Intellectual property in North West
Addleshaw Goddard is engaged for IP matters across the retail and consumer, financial services, transport, industrials, energy, health and public sectors, among others. The team’s notably broad offering spans all IP disciplines with work including portfolio management, disputes and the full range of non-contentious matters. Practice head Paul Bentham is an expert in brand protection and exploitation in addition to the IP-related considerations of company acquisitions and joint ventures. James Whittaker is a further key name; he tailors his practice towards the acquisition and exploitation of IP rights with specific expertise in licensing, media and sponsorship matters.
Other key lawyers:
The Co-operative Group Limited
PZ Cussons plc
Diageo Great Britain Limited
Samworth Brothers Group
Associated British Foods plc
BooHoo Group Plc
- Managing the trade mark portfolios of a number of household names, such as Cirrus Inns Holdings, Harrods, Kickers International, Marie Stopes International, Moneysupermarket, PZ Cussons (International), The Royal Parks, Simplyhealth Group, Sportwift (Card Factory), Stonegate Pub Company and Travelodge Hotels Limited.
- Acting for Preston North End FC in the creation of three separate brand licences to associated entities: two to non-incorporated associations (the members of the PNE Women’s Junior FC and the members of the PNE Women’s FC) and one to the PNE Community and Education Trust.
- Acting for BooHoo in the acquisition of the intellectual property and online business of Karen Millen and Coast.
Clients hail the team at Clarke Willmott LLP as ‘among the best’ for IP matters. It supports clients with the protection, enforcement and exploitation of IP rights, both domestically and overseas. Active on both contentious and non-contentious matters alike, areas of distinguished expertise include filings, portfolio handling and anti-counterfeiting. Practice head Roy Crozier is ‘excellent on strategy’; together with the ‘detail-orientated’ Andrew Stone, he recently acted for Heritage Audio and Pedro Rodriguez Arribas in a CJEU dispute, referred by the Court of Appeal; the first case heard before the CJEU to rule on the issue of international jurisdiction in online EU trade mark infringement cases. Susan Hall, another key name, handles IP matters on behalf of government departments, universities and multinational corporates.
‘Clarke Willmott’s team is a very safe pair of hands for any client – very good on the law and the detail whilst remaining sensible, pragmatic and commercial in their overall approach. This team is amongst the best that I have had the pleasure to work with.’
‘Roy Crozier brings a huge amount of experience to any team – he is extremely sensible, pragmatic and commercial in his approach and is also one of, if not the most, down to earth partners I have had the pleasure to work with. Roy is able to cut through extraneous detail with ease and is excellent on strategy. He is a first-rate partner and I thoroughly enjoy working with him.
‘Thomas Kirby is excellent on the law and the detail, helpful, responsive and with sound judgement’.
‘One of the few IP litigation firms outside of London that competes with London IP firms.’
‘Roy Crozier has a great sense for the commercial and business effects of litigation. Andrew Stone is details-oriented which complements Roy Crozier’s broader overview.’
Otter Products, LLC (“OtterBox) and owner of TreeFrog Developments, Inc. (“LifeProof”)
ACCA – world’s largest global accountancy body.
PUIG Group – owner of many internationally recognised brands (including Carolina Herrera, Nina Ricci, Jean Paul Gaultier and Paco Rabanne)
- Advising Heritage Audio and Pedro Rodriguez Arribas in a case before the Court of Appeal and Court of Justice of the European Union involving a jurisdiction challenge for the defendants in a trade mark (both EU and UK) and passing off dispute.
- Advising Clear Prospects Limited and Michael Robinson as defendants in respect to a claim of trade mark infringement (for the EYEBAG mark), passing off and patent infringement. The Defendants’ counterclaimed for, amongst other things, the invalidity of the Claimants’ trade mark and patent.
- AdvisingQuest International (UK) Limited and David Hallam as the defendants in respect of claims and counterclaims in the High Court for breach of various agreements relating to dissolution of the joint venture and allocation of rights to exploit a series of patents in different fields of use.
