PATMA: Trade mark attorneys in London
AA Thornton's caseload regularly includes high-stakes headline-grabbing cases. The team combines strength in trade mark portfolio management with proven prowess in the prosecution of trade mark applications, especially in complex cases involving particular international or legal challenges. The retail sector is a particularly busy area for the group, but the client roster reveals the practice's wide-ranging sector expertise. Ian Gill directs the practice. Sarah Darby made partner. Vanessa Lawrence became a consulting attorney for the firm.
Other key lawyers:
Sarah Darby; Rachel Havard
‘Excellent team of knowledgeable and genuinely good people.‘
‘AA Thornton have a strong, dedicated trade marks team.‘
‘Ian Gill is an excellent individual: concise, precise, personable and a good communicator.‘
‘Ian Gill is very client-friendly. He gives good, pragmatic advice on filing strategies and dealing with issues, he is transparent on cost and imaginative on solutions.‘
‘Ian Gill is a true expert and always offers sensible and commercial advice.‘
‘Sarah Darby is articulate and has a huge intellect, but cuts through the legal jargon to provide digestible advice.‘
‘Sarah Darby is fantastic, highly technical, but with a commercial focus.‘
‘Sarah Neil is always on hand to offer great advice and always finds the solutions we need!‘
AB World Foods Limited
Allied Bakeries Limited
HKA Global Limited
J. Choo Limited
R. Twinings and Company Limited
Virgin Enterprises Limited
- Acted for Jimmy Choo in successfully convincing the EUIPO of a reputation in a trade mark which the client had not applied to physical goods, using evidence of the extensive use of the trade mark in promotional campaigns, in the press and by the public, thereby ensuring protection of the trade mark.
- Advised Paul Smith, the British fashion design house, on a major rebranding that involved the filing of trade mark, design and copyright applications for its new logo, which was to be used across the entire product range internationally.
- Assisted 3 Mobile with its opposition and invalidity strategy to respond to several brand-threatening EU trade mark applications , which included extensive collating of evidence of reputation in the mark 3 Logo, as well as the numeral 3 in a number of EU countries.
- Represented Equip Outdoor Technologies Limited in multiple oppositions to third-party applications to register confusingly similar marks to the client’s trade mark ‘RAB’, including in the US and China. Advised the client on the set-up of its anti-counterfeiting strategy.
- Advised HKA Global on the trade mark aspects of its international rebranding following its acquisition by Bridgepoint Development Capital in 2017, including the conduct of extensive due diligence and the development of a worldwide filing strategy.
Since early 2019 Boult Wade Tennant LLP has boasted a new office in Berlin to complement the existing continental European offices in Munich and Spain and its four-office strong presence in the UK, with London as the main trade mark hub. The group's caseload is correspondingly multi-jurisdictional, with a high percentage of major international players from a large variety of sectors among the clients. The practice offers strength in both portfolio management and strategic trade mark development and in oppositions and appeal cases, including in-depth experience in co-operating with solicitors for high-stakes infringement cases. Practice head John Wallace is based in London.
Other key lawyers:
Emma Pitcher; Tony Pluckrose; Catherine Wolfe
Bauer Media Group
H. Huntsman & Sons Ltd
John Guest International
Lloyd’s of London
- Represented Azumi Limited, a worldwide operator of high-end Japanese restaurants, in a complex trade mark dispute involving an appeal against a decision by an IPEC recorder.
- Successfully acted for Unlimited Perspective SA in opposing the registration of a UK trade mark filed by a Swiss company.
- Successfully acted for Vodafone in obtaining take-down of a trade mark-infringing signboard used by Vodafono Co. Mobiles & Accessories through filing an administrative complaint before the Kuwaiti municipality.
- Successfully represented Scooters India Limited before the UKIPO and the EUIPO as well as in a General Court trade mark dispute opposite Brandconcern BV regarding the trade mark LAMBRETTA.
- Management of Hotelbeds Group’s IP portfolio, including oppositions and appeals work; assisting with the set-up of filing programmes for new brands; and advising on multi-jurisdictional trade mark issues, often through co-operation between the firm’s British and Spanish offices.
Carpmaels & Ransford LLP regularly provides extensive trade mark portfolio management services to prestigious clients, including the development and implementation of international trade mark strategies, and representation in opposition proceedings and appeals, as well as in litigation, especially thanks to Jonathan Day's dual qualification as trade mark attorney and solicitor. Licensing and other transactional instructions are another area of strength. The group continues to gain in market share, both in contentious and non-contentious matters, succeeding in attracting several large new portfolios. Day shares the leadership of the practice with Roger Lush. In addition to its central London office, the firm also has a long-established office in Munich.
Jonathan Day; Roger Lush
‘The Carpmaels team are friendly and approachable at all levels from partner down to their very efficient paralegal and admin teams.‘
‘Creative problem-solving approach. Ability to rapidly assess and implement complex projects. Commercially sound advice.‘
‘The team is practical, efficient and extremely knowledgeable. It will help you navigate complex questions and challenges around managing your IP portfolio, and help you assess present and future challenges in a simple way.‘
‘Roger Lush and new associate recruit Thomasin Procter are very good at easing the administrative burden on in-house counsel within the context of global filing programmes.‘
‘Roger Lush is personable and at the top of his game.’
‘Jonathan Day is a great strategic thinker, with a decisive, yet considered approach to handling disputes.‘
- Conducted large-scale international trade mark clearance projects for Celgene Corporation.
- Conducted a trade mark clearance project for Xeros Limited, assisted with the drafting and filing of new trade mark applications, and representing the client, which the firm has advised since its inception, in contentious cases.
- Assisted 4D Pharma with trade mark clearance projects; the development of its trade mark portfolio, including application drafting and filing; and representation in prosecution proceedings.
- Advised Manzanita Capital on and co-ordinated a global anti-counterfeiting strategy, including customs actions, website and social media takedowns, domain recovery, and representation in litigation in both civil and criminal law disputes. Provided ongoing assistance with trade mark clearance projects.
- Co-ordinated Bear Grylls Ventures LLP’s global trade mark activities, involving trade mark clearance projects, trade mark portfolio development, and representation in opposition proceedings and litigation.
D Young & Co LLP is especially active in the fashion, luxury, pharmaceutical and consumer product sectors, but also fields a busy caseload in the sports, entertainment, and food and drink sectors. The group impresses with its longstanding experience in the management and development of key trade mark portfolios for prestigious clients, many of which also profit from the firm's powerful in-house dispute resolution practice. Additionally, the group is well versed in domain name disputes. Jeremy Pennant in Southampton directs the practice. The firm also has offices in London and Munich.
Other key lawyers:
Richard Burton; Helen Cawley; Jackie Johnson; Gemma Kirkland; Tamsin Holman; Anna Reid; Matthew Dick
‘D Young & Co has a fantastic team of trade mark professionals who are experts in EU and UK trade mark law. They represent many large companies, so they know what in-house trade mark counsel are looking for. They provide practical solutions, and don’t “over-lawyer”.’
‘I often point to D Young’s trade mark team as the gold standard for foreign local trade mark counsel. The firm consistently provides superior and efficient business-friendly advice.‘
‘Responsive, clear, concise and pertinent advice.‘
‘The D Young & Co team is unbelievably responsive in their practice. They, of course, have an excellent grasp of the legal issues that I present to them and they deliver high-quality analysis that is easy to digest.‘
‘Jeremy Pennant is extremely experienced, and always provides practical, excellent advice. Matthew Dick is very thorough, and similarly, looks for a practical solution, from both a legal and business perspective.‘
‘Jeremy Pennant is a great resource for EU and UK trade mark practice. He and his team are very responsive and provide great, business-relevant and practical advice.‘
‘Jeremy Pennant’s cost-effective work shows a deep understanding of trade mark law and recognition of practical and business interests that impact client decision making. His supporting team is similarly excellent.‘
Crockett & Jones Shoes
Exxon Mobil Corporation
Grays of Cambridge
Hard Rock International
Johnson & Johnson
- Successfully acted for Exxon Mobil Corporation in obtaining revocation of the trade mark ‘E:MOBIL’ and an award of costs in favour of the client.
- Chosen by ZPG (Zoopla Property Group) for advice on its worldwide trade mark portfolio, including the conduct of a detailed strategic review of the entire portfolio.
- Represented Marriott International in a number of related cancellation actions before the UKIPO, Appointed Persons, EUIPO and General Court, all ultimately resolved in favour of the client, including some which involved relative grounds based on copyright, grounds rarely relied on in EUIPO and Court of Justice proceedings.
- Successfully defended Sky UK Limited’s EUIPO application to register the sign ‘CHALLENGE’ and logo.
- Successfully defended Asid Reignz Enterprises Limited against an opposition brought by EasyGroup Limited to a UK trade mark application for the mark ‘MR EASY’ for entertainment services in Class 41.
