Intellectual property in Northern Ireland
A&L Goodbody acts for a number of high-profile local and all-island clients on the full range of contentious and non-contentious IP matters. Areas of strength include handling emergency injunctive proceedings, major patent litigation, and trade mark infringement matters relating to counterfeit goods. On the non-contentious side, the team regularly advises on the protection of IP rights in relation to licensing and agreements. Brendan Fox, who has a strong reputation in IP disputes, leads the team alongside Mark Thompson. Associate Ciaran O’Shiel has a particular specialism in patent infringement disputes.
Brendan Fox; Mark Thompson
Other key lawyers:
‘The team are leaders in their field in Northern Ireland. Their considerable experience means that they are well connected in the region. The team members are knowledgeable and responsive, making them very easy to work with.‘
‘A very user-friendly department that understands our needs, responds quickly and efficiently, and is generally a pleasure to work with.‘
‘Barbara Creed and Ciaran O’Shiel are both very responsive and helpful. Their advice is commercial and pragmatic and they are focused on getting the best result for the clients rather than maximising their own fees.‘
‘Ciaran O’Shiel is a delight to work with; he is very knowledgeable about the differences between English and Northern Irish practice, and very responsive.‘
‘Ciaran O’Shiel is fantastic – the best media lawyer in Northern Ireland. He has a great can-do attitude.‘
‘The team is very highly regarded and well resourced with great expertise and significant experience.‘
‘Ciaran O’Shiel has a laser-like focus and gritty determination when it comes to seeing complex cases through to a successful conclusion.‘
Roma Systems Inc
Irish Football Association
The Old Bushmills Distillery Limited
News Group Newspapers Limited
W & R Barnett
Agri-Food and Biosciences Institute
NI Transport Holdings (Translink)
- Acting for the owners of the global Tony Roma’s brand in relation to injunctive proceedings in the Northern Ireland High Court against the proprietors of a Tony Roma’s restaurant in Belfast. The matter is based on claims of breach of contract and intellectual property rights (specifically trade mark infringement and passing off).
- Acting for the Irish Football Association (IFA) on a venue hire agreement for a major international boxing match which took place at the National Football Stadium. This involved ensuring the IFA’s intellectual property rights were protected at the same time as ensuring these were sufficiently commercialised.
- Advising the Old Bushmills Distillery Company Limited relating to the protection and commercialisation of its intellectual property rights.
- Defending News Group Newspapers in proceedings brought in the Northern Ireland High Court by a firm of solicitors for defamation, misuse of private information and breach of copyright. The claims relate to the national publication of several articles in The Sun.
- Advising W & R Barnett on engaging with the Copyright Licensing Agency (CLA) in relation to various matters involving copyright licences.
Arthur Cox Belfast advises a blue-chip client base, including leading multinationals and large Northern Irish companies, on IP issues including the protection and licensing of copyright works, trade marks and patents, as well as the protection of trade secrets and unregistered IP assets. Areas of expertise include the healthcare, tertiary education and aerospace sectors, and the team has been increasingly active in the advanced manufacturing and retail franchising spaces, where Lynsey Mallon is a particular specialist. The team is led by Alan Taylor and also includes Paul McBride.
‘A good team with detailed knowledge on a wide range of issues.‘
‘They are willing to come up with solutions and ways of doing things that are outside the norm and generally turn things around quickly.‘
Musgrave Retail Partners NI Limited
Thompson Aero Seating Limited
Silos, Tanks & Digestors
The Mount Charles Group Limited
- Advising Coca-Cola in Northern Ireland on all intellectual property matters, including licensing agreements, supply agreements, advertising and general brand protection strategies.
- Advising Norbrook Laboratories in relation to the drafting and negotiation of a global distribution agreement for its products with Bayer PLC. This included advising on the licence of Norbrook’s patents and trade marks and Norbrook’s right to use Bayer’s trade marks on labels and packaging of products.
