Intellectual property in North

McDaniels Law

Boutique intellectual property firm McDaniels Law has solidified its presence in the north with the recent opening of a new office in Carlisle; work from this location is overseen by managing associate Adam Turley, who re-joined the firm from Baines Wilson LLP in December 2020. The practice continues to advise clients on all aspects of the creation and ownership of their intellectual property rights, and currently manages over 1,000 trade marks and 500 registered designs in various jurisdictions. Contentious work is another area of strength for the team, which currently has ongoing client claims in the High Court and the IPEC. Niall Head-Rapson and Kelly Hudson lead the group.

Practice head(s):

Niall Head-Rapson; Kelly Hudson

Other key lawyers:

Adam Turley

Testimonials

‘The team is focused and collegiate and delivers a London quality service in the regions.’

‘Kelly Hudson is pragmatic and client savvy. She works collaboratively with external counsel who are fully integrated in the team.’

Key clients

Damian Evans Design Limited

Equipment Supplies and Consultancy Services Limited

Dowman Imports Limited

Fairfax & Favor Limited

Cormeton Fire Protection Limited

Mathmos Limited

Old English Company Limited

Sofa Bespoke Limited

Photobooth Props Limited

Really Simple Ideas Limited

Work highlights

  • Representing Damian Evans Design in a High Court claim concerning the interpretation of a contract, letter of understanding, and deed of variation which govern the licensing arrangement.
  • Representing Cormeton Fire Protection in a trade mark and copyright infringement and passing off and breach of contract claim issued in the IPEC.
  • Representing Equipment Supplies in its potential professional negligence claim against its former solicitor, concerning an intellectual property infringement claim the solicitor conducted against the client’s former partner.

Muckle LLP

Muckle LLP's intellectual property group is equally focused on contentious and advisory work; litigation expert George Festing oversees the former while commercial specialist Alex Craig leads on the latter. Trade mark portfolio management also continues to be an area of strength and growth for the team. The firm has considerable experience of tackling matters with a nexus to the TMT, education, retail, travel and leisure, industrial engineering and pharmaceutical industries. John Devine is particularly noted for his exclusive work with sports clients, on behalf of whom he handles a wide range of non-contentious IP issues.

Practice head(s):

Alex Craig

Other key lawyers:

George Festing; John Devine

Testimonials

‘Great team, broad spectrum of knowledge, very pragmatic, always willing to offer the best advice (even if it may not be what we want to hear, but need to hear).’

‘Alex Craig is very friendly and knowledgeable. Strong character. Has offered clear advice, and gained additional input from other sources when/where required.’

Key clients

Meiyume (UK) Limited

Caribbean Premier League

Leo Vegas Gaming plc

CAV Advanced Technologies Limited

The Algorithm People Limited

Thomas Swan and Co Limited

City Football

Northern Gas & Power

Simpsons Malt Limited

Tea Venture Limited

Work highlights

  • Assisted Thunderful Group with its acquisition of 100% of the development studio Coatsink Software.
  • Acting for LeoVegas Gaming on active litigation relating to contract, data protection and trade marks.
  • Advised CFG, owner of 10 professional football clubs worldwide including Manchester City FC, on the global implementation of its Cityzens Giving for Recovery programme in response to the Covid-19 pandemic.

Ward Hadaway LLP

Ward Hadaway's team is best known for the support it provides to high growth technology start-ups, entrepreneurs and creative people, advising them from the early stages of their businesses and assisting with the development and exploitation of their intellectual property. The group has particular expertise advising spin-out companies from the university sector. Additionally, it regularly assists its larger clients with complex research and development, international technology licensing and collaboration deals. Trade mark matters are another field of focus for the firm, which handles both advisory work - including registration and portfolio management - and disputes in this area. The key contacts are Alex ShielJudy Baker and Bill Goodwin.

Practice head(s):

Alex Shiel; Bill Goodwin; Judy Baker

Key clients

University of Newcastle upon Tyne

ScS Sofas

Tech Nation

Newcastle International Airport

Newcastle Building Society

Keepmoat Homes

Soil Machine Dynamics

Stent Tek Limited

Connect Health Limited

Eden Parfums

Work highlights

  • Advising Eden Parfums on the worldwide licence that it holds to manufacture and distribute a range of fragrance products under the name of the global star footballer Cristiano Ronaldo and his CR7 brand.
  • Advising the Inn Collection Group on various IP issues relating to its acquisition of several pubs and hotels, mainly in the Lake District.
  • Providing legal assistance to a range of start-up businesses being supported by Teesside University’s Launchpad Programme.

Hay & Kilner

Hay & Kilner's expertise in the fashion, automotive, software and food industries continues to mark out the firm. The group's client base also includes a number of notable international names, which it readily advises on cross-border matters, in particular those concerning joint ventures with businesses based in Asia. The team has seen a marked increase in work relating to software development, use and protection. On the contentious side, the firm regularly acts for clients bringing and defending claims relating to registered trade marks, copyright, registered designs, and passing off. Core practitioner Lucy Gray was joined by much lauded senior associate Paul Armstrong in February 2020.

