Intellectual property in Scotland

Brodies LLP

The dedicated IP, technology and outsourcing team at Brodies LLP provides advice on contentious and non-contentious IP issues, including regulatory issues, protection work, commercialisation mandates and enforcement matters. It acts for domestic and international companies in the oil and gas, renewables, IT, food and drink, engineering, aviation and pharmaceuticals sectors. Grant Campbell heads up the non-contentious side, whilst the contentious practice is led by Iain Rutherford. David Gallagher joined from an in-house role at TC BioPharm Limited. Robert Buchan retired and senior associate Shona Tennant left for an in-house role at William Grant & Sons Company.

Other key lawyers:

Martin Sloan; David Gallagher

Testimonials

‘The firm is one of the heavyweights of the contentious IP market in Scotland’.

Key clients

PRS for Music (Performing Right Society)

Scottish Qualifications Authority

DC Thomson

Oil States Inc

University of Edinburgh

Omega Diagnostics Plc

The Judy Murray Foundation

Abellio/Scotrail

Maggies Centres

City Facilities Management Limited

Mallzee

Work highlights

  • Advised DC Thomson on all aspects of the acquisition of an online marketplace platform, including the negotiation of the contract and post completion service agreements and licences.
  • Acted for Edinburgh University Press on the acquisition of Avizandum Publishing’s list of titles.
  • Providing the University of St Andrews with ongoing support in connection with IP licensing arrangements.

Burness Paull LLP

Burness Paull LLP is noted for its experience in mandates in the energy, fintech, arts, financial services, food and drink, and public sectors. Colin Hulme heads up the contentious practice and has IP specialist accreditation by the Law Society of Scotland. On the non-contentious side, Callum Sinclair leads the firm's commercial division and is well regarded for IP strategy issues, data work and tech-based IP licensing mandates, as well as M&A and investment transactions. David Goodbrand co-heads the non-contentious IP practice and handles IP commercialisation work, strategy and protection issues, technology agreements, data transfers, sponsorship deals and media rights work. Fellow non-contentious co-head Colin Miller joined from DWF.

Other key lawyers:

Callum Sinclair; Megan Briggs

Testimonials

‘The team works really well together and delivers great results for clients’.             

‘Colin Hulme is excellent, he is one of the most prominent IP lawyers in Scotland’.

‘Megan Briggs is a real problem solver, she has not only made herself available whenever we needed her but she has been supporting our new projects and provided alternative solutions to our problems’.

‘Colin Miller is an astute, tactical and first-rate technical lawyer’.            

‘The knowledge and understanding of the challenges we have presented Burness Paull have been met with exemplary service’.

‘The Burness Paul team are professional, proactive and a pleasure to work with’.

‘They are undoubtedly specialists in IP and as such we have nothing but confidence in the advice and actions they have given’.  

‘Colin’s Hulme’s management of our case and his knowledge of his profession gives us nothing but confidence that we are receiving the best possible advice and service’.

Key clients

PicRights

Harris Tweed Authority

AstraZeneca Group

Highland Spring

ScottishPower

Sky

Take Two/Rockstar Games

Standard Life Aberdeen

Scottish Rugby Union

PPL (Phonographic Performance Limited)/PRS for Music/PPL PRS Limited

Work highlights

  • Acting for AstraZeneca in four pieces of pharmaceuticals patent litigation against generics company Teva Pharmaceuticals.
  • Acting for Rockstar Games and Take 2 in protecting copyright and other rights relating to Grand Theft Auto.
  • Advised Cytosystems on a European funded project for the development of a new non-invasive diagnosis for bladder cancer.

CMS

CMS leverages specialists from its international network of offices to assist with cross-border IP issues. It is active in a broad range of sectors, including the life sciences and healthcare, education, and entertainment and sponsorship industries. With the recent arrival of of counsel Neeraj Thomas from Burness Paull LLP, the practice has bolstered its contentious IP offering, which includes pursuing and defending IP infringements and resolving IP disputes for Scottish-based clients. Team head Carina Healey is noted for her expertise in licensing, development and IP commercialisation work, and also defends the IP rights of public and private sector clients. Laurence Ward retired.