Dehns demonstrates strength in a broad variety of sectors, including the food and drink, automobile, financial services, fashion and retail sectors. The group offers the full range of trade mark services, including the management and development of international trade mark portfolios, representation in opposition and appeal proceedings, and assistance with large-scale rebrandings. Roberto Calamita in London is the head of the practice. The other main trade mark hubs are in Brighton and Munich.
Other key lawyers:
Elaine Deyes; Clare Mann; Joseph Letang
Honda Motor Europe
Otis Elevator Company
Pret a Manger
United Technologies Corporation (UTC)
- Successfully obtaining UK trade mark protection for Janus Henderson Investors for the long-used strapline ‘Knowledge Shared’ after an official objection raised by the UKIPO by gathering and delivering evidence of the acquisition of the sufficient level of distinctiveness through consecutive use of the strapline.
- Acted for Skillsoft in successfully opposing a competitor’s application for registration of a figurative EU trade mark, obtaining a favourable decision from the EUIPO regarding two out of three concerned classes and securing refusal of the trade mark application in its entirety before the Board of Appeals.
J A Kemp's caseload increasingly contains trade mark prosecution for major pharmaceutical and medical device, especially medtech, clients, as part of an overall sectorially diverse portfolio. In addition to a busy drafting and filing practice, the team assists a string of major international players, often longstanding clients of the firm, with opposition proceedings and appeals. James Fish, dual-qualified as a European trade mark attorney and solicitor, heads the practice from the London office. In Cambridge, litigator and patent and trade mark attorney Stephen Hodsdon joined from Mewburn Ellis LLP, while Aaron Newell, a UK- and Australian-qualified solicitor, Canadian-qualified barrister and solicitor, and Australian-qualified trade mark attorney, joined the London office from Lewis Silkin LLP.
Other key lawyers:
Tom Albertini; Ben Mooneapillay
- Advised Diversey, Inc.. on the management of its trade mark portfolio outside the US and Canada, involving 5,000 trade mark registrations and applications covering a broad variety of sectors.
Kilburn & Strode LLP offers a comprehensive trade mark practice, spanning trade mark clearance work, the drafting and filing of trade mark applications, and representation in opposition and cancellation proceedings. The group also excels in the provision of litigation support, due diligence instructions, licensing agreements and enforcement work. On top of its offices in Munich and The Hague, the team also boasts a new office in Amsterdam, launched in January 2019, and a liaison office in San Francisco, staffed with European attorneys, which accounts for the firm's success in attracting direct US clients. The London-based Carrollanne Lindley, who is also an IP litigator and a qualified barrister, leads the team.
Other key lawyers:
Ryan Pixton; Iain Stewart
‘The team is collaborative and customer-focused. We are pleased with the timeliness of their responses and attention to detail.‘
‘Iain Stewart is very clever in his approaches!‘
NBC Universal (including DreamWorks Animation)
Penguin Random House
- Filed and prosecuted multiple significant trade mark applications for Time’s Up Group, LLC and provided assistance in related trade mark matters.
- Advised easyGroup on the co-ordination of a worldwide trade mark portfolio comprising over 1,000 trade marks, including representation in opposition and invalidity proceedings to protect key trade marks. Providing support to solicitors and the representing barrister in High Court litigation.
- Assisted Waterbomb with trade mark clearing and filing of trade marks, including marks aimed at protecting a new range of drinks and associated goods and services to be marketed in Europe and abroad.
- Acted for HCA Healthcare in successfully bringing opposition proceedings to protect the client’s famous The Harley Street Clinic brand, involving the presentation of detailed evidence of the reputation of the mark for medical services and an inter partes hearing.
- Conducted the due diligence for Matchesfashion Limited in the context of the £800m sale of the business.
Maucher Jenkins shoulders a high-stakes caseload and continously succeeds in attracting matters involving uncharted legal territory. With London and Farnham as the key UK trade mark offices, a well-established office in Munich, and the Shenzhen office, opened in late 2018 to reflect the increase in instructions from Chinese clients, the firm is well equipped to advise its strong roster of international clients from a wide range of sectors. In addition to its strength in trade mark prosecution, the group also fields a growing team of litigators. Katie Cameron, Angela Fox and Tim Pendered form the trio at the helm of the practice. Kana Enomoto joined Johnson & Johnson.
Katie Cameron; Angela Fox; Tim Pendered
Black Entertainment Television
Linpac Group Holdings
Paramount Pictures Corporation
Viacom Media Networks
Warner Bros. Entertainment Inc.
- Successfully opposed UK trade mark applications for Viacom Media Networks on the notoriously difficult to prove grounds of bad faith.
- Assisting Post-Quantum with the settlement of a dispute arising from the language used to describe the storage activities of the client in its existing trade marks which were seen to be conflicting with a similarly named claimant.
- Acting for Calvin Broadus (aka Snoop Doggy Dogg and Snoop Dogg) in a successful opposition to a UK trade mark application for “SNOOP” filed by Snoop International Ltd.
- Assisted Froneri with strategic trade mark advice on the registration, protection and enforcement of trade marks in the UK, the EU and abroad.
Potter Clarkson LLP is especially well known for its opposition and appeals practice, but also impresses with its track record in advising on global branding strategies, trade mark clearance projects, and the drafting and filing of trade mark applications. In September 2018 the firm acquired trade mark attorney firm Wildbore & Gibbons, providing the team with a solid London office, and opened a new office in Copenhagen, further bolstering its Scandinavian presence in addition to the expansion of its Stockholm office. Sanjay Kapur, John Peacock, Stephen Kinsey, Janella Barr and Sarah Talland are the key practitioners.
Sanjay Kapur; John Peacock; Stephen Kinsey; Janella Barr; Sarah Talland;
‘Very responsive and know their subjects inside out. They really take the time to get to know the business and at times it feels like they are part of my in-house team rather than an external provider.‘
‘John Peacock is very knowledgeable.‘
INEOS Automotive Limited
ABG EPE IP LLC (Elvis Presley Estate)
Intesa Sanpaolo S.p.A
MEME London Limited
Paisley Park Enterprises, Inc
Protege Sport Pty Ltd
Reckitt Benckiser Group
Triumph Motorcycles Limited
- Represented INEOS Automotive Limited in multiple UKIPO opposition proceedings against Jaguar Landrover Limited’s applications to register three-dimensional shapes of its Defender 4×4 vehicle, involving extensive evidence, including a consumer survey and expert reports.
- Acted for ABG EPE IP LLC (Elvis Presley Estate) in successfully opposing the registration of ‘Elvis Juice’, a UK trade mark, at the UKIPO and obtaining dismissal of the applicant’s appeal to the Appointed Person.
- Acted for MEME London Limited in successfully opposing a trade mark application filed by a company affiliated with Michael Gleissner, based on the grounds of bad faith.
- Acted for Raffles International in successfully opposing the registration of the trade marks ‘Raffles Club’ and ‘Raffles Club Chelsea’ and thereby ending a year-long dispute involving several non-use allegations brought against several of the client’s trade marks.
- Acted for Reckitt Benckiser Group in successfully contesting an appeal regarding the likelihood of confusion between ‘Vioclean’ and ‘Vitroclen’, obtaining dismissal of the appeal for all contested goods.
Stobbs IP impresses with its well-rounded brands protection offering. The management of large trade mark portfolios, including strategic portfolio development advice and the representation of clients at every prosecution stage, forms the heart of the practice, but the group stands out through its added litigation and commercialisation capabilities, such as brand licensing and anti-counterfeiting expertise. Domain recovery programmes are another key specialism. Principal Julius Stobbs in Cambridge directs the practice. Nina Kent joined from Maucher Jenkins and Catherine Byfield joined from Bristows LLP. Carrie Bradley joined Kempner & Partners before leaving to found Avatar IP.
Other key lawyers:
Claire Breheny; Harpreet Dhaliwal; Louise Goodsell; Emma Pettipher; Emma Reeve
‘The team at Stobbs take a very human and brand-based approach to advising, conscious of the wider concerns of a business. They’re pragmatic, concise and surprisingly affordable. There is a genuine enthusiasm to learn about your business. As a result, instructing them feels like a progressive collaboration, and an investment by them in you, not your usual lawyer-client relationship.‘
‘The Stobbs team don’t act like a traditional law firm or trade mark agency. They are practical, take a risk-based approach and get into the detail to really understand your business. Whether on discreet matters or large filing/ recordal projects, they are efficient and cost-effective.‘
‘Julius Stobbs is a legend, hugely knowledgeable, deeply pragmatic and unflappable. As someone who has built brands, lives brands and loves brand-building with and for others, I can think of nobody better to lead a firm that majors on brand and creativity.‘
‘Emma Reeve is a joy. She’s like an extension of our own team: super thoughtful, always logical and considered, and her enthusiasm for what we are doing is palpable.‘
‘Louise Goodsell gets under the skin of the business, thinks for me and gives practical solutions to a range of legal problems. Great to work with, efficient and takes a world-view on risk.‘
ABInBev (Budweiser, Stella Artois, Corona, Beck’s, Hoegaarden, Leffe, etc.)