Brabners LLP is well-regarded for the protection, exploitation and enforcement of IP rights, portfolio management and trade mark prosecution and applications. It is also engaged for disputes, brand protection and infringement, corporate support and related licenses, assignments and agreements. Practice head Colin Bell is a go-to name for brand management and strategy, while managing partner Nik White is acclaimed for his work on the franchising and data protection fronts. Associate and charted trade mark attorney Hayley Morgan is also a key member of the team, which is particularly strong in the sport, retail, technology, media and entertainment, healthcare and automotive sectors.
Travel Jigsaw Limited t/a rentalcars.com and Priceline.com (UK and US subsidiaries of Priceline Inc)
TJ Morris Limited (Home Bargains)
Greenberg Traurig and Winston & Strawn
Regatta Limited / Craghoppers Limited / Hawkshead Outdoor Limited
James Hall & Company Limited
Revolution Foods Limited
Simply Design Group Limited
Citadel LLC (KCG IP Holdings Limited)
FAUN Trackway Limited
- Ongoing advice to FAUN Trackway Limited, a prestigious leading supplier to the Defence, Access, Environment and Engineering sectors, with 75 years’ experience and part of the Kirchhoff Group, in relation to a trade mark infringement action in the IPEC (claimant).
- Advice to Climbtop Limited t/a Farmer Teds and Farmaggedon in relation to a license and business deal with Aardman Animations (Wallace & Gromit, Shaun the Sheep, Creature Comforts, Chicken Run) following an approach for consent to use Climbtop Limited’s IP in a film name.
- Ongoing advice to Regatta on all intellectual property-related matters for this high profile, successful outdoor clothing client including cross-border matters, including a Customs Office matter in Poland and formal registry Opposition proceedings.
DWF represents brands, manufacturers and retailers , offering specialist knowledge of sectors including manufacturing, pharmaceuticals, technology, leisure, hospitality and food and drink. Department head Craig Chaplin is an expert in non-contentious matters, handling everything from IP acquisitions and disposals through to research, development and licensing. The wider team is also active on the disputes front, led by Asima Rana, with specialist knowledge of defending IP infringement and breach of confidence claims, along with trade mark-related disputes.
Marks & Spencer
James Cropper plc
WM Morrison Supermarkets plc
Burton Foods Limited
Pepkor Europe Limited (Poundland)
Fix 8 Group
- Advised Paul Hartmann AG on various projects including the preparation, drafting, and negotiation of Heads of Terms and project agreements with co-developers, manufacturers and consultants.
- Provided strategic advice to James Cropper on various R&D projects including the preparation of Memorandum of Understandings and Heads of Terms before developing project agreements appointing contractors and subcontractors.
- Worked closely with Tangle Teezer’s legal and management team to strategically protect, establish and promote the global brand.
Specialist IP firm HGF Law is home to a ‘friendly, efficient and knowledgeable team’. The team handles the full range of contentious and transactional IP matters, with a particular focus on the life sciences, retail, fashion, education and advanced engineering sectors. Examples of work handled include licensing, dossier and associated brand acquisition, commercialisation, design clearance for new products Janet Knowles is a ‘go-to lawyer’ while Antony Gold is ‘efficient and knowledgeable’; both head the practice. Advice relating to compliance with the Advertising Standards Authority and other regulatory bodies is also a core strength.
‘ A friendly, efficient and knowledgeable team that are easy to engage with.’
‘I find Michelle Davies is easy to dialogue with, listens, advises and gently steers well.’
‘Janet Knowles is my go-to lawyer on any matters associated with IP, and licensing/ collaboration.’
The University of Manchester
Specsavers Optical Group
Extruded Pharmaceuticals Limited
We Buy Any Car
Rawwater Engineering Limited
Medicines Discovery Catapult
Kurt Geiger Limited
Halfords Group plc (including Boardman Bikes)
Novel Technologies Holdings Limited
Booker Group plc
Portmeirion Group plc
- Successfully acting for We Buy Any Car in relation to an ASA complaint following a high-profile campaign by it, which attracted numerous complaints.