Practice head(s):

Carina Healy

Testimonials

‘A growing presence in the IP market in Scotland’.          

‘The hiring of Neeraj Thomas is a real coup, he is a rising star in the IP profession in Scotland’.  

‘Very practical, no nonsense advice and solutions’.

‘Quick response time and very pleasant to deal with’.   

‘CMS has a non-contentious and contentious IP team as well as in-house trade mark and patent attorney teams so is able to be a one-stop-shop for clients’. 

‘Neeraj Thomas is a talented and well regarded IP litigator in Scotland who is personable with clients’.

‘User-friendly and easy to work with’.

‘Collaborative and friendly approach’.

Key clients

University of Glasgow

University College London

MacRebur Limited

Scottish Event Campus (previously Scottish Exhibition and Conference Centre)

UCL Business

The Carbon Trust

Unilever plc

UEFA

Facebook Technologies LLC

Heriot-Watt University

Gyroscope Therapeutics

World’s Big Sleep Out Trust

BW Offshore Singapore Pte Ltd

Work highlights

  • Advising Scottish Events Campus on the venue hire agreement with the UK Government Foreign and Commonwealth Office for the United Nations Climate Change Conference (COP26).
  • Advising Oculus/Facebook Technologies Inc on its sponsored research agreements with an number of Scottish, UK and European academic institutions.
  • Advising UEFA on a rage of IP-related commercial contracts and on brand protection matters for the 2020 UEFA European Championships.

Pinsent Masons LLP

Pinsent Masons LLP provides contentious and non-contentious IP advice nationally and internationally, and is active in the energy, retail, food and drink, technology and financial services sectors. The team handles a broad range of matters including clearance work, trade mark and design right prosecutions, and IP litigation. Jim Cormack QC leads the contentious practice and handles IP disputes and reputation protection issues. George Campbell heads up the non-contentious side and handles the sale and purchase of IP, IP licensing work, IP due diligence and IP matters related to commercial agreements. Senior associate Gillian Anderson is recommended for contentious IP disputes.

Testimonials

‘The most important aspect of this firm in relation to other firms is the continuity across departments, the culture and effectiveness is almost seamless’.

‘Simply put it is a large firm that makes you feel like you are the only customer and this resonates from partners across the business’.

‘Excellent awareness of commercial objectives and operational constraints’.

‘Legal advice to drive performance rather than pure focus on legal technicalities’.  

‘George Campbell is excellent at client management, both in terms of responsiveness and expectation setting’.

‘George Campbell has strong knowledge and interpersonal skills’.

Key clients

William Grant & Sons Limited

Thomas Tunnock Limited

Falkland Islands Government

University of Edinburgh

Pertemps Limited

Jisc

Jacobs and Turner Limited t/a Trespass

Celtic plc

Kier Limited

RSA

Work highlights

  • Acted for Teva UK Limited in three separate court actions against AstraZeneca.
  • Advised Ithaca Energy Limited on the IP elements of its acquisition of Chevron North Sea Limited in a deal worth $2bn.
  • Advised and defended a major clothing brand, which is headquartered in Scotland, in trade mark proceedings raised by a Hong Kong-based company in the English Intellectual Property and Enterprise Court.

Dentons

Dentons utilises its global network of offices to support its IP offering, which includes assisting with IP due diligence in relation to M&A deals. The Scottish team works closely with its counterparts across the UK to advise on trade mark and patent prosecutions. Alison Bryce heads up the team and focuses on all non-contentious IP matters. Ross Nicol is experienced in a broad spectrum of sectors including the life sciences, financial services, art, food and drink, and technology industries.

Practice head(s):

Alison Bryce

Other key lawyers:

Ross Nicol

Testimonials

‘The team are readily available, engaging, directive, and more importantly pragmatic which as a small organisation is imperative’. 