Tottenham Hotspur F. C.
- Successfully opposed the registration of a similar EU trade mark for Facebook Inc.
- Advised Marshall on the licensing negotiations with one of the client’s key licensees and provided the client with a counterfeit and enforcement strategy that the client could use in the licensing negotiations to increase the royalties.
- Created a comprehensive in-house playbook for Barclays which contains advice on the handling of in-house trade mark processes and on the collaboration with external counsel.
- Provided bespoke filing and search strategies for the management of the Just Eat’s large and international brand portfolio after taking over the portfolio from another firm.
- Advised LADBible on the successful and cost-effective removal of a high volume of infringing listings on a wide range of online platforms.
UDL Intellectual Property
UDL Intellectual Property significantly expanded its trade mark filing practice, with especially strong growth in the filing of UK trade mark applications. The group's sectorial approach across its trade mark and patent practices attracts major consumer and business-facing brands, with the food and beverage, fashion and luxury, sports and leisure, creative industries, and media and gaming sectors at the heart of the practice. The team of practice heads Alan Fiddes in Leeds and Alison Simpson in London now includes senior trade mark attorney Sharon Kirby in Leeds, a former Maucher Jenkins practitioner.
Alan Fiddes; Alison Simpson
Other key lawyers:
Ian Byworth; Alison Cole; Mark Green; Gareth Price; Anna Szpek
‘Alison Cole is extremely professional and will always advise on the most cost-effective route to achieve the maximum protection for us as a business, our brand and our associated products.‘
‘Perfect balance of technical expertise and practical advice, delivered in a very commercial and user-friendly way.‘
‘Alison Simpson has exceptional clarity on all trade mark matters which means that we do not waste time and money chasing lost causes, but equally can robustly defend our valuable marks.’
‘Alison Simpson has excellent communications skills, expertise and great judgement.‘
‘Gareth Price is very efficient, outcome-focused and easy to deal with.‘
‘Anna Szpek is also compassionate and friendly and does not just “go through the motions” when handling our matters. She will always give the extra bit of attention to our matters.‘
Baker Ruskinn Group
Carr’s Group Plc
Hermès International S.A.
Octopus Publishing Group
- Acted for Shanghai Balance Automotive Equipment Co Ltd in successfully obtaining cancellation of two EU trade mark applications filed by the client’s former distributor, basing the cancellation request on the grounds that the applications had been filed in bad faith.
- Assisted MB97 Limited (MarathonBet) with the restructuring of its IP portfolio to allow for the separation of the portfolio between two group companies.
- Acted for END Clothing in successfully ending the infringing use of the client’s trade mark by a US competitor through the use of Uniform Domain Name Dispute Resolution Policy proceedings, thereby avoiding potentially costly trade mark infringement litigation in the US.
- Assisted Revolution Beauty with trade mark clearances, trade mark registrations and licence agreements, in addition to representing the client in multiple trade mark disputes.
- Advised The Rogue Group Ltd on a licence agreement which allowed it to enter the US market, including advice on an associated trade mark dispute.
Appleyard Lees fields one of the deepest benches in the market, with an above-average number of dual-qualified trade mark and patent attorneys in the team. Especially active in the chemicals, consumer products, electronics, life sciences and pharmaceutical sectors, the group's caseload is generally sectorially varied. Following the opening of the new Cambridge office in summer 2017, the trade mark group now boasts a total of five offices, located in Leeds, Halifax, Manchester and Alderley Park. Managing director Joanne King's team includes Robert Cumming, David Moy, Anthony Brierley and Paul Brandon as the main practitioners. Solicitor Bill Lister joined the Manchester office from Fieldfisher, reinforcing the firm's litigation offering.
‘Excellent one-stop-shop for IP matters.‘
‘They understand commercial issues and work flexibly and fast.‘
‘David Moy is exceptionally knowledgeable and able to communicate in an easy to understand style.‘
‘Bill Lister was able to quickly understand our issues and come up with a practical and pragmatic approach to solving them quickly.‘
State of North
Wal-Mart Inc (ASDA)
- Assisted Moncler S.p.A. with a number of anti-counterfeiting matters, including the development of a global strategy to address online and offline counterfeiting as well as the implementation of the strategy. The matter also involved criminal enforcement proceedings brought under the Trade Marks Act 1994.
- Management of Jemella (GHD)’s global trade mark and design portfolio.
Barker Brettell LLP offers one of the deepest benches of trade mark specialists in the market and is among the most active filers of UK and EU trade marks. The group is well versed in the prosecution of unusual trade mark applications, for example for marks aimed at protecting shapes, but also excels in rights enforcement and the provision of assistance with contentious matters. While the team is especially active in the automotive sector, the aerospace, the life sciences, energy, food and beverage and university sectors also each account for a significant number of instructions. Domain right disputes are another regular portion of the caseload. Birmingham's Sarah Lait is the head of the team. Lucy Walker made partner.
Other key lawyers:
Tracy Arch; Lisa King; Rosalyn Newsome; Lucy Walker; Catherine Wiseman
‘The team always provide a friendly and professional service. A pleasure to work with.‘
‘Very practical and keep things simple.‘
‘I was very impressed with how different members of the Barker Brettell team could pick up our cases when their staff usually dealing with them was unavailable.‘
‘The service is superb, with very knowledgeable attorneys who respond very promptly with great attention to detail, and in a non-patronising way.‘
‘Lucy Walker is the best of the best. I would not want to work with anyone else.’
‘Lucy Walker is very customer-focused. She is incredibly quick to respond, often out of office hours, and excellent at explaining some aspects of IP that might not be clear to a client. Her delivery is direct, down-to-earth and non-patronising. She is also extremely patient and supportive.‘
‘Catherine Wiseman is always available and has a great feel as to what a client needs.‘
‘Stephen Lowry’s passion for IP is palpable. He consistently provides high-quality and practical advice, is always enthusiastic, highly knowledgeable, and extremely diligent.‘
Jaguar Land Rover
Maple Mountain Group dba Modere
Natural Environmental Research Council
The Binding Site
- Advised Karl Johnson – Reslosound on the defence of a UKIPO non-use cancellation action, including representation in the appeal before the Appointed Person.
- Instructed by a Canadian firm to file an opposition on behalf of Kona USA, Inc, directed at an international trade mark owned by Hyundai and aimed at protecting the name for a new vehicle launched by the defendant.
- Represented Kora Organics by Miranda Kerr Pty Limited as applicant in joint opposition and invalidity proceedings to achieve registration of the mark ‘KORA’ in the UK and in the EU after the UKIPO consolidated the initially separate opposition and invalidity proceedings.
- Advised Boots on setting up a customised search and reporting system to conduct a trade mark clearance programme, often involving short-notice searches and a high volume of searches.
- Conducted a trade mark portfolio analysis for IMI and developed a long-term filing strategy for each of the client’s different divisions, including alignment with the client’s branding directions, in addition to assisting with the prosecution of trade mark applications, rights enforcement and delivering in-house training.
Bird & Bird LLP was already an important international player before the opening of its San Francisco office in September 2018, but has since noticeably increased its influx of instructions from US clients. The group also continues to grow its roster of UK and EU clients, coming from a broad variety of sectors, whom it offers an online brand protection portal as a key string in the group's trade mark protection bow. Given the firm's wide geographical footprint, the team is very experienced in the management of large international trade mark portfolios, but it also excels in high-stakes opposition and appeal proceedings. Mark Holah and Allan Poulter direct the practice.
Mark Holah; Allan Poulter
Other key lawyers:
‘Extremely diligent and thorough. Go out of their way to gain a proper understanding of our fairly unique organisation.’
‘Patricia Collis is excellent. Super smart, considered and a pleasure to work with.’
Consorzio di Tutela Denominazione di Origine Contorlatta Prosecco
Daily Mail Group
Kingfisher (B&Q, Screwfix)
Monster Beverage Corporation
Philip Morris International
Simba Sleep Limited
- Assisted Aspinal of London Limited with the trade mark clearance and protection for sub-brand Aerodrome, advised on the protection of multiple key handbag designs and prosecuted the corresponding trade mark applications in several territories, including the EU, the US, Canada and South Korea.
- Supported Belmond in the management of its worldwide trade mark portfolio, with a primary focus on the defence of UK and EU trade marks, including in relation to the famous hotel Cipriani in Venice.
- Assisted BitMex with the management of the client’s worldwide trade mark portfolio, including the coordination of ongoing disputes in multiple jurisdictions and assistance with the client’s global rebranding project.