- Advising Australia-based company Probiotec on a licence and distribution agreement for the use of its “Celebrity Slim” brand in the UK and Ireland, including advising a licence of its trade marks and “Celebrity Slim” product formulations.
- Advising Uleska Ltd on an IP addendum to a consultancy services contract with PWC, addressing issues relating to the ownership of background IP and ownership of IP in improvements, enhancements and modifications made to software security products.
- Advising Musgrave on an ongoing basis in relation to its use and licensing of the intellectual property rights contained within its marquee retail brands (SuperValu, Centra and Mace).
Carson McDowell advises on the full range of IP rights, including copyright, patents, trade marks, know-how and commercially sensitive information. In addition, the firm handles IP litigation, particularly patent and copyright infringement proceedings. The team has been highly active advising foreign clients with R&D facilities in Northern Ireland, and has growing expertise in software licensing, ICT managed services and technology transfer issues. Declan Magee and Dawn McKnight head the contentious and non-contentious sides of the practice, respectively, and Peter Guzhar is highly recommended for IP litigation, particularly patent infringement.
Declan Magee; Dawn McKnight
Other key lawyers:
‘We were impressed by the speed with which Peter Guzhar responded and identified the core technical issues.’
University of Ulster
Eakin Healthcare Group
Council for the Curriculum, Examinations and Assessment
Blue Clarity Consultancy
- Providing a general IP support service for Innovation Ulster (a wholly owned subsidiary of University of Ulster for IP and technology transfer-related activities).
- Providing ongoing advice to Sisaf on IP matters such as a patent and know-how licence agreement entered into with Soterios Limited regarding the development of alopecia treatment drugs using Sisaf’s IP rights.
- Advising the University of Ulster on a range of IP matters, including a consortium agreement with various other further education institutions to govern the use of funds as part of a research grant. This involved ensuring the client’s background IP was fully protected and that it would fully own all foreground IP which it developed.
- Acting for Cosyroof Ireland in a trade mark infringement case which involved a competitor using the client’s trade mark in its domain name.
- Advising Denman International on taking a full assignment of the IP of “Weaveaze”, a product which it had had a licence to manufacture and sell for a number of years.
Millar McCall Wylie LLP is particularly highly regarded for its advice on IP issues in the local film and television sector, including assisting media clients with distribution agreements, rights licensing and management, and content exploitation and protection. The firm's client base also includes companies in the technology, construction and manufacturing industries, and it is active advising large corporate clients on the IP aspects of commercial contracts. The team is led by Scott Kennedy, and also includes corporate head Damian McParland and Abbie Long.
Learning Pool Limited
Cirdan Imaging Limited
Causeway Sensors Limited
Viewble Media UK Limited
Fine Point Films Limited
IVA Watch Limited
iGame Media Limited
Northern Ireland Screen
- Advising Cirdan Imaging on a wide variety of IP matters, including an R&D collaboration agreement with Queen’s University Belfast.
- Advising Airota Software on the terms of its reseller and distribution agreement agreements relating to its suite of remote worker management software solutions. This involved advising on the relevant licensing rights and permissions relating to the underlying copyright in the products to enable them to be sold and distributed abroad.
- Advising Fine Point Films on IP matters such as chain of title, copyright ownership, and IP rights creation and exploitation in relation to various film and TV projects.
- Advising Viewble Media UK on various commercial contracts, including media creation agreements and licensing of existing customer IP rights.
- Advising Northern Ireland Screen in respect of over 1,000 film and TV production and development projects, including review of IP and title and distribution agreements.
Tughans advises on the protection and exploitation of IP assets in a variety of IP-rich sectors, but historically the firm has had a particular focus on the technology sector, with clients including start-up and established Northern Irish companies and household-name international companies. As a result of this specialism, key areas of expertise include advising on collaboration, consultancy, franchising, joint venture, licensing and supply, and technology transfer agreements. Adrian O’Connell leads the practice.