- Acting for the technology transfer company for The University of Manchester to provide the equivalent of an in-house legal support service dealing with wide-ranging matters including advising on numerous Materials Transfer Agreements and Licence Arrangements.
- Advising Medicines Discovery Catapult, a listed life sciences company on various matters including conducting an overview of its contractual portfolio covering the key SkinBiotix technology and advising on the security of its ownership and access rights to its key technology.
At Pannone Corporate LLP, all members of the team offer ‘a high standard of service and commerciality’. Melanie McGuirk fronts the contentious offering, which handles trade mark, passing off and copyright disputes in addition to search orders and injunctive relief. The ‘excellent’ Amy Chandler leads on contentious matters, including brand licensing, sponsorship and merchandising agreements, technology and patent licensing as well as research and development agreements. Franchise litigation and disputes related to employee breaches of restrictive covenants are also specialisms for the team, which includes ‘stand-out’ director Sarah Bazaraa. Consultant Patricia Jones is a key new arrival; she previously headed her own boutique IP firm.
‘The quality is clear to see. They are strength at all levels. They are a top IP litigation team that can compete with any other.’
‘Melanie McGuirk and Sarah Bazaraa are the standout people. If I had an IP issue, I would go to them. Decisions are made from a high level of legal and factual knowledge. Mistakes are not made.’
‘They care about the cases they work on.’
‘Very capable and personable. They display a high level of professionalism in an approachable manner. The whole experience of working with them is less transactional than other operations.’
‘Amy Chandler and Patricia Jones are the embodiment of the businesses culture and are excellent when dealing with people perhaps uncomfortable with the whole legal process. They are both highly knowledgeable around the whole IP area as you would expect but have the skill to explain the nuances well to people new to the whole IP area.’
‘All of the team have the same high standards of service and commerciality. The team is particularly strong in fashion and retail.’
‘I would recommend Melanie McGuirk on the contentious side. Melanie continues to impress with her high standard of work and excellent service levels. On the non-contentious side, I would recommend Amy Chandler who is also excellent. She always delivers a great service; like Melanie, Amy is very engaging and easy to work with.’
Pets at Home Limited
Brother International Europe Limited
Boohoo.com UK Limited
Iceland Foods Limited
Travel Insurance Facilities plc
International Game Technology plc
SMG Europe Holdings Limited
Represent Clothing Limited
- Advising Boohoo on the acquisition of intellectual property rights of a third party retailer and in relation to infringement disputes.
- Acting for AMS Neve in relation to a successful reference to the Court of Appeal and the CJEU in relation to the issue of which EU member states have jurisdiction for online advertising and sales in trade mark infringement cases.
- Acting for AJA Europe Limited in a jurisdictional challenge of the English High Court in favour of arbitration in a trade mark dispute.
Clients say TLT can be relied upon to provide both the ‘appropriate legal advice and the correct commercial decisions’. Practice head Graeme Orchison is a ‘superb IP litigator’; his team is experienced in handling the full range of trade mark, patent, copyright and design right disputes all of the way up to the Court of Appeal. The non-contentious offering includes assistance of the development of new IP, strategic licensing acting on the IP aspects of major corporate and commercial transactions.
Other key lawyers:
‘Graeme Orchison is a superb IP litigator, being experienced, knowledgeable and user friendly. Clients appreciate his easygoing style.’
‘Graeme Orchison is an experienced and savvy litigator with a knack of handling difficult cases.’
‘TLT give the appropriate legal advice but have the ability to work with the client to make the correct commercial decisions.’
‘Graeme Orchison is in my opinion the best IP lawyer in the north of England. Strengths and qualities are outlined above. On non-contentious issues we have also worked with Stuart Campbell. Stuart is very competent in drafting agreements and making sure that the client is not exposed. We have also worked with Gary Freeman who is an associate. He is also excellent.’
‘Graeme Orchison is probably one of my most favourite lawyers to deal with. Completely down to earth and has a no nonsense attitude when dealing with difficult opponents. I will always recommend him when an IP matter also requires commercial knowhow.’