- Management of the Daily Mail’s global trade mark portfolio in addition to assisting the client with several contentious matters.
- Represented Consorzio di Tutela Denominazione di Origine Contorlatta Prosecco (Prosecco) in multiple UKIPO oppositions, including the successful representation of the client in the appeal before the Appointed Person regarding use of the trade mark ‘Pawsecco’ in relation to pet treats sold as a pet version of Prosecco.
Bristows LLP fields a particularly strong practice in the management of worldwide trade mark portfolios, including the representation of clients in complex opposition and cancellation proceedings. With its added litigation capacities, the group is able to provide clients with a full-service brand protection offering. While the food and beverage, publishing, hospitality, luxury and automotive sectors account for a significant portion of the caseload, the group's track record also includes clients from a broad spread of other sectors. Ian Gruselle and solicitor advocate Simon Clark are the heads of the practice.
Ian Gruselle; Simon Clark
‘They are trusted advisers.‘
‘Advice provided is clear and concise.‘
Rocco Forte Hotels
The Financial Times
Royal Mail Group Ltd
- Management of The Financial Times Limited’s worldwide trade mark portfolio, including the conduct of clearance searches for new brands and developing the existing portfolio to enhance the core brands’ protection. Represented the client in several opposition proceedings in multiple jurisdictions, including Portugal, China, Pakistan and Italy, collaborating with local counsel as necessary.
- Advised The Guardian on its global trade mark strategy, including the management of the filing and prosecution of globally filed trade mark applications and oppositions in addition to assisting the client with trade mark infringement litigation and domain name disputes.
- Acted for WPP in multiple trade mark oppositions and cancellation actions in the EU, Latin America and the Far East; assisted with the prosecution of the new branding of two of the client’s newly merged group companies; managed the worldwide trade mark watching services for approximately 50 brands; and assisted with the transfer of trade marks between companies following assignment.
- Assisted Rocco Forte Hotels with the trade mark aspects of the launch of its new logo across 31 countries and advised the client on the name protection of two of its stand-out hotels as well as on multiple trade mark oppositions.
- Instructed to take over Dentsply Sirona, Inc’s global non-US trade mark portfolio, involving over 4,000 registered trade marks worldwide and including proceedings before the General Court of the Court of Justice of the European Union.
Cleveland Scott York
Traditionally a strong application drafting and filing practice, Cleveland Scott York continues to see a rise of contentious instructions. The group focuses on the financial services, food and beverage, fashion and tobacco sectors as key specialisms, and acts for a high number of overseas clients, often coming from the US, in addition to an extensive roster of UK medium-sized and large companies. The team boasts offices in London, Reading and Brussels as well as a newly opened office in Hatfield, which replaces the firm's former Hertfordshire premises in St Albans. Cathy Ayers, Jonathan Clegg, Lorna Hobbs and Sophie Maughan are the main practitioners.
CMS combines wide sectorial breadth with a powerful contentious bench and a long track record of managing large international trade mark portfolios. The media, consumer product, leisure and technology sectors account for a particularly significant portion of the caseload. Practice head Sarah Wright, who splits her time between London and Warsaw, is dual-qualified as a solicitor and a European trade mark and design attorney. Joel Barry left the firm.
Cambridge Weight Plan
Dentsu Aegis Network
MacAndrews & Forbes Group
Thomas Cook Group
- Appointed as IP counsel by Thomas Cook Group in 2018. Since then in charge of advising the client on the management of the global trade mark portfolio covering its core brands, including drafting and filing trade mark applications in multiple jurisdictions worldwide and representation of the client in opposition proceedings.
- Assisted several companies of the MacAndrews & Forbes Group with trade mark prosecution in addition to representing them in trade mark infringement litigation. In particular, the team conducted trade mark clearance projects, drafted and filed UK and European trade mark applications, represented the clients in opposition proceedings and assisted them with the development of IP strategies.
- Management of Cambridge Weight Plan’s entire trade mark portfolio, including advice on the trade mark implications of the client’s re-branding, in particular the conduct of clearance searches, the preparation of new branding guidelines, advice on a new trade mark filing programme and providing in-house training to the client’s marketing and sales teams.
Elkington + Fife LLP
Elkington + Fife LLP's trade mark practice continues to grow, attesting to the firm's success in carving out its space in the market since practice head Chris McLeod joined in 2015. Strategic trade mark advice and the drafting and filing of applications are as much a part of the team's portfolio of expertise as the representation of clients in opposition and appeal proceedings in which the group often prevails over opponents with significantly deeper trade mark attorney benches. The group succeeds in attracting a varied range of clients, acting for major international corporations, but maintaining a steady caseload for smaller domestic clients.
Blank Rome LLP
Decon Laboratories Limited
Evonik Industries AG
Formula One Management Limited
Koninklijke Philips N.V.
Malvern Panalytical B.V.
Old St. Andrews Limited
- Assisted Haart & Lieu Limited with strategic advice in relation to its global trade mark filing exercise and prepared and filed trade mark applications in the UK, the EU and other territories.
- Represented Acer Incorporated in Nominet domain name dispute resolution service (DRS) procedures against third-party domain name registrations containing the ACER trade mark.
- Represented Independent Vetcare Limited in relation to a growing portfolio of trade mark applications and registrations, including strategic advice and resolution of third-party disputes.
- Represented a subsidiary of Vohkus Limited in the defence of a UK trade mark application for the mark CXO2 against an opposition by the telecoms company O2, involving an appeal to the Appointed Person.
- Represented Toys R Us and successors in title in relation to multiple oppositions and other third-party disputes in the UK and EU, primarily in relation to trade marks containing the element “R US”.
Gill Jennings & Every LLP excels in the drafting and filing of trade mark applications as well as in opposition proceedings and transactional work. Practice head Alasdair MacQuarrie and newly promoted partner Edward Carstairs are the main contacts. Rowena Price left the practice.
Other key lawyers:
‘Their advice and guidance is unparalleled. I have never seen professional advisers get to know and understand a business in the way Gill Jennings & Every LLP has. They then apply that knowledge when they are advising us to give us practical, commercial and succinct advice. They are absolutely vital to our business.‘
‘I feel very well looked after by Edward Carstairs and would recommend him to anyone. He always responds quickly to us and makes time to talk to us. Very personable team who have taken time to get to know us.‘
World Wrestling Entertainment Inc.
- Advised on the management of Palace Skateboards’ worldwide trade mark portfolio, including representation in multiple opposition proceedings, in addition to assisting the client with anti-counterfeiting measures.
- Assisted Eusa Pharma with the transfer of a significant trade mark and patent portfolio from Janssen Sciences Ireland in the context of Eusa Pharma’s acquisition of the worldwide rights to the drug Sylvant, the only approved treatment for idiopathic multicentric Castleman’s disease. The transfer involved over 130 countries.
HGF Limited continues to be among the most active filing practices in the market, with EU trade mark application filings as a particularly busy line of work. One of the largest teams in the market, even without the deep litigation and patent benches, the firm impresses with its comprehensive trade mark offering and its broad sectorial range, including the retail and fashion, charity and automotive sectors as core areas. The group's expansion in Europe, namely in Germany, Austria and Ireland, in addition to the opening of its new office in Nottingham attest to the firm's popularity with international and domestic clients alike. The Leeds-based David Potter directs the practice. Claire Hutchinson retired.
Other key lawyers:
Lee Curtis; Rebecca Field; Geoffrey Smith; Jonathan Thurgood; Richard Wylie; Claire Jones
‘Practical, pragmatic, good value.‘
‘Rebecca Field is engaged and understands our business and priorities. She gives tailored, nuanced advice.‘
‘Claire Jones is knowledgeable and provides organised and helpful overviews and reports which help the client manage a busy portfolio.‘
AGA Rangemaster Group
Fresh Trading Limited (Innocent Drinks)
Holland and Barrett International Limited
- Provided strategic branding and patent advice to AGA Rangemaster Limited/AGA Rangemaster Group Limited in addition to assisting the client with the enforcement of its core brand, including multiple brand enforcement claims against downstream refurbishers of used AGA ranges, registering community designs and rationalising the client’s extensive worldwide trade mark portfolio.
- Filed several EU trade marks in the context of Nelson Mandela’s 100th birthday on behalf of the Nelson Mandela Foundation, in addition to assisting the client with various trade mark matters via a major South African law firm.
- Advised Jack Wills Limited on brand protection and trade mark enforcement, including advice on a potential trade mark and passing off dispute with with Will Vegan Shoes; successfully advised on a trade mark and passing off dispute against online retailer ‘Oh Flora’ in respect of its use of Jack Wills’ trade mark; and pursued trade mark and passing off claims against online retailers selling on Redbubble.