‘They understand us – our organisation, challenges, and requirements – and therefore engagement is seamless, open and productive’.

‘Alison Bryce is a very engaged, understanding, supportive and friendly face’.

‘They are very approachable and genuinely seem to like and understand our business’.          

‘Ross Nicol is very approachable, technically excellent and commercially minded; he is a safe pair of hands’.

‘Alison Bryce is just terrific, she is full of infectious enthusiasm and not at all scared to get her sleeves rolled up to help get a transaction done’.        

‘Alison Bryce has given me outstanding advice for many years, and continues to do so even as her role has become more senior, wider in scope and busier than ever’. 

‘Alison’s strengths are her ability to move to accurate and detailed advice quickly and efficiently, whilst still making any interaction a genuinely pleasant experience’. 

Key clients

The Edrington Group Limited

The John Lewis Partnership (including Waitrose Limited)

The Restaurant Group plc

Finsbury Foods Limited

Edinburgh Woollen Mill Limited

Nairn’s Oatcakes Limited

STV Group plc

Arnold Clark

Aggreko plc

Motorsport Network LLC

Marsden Group Inc

Work highlights

  • Advised The Restaurant Group plc on the licensing of several new third party brands to be operated at its restaurant concessions in airports across the UK.
  • Advised MUFG Bank on acquiring head sponsorship rights for a forthcoming exhibition at the Victoria and Albert Museum in London.
  • Advised global technology group Marsden on the complex IP ownership and licensing arrangements involved in its collaboration with Seadrill, a specialist in offshore drilling in the oil and gas sector.

DLA Piper

The intellectual property and technology team at DLA Piper handles commercial IP matters for high-profile brands. John McKinlay heads up the practice and represents domestic and international private and public sector clients in contentious IP matters. Catriona Melton joined as senior associate from an in-house role at Vialex; she has experience in non-contentious issues including data protection and regulatory compliance issues. Legal director Ishbel MacPherson left for an in-house role at The University of Edinburgh.

Practice head(s):

John McKinlay

Other key lawyers:

Catriona Melton

Key clients

Merlin Entertainments

Nikon

BrewDog

Heineken UK

FA Premier League

SK Chase

Wm Grant & Sons

Underbelly

NHS

Work highlights

  • Advising NHS England on its on-going landmark project procuring seven genomic laboratory hubs. This is a highly significant and “first of its kind” healthcare project as it aims to consolidate the existing plethora of laboratories into a centralised genomic testing service, available as part of routine clinical care.
  • Advising Merlin on the terms of a £2m promotional partnership with O2, which offers various discounted offers and prizes to O2 customers on the O2 Priority scheme throughout the UK.
  • Advising Heineken on an e-commerce platform strategy for a customisable online clothing store with Strongbow Dark Fruit branding.

Harper Macleod LLP

Harper Macleod LLP handles international trade mark and patent disputes, transactional matters, and regulatory issues, and is active in the sport, life sciences, energy and renewables, music and publishing, AI, blockchain and fintech sectors. Jamie Watt heads up the team and is a registered expert in IP with the European Commission; he handles a broad range of IP and commercial matters.

Practice head(s):

Jamie Watt

Other key lawyers:

Tom Thomas; Scott Kerr

Testimonials

‘Harper Macleod has a team of efficient lawyers’.

‘The best part of this firm is that it appreciates the needs of the client be it legal, practical or budget’.

‘Jamie Watt’s insights on practical legal solutions to issues in hand makes him different and unique from others’.

‘The team offers a cost efficient service’.            

‘Jamie Watt is always available for advice’.        

‘The firm has a very strong IP practice and a stellar client list’.

‘Jamie Watt is very proactive and makes things happen’.

