IP issues affecting early-stage and growing companies. The group advises on the full range of trade mark prosecution matters, including strategic portfolio development, prosecution proceedings, invalidation actions and litigation, with the latter being increasingly in demand. In addition to seven offices in the UK, the firm is also present in Munich, Luxembourg and Paris.
Margaret Arnott; Gary Johnston
Other key lawyers:
‘Immediate response on urgent situations. Full knowledge on how to deal with minute details that would pose a risk to the trade mark.’
‘Very strong in TMs and design rights both in the UK and worldwide.‘
‘We were very happy with the client service received, the advice given to us, and the result achieved by the lawyers at M&S.’
‘Very robust in terms of their position in the market. High gravitas.‘
‘Always on hand to help and guides us through often complex issues in a professional way with plain English.’
‘What we liked especially was having one point-person to manage our affairs, right from initial no-obligation chat, to engagement, all the way through to resolution of the trade mark issue we were facing. We were very impressed by Harry Rowe’s professionalism from the start. The whole process ran very smoothly and was painless and cost-effective, and we were very happy with the advice we received and the result achieved. We wouldn’t hesitate to recommend Harry Rowe personally and M&S in general in resolving a tech-related trade mark issue.’
Spirit Energy Limited
ICAEW, ICAS and CAI
Design Blue (D3O)
- Acted for Spirit Energy Limited in a successful appeal at the UK Intellectual Property Office.
- Represented three UK chartered accountancy bodies – ICAEW, ICAS and CAI – in obtaining a High Court injunction to ban a European organisation and its directors from misleading the public by offering chartered accountancy qualifications despite not being a recognised body.
- Supporting the UK’s largest trade union, Unison, in bolstering its trade mark portfolio, dealing with several trade mark and copyright infringement situations, and lodging oppositions in the EU against third parties.
Maucher Jenkins stands out through its dual expertise in non-contentious and contentious matters in the UK and Germany. With Katie Cameron as a dual-qualified trade mark attorney and Higher Courts litigator and Angela Fox‘s qualifications as a solicitor, Higher Courts litigator and advocate, trade mark attorney and New York attorney at law, the team is led by two highly experienced and versatile practitioners. Tanya Buckley, who leads the team together with Cameron and Fox, is very active for pharmaceuticals and life sciences clients thanks to her background in biotechnology. Other key sectors are the media and financial services sectors. In addition to the close ties to the German offices, further strengthened in 2020 with the registration of the team members as European lawyers before the Munich Rechtsanwaltskammer, the practice also has ties to its colleagues in Switzerland and China. Domain name matters, cybersquatting issues and copyright matters are handled in addition to the strong trade mark practice.
Katie Cameron; Angela Fox; Tanya Buckley
‘One of their best strengths is to provide full advice in connection with every single matter pointing out all possible courses of action, so the decision-making process seems much easier for the client.’
‘Tanya Buckley always keeps very close communication with her clients. Her responsiveness is undoubted. You always have the feeling that you are being heard and that you can leave it to her since your case will be attended.’
Klöckner Pentaplast Group
Viacom Media Networks
Warner Bros. Entertainment Inc.
The team at Reddie & Grose LLP is very adept at the strategic development of trade mark portfolios. Skilled in filing, opposition and enforcement matters, the practice is appreciated for its cost-effective approach to dispute resolution, often involving favourable settlement agreements, with the group's litigation experience available where needed. The strong filing practice, both in the UK and in the EU, is particularly well-known in the market, and the group's contentious caseload continues to grow. Among the varied caseload, a significant portion of matters come from the consumer product, entertainment, automotive, technology, charity and financial service sectors. The lead trio consists of Patrick Lloyd, Helen Wakerley and Tom Sharman.
Patrick Lloyd; Helen Wakerley; Tom Sharman
Other key lawyers:
Dale Carter; Alice Findlay; Daniel Sullivan
‘Good range of practitioners across IP.’
‘Alice Findlay is great – knowledgeable, level-headed, commercially minded. Tom Sharman is great.’
UDL Intellectual Property
UDL Intellectual Property‘s mainstay is strategic trade mark advice with a distinct commercial outlook. The firm, which was acquired by Murgitroyd in late 2021, impresses with the longevity of its client relationships and its ability to assist with the full range of trade mark prosecution work across a wide spread of sectors, including the food and beverage, media, gaming, sports and leisure sectors. The trade mark team regularly joins forces with the firm’s patent attorneys to leverage their sector expertise to the benefits of the clients. Managing global trade mark portfolios for a diverse range of clients, including well-known brands, small and medium-sized enterprises, charities and education sector clients, the practice is well versed in trade mark prosecutions in the UK, the EU and other jurisdictions. As one of the most established firms in the market, the firm continues to grow its trade mark and design practice. The London-based Alison Simpson and the Leeds-based Neil Pawlyn are the firm’s joint managing partners. Mark Green switched to a consultancy role in 2020.