- Assisted M&Co with the management and prosecution of a trade mark portfolio exceeding 400 cases covering multiple core brands and advising the client on the strategic trade mark aspects of its rebranding, involving a number of fashion lines.
- Successfully represented Love Music Hate Racism in invalidity proceedings initiated by the client against a trade mark owned by an associated merchandising supplier, obtaining a UKIPO declaration stating that the opponent’s trade mark application had been made in bad faith.
Keltie has a dedicated pharmaceutical and sports trade marks practice, but also boasts a strong track record of acting for fashion and jewellery clients, including design advice. The gaming and gambling, entertainment, IT, healthcare, and finance and insurance sectors also account for a significant portion of the caseload. Trade mark services include extensive clearance projects, drafting and filing of applications, representation in opposition and cancellation actions, the management of often large international trade mark portfolios, and the conduct of due diligence. The team continues to grow its domestic practice with the opening of its third UK office in Cambridge. Rosemary Cardas and Alistair Gay are the practice heads. Nick Bowie was promoted to director. Joanna Lucas Munce joined The Trademark Café.
Rosemary Cardas; Alistair Gay
Other key lawyers:
Manuela Macchi; Ben Britter; Nick Bowie
‘Keltie LLP provides a great IP service in the asset management environment. They have a good understanding of IP rights throughout Europe as well as globally. Very professional, yet down to earth and provide high-quality service and make sure they have their clients’ interests at heart.‘
‘I can summarise my experience as follows: a pleasure and fun to work with these top notch professionals. They are reliable and solutions-driven, focused on clients’ needs.‘
‘Keltie are a very impressive practice.‘
‘The Keltie team are highly responsive and provide pragmatic and focused advice. I have found the individuals I have dealt with consistently impressive.‘
‘Rosemary Cardas is exceptional and a true leader of the trade mark group.‘
‘Ben Britter is impressive. He really knows his stuff and is very easy to deal with.‘
‘Ben Britter is very responsive and reliable and really goes the extra mile. He calibrates extremely well to the dynamic of the matter at hand, and gives pragmatic commercial advice informed by his extensive experience.‘
‘Alistair Gay is a top trade mark attorney, accessible and has great industry knowledge and a commercial approach.‘
B&L Holdings Limited
Osho International Foundation
Superhype Tapes Ltd
- Advised Thomas Goode on the trade mark aspects of the client’s strategic realignment following its acquisition by a venture capitalist, including the set-up and implementation of a large international trade mark application programme, the instigation of watching services and advice on the design of new and existing products.
- Assisted the UK Fashion and Textile Association with reclaiming key trade marks as part of its wider prosecution work for young fashion designers, including clients whose trade marks had been threatened by trade mark registrations in China.
- Successfully defended the Osho International Foundation’s core brand against a maliciously initiated invalidation action, including the defence of the client at the EUIPO and obtaining a favourable decision from the General Court affirming the registrability of the trade mark in question.
- Conducted trade mark clearance and filing programmes for B&L Holdings Ltd in the context of the client’s worldwide expansion of the restaurant Burger & Lobster in addition to successfully obtaining the closing of a counterfeit restaurant in Shanghai which had featured the client’s trade marks, branding and style.
- Succesfully opposed the registration of two trade marks which had been filed in China, containing two versions of the name in relation to clothing, on behalf of Superhype Tapes Ltd after an appeal by the Trade Mark Review and Adjudication Board and proceedings before the Beijing Supreme People’s Court.
Marks & Clerk LLP
Marks & Clerk LLP remains among the most active EU and UK trade mark application filing practices and stands out through the combination of its strong prosecution practice with its long-established allied litigation offering. The team offers the full range of trade mark prosecution services. With a strong international presence, including a recently bolstered practice in Canada and offices in China, Kuala Lumpur and Paris, the group is particularly well placed for cross-border instructions. Tom Farrand directs the practice. Gareth Jenkins joined the Birmingham office from Wynne-Jones IP.
Other key lawyers:
John Ferdinand; Alison Melling; Campbell Newell
- Advised the client on the protection of a position mark.
- Advised the client on the protection of a new trade mark and logo incorporating different forms of IP protection and innovative filing strategies to mitigate the client’s risk of opposition and infringement.
- Management of the client’s IP portfolio and conduct of an IP audit.
- Prosecuted trade mark applications and management of the international trade mark portfolio of a global retailer.
- Represented the client as opponent in trade mark opposition proceedings and the simultaneous corresponding defence proceedings coinciding with the client’s rebranding.
Mathys & Squire LLP assists with the full spectrum of trade mark prosecution and since its acquisition of Coller IP in December 2017 is also able to offer a comprehensive trade mark valuation and commercialisation service. The group is experienced in assisting large multinationals and domestic start-ups alike, with an especially strong focus on the automotive sector as part of an overall diverse sector offering. The Manchester-based Gary Johnston and the London-based Margaret Arnott, who is dual-qualified as a solicitor and heads the litigation practice, direct the team. Associate Rebecca Tew joined from Marks & Clerk LLP to head up the newly opened Midlands office, which complements the firm's already wide domestic footprint. The international offices are in Paris, Munich and Luxembourg.
Gary Johnston; Margaret Arnott
Edward de Bono Limited
Harley-Davidson USA LLC
Orb Factory Limited
The Institute of Chartered Accountants in England & Wales
- On behalf of ZapGo, successfully secured the invalidation in China of the client’s own logo, which had been registered after a trade mark application by a third party in China, using the client’s copyright in the logo, and liaising closely with the client’s Chinese counsel to clear the way for the client to register the logo as a trade mark for itself.
- Successfully represented Harley-Davidson in hard-fought EUIPO Board of Appeal proceedings arisen from the Opposition Division’s rejection of the client’s opposition to the registration of the trade mark ‘Harlie Charper’, ultimately overcoming the challenges caused by the different classes of goods involved for the two trade marks.
- Advised Orb Factory in connection with the removal of false and commercially damaging statements from articles featured on the websites of The Sun and The Mirror in which the client’s trade mark and copyrighted material had been used.
- Assisted Morgan Sindall with the enforcement of its trade mark portfolio, including negotiations with a third party which had incorporated a conflicting company name and the representation of the client in multiple negotiations with third parties in the context of trade mark registration opposition proceedings.
- Management of Edward de Bono Limited’s international trade mark portfolio, including the further development of the portfolio through new trade mark applications and the recordal of assignments on an international basis. The jurisdictions involved include the UK, Singapore, China, Hong Kong, Canada, the US and Australia.
Mewburn Ellis LLP, one of the most established firms in the market, boasts a comprehensive trade mark prosecution offering and fields a busy domestic and international practice, a reflection of the group's office network across the UK and Germany. The team also offers a complementary litigation department and is increasingly active in customs seizures. With senior hires Kate O’Rourke in London, who joined from Charles Russell Speechlys LLP and now directs the trade mark practice, and Dydra Donath in Munich, a hire from Winter, Brandl, Fürniss, Hübner, Röss, Kaiser, Polte – Partnerschaft mbB, the group significantly bolstered its bench. Roger Grimshaw became a consulting partner and Sofia Arenal transitioned from partner to director.
Other key lawyers:
Andy King; Sofia Arenal; Rebecca Anderson-Smith
‘Mewburn Ellis provide detailed and comprehensive advice but, above all, they take a commercial and pragmatic approach in guiding us through the various issues.‘
‘The partners and associates are easy to reach. They provide clear advice, transparent costs and fees, and quick responses to our queries.‘
‘They are very efficient and attentive to any of our cases and notify us immediately of all updates and clearly focus on any essential actions that we are required to make instructions upon.‘
‘The team clearly works tightly together and is able to know all of our actions both current and historical. They record every detail and do not need to be reminded about any details that we may already have passed on to them.’
‘Andy King is extremely professional, responsive and always gives us unbiased insightful advice.‘
‘Sofia Arenal is outstanding in her ability to assess the legal aspects of many trade mark actions in various territories. She is able to ask the important questions both of ourselves and of foreign attorneys. She is proactive at chasing up national offices where the processing of trade marks may not be as rapid and efficient as, for example, the European office.‘
Banhams Patent Locks Limited
Bentley 1962 Ltd
Bioline Reagents Limited
Coventry Building Society
Kabushiki Kaisha BANDAI NAMCO Entertainment
Scott Bader Company Limited
S.R.G Apparel Plc
- Devised filing strategies on behalf of S.R.G Apparel for new and developing brands, filed trade mark applications in multiple countries, including EU and UK applications, and successfully represented the client in several opposition proceedings as part of the long-standing brand protection work for the client.
- Assisted the client with a complex set of UK trade mark cancellation and opposition cases, including claims to unregistered trade mark rights in the UK (passing off) and bad faith, and a successful request for security for costs.
- Assisted with the enforcement of trade marks in the UK, including through oppositions and cease and desist letters, and advised the client on possible trade mark infringement and domain name dispute proceedings.