Alpla UK Limited
Beaconsfield Footwear Ltd (owner of the HOTTER brand)
D Jacobson & Sons Ltd (owner of the GOLA brand)
A leading national clearing bank
Elavon Financial Service DAC
R. Faerch A/S
Halewood International Brands Limited
Major global brewer
Boohoo/Pretty Little Thing/Nasty Gal
JD Sports Fashion plc
The Hut Group Limited
Yorkshire Building Society
- Acting for Bet Fred in relation to various trademark litigations concerning use of its PLACEPOT and QUADPOT trade marks.
- Dealing with various trademark and design right infringement claims on behalf of D Jacobson & Sons Ltd – GOLA | Dunlop. Matters include an IP licensing dispute with Japanese company SRI over the famous DUNLOP sports brand and a US litigation with Adidas.
- Handling various copyright, design right and trademark infringement disputes on behalf of Matalan.
Lawyers at Brandsmiths are praised for the ‘strength and depth of their IP knowledge’. Michael Forrester delivers an ‘excellent understanding of commercial and legal issues’; his practice is centred on contentious matters, namely registered and unregistered designs, trade marks and passing off. He heads the practice together with Andrew Lee who ‘fights his client’s corner’ with a proven track record of handling copyright infringement matters. At the junior end, John Battersby is an ‘expert in his field’ while Jacob O’Brien is ‘flexible and knowledgeable’. While the practice has a strong disputes focus, it also handles a range of non-contentious matters.
‘Client focused. Very good value for money.’
‘Andrew Lee fights his client’s corner.’
‘Strength and depth of IP knowledge.’
‘John Battersby and Michael Forrester are experts in their field and really take an interest in our business so as to better provide the advice and assistance we require.’
‘They are excellent at providing both commercial and technically sound advice in relation to intellectual property issues. They are a great addition to the Manchester legal community and bring a modern and collegiate approach to legal advice.’
‘Primarily contact has been with Jacob O’Brien and Michael Forrester. Jacob is flexible, knowledgeable and able to give an initial view on both a legal and commercial basis at the drop of a hat. This is really useful when trying to manage expectations and give advice on prospects to internal clients. Michael is dynamic, direct and has an excellent understanding of the commercial and legal issues we face.’
Iconix Brand Group
City of Manchester Distillery
Venture Capital business
Federation Against Software Theft (FAST)
International Pipeline Products
At DLA Piper, department co-heads Lee Brierley and Peter Brook specialise in a broad range of non-contentious IP work; examples include brand acquisitions and licensing, technology partnering, licensing and manufacturing agreements, protection and exploitation. The team also handles business-critical IP disputes and is particularly knowledgeable of the retail, consumer, manufacturing, industrial and life sciences sectors. Senior associate Jim McDonnell is a dedicated IP lawyer who leads on a number of the team's key matters.
Other key lawyers:
Graham & Brown
The University of Liverpool
- Advising Frederic Robinson Ltd on a tie-up for the production of rock legends Iron Maiden’s branded TROOPER beer.
- Advising Snowdonia Cheese Company, a specialist food manufacturer on the safeguarding and licensing of its IP in recipes and related matters.
Gateley Plc is particularly active on the contentious front, handling patent, copyright, trade mark, passing off and trade libel disputes in addition to those pertaining to registered and unregistered design rights. On the non-contentious side, brand licensing, franchising and exploitation are fields of key expertise. Jonathan Moakes heads the department, which counts sports, media, life sciences and technology among its specialist industries.
Edinburgh Woollen Mill
Harman Technology Limited
JD Sports Fashion plc
Manchester City Football Club Limited
Libra Scale Company Limited
Industrial Tomography Systems Limited
Manchester Biogel Limited
The Partnership (Licensing) Limited
- Advising Incanthera on the variation of Patent Assignment and Development agreement and Clinical Services agreement with Ellipses Pharma relating to the long-term development and exploitation of cancer-related drugs.