Alison Simpson; Neil Pawlyn
Other key lawyers:
Alan Fiddes; Gareth Price; Ian Byworth; Annabel Hanratty; Alison Cole; Christine Lund-Beck; Anna Szpek; Mark Green
‘UDL is a highly regarded and respected firm of experts in their field. They have a breadth and depth of knowledge, and client service that is unrivalled. The firm has a modern and commercial outlook.’
‘UDL has a highly professional team who are a pleasure to deal with. They have a pragmatic approach and listen to my needs to help me make the correct decision when it comes to IP requirements and issues at a reasonable fee.’
‘Our relationship with UDL goes beyond a typical client relationship, they are an extension to the team. Their service has been exceptional. They get us, they get the industry, and they understand the commercial pressures of our business. These simple things make all the difference.’
‘The service we received from Annabel Hanratty was exceptional. Always on hand to offer quick, well-informed guidance on brand and on more than one occasion picking up on urgent requests during annual leave and turning around the info before our deadlines. Truly exceptional service. It’s hugely reassuring that we can depend on her and UDL when the pressure is on commercially and to have a partner who is able to react quickly and professionally.’
‘Very diligent and efficient and able to provide advice succinctly and economically.’
‘Alison Cole was extremely patient and really helpful when explaining what was needed from me, why, when and how. Her communication was excellent, keeping me informed regularly as to how the application was progressing and what they were waiting for and when. All in all, I could not fault Alison’s work and assistance.’
‘Alison Cole in particular stands out for her approach to building relations and rapport with clients. She brings huge insight, knowledge and experience to technical problems, to help devise solutions. Alison has the ability to fit in and gel with internal and external client legal teams and is a pleasure to work with.’
‘Ian Byworth is excellent. Offers prompt responses and gives pragmatic advice. Covers not just the UK, but all of our global brands and helps with some tricky issues.’
Black Sheep Brewery
Candy Hoover Group
Guangdong Oppo Group
Hermès International S.A.
Maybourne Hotels Group (Claridge’s, The Berkeley, The Connaught)
- Advised Maybourne Hotel Group on all legal aspects of its branding, freedom to use and trade mark protection strategies.
- Assisted Go-Ahead Group with its overseas brand expansion through an extensive trade mark filing programme.
- Undertook an urgent trade mark searching project for Eakin Group to clear various possible new marks for use.
Wilson Gunn is particularly active for UK small and medium-sized enterprises, but also attracts international brands. The firm is one of the most established practices in the country and continues to be a trade mark filing heavyweight as well as one of the most active representatives at the UKIPO on contentious matters. Domain name, social media and other internet-related matters are also handled. Manchester-based practice head Michael Douglas and his team have specialised in advising sports sector clients, for example English Premier League clients, as well as fashion, retail and healthcare clients. With four offices in the North of England in addition to offices in London and Dublin, the firm is one of the rare regional firms that consistently attracts well-known direct domestic and international clients. Cathy Ayers joined the Birmingham office as a managing associate from Cleveland Scott York.
Other key lawyers:
Mark Goodwin; Tim Rose; Cathy Ayers; James Robey; Marc Lewis; David Slattery; Andrew Marsden
‘Tim Rose is an absolute pleasure to work with. His advice is clear, concise and commercial. He is extremely approachable and patient and has a good understanding of both trade mark law and our areas of concern. If we are ever undecided on whether to carry out a certain action or opposition, he is fantastic at being pragmatic and summarising our options and the likelihood of success. I would recommend Tim to any organisation!’
‘They are able to provide tailored advice with the specific client in mind. Marc Lewis is able to provide clear and considered advice.’
‘Wilson Gunn provide a reliable and efficient service at great value. Marc Lewis is always on hand to offer practical advice. His understanding of the wider sports market is invaluable.‘
‘User-friendly, super responsive, very commercial team are at the top of their game, yet their fees are more than fair. I wouldn’t use any other firm for my IP than Wilson Gunn. Michael Douglas is very approachable, accessible, user-friendly, good to work with and an extension of our team.’
‘Tim Rose is very experienced, user-friendly and enjoyable to work with. He is pragmatic and puts the client’s interests first at all times.’