Reddie & Grose LLP fields a busy EUIPO and UKIPO opposition caseload while maintaining a strong domestic and European filing practice. Clearance work, the development and implementation of worldwide filing strategies, and licensing agreements, including settlement agreements, consent and co-existence agreements, are areas of particular strength. Helen Wakerley directs the practice.
Other key lawyers:
Alice Findlay; Patrick Lloyd; Tom Sharman; Jan Vleck
‘It is a very competent and organised team that responds in time to all the issues raised.‘
‘Broad range of knowledge, attention to detail and timely responses. Accurate and commercial advice.‘
‘The team at Reddie & Grose are very professional and approachable.‘
‘Reddie & Grose’s trade mark team provides sound, commercially oriented advice which is adapted to our needs and is of the highest technical caliber.‘
‘Their understanding of our business is key, yet never clouds the objective advice they offer.‘
‘Patrick Lloyd’s trade mark portfolio management skills add great value, especially since he keeps the greater picture in mind, while Tom Sharman has a unique capability of understanding the fine points of each matter leading to workable and efficient solutions. His pleasant manners make it a pleasure working with him.‘
‘Tom Sharman is a fantastic communicator.‘
Buyer Consulting Limited
Rosslyn Park Football Club
The Salvation Army
- Assisted Inmarsat plc with the evaluation and protection of new trade marks for key products in addition to strategically developing the client’s international trade mark portfolio.
- Assisted UK Athletics Limited with the expansion of its domestic and international trade mark portfolio in relation to global athletics events in preparation for its later commercialisation and advised on unauthorised uses of the client’s trade marks by third parties.
- Provided strategic advice and portfolio management services to The Salvation Army, including the filing and prosecution of trade mark applications in addition to identifying and advising on infringements.
- Developed trade mark guidelines for Buyer Consulting Limited for use by the client’s customers in order to increase the customer’s trade mark knowledge and savviness.
- Advised Mylan E.M.E.A. on the risks associated with the design of new medical devices, packagings and tablet colours in addition to conducting trade mark clearance searches and providing in-house training on trade mark and design law.
Wilson Gunn demonstrates particular strength in the sports, healthcare, fashion and retail sectors, but is also very active for technology clients and academic institutions. As one of the most active trade mark application filers in the UK market, the group is well versed in the drafting and prosecution of trade mark applications, including representation in the corresponding opposition proceedings. The Manchester-based Michael Douglas is the practice head.
Other key lawyers:
Mark Goodwin; Marc Lewis; James Robey; Tim Rose
‘Wilson Gunn is very service-oriented and personable.‘
‘Strength in depth, approachability and speed of replies are key strengths of this team.‘
‘A truly national firm whose practitioners are all highly experienced in trade mark law and practice and which offers a real key sector focus. Excellent at getting to the root of the client’s commercial objectives and always gives sound, practical advice focused on getting the client where it needs to be. A really great firm that is also fun to work with.‘
‘Michael Douglas is the stand-out trade mark attorney for his approachability, knowledge and ability to put clients at ease. He believes in delivering true value from the off and works tirelessly to ensure that the service is both great value for money and performed well. He is a great communicator.‘
‘Michael Douglas is an absolute star – very proactive, sensible, commercial and thorough.‘
‘Marc Lewis is pragmatic, commercial and responsive.‘
Mölnlycke Health Care
- Assisted Manchester United FC with the filing and prosecution of trade mark applications worldwide, including representation in a high number of opposition and cancellation proceedings.
- Assisted Mondelez International with the management and development of its UK trade mark portfolio for key brands such as Cadbury, Milka, Toblerone, Oreo, Halls and Trident.
- Advised Boohoo.com on the global trade mark protection of its brands to accompany the client’s brand expansion.
- Appointed in 2018 to manage Wm Morrison Supermarkets plc’s trade mark portfolio.
- Appointed in 2018 to manage Domu Brands’ global trade mark portfolio, including advising on design protection matters.
Abel & Imray
Abel & Imray stands out through its focus on highly complex cases, especially opposition proceedings, strategic clearance projects and the management of infringement scenarios. Instructions from pharmaceutical clients, including large international players, account for a significant portion of the caseload, though recent client wins show the group's success in attracting a sectorially diverse roster of clients, including from the entertainment, manufacturing and publishing sectors. Caroline Brooks in Bath and Simon Bentley in London share the leadership of the practice.
Caroline Brooks; Simon Bentley
Other key lawyers:
Danielle Cooksley; Matthew Smith
‘They have a friendly, yet very professional nature, which makes them very approachable and easy to work with. They are happy to undertake any task and never cease to impress with quality of their work. Their knowledge and foresight of trade mark protection needs, both for brand enforcement and counterfeiting prevention, is second to none and they always know what we want before we ask.‘
‘Abel & Imray’s attorneys combine deep technical, business and legal experience and expertise. They are efficient and deliver a top-notch work product.‘
‘Caroline Brooks is a standout partner. Her advice and guidance and caseload management are exceptional.‘
Cardiff City Football Club
ENVEA (formerly PCME)
Fusion Workshop Limited
Lunamar (Group) Ltd
- Successfully secured cancellation of a client’s competitor’s UK trade mark on the grounds of bad faith, paving the way for the client to do business in the UK under its own trade mark, and protect the mark itself.
- Ongoing provision of trade mark clearance advice and assistance on strategy to a company, which has become of increasing importance under the client’s new ownership and direction.
- Advised and executed a commercial strategy for a client to navigate a challenge on a mark registration, enabling the client to continue and operate its brand.
- Providing the client with a fresh approach to its brand portfolio and supporting its rebranding.
- Assisting a longstanding client with the consolidation of its trade mark portfolio following a series of significant acquisitions.
Baker McKenzie fields a highly international caseload and manages the extensive global trade mark portfolios of several major corporations from its London office. Expertise includes representation in registry disputes, an area of particular growth for the practice, and strategic advice on rebranding projects and product roll-outs. Michelle Blunt directs the intellectual property practice and Jessica Le Gros is the head of the trade marks team.
Michelle Blunt; Jessica Le Gros
‘Fast, efficient and pleasant to deal with.‘
JCB (J. C. Bamford Excavators Ltd)
- Acted as representative for L’Oréal in relation to UK and EU trade mark registry disputes and enforcement matters in the UK.
- Advised a client on the development of an infringement strategy for a trade mark and the branding issues arising from a merger, and assisting with the trade mark aspects of the client’s expansion into new territories.
Beck Greener LLP impresses with its strong contentious track record, with an especially busy caseload of UKIPO proceedings on top of a substantial stream of EUIPO representations. The group's strength in the management and development of international trade mark portfolios complements its contentious practice well. The publishing, cosmetics and entertainment sectors form a considerable part of the group's activity, but the client roster reveals wider-ranging sector expertise, including in the professional services, telecoms and pharmaceutical sectors. Ian Bartlett is the head of the practice.
‘Ian Bartlett always goes beyond the call of duty. He understands the legal issues and commercial reality facing clients. He has a great success rate in contentious matters because he is always very well prepared. I feel reassured when Ian is handling our trade mark work and trust that the outcome will be as desired.’
‘Duncan Morgan is a senior trademark associate who provides thorough, comprehensive analysis of complex legal problems. His attention to detail is excellent. He is always available to discuss issues, is happy to format the focus of his reports to meet the particular circumstances of the end client, and is a pleasure to work with.’
‘If you are embroiled in a fight, there is no one better than Rowland Buehrlen, he is smart, witty and very quick on his feet. He is not impressionable, very thorough and does not like losing. In brief, this practice and in particular Buehrlen has your back.’
‘Rowland Buehrlen has keen insight into trade mark litigation and prosecution.’
‘Ian Bartlett is an excellent communicator, and will go above and beyond to get the right result for the client.’
Basic Trademark S.A.
Estée Lauder Group
K-Kaps International Ltd.
The Security Group (National) Limited.
- Advised PwC on the trade mark protection of the full spectrum of its activities, including accountancy, consultancy and outreach, in addition to assisting the client with other brand protection measures.
- Acted for Estée Lauder Group in multiple contentious proceedings and related litigation, including the enforcement of the trade mark rights for the client’s brand ‘Jo Malone’.
- Provided ongoing advice to Condé Nast on contentious and non-contentious trade mark matters as well as on copyright issues, including the successful prevention of the registration of ‘Vogue Africa’ as a trade mark by a competitor.
- Secured registration of formative marks for The Security Group (National) Limited in consolidated proceedings arising from oppositions filed against the trade mark applications, obtaining removal of the opponent’s trade mark from the register.
- Successful opposed a trade mark application for Basic Trademark S.A. on the basis of an earlier trade mark owned by the client, obtaining removal of all goods from the trade mark application that were relevant to the client’s business.
