Intellectual property in Scotland
Brodies LLP's dedicated IP team advises on advisory and contentious matters pertaining to commercial, regulatory and cross-border issues. The group also assists with issues across a range of sectors including the oil and gas, energy, IT, engineering and life sciences industries. Grant Campbell heads up the non-contentious practice while Robert Buchan now leads the contentious expertise following Gill Grassie's retirement. Other key individuals include Martin Sloan, who advises on IP issues relating to new technologies; and associate Shona Tennant, who has notable expertise in the education sector.
Grant Campbell; Robert Buchan
‘Brodies has a diverse team with complimentary experience and skills that ensures it is always a safe pair of hands.’
‘The team has unparalleled expertise in this area.‘
‘Brodies’ IP experts are very efficient and effective.‘
‘Robert Buchan in particular has many years of experience in contentious IP matters. He can also assimilate a lot of information quickly in order to provide clear, concise and, importantly, commercial advice to a client, even in the most complex of matters.‘
‘The team is pragmatic and has a good feel for realistic outcomes.‘
‘Brodies’ TMT team always provides detailed, accurate and timely legal advice that is also commercially and pragmatically focused such that it has true value and meaning to the client’s wider business. The advice is also delivered in a clear and concise manner that is easily understood by a variety of audiences, particularly those who are not legally qualified. The team’s input is invaluable as it brings to the table unparalleled sector knowledge, awareness and insight.‘
The Scottish Qualifications Authority
Oil States Inc
Judy Murray Foundation
BAE Systems Regiona lAircraft
University of Edinburgh
Performing Right Society for Music
Phonographic Performance Limited
The Scotch Whisky Association
Omega Diagnostics PLC
Strathclyde Partnership for Transport
- Advised on the establishment of The Judy Murray Foundation, a new charity, including handling the protection of IP (trade marks, domain names, copyright and social media channels) and all data protection and regulatory issues.
- Advised Episerver on its $1.2 billion sale to Insight Venture Partners including issues regarding the use of open source software, patent disputes, and the integration of software from previous acquisitions.
- Advised the University of Edinburgh on a new contract with EdX to enable the provision of a new platform and expanded strategic relationship for the delivery of online Masters degrees and MicroMasters programmes.
The dedicated IP group at Burness Paull LLP acts for a diverse client roster spanning a wide array of industry sectors including technology, oil and gas, financial services and healthcare. The team's contentious offering advises on trade mark, copyright, trade secret disputes. Colin Hulme leads the practice and focuses on IP litigation, while David Goodbrand and Callum Sinclair handle non-contentious work; Goodbrand also heads up the fintech group and Sinclair leads the firm's technology and commercial division. Neeraj Thomas departed to CMS.
Colin Hulme; Callum Sinclair; David Goodbrand
‘Burness Paull provides excellent IP advice. The team’s knowledge of substantive and procedural rule is fantastic and is always used to get the best commercial results for its clients.‘
‘Burness Paull is the leading IP firm in Scotland with a top team of knowledgeable and approachable experts.’
‘The firm’s intellectual property lawyers have extremely good legal knowledge, coupled with a sound commercial approach and quick response times.‘
‘The team at Burness Paull stands out from the crowd for its unwavering commitment to understanding the needs of the client’s business and then delivering a service that is closely aligned with the established requirements.‘
‘Burness Paull endeavours to be as flexible as it possibly can, taking into account budget, required skills, customer capabilities and cultural ethos.‘
‘Colin Hulme is THE leading IP expert in Scotland.‘
Harris Tweed Authority
Standard Life Aberdeen
Scottish Rugby Union
PPL PRS Limited
- Acted for AstraZeneca in multiple patent disputes against Teva Pharmaceuticals in the Court of Session relating to patents for breast cancer treatment.
- Managing Sky’s IP enforcement programme across Scotland including preventing unauthorised broadcasts of Sky’s sporting events in licensed premises throughout Scotland.
- Advised Principal & Prosper on its title sponsorship agreement with Edinburgh Rugby as official shirt sponsor and principal corporate sponsor of Edinburgh Rugby.
- Represented Vapouriz in a trade mark dispute against CCHG in the Court of Session relating to the Vaporized Inhale the Freedom brand name.
As well as representing clients across a number of industry sectors including the life sciences, entertainment and energy industries, CMS recently launched its equIP Scotland programme, which helps IP-rich businesses with the development and scaling up of their activities in Scotland. The group also utilises the firm's global network to handle cross-border matters and also acts in IP litigation. Carina Healy heads up the department and has a notable focus on the life sciences sector; other key names include senior partner Laurence Ward and IT specialist Alan Nelson. Of counsel Neeraj Thomas recently joined the Glasgow office from Burness Paull LLP.