Key clients

The Union des Associations Européennes de Football (UEFA)

The Musicians Union

The Commonwealth Games Federation

Celtic Football Club

British Athletics

KPMG

Epidarex Capital

The Institute of Chartered Accountants of Scotland

Saregama

Forestry Commission England

Work highlights

  • Acting for UEFA in relation to the Scottish aspects of Euro 2020, including the implementation of new legislation aimed specifically at protecting brand rights relating to the event.
  • Acting for Reactec in European patent infringement proceedings, and a related counterclaim of invalidity, in the Scottish Court of Session.
  • Acting for the Forestry Commission in relation to a variety of IP and IT matters, including issues relating to platform technologies, research and development activities and IP licensing work.

MacRoberts LLP

MacRoberts LLP handles trade mark issues and IP protection and regulation work domestically and internationally; the group also deals with copyright issues, general IP strategies, enforcement matters and dispute resolution. Software and licensing in the technology space are other key areas of focus, as well as IP procurement matters. The team handles mandates in a broad range of industries including the food and drink, charity, manufacturing, media, life sciences and energy sectors. Euan Duncan heads up the practice and advises on contentious and non-contentious matters. David Flint retired.

Practice head(s):

Euan Duncan

Other key lawyers:

David Gourlay; Valeria Surgenor

Testimonials

‘MacRoberts’ approach is that of a partnership, whereby they are an extension to our company’.

‘They are quick to respond and very efficient’.

‘The team at MacRoberts understand the speed of response required by our business and the importance of understanding our industry and the landscape we work within’. 

‘The guidance and ability to provide complex explanations in layman’s terms adds important value in delivery’.

‘Sound professional advice’.

‘The MacRoberts team is extremely approachable and friendly’. 

‘Euan Duncan is very commercially focused and always works hard to achieve a good outcome for the client’. 

‘Euan Duncan looks at all the angles and is always willing to discuss a range of options, whilst making a clear recommendation on the best way forward’.

Key clients

Glencairn Crystal Studio Limited

The Tomatin Trading Company

AT Innovations (Scotland) LLP and CRC Innovations (Scotland) Limited

Nae Bother Limited

Scottish Government – Tourism and Major Events

Kames Capital plc

George Watson’s College (The Edinburgh Merchant Company Education Board)

Johnstons of Elgin

Scottish Government Digital Directorate – CivTech

Rydo Limited

Work highlights

  • Assisting Glencairn with the protection and enforcement of its IP rights in the UK and abroad, and providing assistance in relation to its overall brand protection and strategy.
  • Provided a variety of IP advice to AT Innovations (Scotland) LLP and CRC Innovations (Scotland), including brand protection work, IP commercialisation advice and trade mark portfolio management assistance.
  • Assisting Nae Bother with IP protection issues and the negotiation of licensing for works based on the McCoo trademark.

Shepherd and Wedderburn

Shepherd and Wedderburn fields a dedicated media and technology team and also has a specific IP litigation group. The practice handles mandates in the sports, food and drink, energy, entertainment, financial services and life sciences industries. Joanna Boag-Thomson, who co-heads the team, is recommended for patent and technology licensing issues, media work and brand activation matters. Fellow co-head Paul Carlyle focuses on branding and advertising-related work, while co-head John MacKenzie specialises in commercial litigation, with a focus on IP and IT issues.

Testimonials

‘This is a team which makes time to get to know and understand your business’.

‘Their input goes beyond dealing solely with legal matters – they have helped us with practical and, sometimes, strategic input’.

‘Joanna Boag-Thomson is an extremely knowledgeable, competent and practical lawyer who is always a pleasure to work with’.

‘Joanna Boag-Thomson has added value to our business’.

‘The team understand what’s important to us and tailor the advice and communication style to our needs’.