Mölnlycke Health Care
Natural History Museum
Swizzels Matlow (LOVE HEARTS)
The Football Association
- Advised The Football Association on the management of its global trade mark portfolio, including advising on, and implementing, a strategy for protecting the latest revision of the FA CUP logo.
- Acted for Mölnlycke Health Care in the ongoing maintenance of its global trade mark portfolio of over 2000 marks in nearly 100 countries.
Ashfords LLP impresses with a trade mark filing practice that outperforms many larger firms, with a combined attorney and solicitor offering and a client list that features a number of prestigious luxury brands. Exeter-based practice head Carl Steele and his team assist with the full range of trade mark, copyright and design matters, including commercialisation agreements, litigation and transactional matters for which the team joins forces with the firm's corporate and private equity colleagues. Anti-counterfeiting matters, in particular for clients from the beauty and cosmetics sectors, and trade mark issues involving China, including bad faith trade mark registrations and customs issues, are also handled. Based primarily in the South West, the firm also has an office in London.
Other key lawyers:
Clare Jackman; Dan Cahill; Chris Haywood
‘Highly responsive, skilled at translating complex legal issues into everyday language. Very good advice on balance of risks, pragmatic. Strength in depth, always able to deliver a quick response from a member of the team. Adept at progressing things very rapidly.‘
‘Dan Cahill is recommended for expertise and advice on intellectual property and trade marks.’
The Roald Dahl Story Company
J W Anderson
The Brand Architekts PLC
Pancho Music Inc.
Beat Capital Partners Limited
Tarian Underwriting Limited
Chord Reinsurance Limited
Munitus Agency Limited
Alitus Intermediaries Limited
Brace Underwriting Limited
Alcor UK Holdings Limited
Satinwood Underwriting Limited
Amtrust Management Services Limited
Blake, Cassels & Graydon LLP
Borden Ladner & Gervais LLP
- Acting for Aardman Animations on worldwide trade mark portfolio management.
- Acting for Shazam Productions Limited in court proceedings for copyright infringement and passing-off against unlicensed third parties that have produced and have been performing an unlicensed ‘Only Fools & Horses‘ interactive dining show across the UK.
- Acting for Lay & Wheeler in a trade mark dispute with rival wine merchant ‘Mr Wheeler’.
Elkington + Fife LLP's trade mark prosecution practice is led by the renowned Chris McLeod in London. 2020 was a growth year for the team, with the majority of new work coming in from prestigious clients seeking post-Brexit UK counsel and partly from new and growing relationships with large corporate and commercial firms in need of trade mark experts for their corporate and small and medium-sized enterprise clients. The structure of the team enables the firm to take on a wide range of clients, from well-known multinationals to small UK companies. Mark Scott's design practice complements the trade mark practice well and includes advisory and contentious work.
Other key lawyers:
Mark Scott; Allister McManus
‘The E&F team have always been very helpful and knowledgeable on any trade mark matters and they have a vast array of international connections which makes for a seamless process when filing for international trade mark protection.‘
‘Small, dedicated teams, led by relationship directors with individual PAs, with access to additional key specialities if and as required. Very low incidence of staff turnover makes for seamless transition and imperceptible interruption to client service.‘
‘I use Elkington + Fife a lot because the service is always very prompt, well thought through, commercial and professional. It’s just a very reliable and faultless service, delivered at the right price. Can’t fault it.‘
‘A very talented and knowledgeable IP team. Commercially-minded and pragmatic. Collaborate with ease with other external advisers (such as lawyers) to give a great service to clients. Modern and easy administration. Proactive and intelligent.‘
‘Chris McLeod is a vastly experienced practitioner with a calm, clear and analytical approach whose advice can be relied on without question. Chris is good to work with and delivers his advice with a wit drier than a bag of roasted peanuts.‘
‘Chris McLeod has always been a pleasure to work with and happy to find time to respond to all forms of queries. He’s highly knowledgeable on all procedural and strategic matters relating to trade marks.‘
‘Key attributes include excellent industry knowledge, immediate access to relationship director, clear responses and excellent communication at all times, sound and practical advice and guidance. Key contributions in particular from TMA Chris McLeod throughout and on one particular transaction from TMA Allister McManus.‘
‘I always work with Chris McLeod – my go to partner. He is calm and unflappable, huge brain, very assertive in a modest way. Great operator.‘
Formula One Management Limited
Independent Vetcare Limited/Evidensia
Koninklijke Philips N.V.
Fujifilm Speciality Ink Systems Limited
Evonik Industries AG
Malvern Panalytical B.V.