Titan IC Systems
Zero Waste Anaerobic Digestion Limited
David Lynas Consulting Limited
SABSA Education Services Limited
Enviroform Insulation Limited
- Advising a large Northern Irish food and grocery distribution business on the procurement and implementation of SAGE’s SAP SuccessFactors software as its group-wide HR system. This involved negotiating with SAGE on licensing and other issues.
- Advising a large local animal feed manufacturer on its enterprise-wide deployment of Microsoft Dynamics, which involved negotiating with the implementation partner on licensing and other issues.
- Advising Titan IC Systems on negotiating and settling IP licensing deals with several companies for the implementation of the client’s technology into their next generation networks and cloud offerings.
- Advising Fourds (t/a Bloc Blinds) on the licensing of its IP, including negotiating a US licensing deal and successfully upholding the client’s US patents in the face of the citation of prior art.
- Assisting Fusion Antibodies with the IP aspects of its initial listing on the AIM stock exchange, including undertaking due diligence of the client’s IP portfolio and registering a portfolio of international trade marks.
Cleaver Fulton Rankin advises leading Northern Irish companies on the exploitation and protection of IP assets and the IP aspects of corporate transactions, as well as handling a variety of trade mark and copyright disputes. Growing areas of expertise include advising on research collaborations and clinical trials. Hilary Griffith, who has extensive experience in IP matters in the technology, life sciences and education sectors, leads the non-contentious side of the practice, while Michael King handles IP litigation.
Other key lawyers:
‘Primarily, the team is knowledgeable about the client’s industry. They are available, fast to respond, and flexible to work with. Their depth of knowledge and guidance has been a great benefit, and they are solution focused rather than protectionist or problem focused.‘
‘The team stands out for its awareness of the client’s industry, the availability of additional experience and expertise, and its responsiveness.‘
‘Solicitor Kathryn Laverty’s willingness to walk us through areas we are not experts in, and her ability to communicate clearly and then listen to our plan and objectives, is fantastic.‘
Linen Hall Library
The Belfast Hotel Group
Phion Therapeutics Limited
Photonic Measurements Limited
- Acting for a manufacturing client in relation to the defence of an emergency application for an injunction by a competitor. The case involved allegations that the client induced the competitor’s former employee to breach contract, obtain confidential information and breach its registered design rights.
- Acting for a hotel group client in the defence of a breach of trade mark claim.
- Acting for a telecoms provider in a dispute with a subcontractor over the ownership and use of software.
- Advising Catalyst Inc in relation to the proposal for a new fintech innovation space to be situated in Danske Bank in Belfast. This involved drafting and negotiating an appropriate partnership agreement between Catalyst Inc and Danske Bank in relation to the operation and management of the hub and an associated online innovation portal.
- Acting for the provider of an online retailer platform in a dispute with one of its clients which involves allegations of breach of copyright and data breach and service issues.
IP, technology and media specialist Forde Campbell LLC advises on matters from trade mark and design right registration to the IP aspects of commercial contracts, as well as handling disputes. The firm's clients include luxury goods, clothing and other manufacturers and designers, and it has been increasingly active in the software development, food and media sectors. The team is led by Mathew Forde, who is highly recommended for IP litigation, and Rory Campbell, and also includes director Katey Dixon.