‘CMS has a great breadth and depth of expertise and provides pragmatic advice.‘
‘CMS’ team is easy to work with and is able to convert ideas into contracts and make the final documents easy to understand. The team is also excellent at explaining complex legal terms in plain English, which saves a great deal of time and puts clients at ease. The team always responds in a timely fashion to requests.‘
‘Carina Healy is a standout individual; she has a great breadth of knowledge and provides timely practical advice.‘
‘Carina Healy is extremely professional, easy to communicate with and offers excellent value for money. She is able to simplify complex legal situations easily and seeks assistance from specialists at the right time.‘
University of Glasgow
University College London
Scottish Event Campus (previously Scottish Exhibition and Conference Centre)
Edinburgh Trams Limited
Consilient Health Limited
The Carbon Trust
Gyroscope Therapeutics Ltd
Adorx Therapeutics Ltd
Tropical Animal Genetics
- Advised University College London on a number of high-profile strategic research collaborations in the life sciences field involving various academic institutions with significant funding from UK research councils and charity partners.
- Assisted Unilever with a variety of IP-related commercial contracts for its skincare brands including influencer and brand ambassador agreements, sponsorship agreements and creative services contracts.
- Adsvied LifeArc on a review of a several of its template IP-related agreements including an antibody humanisation agreement for the provision of humanisation services, various material transfer agreements for the supply of human tissues for research purposes, an evaluation and option agreement and a master services agreement for use in product development projects.
- Advised the University of Glasgow on a worldwide licensing and revenue sharing agreement with Philips relating to a biomarker for prostate cancer.
- Advised The Honourable Company of Edinburgh Golfers on trade mark strategy and trade mark licensing and merchandising agreements.
Pinsent Masons LLP provides end-to-end advice to its client roster of energy, food and drink, life sciences and technology companies on advisory and contentious IP matters in the UK and abroad. The team regularly handles portfolio management, brand strategy, market exclusivity and access issues, as well as strategic contracts. Jim Cormack QC leads the contentious IP team while legal director George Campbell heads up the non-contentious practice. Litigator David Woods is a key name for clients in the financial services, retail, energy and university sectors; and Chris Martin focuses on higher education work; senior associate Gillian Anderson is also recommended.
Jim Cormack QC; George Campbell
‘The team has an excellent level of knowledge and it deals very promptly with all enquiries.‘
‘George Campbell is great to work with and deals very efficiently with all work sent to him.‘
William Grant & Sons Limited
Thomas Tunnock Limited
Falkland Islands Government
University of Edinburgh
Jacobs and Turner Limited t/a Trespass
- Defended the Falklands Island Government in the Supreme Court of the Falkland Islands against an allegation of copyright infringement brought by Geophysical Service relating to seismic data.
- Represented Teva in three separate proceedings challenging the validity of life sciences patents owned by AstraZeneca.
- Defending Jacobs and Turner in trade mark infringement proceedings raised by a Hong Kong-based company in the Intellectual Property and Enterprise Court.
The TMT team at Dentons is particularly strong in the food and drink and life sciences sectors, and recently made new client gains in the public sector and manufacturing industry. The group handles the full range of IP issues spanning trade mark and patent matters, IP litigation and copyright issues. Practice head Alison Bryce is a key name for non-contentious work including licensing deals, IP acquisitions, investments and joint venture; Ross Nicol also handles the IP aspects of transactions, e-commerce issues and data protection work.
Other key lawyers:
‘The team at Dentons is professional, knowledgeable and well regarded with a diverse but well positioned client base.‘
‘The individuals are very approachable and down to earth.‘
Finsbury Food Group plc
The Restaurant Group plc
The Edrington Group
Optos plc (part of Nikon)
National Theatre of Scotland
Edinburgh Woollen Mill
Hunter Boot Limited
British Polythene Industries
Global Alliance for Livestock Vaccines
- Advised Finsbury Food Group on the terms of a trade mark and copyright licence with an international household brand.
- Assisted Edrington Distillers with the IP aspects of the sale of its Scotch whisky, Cutty Sark, to La Martiniquaise-Bardinet.
- Acted for BDD Pharma on an agreement to license OralogiK, its timed drug delivery technology, to Novartis Pharma for the development of a new product.