- Defending Edinburgh Woollen Mill in a copyright infringement brought by Response Clothing in relation to the fabric from which a ladies’ blouse is made.
- Defending Salts Healthcare in High Court action by Hollister and Dansac against Salts Healthcare for trade mark infringement based on sale in the UK of medical products parallel imported from elsewhere in the EU.
Kuit Steinart Levy LLP is noted for its ‘strength in depth across patents, trade marks, designs and copyright’. The firm's team covers all forms of contentious and con-contentious work though licensing, R&D, brand acquisitions and disposals, patent disputes and international trade mark litigation. Practice head Bruce Jones is cited for his ‘experience as a patent attorney’ while Ian Morris, who recently moved into a consultancy role, is hailed as a ‘tough litigator’.
Other key lawyers:
‘Strength in depth in IP legal work in Manchester across the board – patents, trade marks, designs and copyright.
‘Ian Morris has unrivalled experience and Bruce Jones has brought good quality clients with him to add to the existing client portfolio.’
‘Ian Morris is a highly experienced, tough litigator. Bruce Jones’ experience as a patent attorney aids his understanding of complex patent cases.’
‘Great communication and a willingness to understand the subtleties within the clients business.’
‘Ian Morris is vastly experienced, knowledgeable and friendly.’
‘High level of knowledge and expertise including understanding of foreign patents.’
Beauty Bay Limited
Character World Limited
Class of ‘92
Harnbury Holdings Limited (San Carlo, Signor Sassi, Cicchetti, Fumo restaurants)
Thornton & Ross Limited
- Advising IBLA, the franchising arm of Harnbury Holdings, on the roll out of its Signor Sassi and San Carlo restaurant brands throughout the Middle East.
Pinsent Masons LLP
A wide range of disputes and transactions are handled by the team at Pinsent Masons LLP, led by Samantha Livesey. In particular, sponsorship agreements, brand licensing and commercial rights activation are key, with the practice providing a one-stop shop for brand protection, handling everything from conception through to monitoring and enforcement. Key sectors include retail, technology, life sciences and sport.
Lily’s Kitchen Limited
Jockey Club Racecourses Limited
Innovative Vector Control Consortium (“IVCC”)
The English Golf Club Union Limited (“EGUL”)
Xkelet Easy Life SL
Stadia Solutions Limited
Sweaty Betty Holdings Limited
Celtic Football Club
UP Fitness Limited
McArdle Sport Tech
- Advising Jockey Club Racecourses on its key sponsorship agreements including with it official partners such as Randox, Magners, Bentley, Britvic and Paddy Power Betfair.
- Advising Silentnight its UK and international licence and brand partner agreements.
- Advising England Golf on its licensing and implementation of the World Handicap System across English golf clubs.
Shoosmiths LLP handles IP and brand license portfolio acquisitions made both domestically and abroad. Headed by Richard Millington, the team also handles outsourcing, exploitation and sponsorship matters in addition to distribution and agency agreements. Telecoms and fashion are key industries; so too is sports, with Millington recently acting for the Six Nations in relation to broadcasting rights and brand exposure.
- Instructed by Six Nations as part of the consortium advising on Project Light. This involved extensive work on their media rights structure and sales process to maximise exposure and revenue, incorporating the rights of the individual Unions into a broader pot.
- Continuing to provide crucial guidance to The Federation of Sport and Play, which represents the UK sporting goods and play industries, throughout the UK’s Brexit negotiations to the FSPA.
- Advised on the formation of AR Discs, a new joint venture. It was set up to exploit new Augmented Reality Technology products.
DAC Beachcroft LLP
DAC Beachcroft LLP handles both contentious and non-contentious matters, covering transactions, copyright, trade mark, passing off, database rights, confidential information and design rights. Harald Loeffler heads the practice, leveraging his experience in acting on trade mark and design rights infringement claims. Core sectors of focus include insurance, IT, healthcare and technology.
Other key lawyers:
LIWEST Kabelmedien GmbH
Bullhorn International Limited
- Advised Internorm about the protection of its intellectual property rights in the UK, ROI, Canada and the USA.