OSA Fine Spirits Ltd
Decon Laboratories Limited
TAUR Technologies Ltd
Chaos Fashion Limited
The Juice Master Limited/Jason Vale
Junius Health Limited
Blank Rome LLP
Slaughter and May
Stevens & Bolton
Knijff Trademark Attorneys
Memery Crystal LLP
Farrer & Co LLP
Nishimura & Asahi
- Acted as sole UK advisers to Formula One Management Limited in relation to the protection of the F1, Formula 1, Grand Prix and associated trade marks, including the comparative cloned UK registrations resulting from Brexit, and filing oppositions to third-party UK trade mark applications for conflicting trade marks.
- Assisted IVC/Evidensia with growing and protecting its substantial portfolio of trade marks, including strategic advice and resolution of third-party disputes.
- Represented Coca-Cola European Partners plc in registering domain names and filing numerous trade mark applications, including an international application covering various territories.
Fieldfisher combines a very active contentious registry practice with the ability to manage and develop often extensive international trade mark portfolios. As part of the firm's wider IP offering, which also includes a successful litigation practice, the group possesses the depth to handle complex high-stakes matters. The London team is a key pillar of the firm's international IP practitioner network which includes the growing Dublin office that was opened in spring 2019. The growth of the practice in 2020 included a number of clients that chose the firm for the management of its successor trade mark rights post-Brexit. Leighton Cassidy and John Linneker are the heads of the practice. With the arrival of director Chris Benson, who joined from Taylor Wessing LLP in April 2021, the team gained a very well-known brand, trade mark and copyright expert.
Leighton Cassidy; John Linneker
Other key lawyers:
Harriet Seymour; Amy Reynolds; Hastings Guise; Nick Rose; Jude Antony; Kishen Karia; Chris Benson
Take-Two Interactive Software
Kabushiki Kaisha Square Enix (also trading as Square Enix Co., Ltd.)
Boparan Private Office
Wilkin & Sons
Khadi & Village Industries Commission
- Acted for client SkyKick in defending trade mark infringement proceedings brought by Sky Plc in relation to use of the word ‘SKYKICK’.
- Assisted Sazerac with the management of its global trade mark portfolio outside North America and brand IP enforcement, acting on a large number of ongoing enforcement actions around the world, including in litigation in the UK courts.
- Acted for Caffè Nero in relation to worldwide trade mark matters, including trade mark clearance, prosecution, and enforcement, such as an ongoing dispute with Nero Stockholm Restaurant (trading as CAFÉ NERO) over misuse of the CAFFE NERO mark in Sweden.
Lewis Silkin LLP expanded its trade mark portfolio work for existing clients, for example in the food and beverage sector, and invested in its domain name and online investigations offering with the recruitment of legal director Nick Bowie, who joined from Keltie in February 2021. With attorneys and litigators in the team, the practice is well rounded and includes the full range of prosecution work in addition to commercial matters, such as licencing, franchising and merchandising agreements, and disputes. Global trade mark clearance and brand disputes are areas of particular strength. Through the firm’s company AdSlogans, the practice also provides specialised search services for straplines and slogans. The firm’s litigation practice received a boost in 2021 with the arrival of Antony Craggs, formerly at D Young & Co LLP, and the arrival of Neil Parkes, formerly at Foot Anstey. The Dublin office is the first point of contact for Irish trade mark work and serves as the firm’s EU hub. Dominic Farnsworth, a dual-qualified trade mark attorney and solicitor, is the head of the practice.
Other key lawyers:
Giles Crown; Dominic Farnsworth; Simon Chapman; Steven Jennings; Sinéad Mahon; Helene Whelbourn; Jackie Mullen; Paul Hegedus; Nick Bowie; Antony Craggs; Neil Parkes; Oliver Fairhurst
‘I find the lawyers at Lewis Silkin very knowledgeable, strategic, and practical and readily available by email or phone. They provide quality advice that is practical and at a reasonable price.‘
‘From our perspective, what makes this practice unique is their knowledge of our sector, maturity, and extensive experience.‘
‘The people I work the most with are Dominic Farnsworth, Steven Jennings, Paul Hegedus, and Oliver Fairhurst. I value the most their accessibility, practical advice presented in a clear and concise manner, and the value they provide.’
‘They were extremely dedicated in terms of helping navigate the several challenges we faced and providing pragmatic advice.’
Johnson & Johnson
- Advising Britvic on IP and commercial matters across its business, including managing its global trade mark and design portfolio, assisting with new product development, brand clearances, online monitoring, IP infringements and licensing.