Fieldfisher's trade mark prosecution practice is part of the firm's wide-ranging IP offering and specialises in worldwide trade mark and design clearance work, the drafting and filing of the corresponding trade mark applications in the UK and abroad, and assistance in contentious trade mark matters, including opposition proceedings, invalidity and revocation actions. Leighton Cassidy directs the practice. Solicitor Bill Lister joined Appleyard Lees.
Forresters fields a particularly busy EU trade mark application practice and is among the UK players with the longest-established offices in Germany. The team excels in contentious and non-contentious instructions alike, including the conduct of clearance searches and the development of filing strategies, the implementation of enforcement strategies and representation in settlement negotiations, often in the context of trade mark registry disputes. The London-based Steven Wake directs the practice. Birmingham's Janette Hamer made partner.
Other key lawyers:
Janette Hamer; Matthew Shaw
‘Their response time is excellent, be it by email or phone. Their advice is always considered and practical.‘
‘They offer practical and commercial advice whilst making you feel valued as a client. They deal with problems in a timely manner offering a plan a, b and c and then ensuring the plan is followed through to the end.‘
‘Forresters offers excellent services. Prompt and precise replies, availability and proactivity. Excellent expertise both in trade marks and patents.‘
‘Matthew Shaw is excellent – technically proficient and commercial.‘
‘Steven Wake deals with problems in a meticulous and thoughtful way, offering several different suggestions.‘
Brabham Branding Limited
Waters Technologies Corporation
- On behalf of Leon Paul Equipment Company Limited, successfully secured the assignment of four Chinese trade mark applications which had been filed in bad faith by one of the client’s distributors, thereby protecting the client’s brand and leaving the business relationship with the distributor intact.
- Advised Tails Limited on its partnership agreement and various distribution agreements with a multinational beverage manufacturer and distributor.
- Assisted Horiba Mira Limited with the clearance and prosecution of several trade marks aimed at protecting its defence equipment. Represented the client in multiple opposition proceedings and settlement negotiations with third parties.
- Advised iCandi Apps Limited on the strategy for obtaining overseas trade mark protection for its popular Night Sky app and assisted the client with the enforcement of the already registered Night Sky trade marks.
- On behalf of Sony Interactive Entertainment Europe Limited, secured the partial revocation of a third party’s EU trade mark application, involving two appeals to the General Court.
Mishcon de Reya LLP demonstrates strength in strategic portfolio development and trade mark disputes alike, with the management of large-scale international trade mark portfolios at the heart of the practice. The group shoulders a significant volume of contentious EU trade mark prosecution cases, regularly involving General Court proceedings. Sally Britton is the practice head.
Other key lawyers:
David Rose, Jeremy Hertzog
- Acted for Sky plc, Sky International AG and Sky UK Limited (Sky) in multiple enforcement proceedings to protect its key trade mark ‘Sky’.
- Acted for Iceland Foods Limited in high-stakes trade mark invalidity proceedings brought by several Icelandic opponents, including an Icelandic government agency and the Icelandic Ministry for Foreign Affairs.
- Handling the management of Badoo, Bumble, Chappy and Lumen’s worldwide trade mark portfolios, including the filing of new applications, opposition proceedings against third parties and brand clearance prior to product launches.
- Acted for the rights holder of an iconic children’s TV series in relation to brand protection and commercial matters.
- Represented bet365 in cancellation proceedings brought against one of its EU trade marks, involving an appeal to the General Court and a judgment by the Court of Justice of the European Union.
Murgitroyd expanded its domestic footprint in February 2019 with the acquisition of Chapman IP, adding senior trade mark attorney Rebecca Dobson in Southampton and Huw Evans, who is also a patent attorney, in Cardiff to its trade mark bench. The media and entertainment, food and beverage, and labelling and packing sectors form the core of the practice. A key standout feature is the group's significant European presence in 15 countries from which it assists a broad spectrum of clients, including small and medium-sized enterprises, large multinationals and several prestigious academic institutions. Mark Hickey directs the trade mark practice, which includes Jacqueline McKay as the head of the Scottish trade mark group.
Mark Hickey; Jacqueline McKay
Other key lawyers:
Anne Bashir; Chris Cairns; Mike Vettese; Steve Waine
‘Very fast and efficient.‘
‘Highly professional firm of trade mark attorneys with a high-quality international network of associates for one-stop global representation.‘
‘Mike Vettese is professional, thorough and efficient to an outstanding degree.‘
Campbell Soup Company
Halma Water Management
Scot Young Research
TCS John Huxley
Three Fields Entertainment
- Successfully carried out due diligence and the implementation of licence, assignment and coexistence agreements in relation to the sale of a North American crafts business.
- Assisted a client with clearance searches, provided advice on protecting packaging and securing trade mark and design protection for a new drinks range and sub-brand names.
- Acted for the client, a high-net-worth individual, in the global protection and enforcement of the client’s personal brands.
- Successfully settled several disputes relating to third-party marks containing the client’s brands.
- Successfully defended a client in opposition proceedings and won two sets of cancellation proceedings.
Venner Shipley LLP's team includes trade mark attorneys, solicitors and barristers, offering a one-stop trade mark prosecution shop. Services include clearance searches, strategic portfolio management and development advice, often on an international level, and representation in opposition proceedings as well as, on the solicitor side, infringement litigation. Settlement negotiations are another area of strength. David Birchall directs the practice.
Other key lawyers:
Yoann Rousseau; Camilla Sexton
‘The qualities that make this practice unique is the perfect combination of expertise and responsiveness. Neither is ever compromised in the service of the client. The person responsible for the matter is always available, and always ready to respond substantively.‘
‘Venner Shipley is a talented, knowledgeable, responsive and reasonably priced law firm. While many firms are competent, Venner Shipley is particularly adept at providing quick responses for reasonable fees.‘
‘Yoann Rousseau is the consummate professional. He displays a genuine enthusiasm for his work and the client’s interest and always instils confidence in your choice of Venner Shipley.’
Atnahs Pharma UK Limited
Clinigen Group Plc
Eco Age Limited
Mitel Networks Corporation
TalkTalk Telecom Limited
- Assisted Clinigen Group Plc with the management of its worldwide trade mark portfolio, including clearance projects, the development of portfolio development strategies, representation in opposition proceedings and recordals of various trade mark portfolios that were transferred in the context of the client’s acquisition programme.
- In charge of the management of Aviva’s worldwide trade mark portfolio, including a trade mark watching service, representation in settlement negotiations and opposition proceedings, strategic portfolio development advice and the conduct of clearance projects.
- Assisted Eco Age Limited with the development and implementation of its trade mark strategy and prosecuted several trade mark applications to protect the client’s core brand, including representation in opposition proceedings brought by third parties.
- Assisted Barry Callebaut with trade mark clearance projects, the protection of its core brand through trade marks, and regulatory advice regarding processes used in treating raw products to produce chocolate.
- Advised Earlham Institute on brand protection and trade mark licensing matters.
WP Thompson boasts a comprehensive trade mark prosecution offering, but stands out through its experience in brand selection and protection for clients from the pharmaceutical, food, electronics, fashion and sports sectors. Services also include licensing agreements, anti-counterfeiting protection and litigation as the team includes registered Higher Courts Litigators. David Gill in London and Liverpudlian Rigel Moss McGrath are the main practitioners.
Ashfords LLP has continued the expansion of its UK trade mark filing practice and is able to assist with the full range of trade mark prosecution services. Experienced in the management of often global trade mark portfolios for international corporations, the group is also well versed in trade mark litigation as practice head Carl Steele, who splits his time between the London, Exeter and Bristol offices, is dual-qualified as a solicitor and a trade mark attorney.
J W Anderson
Swallowfield PLC and The Brand Architekts
The Roald Dahl Story Company
- Assisted multiple clients (Penhaligon’s, L’artisan Parfumeur, BlackRock, Roald Dahl Story Company, Post Office, Princess Yachts, Timothy Everest, Majestic Wines, Naked Wines and Lay & Wheeler) with the management of their worldwide trade mark portfolios, ranging from clearance projects to enforcement and including the negotiation of licence agreements and assignments.
- Successfully acted for BlackRock in a trade mark dispute arising from a third party’s plan to register an EU trade mark that risked infringing one of the client’s core trade marks, ultimately negotiating a favourable settlement for the client.
- Successfully defended OFO against opposition and invalidation proceedings brought by Nokia against a UK trade mark application filed by the client, involving a hearing before the UKIPO.
- Successfully obtained registration of two UK trade marks for Post Office after a third party had filed oppositions against them.
- Assisted Swallowfield PLC with the transfer of the rights protecting the brand ‘Fish’ after the client purchased the ‘Fish’ branded male haircare business from KMI Brands Limited, including coordination of the recordal of the assignment with trade mark registers and intellectual property offices worldwide.