The team at Myerson Solicitors LLP ‘works seamlessly together and is very responsive’. Clients include individuals, SMEs, PLCs and OMBs, and while the Altrincham-based firm focuses on its North West heartlands, the team has recently noted an increasing number of instructions from the South and South East. The ‘extremely competent’ Jonathan Hassall actively handles trade mark, copyright, patent, confidential information and design right disputes while Carla Murray is an expert in the vesting of IP rights in addition to portfolio management.
‘The IP team works seamlessly together and are very responsive.’
‘Jonathan Hassall is extremely competent and personable with it – it’s a pleasure to do business with him.’
Freshasia Foods Limited
- Acted for Freshasia Foods Limited, a Chinese frozen food manufacturer, in a claim against one of its former employees in relation to misuse of confidential information and copyright and database right infringements.
- Advising a construction company’s technologies division on its software licensing and services agreements.
- Advising a leading online holiday cottages letting company on its ongoing marketing strategy and data protection queries.
Clients praise Gorvins Solicitors for its ‘breadth of legal experience and great client management’. The contentious offering, led by the ‘very personable’ Guy Lightowler, encompasses passing-off matters in addition to trade mark, copyright, registered and unregistered design right issues. The client list includes OMBs, SMEs and multinationals. Andrew Curwen fronts the non-contentious side where expertise includes development, enforcement and licensing.
‘Responsive to client needs; good value; well versed in the law; unique in the Stockport area.’
‘Guy Lightowler is very personable, understands client needs, realistic and knowledgeable.’
‘Handled our enquiry superbly. From the moment we contacted them, we felt at ease straight away. Same from the office staff, its never a easy moment when you find yourself in need of legal help, however all the angst is taken away. Can’t sing their praises highly enough.’
‘Our partner is Guy Lightowler, again all the help and support has been superb. He has made this situation a lot more bearable, his knowledge is excellent, communication and understanding (specialist industry) is second to none. We have other legal issues which without doubt will be given to Guy to address. I would not hesitate to recommend Guy, makes the whole process pain free.’
‘Gorvins are an excellent north west firm with a breadth of legal experience and great client management.’
‘Christian Mancier is our go-to partner. He is always able to find simple, commercial solutions to complex issues and provides clear and concise explanations that help us understand our options and make decisions quickly. He is very reliable and I have valued his thoughtful input on many occasions.’
Valour Finance Group Plc
Avonside Group Services Limited
Williams Motor Group
Mondiale Publishing Limited
CGA Strategy Limited
Alan Howard (Stockport) Limited
Proseal UK Limited
Richer Sounds Plc
Rowlinson Group Limited
GPC Computer Software Limited
Blaze Networks Limited
- Acting for Computeam Holdings in respect of the sale of the virtual reality and augmented reality business of subsidiary, Inspyro Limited, to Discovery Education, as part of Discovery’s content and product strategy deliver augmented and virtual reality to UK schools.
Hill Dickinson LLP specialises in brand protection and exploitation, regularly advising on sponsorship and personal endorsement deals, licenses and IPR assignments. Patent application before the UK IPO and EPO, asset purchase agreements, research and development collaboration contracts and the full range of contentious issues are also core strengths. The London-based Mark Weston heads the department alongside Mark Fitzgibbon, who operates from Manchester.
Other key lawyers:
National Health Service
Northstone NI Limited
Signature Living Hotels Limited
Direct Accident Management Limited
Agilent Technologies LDA UK Limited
Elstree Film Studios Limited
Human Brands plc
- Manage and advise on protection of Coffee Republic’s brands all over the world.
- Advised Northstone NI on a variety of IP related matters including trade mark registrations and portfolio management.
- Protecting and advising on the IP portfolio of a variety of different NHS trusts as well as advising on new IP which is generated and exploitation of the same.
Manleys Solicitors handles both contentious and non-contentious matters with expertise in representing media companies, political organisations, sports personalities and celebrities, as well as corporates.