- Assisting Harvey Nichols with managing the global trade mark portfolio and related trade mark, domain and design disputes for franchising and commercial licensing issues; advising on promotional campaigns.
- Assisting SkyScanner with managing its global trade mark portfolio, trade mark and copyright disputes, and with managing its online brand enforcement globally.
Mishcon de Reya LLP's trade mark and design prosecution practice is built around the protection of major brands. The majority of matters involve a cross-border component as the practice counts well-known multinationals and a number of US firms and, increasingly, Chinese, Indian, Japanese and EU firms as clients. The firm has opened a Dutch-based practice in preparation for Brexit. Adept at the full range of prosecution work, including searches, filing programmes and registry proceedings, the group also excels in enforcement matters as illustrated by its impressive list of High Court and CJEU disputes. The firm also has a dedicated brand advisory business called MDR Brand Management, and has launched an innovation department aimed at clients from disruptive sectors. Solicitor Sally Britton directs the practice, which includes Cassandra Hill who made legal director in May 2020.
Other key lawyers:
David Rose; Jeremy Hertzog; Peter Nunn; Cassandra Hill; Jaimee Spencer-Bickle; Eloise Preston; Sarah Brooks; Sophie Soeting; Stuart Lester
‘The team is very assertive, but practical. I feel like the advice I receive takes into account value and risk in addition to the merits.’
‘Friendly, frequent and efficient communication of deadlines, areas of concern. Always kept in the loop with billing and fees are explained upfront and estimates are usually vey accurate.’
‘David Rose provides prompt follow-up and manages our trade mark portfolio expertly.’
‘Sally Britton and her team provide an extremely efficient and knowledgeable trade mark service. They quickly navigate any areas of concern and offer sound advice. In all my time using external counsel they are the only team I have never had to follow up with – they are thorough, consistent and reliable. They are hugely cooperative and reliable and once they have instructions will get on with the work smoothly. Sally has a deep understanding of our business and is always readily available for advice. Her team’s communication is succinct and clear, and we’re given accurate cost estimates prior to each matter. I would have no hesitation in recommending Sally to anyone seeking trade mark advice or protection.’
Health & Happiness
- Acting for Sky in a wide-ranging EU trade mark dispute against SkyKick before the CJEU, High Court and Court of Appeal.
- Advising media and entertainment company Global on a broad range of brand protection and enforcement matters.
- Acting for Iceland Foods in significant EU trade mark invalidity proceedings against the Icelandic government.
At Osborne Clarke LLP the promotion of Richard May in April 2021 to the partnership underlined the firm's commitment to bolstering its trade mark prosecution practice. Under the lead of litigator Arty Rajendra and director of trade marks Mark Foreman, the team is in charge of managing the often highly international trade mark portfolios of well-known brands, in particular from the FMCG, food and beverage, life sciences and media and entertainment sectors. A stand-out feature is the group's experience in advising on trade mark issues faced by clients upon entry into emerging markets such as Russia, the Middle East and China. The group assists with the full range of trade mark prosecution matters, including with complex opposition and invalidation proceedings.
Other key lawyers:
Mark Foreman; Richard May; Robert Guthrie; Daniel Ramos; Leanne Gulliver
‘Great responsiveness and great knowledge of IP law.’
‘Very responsive team.’
‘Richard May and Arty Rajendra are great to work with and consistently provide practical and timely advice.’
JPMorganChase (We Pay)
my 1st Years
Fred Perry (Holdings) Limited
- Represented Nokia in UK trade mark and company name disputes at the UKIPO, successfully filing trade mark oppositions against attempted sound-a-likes NOKYU, AUKIA, HAOKIA, and KOKIYA and acting in opposition proceedings against NOKIEE and NOK OYO.
- Acted for Anschutz Entertainment Group on the management of its European trade mark portfolio and on a number of clearance and contentious matters.
- Represented social media app Peanut App Limited in trade mark opposition proceedings at the UKIPO and subsequent High Court appeal against Peanuts Worldwide LLC, owners of the Peanut/Snoopy comic strip in addition to managing the client’s global trade mark portfolio.
Venner Shipley LLP merged with Kent firm Brookes IP, with Jane Martin and group head Clare Turnbull adding their expertise in the new Tunbridge Wells office together with their team of trade mark administrators. The merger also significantly increased the firm's direct client list. In preparation for Brexit, the firm bolstered its Munich office with the arrival of European trade mark and design attorney and German and European attorney-at-law Mechthild Liebelt who joined in January 2021 from Epping · Hermann · Fischer. The practice assists with the management of global, European and UK trade mark portfolios, is well versed in registry oppositions and appeal proceedings, and offers in-house litigation expertise.