Key clients

Scottish Enterprise and Highlands & Islands Enterprise

The R&A

LOC Group

Pernod Ricard Group

Diet Chef Limited

BI Wines and Spirits Limited

Collagen Solutions plc

University of Aberdeen

The National Trust for Scotland

City of Edinburgh Council

Artemis Investment Management LLP

Brand IP Licensing Limited

Visit Victoria Limited

Pufferfish Limited

Glenrinnes Distillery Limited

Changingday Limited

Whyte & Mackay

William Grant & Sons Limited

People Can Fly

Winduna Enterprises Limited

Work highlights

  • Advising William Grant & Sons Limited on all IP and contractual matters relating to the creation and publication of a hardback collection of short stories for iconic whisky brand The Balvenie, entitled Pursuit: The Balvenie Stories Collection.
  • Manage and prosecute The R&A’s international trade mark and patent portfolio, providing strategic advice on registered protection and enforcement.
  • Advising People Can Fly on its publishing deal with Square Enix including model agreements (including IP and data protection issues) and facial capture, music creation and other aspects of its game development to ensure that it acquires and licenses the appropriate IP.

Thorntons Law LLP

Dundee-based Thorntons Law LLP handles all forms of contentious and non-contentious IP work, including copyright, trade mark, branding and patent issues, plant variety rights, and know how, trade secret, research and development and confidential information matters. Key client sectors include the food and drink, technology, publishing and life sciences industries. Lesley Larg heads up the team and handles commercialisation mandates including cross-border licensing arrangements, brand protection work and management and funding negotiations. Morgan O’Neill joined as director of data protection services from an in-house role at Spark Energy.

Practice head(s):

Lesley Larg

Testimonials

‘Thorntons offer solution-oriented, practical advice, and have an ability to respond within tight timescales’.

‘Liam McMonagle has the ability to focus on key areas, offer potential solutions, and respond within demanding timescales’.

‘Thorntons provide a dedicated and responsive local team under a lead partner who, along with the wider team, provides business-relevant legal support, highlighting not just the legal issues and risks, but the wider commercial aspects that we might otherwise not have considered as fully’.

‘In a business of our size, the pricing of the service is also relevant, and we find we receive significant high value support at very reasonable rates because of the more local base that Thorntons have’.

‘Lesley Larg contributes directly to some of our key development initiatives’.

‘Lesley Larg ensures that the team are responsive and that queries are quickly directed to the team member most able to assist’.

Key clients

Postcode Lottery Limited

Design Dundee Limited t/a V&A Dundee

Glasgow Caledonian University

Whisky Auctioneer Limited

St Andrews Links Trust

Westerton (UK) Limited

University of Stirling

ECS Digital Limited

Ai Explorations Ltd

Molke Ltd

Work highlights

  • Acted for Whisky Auctioneer Limited in a contentious word-only trade mark issue and represented the client in an ex parte hearing at the IPO.
  • Advised Glasgow Caledonian University on a high-value loan agreement of items from Sir Alex Ferguson.
  • Advised Ai Explorations Limited in relation to an IP collaboration.

Anderson Strathern

With notable strength in the public sector, Anderson Strathern also advises clients in the education, sports and media industries, and is well regarded for its expertise in GDPR and data protection issues and IP licensing contracts. Douglas McLachlan heads up the practice and handles contentious and non-contentious IP issues. Euan Tripp joined from Brodies LLP.

Practice head(s):

Douglas McLachlan

Key clients

The Rangers Football Club Limited

SuperControl Limited

Deepak Nitrite Limited

Edge Energy Limited

The Skills Development Scotland Co Limited1

Sudarshan Chemical Industries Limited

Lomond Fine Foods Limited

MyWay Digital Health Limited

Edinburgh Napier University

Superfeet Worldwide Inc

Work highlights

  • Acting for SuperControl on a range of IP, licensing, commercial, technology and data sharing issues.
  • Instructed by Deepak Nitrite Limited to co-ordinate a cross-border patent dispute with Swiss/German Chemical company, Archroma IP GmbH.
  • Defended Edge Energy in a commercial action in the Court of Session concerning the alleged infringement of certain IP rights.