Rory Campbell; Mathew Forde
Other key lawyers:
‘This team has insight and was able to help me articulate my needs. They had clear boundaries – I knew where I stood and they also work quickly and efficiently. I benefited from their generosity and I appreciate their service.‘
‘The team is extremely engaging and easy to work with. They seem to embrace a “client first” approach to their work. I have found them to be focused on my needs and best interests.‘
‘The team is warm and friendly and put me at ease. They are always courteous, approachable, reliable and fair. Finally, they are able to work with me in plain English and in a way that I feel empowered that I understand the legal requirements that they supported me with.‘
‘They are always timely in support, detailed in reply and give us great confidence in driving our business forward. They always have the answer.‘
‘The individuals are always available and this is a key quality.‘
‘Katey Dixon consistently provides sound advice and any problems or questions are addressed promptly and with easy-to-understand language. The jargon is stripped out and put into the context whereupon I can quickly determine a course of action or chart a direction, safe in the knowledge that Katey has knowledgeably prepared the landscape.‘
‘The team is friendly and approachable.‘
Lynn’s Country Foods t/a Finnebrogue
Luke Irwin Rugs Limited
Fingerprint Learning Limited
Profile Tree LLP
McGregor Polytunnels (Sales) Limited
Paper Owl Limited
Target Dry Limited
Geneva Laboratories Limited
- Advising Hub Games on intellectual property strategy and management and the protection of trade marks.
- Advising Huel on product design agreements, PR agreements, product placement agreements, distribution agreements, and all brand, reputation management and IP ownership and licensing issues around the same.
- Advising Luke Irwin Rugs on the registration of rug designs and US copyright for the global market.
- Advising Fingerprint Learning on IP management for joint projects with public and private third parties.
- Advising Profile Tree on matters of IP protection online and in connection with brand relationships and endorsements, as well as management of traffic via links and video streaming and how it can impact matters of IP licensing and brand management.
Mills Selig advises on contentious and non-contentious IP matters, and is particularly active in the technology sector, regularly assisting clients with the development, ownership and exploitation of IP assets via licensing, outsourcing and other agreements. In addition, the team advises on the protection of IP rights and handles disputes such as infringement and passing off claims. Litigator Emma Hunt leads the practice following the departure of Kathryn Walls to an in-house role.
First Derivatives plc
Locum Match Limited
Mother Bee Limited
Devenish Nutrition Limited
Limitless Digital Solutions Limited
Automated Intelligence Systems Limited
One Million Steps Limited
- Advising First Derivatives on the licensing of its technology to the companies in which it invests.
- Advising One Million Steps on the preparation of IP licensing documents for a new software platform.
- Advising Locum Match on the drafting and negotiation of a significant platform development and licensing agreement.
- Advising Precision Livestock Measurement on the drafted and negotiation of an IP development agreement.
- Advising Limitless Digital Solutions on the drafting of bespoke IP licence terms and conditions for its in-store analytics product.
Pinsent Masons Belfast LLP is particularly strong in IP litigation, where the team handles disputes, including cross-border matters, in the construction, IT, financial services, media and entertainment, and retail and consumer sectors, among others. The team also advises on non-contentious trade mark, patent, design right and copyright issues, including IP rights protection and portfolio management. Senior associate James Griffiths leads the Belfast office's IP and media sub-team.
‘The team has an absolutely excellent knowledge of the law in this area and keeps pace with every legal development affecting it. This knowledge is combined with first-class organisation.‘
‘Laura Gillespie and James Griffiths deserve particular mention. They have the ability to make even the most complex disputes manageable and an unrivalled skill at analysing the issues so as to identify the core of a problem and how to resolve it in the best interest of their clients.‘
Queen’s University Belfast
Ulster Carpet Mills
CDE Global Limited
Funds – Axis
Seven Technologies Group
Chain Reaction Cycles
Brett Martin Limited
Luxco / Niche Drinks
- Advised Queen’s University Belfast on the drafting and negotiation of documentation relating to a number of research projects, including complex multi-party collaboration agreements.
- Advised Queen’s University Centre for Secure Information on the IP aspects of an agreement with Plexal to jointly provide services to deliver a cyber innovation centre in London.
- Advised Headlam on the IP aspects of its acquisition of Ceco (Flooring) Limited, including carrying out due diligence.
- Advising Luxco on the IP aspects of its acquisition of the majority interest in Niche Drinks, including carrying out due diligence.
- Advising NatWest on the IP issues affecting its Entrepreneur Accelerator programme for early-stage and growing ventures.