Other key lawyers:
Jane Martin; David Birchall; Yoann Rousseau; Gloria Parmesan; Camilla Sexton
‘Exceptional client service and management of a huge TM portfolio.’
‘David Birchall provides very pragmatic and business-minded advice. His work goes beyond simply ‘legal’, but looks at the best strategy to reach the client’s business objective.’
‘Very attentive and proactive in respect of highlighting key matters and deadlines.’
‘A strong commercial approach to portfolio management. Appropriate guidance and assistance delivered in a timely manner.’
‘An excellent team that is available to serve and assist whenever needed. They are efficient, well connected across the world and have a solid understanding of the management of trade marks and how we can better manage them.’
‘Yoann Rousseau- one of the most exceptional advisers I have come across. Excellent communication skills, command of his specialist area and always 100% accurate. I wish all advisers instilled the same amount of confidence in their clients.’
‘Jane Martin’s advice was very accurate and professional as well as being prompt at all times.’
‘I have had extensive pleasure working with Clare Turnbull these past few years. She is highly competent and very knowledgeable. She is super efficient and takes her time to understand more about our needs and situation before making recommendations.’
Athletic Brewing Company
Atnahs Pharma UK Limited
Ava May Aromas
Clinigen Group Plc
First Grade International
FxPro Financial Services Ltd
Livias Health Foods Limited
Mental Health First Aid England
Mitel Networks Corporation
The Norwex Group of Companies
The Automobile Association (the AA)
THE PROJECT BAND LTD
The Sakata Group of Companies
- Acted for The Project Band Ltd in an action concerning the ownership of goodwill in the name of a 1970s – 1980s recording act, The Alan Parsons Project, initiating action in the English High Court on behalf of a number of former performers on the records, seeking declaratory relief from a passing off action.
- Assisted TalkTalk with the management of its entire trade mark portfolio, including successful objections and oppositions against third parties’ applications deemed too close to TalkTalk’s brands (such as Talk Shalk and TalkActive).
- Provided extensive trade mark portfolio management services to Aviva for its worldwide trade mark portfolio.
Bates Wells' distinguishing feature is its extensive experience in advising charities and other third sector clients. The expertise of practice head Mathew Healey and his team has attracted some of the UK's largest charities as well as a diverse list of commercial clients which the practice assists with clearance, registration and portfolio management matters, contentious proceedings before the UKIPO and IPEC, as well as transactional and licensing matters. The group also handles certification and assurance mark matters.
Other key lawyers:
Catharina Waller; Wendy Grey
‘Exceptional knowledge of how charities work enabling the team to provide relevant, pragmatic, cost-effective advice.‘
‘They have been brilliant to work with – communicate really effectively, are kind, smart and really work hard for you as a client. They literally achieved everything we asked of them with absolutely no issues at any stage and went above and beyond.‘
‘A real staunch team to assist us in both routine and complex matters. They are also proactive and great communicators.‘
‘Mathew Healey is a hugely talented individual. He combines an impressive breadth of knowledge, with a refreshingly pragmatic and sensible approach to trade mark law. He gives really useful advice and working with him is a pleasurable experience.‘
‘Mathew Healey runs a strong team; Wendy Grey provides excellent, clear, pragmatic advice. All of the team have a nice manner and are easy to work with. They are responsive and provide an appropriate level of detail; they are also proactive in recommending approaches to specific challenges.’
‘They not only provide all we need to develop and defend our trade marks, but they also offer really thought-provoking and tailored advice based on our needs. I have absolute confidence and trust in their expertise and judgement and appreciate their readiness to explain things and help us explore new areas.‘
‘We have found the entire team to be brilliant individuals to work with, but Catharina Waller in particular I would want to highlight as demonstrating complete dedication to reaching a positive outcome in situations that would try the patience of a saint! She was calm, patient with the questions we had as client, and unruffled by tactics of the opposing side. We loved working with her.‘
‘Catharina Waller and Mathew Healey offer friendly in-depth knowledge and experience that they use to generate advice that we trust implicitly. Their track record in our eyes is second to none, and they offer affordable strategies and practical technical support to ensure that our IP remains adequately protected. In a fast-moving world of competing deadlines, we often have the need to move quickly as we respond to emerging challenges, and Catharina and Mat have always shown the flexibility to help us at short notice to get the job done.‘
The Woodland Trust
International Planned Parenthood Federation
CDP (formerly ‘Carbon Disclosure Project’)
Charlie Mackesy (author)
The Copper Mark
The Trussell Trust
The Alan Turing Institute
The Royal Foundation of the Duke and Duchess of Cambridge
Cruelty Free International
Voluntary Service Overseas
Trinity College London
International Paralympic Committee
Royal Commonwealth Society for the Blind (‘Sightsavers’)
Battersea (formerly Battersea Dogs and Cats Home)
Institute of Masters of Wine
The National Gallery
National Schizophrenia Fellowship (‘Rethink Mental Illness’)
The Market Research Society
London & Partners Limited
National Deaf Children’s society
Emilia Clarke (actor)
- Assisted award-winning writer and artist Charlie Mackesy with the protection of various brands and other intellectual property relating to his bestselling book, The Boy, the Mole, the Fox and the Horse.