Bonaccord

Bonaccord is strongly focused on the life sciences and healthcare spaces. Under the leadership of Patricia Barclay, the practice advises on all aspects of IP including copyright, patents, know-how and trade marks. The group acts for clients at a domestic and global level.

Practice head(s):

Patricia Barclay

Testimonials

‘Patricia Barclay offers a complete service for small company entrepreneurs’.

‘Patricia Barclay understands the SME environment in life sciences and can handle all issues from HR to IP at a very reasonable cost’.          

‘Patricia Barclay has an in-depth knowledge of the Bio industry’.

‘Patricia is very prompt and very specific in her guidance’.

‘With Bonaccord, we have always been made to feel like an important client, despite the erratic nature of our needs’.

‘Patricia was very knowledgeable, I liked her personal approach, she was genuinely interested in my project and not simply in a legal capacity’.

‘Bonaccord is able to navigate the complexities of technology-based IP law, whilst never losing sight of the tie-in with business development activities of clients’.

‘Bonaccord offers down to earth, no nonsense advice in a very timely manner’.

Morton Fraser

Morton Fraser is noted for its experience advising early to mid-stage companies on IP protection and commercialisation issues. Other areas of expertise include data protection work, contractual and commercial matters, license agreements and trade mark registrations. Austin Flynn heads up the team, and senior associate Julie Nixon is recommended for university spinout issues.

Practice head(s):

Austin Flynn

Other key lawyers:

Richard McMeeken; Julie Nixon

Testimonials

‘Speedy resolution and response’.

‘Refreshingly sharp and incisive, and a source of sound legal advice’.

‘The support and guidance from Morton Fraser has been faultless’.

‘This team are incredibly supportive of start-ups and spinouts from universities’.

‘Their advice and support is bang up to date with cutting edge practice and is timely, strategic and client-focused’.

 ‘They engage with programmes in a consistent and strategic way, adding value where they best can make a difference’.

‘I have found all interactions with Austin Flynn and Julie Nixon to have been particularly effective for the clients, with a direct, honest and transparent approach’.        

Key clients

Mercia Asset Management

Mars Blacksheep Hotels Ltd

Diageo

SRUC

ClinSpec Diagnostics Limited

Archangel Investors Limited

Work highlights

  • Advised Mercia Asset Management with regard to IP and corporate matters in respect of an investment into a Scottish start-up company.
  • Advised Archangel Investors Limited with regard to IP and corporate matters in respect of an investment into a spin-out of Heriot-Watt University.
  • Advised Mountain Optech with regard to the UK legal aspects of its acquisition of Brandywine Communications, including advice on IP matters.

BTO Solicitors LLP

BTO Solicitors LLP is well regarded for its expertise in the contentious IP space, and handles trade mark prosecution and opposition work, passing off issues, trade mark and copyright infringements, domain disputes, website IP disputes and content takedowns. It is active in various industries including the food and drink, manufacturing, leisure, charity, technology and media sectors. Paul Motion heads up the team.

Practice head(s):

Paul Motion

Other key lawyers:

Lynn Richmond

Testimonials

‘Paul Motion is an extremely knowledgeable solicitor, a highly skilled advocate and a most reassuring presence in a highly pressurised situation’.

‘Paul’s most distinguishing feature is his effortless humility and ability to communicate with clients on the level of equals, despite his remarkable skill’.                            

‘I found BTO Solicitors incredibly impressive’. 

‘Thought had been given to the questions I was asked which were all relevant and the matter was pursued with speed, eloquence and an authority’.

‘Their efficiency was matched by their empathy and insight’. 

Key clients

Johnston Carmichael LLP

Gleann Mor Spirits Ltd

Drake Music Scotland

Regular Music

Emubands

Stream Scotland

Electric Fields

Active Events

Work highlights

  • Represented Johnston Carmichael LLP in passing off disputes and related domain name disputes.
  • Representing Gleann Mor Spirits Company Ltd in trade mark applications, oppositions and cancellations.
  • Assisted Drake Music Scotland with renegotiating an IP licence.