Practice head(s):

Lucy Gray

Other key lawyers:

Paul Armstrong

Mincoffs Solicitors LLP

The team at Mincoffs Solicitors LLP has a proven track record working on brand licensing and franchising matters, particularly in the creative and digital sectors. The department has also carved out a significant niche assisting the region’s universities with intellectual property matters, and advising student and graduate incubators, in which enterprise the team is noted for its ability to 'deliver the best possible legal advice and support to aspiring entrepreneurs'. Antony Hall leads the group, with commercial disputes expert Stewart Irvine providing valuable support on the contentious side.

Practice head(s):

Antony Hall

Other key lawyers:

Stewart Irvine

Testimonials

‘Mincoffs as a practice have been extremely supportive and flexible in their approach to both delivery of support, but also their willingness to work hard at building relationships with young entrepreneurs. Advice given is always supportive.’

‘Antony Hall communicated with us exceptionally. There was a key focus on what we were looking to achieve, and how to best work with us as individuals. I found it exceptional that it was not just about delivering the end product, but about understanding what it is about the problem we’re trying to solve which will help us achieve our business objectives.’

‘Their willingness to listen the needs of the client base and adapt their offer to suit are impressive. The time they take to understand the requirements and their excellent client relationships makes them a go-to for support.’

‘The team worked with us to turn around an overhaul to our commercial terms. I was impressed with their ability to understand our business objectives, and create terms to fit these. These were also relayed back to us in a way we could understand, given that this is a complex topic on multiple levels. I was impressed with the level of communication involved, and the way that Mincoffs worked to understand our needs and challenges before developing the solution.’

‘They have an understanding of the needs of student and graduate start-ups and have a package of support which can be tailored to the needs of this sector, without being overwhelming (in particular their package of support to deliver workshops, one-to-one advice and accompanying suite of practical ‘how to’ templates for new start-ups).’

‘The level of knowledge and experience, combined with the manner of delivery, stands Mincoffs out as an exemplar in the delivery of legal advice to young entrepreneurs. Antony Hall is extremely supportive in the area of business creation, and is willing to work flexibly to deliver the best possible legal advice and support to aspiring entrepreneurs.’

Key clients

Steamforged Games Limited

University of Northumbria at Newcastle

University of Sunderland

I2Media Limited

BotsAndUs Limited

Nolii Limited

Lingotot Limited

High Street Group

Lixir Limited

LB Foster Rail Technologies (UK) Limited

Beacon Creative

Komodo Digital

Wubbleyou Limited

Northern Film + Media

Work highlights

  • Negotiated a number of additional licenses with Capcom, Bandai Namco, a global media production company and two leading video game platform providers on behalf of Steamforged Games.
  • Advised BotsAndUs on the implementation of an intellectual property strategy to help prepare the business for further growth.
  • Assisted the High Street Group with the negotiation of an international brand license to be entered into with the Radisson Group.

Keystone Law

The team at Keystone Law is instructed by a wide range of businesses, from start-ups to multinational corporates. The group is equally adept at handling contentious issues, often with an international dimension, and advisory work. Key contact Will Sander's broad practice exemplifies this wide-ranging proficiency; he assists with the full gamut of intellectual property matters, from the identification of IP to its protection and commercialisation, as well as handling disputes both within and outside the UK.

Other key lawyers:

Will Sander

Key clients

Life Health Foods UK Ltd

Aerus LLC

Hottinger Investment Management Limited

Notonthehighstreet Enterprises Ltd

Mammoth Sport Ltd

Trinny London

Physical Company

Thane Inc

Building & Engineering Services Association Limited

Jeff Banks

Royal Armouries

Work highlights

  • Advising Hottinger Investment Management, an international wealth management company, on all contentious and non-contentious IP matters.
  • Providing support to Aerus as its external European intellectual property counsel, including acting on disputes in Spain and throughout Europe.
  • Advising  Mammoth Sport on a variety of contentious and non-contentious IP matters.

Sintons LLP

The group at Sintons LLP is noted for its work on the protection, development and commercialisation of new and emerging technologies through new business start-ups and spin outs, particularly in relation to the medical sector. On matters of this kind, the team is able to leverage the support of the firm's well-regarded healthcare group. Karen Simms, who leads the corporate and commercial department, and senior associate Pippa Aitken are the key contacts for non-contentious work. On the litigious side, Graeme Ritzema is the name to note.

Practice head(s):

Pippa Aitken; Karen Simms; Graeme Ritzema

Testimonials

‘We have found Sintons to be an extremely helpful and responsive firm. They have acted swiftly on our behalf and we feel they have given us sound and valuable advice.’

‘We would mention Karen Simms at Sintons in particular. Karen is extremely friendly, helpful and rigorous. She has responded to our enquiries speedily and effectively and introduced additional expertise from as necessary.’

Key clients

The Newcastle upon Tyne Hospitals NHS Foundation Trust

The Medway NHS Foundation Trust

Zynk Software Limited

The Auckland Project

The-Me-Group

Sirius Technologies Limited

South Durham Leisure Limited

Shoptimised Limited

Video Enhanced Observation Limited

Kani Payments Limited

Work highlights

  • Advised Sirius Technologies on an exclusive licensing arrangement with a licensee in the USA to sell the client’s novel technology for application on glass, trim and painted surfaces on motor vehicles.
  • Advised Video Enhanced Observation on its contracts with clients as well as assisting with its brand protection, which has resulted in a WIPO application, designating the US and EU.
  • Acted for Zynk Software in trade mark opposition proceedings within the UK IPO.