- Assisted food bank charity The Trussell Trust with all aspects of its brand protection in the UK, which includes advice relating to its ‘Network Foodbank’ branding which is licenced to over 1200 food banks in the UK.
- Advised international NGO WaterAid International on extensive worldwide trade mark clearance, registration and other management work across the world.
Dentons specialises in strategic trade mark portfolio advice for global brands and large UK companies. As part of the world's largest law firm, the group is highly adept at multi-jurisdictional matters, including disputes and enforcement issues. Practice head and solicitor Anna Copeman shoulders a varied caseload that includes high-profile contentious proceedings as well as strategic licencing agreements.
Other key lawyers:
Anna Brown; James Marsden
Emtelle UK Limited
Lottoland Holdings Ltd
- Acted for the Virgin group for over 20 years as go-to lawyers for trade mark licensing and intellectual property related disputes.
- Defending American Eagle Outfitters in UK High Court proceedings brought by Lyle & Scott for alleged breach of a co-existence agreement and passing off in relation to use of American Eagle’s logo in key retail channels, working in tandem with Dentons US on the parallel US proceedings.
- Acted extensively for Marks & Spencer in respect of all intellectual property matters, including drafting and negotiating its international franchise agreements and consignments, and brand licencing and distribution agreements with major third party brands (including Phase Eight, Hobbs and Early Learning Centre) in addition to acting in contentious matters, on both enforcement and defence.
Novagraaf stands out as the one of the largest trade mark portfolio management practices in the UK. The European consultancy advises on strategic trade mark matters as well as day-to-day issues. Practice head Vanessa Harrow in Manchester has experience in developing brands and brand protection matters, often cross-border in nature, for which the UK team can draw on its counterparts in France, Belgium, the Netherlands and Switzerland. The firm also has offices in China, Japan and the US. In March 2021 the firm announced it would, alongside its IP solutions company NovumIP, join Questel, a provider of technology-driven IP solutions. In 2020 the firm acquired Thomsen Trampedach, an online brand protection service provider with expertise in domain name portfolio management, infringement monitoring and takedowns.
Other key lawyers:
Laura Morrish; Dan Halliday
‘Responsive, understand clients needs, budgets and provide pragmatic advice, very willing to meet different requirements for billing and to work collaboratively with other law firms working on the client’s matters.’
‘Most efficient and responsive.’
‘Vanessa Harrow – good client care skills, keeps up to date with and interested in client’s activities, responsive, willing to look for solutions. Laura Morrish – responsive, clear practical advice, in-depth knowledge of law and procedures. The wider teams and admin support are also well informed and engaged on various matters. E-mails are clear and concise.’
‘Dan Halliday explains IP issues in clear plain English.’
Stock Spirits Group
The Vita Group
- Managed Stock Spirits Group’s trade mark portfolio worldwide, including undertaking clearance searching and advising on registration strategy and enforcement to ensure protection of its brands internationally.
- Advised The Vita Group on strategy for overcoming obstacles to trade mark registration in China.
- Developed a monitoring and enforcement strategy via the in-house online brand protection portal for online infringements for an international food safety organisation.
Swindell & Pearson Ltd expanded its trade mark filing and its UKIPO and EUIPO opposition hearing activity in 2020. Practice head Nick Womsley in Derby and his team specialise in strategic trade mark matters for a wide range of clients, including regional, national and international companies. The group is especially experienced in the fashion and food and beverage sectors, but is active in a wide range of industries. The complementary design prosecution and litigation practices are other key assets.
Other key lawyers:
Kieron Taylor; Katy Fuggle; Natasha Hybner
‘Knowledgeable, practical and commercially aware, offering advice that is pertinent in the real world. Prompt attention to my matters. Swindell and Pearson provide a full service in relation to trade marks and patents across our global business. The team are professional and proactive. They manage our trade mark applications and renewals in a timely and efficient manner. The practice is rather responsive in routine communications and in addressing our client’s questions and concerns. It is able to render solutions in an agile, cost-effective manner.’