EIP's key standout feature is its combined full-service UK and US trade mark prosecution offering and its accompanying litigation team in the UK and Germany. The group is steadily increasing its market share and boasts an internationally experienced team, including three bilingual German and English team members. Claire Lehr directs the practice, with Paula Flutter as the key chartered trade mark practitioner in the group.
Other key lawyers:
‘Their counsel is concise, reliable, prompt and, most importantly, always business-focused. They understand that risks must be taken from time to time and are the best at balancing risks against reward to help our clients make the best choices. Highly recommended.‘
‘Every single person I have engaged with at EIP has been a true professional. They have been prompt in their responses as well as accurate. Their attention to detail has been second to none.‘
‘The trade marks team has a lot of experience and is quick and responsive.‘
‘Claire Lehr is a highly intelligent and commercially astute lawyer.‘
‘Claire Lehr has been outstanding. I have worked with her the most and from our first meeting she has been a pleasure to work with. She is incredibly intelligent, knows the subject matter and is always available to answer any questions.‘
- Assisted Fáilte Ireland with the trade mark aspects of several high-profile promotion campaigns, including clearance projects and the filing of multiple applications in several jurisdictions. Expanded the geographical reach of established brands by filing the necessary trade mark applications in Canada, the US, China, Australia, India and Japan.
- Provided initial registrability advice to AFDP Global prior to the launch of the client’s international social enterprise and successfully registered four EU trade marks for the client.
- Provided pro bono trade mark advice to CLARITY – Employment for Blind People on the trade mark protection of the client’s range of soap and cleaning products, ranging from clearance advice to the drafting and filing of trade mark applications and the management of the client’s trade mark portfolio.
- Updated and expanded Day 8 Ltd’s trade mark portfolio in the context of the client’s growth and accompanying name change.
Lewis Silkin LLP is especially experienced in the management of worldwide trade mark portfolios for major corporations, but also fields a substantial litigation offering to complement its non-contentious practice. Clients predominantly come from the advertising, marketing and creative sectors, though the caseload also contains a significant number of instructions from the retail, automotive, entertainment and technology sectors. In April 2018, the firm opened an Irish office and acquired a specialist search service to better assist clients seeking to protect streamlines and slogans used in advertising. Dominic Farnsworth is the practice head. Aaron Newell joined J A Kemp.
‘Dominic Farnsworth is strong technically, responsive, strategic and cost-effective.‘
Aston Martin Lagonda
Sainsburys, Argos, Habitat, Nectar
Vivienne Westwood Foundation
- Appointed after a competitive tender to manage the global trademark portfolios of Argos, Habitat and Nectar, including clearance work, drafting and filing applications, representation in trade mark registry disputes and domain name disputes.
- Management of longstanding client Aston Martin Lagonda’s global trade mark portfolio.
- In charge of the management of Saga’s trade mark portfolio since 2010.
- Advised Britvic on new product marks and assisted the client with the management of its global trade mark portfolio.
- Management of Deliveroo’s global trade mark and domain portfolio, including trade mark and domain monitoring, development and implementation of trade mark and domain global filing strategies, representation in trade mark and domain disputes, and trade mark advice on advertising campaigns prior to their launch.
Norton Rose Fulbright stands out through its dual expertise in trade mark prosecution, including portfolio management, enforcement, registration strategies and commercialisation, and reputation management through the use of defamation, advertising and media law. As part of the firm's global network, the group is very well versed in cross-border work and often acts for major international corporations. The financial services, life sciences and healthcare, mining and commodities, and technology sectors are particularly busy areas of work. Clare Jackman directs the practice.
Aardman Animations Limited
BNP Paribas SA
McLaren Applied Technologies
McLaren Racing Limited
- Successfully represented a leading consumer goods manufacturer as the opponent in fully defended UK trade mark opposition proceedings.
Novagraaf differentiates itself through its consultancy-based approach and international platform with a particular focus on Benelux countries. WIPO trade mark registrations are an area of particular strength, but the group is also well versed in international contentious proceedings, especially in opposition work. Vanessa Harrow in Manchester is among the names to note.
‘Straightforward and to the point, easy to engage with, knowledgeable and quick to act.‘
‘Novagraaf are very efficient and responsive, they have good systems in place to deal promptly with enquiries and processes. They are very transparent about progress and costs.‘
‘Vanessa Harrow is a talented attorney, who has a strong attention to detail and the client’s interests always at the forefront of her mind.‘
Baxi Heating UK Limited
Stock Spirits Group
- Undertook clearance searches for Stock Spirits Group and provided strategy for new product development.
- On behalf of Baxi Heating, successfully removed an infringing website which was an unrelated entity, but was branded as if affiliated with Baxi Heating.
- On behalf of Banijay Rights, successfully opposed trade mark applications in Spain and Turkey which had sought protection for trade marks incorporating the client’s logo and name.
Osborne Clarke LLP
Osborne Clarke LLP's integrated prosecution and litigation offering attracts an extensive roster of prestigious international players whom the group assists not only with the management of their often global trade mark portfolios, including with opposition and invalidity proceedings, but also with related litigation. Litigator Arty Rajendra, who also assists with strategic trade mark portfolio development issues, directs the practice. The head of the trade marks sub-group is Mark Foreman.
Arty Rajendra; Mark Foreman
‘Very practical, commercially oriented advice.‘
‘Mark Foreman is a standout strategist who gives sharp, practical advice and doesn’t lose sight of the big picture.‘
Federation of Swiss Watch Industry
Stanley Black & Decker
Toni & Guy
- Acted for Axalta in invalidation proceedings before the CJEU General Court, brought by a Spanish competitor in the context of trade mark infringement litigation in Spain.
- Provided strategic international advice to Fred Perry on the prosecution of the client’s trade mark applications and represented the client in multiple enforcement actions, especially in Latin America and Asia, as part of the ongoing management of the client’s worldwide trade mark portfolio.
- Management of Toni & Guy’s trade mark portfolio in over 90 countries, including contentious proceedings and enforcement actions, notably multiple contentious proceedings in China.
- Advised bluebird bio on the global filing strategy for its multiple brands, including representation in related disputes, especially in Asia.
- On behalf of Nokia, filed several UK trade mark applications and a company name complaint at the UKIPO against similar trade marks to trade marks owned by the client.
Based in Derby, Swindell & Pearson Ltd fields a particularly busy UKIPO opposition caseload and acts for a good mix of regional, national and international clients. The group is well versed in the management and development of large trade mark portfolios and boasts expertise in a wide sector spectrum, including the fashion, food and beverage, and manufacturing sectors. Nick Womsley directs the practice. Shaun Sherlock joined from Potter Clarkson LLP. Robert Sales retired.
Other key lawyers:
Kieron Taylor; Natalie Dyer; Natasha Hybner; Katy Fuggle
- Advised a multinational client in relation to its global trade mark portfolio management and its global brand strategy.
- Advised a market-leading German software company on its international operations.
- Advised a clothing brand on its goal to drive growth through its international trade mark portfolio.
- Advised a world leader in the manufacturing of luxury products in relation to its global trade mark portfolio.
- Advised a rapidly growing European brand across a range of trade mark issues arising from the expansion of the client’s business.
Womble Bond Dickinson (UK) LLP impresses with a comprehensive trade mark prosecution offering, ranging from clearance searches and strategic portfolio advice to assistance in contentious matters before intellectual property offices and courts alike. While the team is sectorially versatile, instructions from the retail and consumer goods, manufacturing, hospitality, technology and leisure sectors account for the majority of cases. The team receives regular instructions from foreign firms to represent its clients in UK proceedings. The Leeds-based Patrick Cantrill and managing associate Rachel Hearson are at the helm of the team.
Patrick Cantrill; Rachel Hearson
Bellway Group Plc
Kilfrost Group Plc
Places for People Group
R.H. Smith & Sons (Wigmakers) t/a Smiffy’s
Vertu Motors Plc
- Management of Atom Bank plc’s IP portfolio, including brand protection and strategy advice, securing trade mark protection in the UK and other EU countries.
- Appointed as representative in the UK and the EU for the management of the trade mark and design portfolios of GoCompare.com Limited (including The Global Voucher Group and Energlinx), ranging from the consolidation of registered rights to the implementation of new protection strategies.
- Assisted Old Mutual Group – Merian Global Investors with the development of its trade mark portfolio, including extensive clearance searches and filing strategy development in the context of the client’s rebranding to Merian Global Investors as well as the filing of a high number of trade mark applications in over 20 jurisdictions.
- Management of Immediate Media’s global trade mark portfolio, including clearance searches and the development and implementation of a global filing strategy in addition to advising the client on a number of contentious cases, such as opposition proceedings and infringement actions.
- Represented Wizz Air Hungary in several contentious UK trade mark proceedings, including opposition proceedings against a national hotel room booking website.