‘Nick Womsley has a keen intellect and an encyclopaedic knowledge of IP matters. He offers sage advice in a down-to-earth manner, sprinkled with good humour. He and Katy Fuggle are a joy to work with.’
‘Kieron Taylor is our main contact and has excellent knowledge of our business requirements.’
‘All of the staff that we work with at Swindell and Pearson have attended to our requirements in a thoroughly professional manner. Natasha Hybner has always provided excellent service. She understands our business and has helped us to improve the management of our trade mark portfolio.’
‘Kieron Taylor responds to our queries and concerns regarding urgent matters in a swift way. His work quality is commendable even when given a short time period.’
‘Katy Fuggle is excellent. She takes the time to thoroughly understand our objectives & issues and help us make good decisions. Katy’s brilliant at breaking down the complicated processes/laws into pragmatic actionable direction. She’s been invaluable with her pre-filing advice and genuinely feels like part of our own company. Plus she’s a real pleasure to work with.’
‘Kieron Taylor and Nick Womsley have been incredibly supportive and patient in a long-running trade mark registration matter. They have been persistent, creative and very hard-working throughout the number of years that the issue has been running. Without them, we would not have been able to counteract the other side‘s claims and infringements of our registrations.’
‘Kieron Taylor is an exceptional attorney. He can settle very complicated cases and he is very responsive. He dealt with our complex cases diligently and professionally.’
VKR Holding A/S
The Mentholatum Company
- Advised Slimming World on its global trade mark portfolio management and global brand strategy, including representation in two trade mark appeals before the General Court in Luxembourg.
- Advised Town & Country Petfoods on its trade mark portfolio and representing the client in oppositions to its growing trade mark rights.
- Advised Benetton Holdings Limited on its trade mark portfolio and on oppositions to its trade mark rights.
Withers & Rogers demonstrates particular strength in EU and UK trade mark filings, consistently appearing as one of the most active firms for both. With a number of team members offering in-house counsel experience, the practice is a good choice for trade mark portfolio management matters, with clients including a number of multinationals and large UK companies. The four UK offices in combination with the Paris and Munich bases form a solid European offering. Bristol-based practice head Fiona McBride and her team are experienced in a wide range of sectors, including the fashion and jewellery, retail, gambling, finance and defence sectors. Mark Caddle, whose specialisms include opposition and appeal proceedings and assisting start-ups and small and medium-sized companies with soft IP protection, made partner in April 2020.
Other key lawyers:
Marisa Broughton; Tania Clark; Mark Caddle
Womble Bond Dickinson (UK) LLP stands out through its transatlantic platform of multiple offices in the UK in addition to a high number of offices in the US. Leeds-based practice head James Love, who is a solicitor advocate, and his team are well versed in trade mark and design prosecution work in addition to infringement, invalidity, trade secret and know-how matters. Stand-out features include a very active trade mark filing practice and sector specialisation in the retail, consumer product, FMCG, oil and gas, manufacturing and technology sectors. Integrated into a full-service law firm, the team is regularly involved in matters with colleagues from other departments. The firm is known for its commitment to technological innovation and offers clients its WBD Advance platform that unites the firm's technology and business services, such as document review and due diligence tools.
Other key lawyers:
Patrick Cantrill; Rachel Hearson; Rose Smalley
‘Very friendly firm, we enjoy their informal approach.’
‘James Love is our go-to for practical advice on any trade mark-related matters.’
Alexander Duckham & Co., Limited
ME + EM
Vetements Group AG
Kilfrost Group Plc
North of England / Sunderland Marine
Bellway Group Plc
Vertu Motors Plc
In The Style Fashion Limited
TomTom International B.V.
Serif (Europe) Ltd
Spirit of Yorkshire Limited/World Top Brewery Limited
Places for People Group
R. H. Smith & Son’s (Wigmakers) Limited t/a Smiffys
UCFB Holdings Limited
- Acted for Vetements Group AG in various trade mark opposition and invalidation actions in the UK, as well as in the Company Names Tribunal, against a third party using the client’s VETEMENTS brand.
- Advised Atom on defending its mark in the UK and Europe via oppositions to third-party applications, in addition to representing the client in potential trade mark infringement action.
- Advised GoCompare.com Limited on the expansion of protection for the This Is The Big Deal’s LOOK AFTER MY BILLS brand, including defending oppositions to UK trade mark applications.