- Assisted the National Theatre of Scotland with the IP issues relating to its production of My Left Right Foot, which was performed at the Edinburgh Fringe Festival.
DLA Piper Scotland LLP has substantial capabilities in Scotland and internationally, where it leverages the firm's global network to handle cross-border projects. John McKinlay heads up the practice, which also includes legal director Ishbel MacPherson, who regularly advises on commercial contracts in the technology and life sciences sectors.
Other key lawyers:
FA Premier League
Wm Grant & Sons
- Advised Merlin on a range of IP issues including image rights, promotion agreements, sponsorship and marketing deals, advertising matters and IP licensing work for its theme parks and tourist attractions.
- Representing The Football Association Premier League in seeking interdicts against pubs showing the overseas broadcast of English Premier League matches on the basis of copyright infringement.
- Advised Heineken on a range of e-commerce deals and other commercial contracts involving the use of IP rights, and also handled the management of over 2000 UK and international trade mark registrations.
The Glasgow-based IP team at Harper Macleod LLP is recognised for its strength in sports-related IP work; it also handles matters in the life sciences sector and has notable cross-border expertise. The group assists with the full gamut of IP issues encompassing patents, trade marks, copyrights and design rights. Jamie Watt heads up the practice, which also includes sports expert Tom Thomas and food and drink sector specialist Scott Kerr.
‘The team at Harper Macleod is extremely knowledgeable and provides accurate and timely advice.‘
‘Harper Macleod has a great client roster and is surprisingly strong.‘
‘Jamie Watt is a star.‘
‘Jamie Watt is an essential resource for clients, going above and beyond the level of service expected from a practice as busy as his.‘
The Institute of Chartered Accountants of Scotland
Historic Environment Scotland
The Forestry Commission
The Commonwealth Games Federation
The University of St Andrews
- Advised Celtic F.C. on the management of its worldwide trade mark portfolio including carrying out international online anti-counterfeiting work and providing commercial and transactional IP support.
- Acting for Reactec in Court of Session proceedings relating to an alleged infringement of their European vibration monitoring patent.
- Advised NMBRS on all IP and commercial matters relating to the operation of its business including the acquisition of registered trade mark rights and revising its IP-related contracts.
- Acting for Glasgow City Council on the IP issues relating to the city’s co-hosting of the inaugural European Championships including matters relating to staging large-scale sports events, sponsorships, trade mark registrations and brand protection advice.
MacRoberts LLP's expertise encompasses trade marks, patents and copyrights with substantial experience in cross-border disputes and licensing matters in the IT and technology space. The team also has notable sector knowledge with the food and drink, charities, manufacturing, media, life sciences and energy industries being key examples. David Gourlay leads the group and has particular expertise in brand and trade mark protection work and software-related matters; Euan Duncan leads the food and drink sector group, and Valerie Surgenor focuses on the third sector.
Other key lawyers:
Euan Duncan; Valeria Surgenor
‘MacRoberts provides a great level of support and advice and is always available when needed without fail.‘
‘The intellectual property experts at MacRoberts provide consistency in their service.‘
‘The firm’s practitioners all understand their clients’ business needs and provide the necessary level of support and advice.‘
‘David Gourlay is always well prepared and offers clear and helpful advice. He has an impressive knowledge of IP and commercial law. He is an excellent communicator and his calm, positive manner inspires confidence in clients and colleagues.‘
Peoples Postcode Trust
The Scottish Salmon Company Limited
Kames Capital Plc
The Scotch Whisky Association
The Scotch Whisky Heritage Centre Ltd t/a Scotch Whisky Experience
Johnstons of Elgin
Community Enterprise in Scotland and Social Enterprise World Forum C.I.C
- Assisted Glencairn with the protection and enforcement of its IP rights in the UK and abroad.
- Advising Scottish Higher Education Institution on the spin-out of a company, which will commercialise patented technology targeting certain protein structures for the development of medication.
- Defending CCHG against trade mark infringement proceedings initiated by Vapouriz in the Court of Session.
- Advising People’s Postcode Trusts on the appointment of its external lottery manager including the negotiation and drafting of various commercial agreements and trade mark licences.
Shepherd and Wedderburn fields a dedicated media and technology team and a specialised IP litigation group. With particular expertise in the food and drink, sports, energy, entertainment, financial services and life sciences sectors, the group operates at a national and global level from its offices in Aberdeen, Glasgow and Edinburgh. Key practitioners include Joanna Boag-Thomson, who focuses on patent and technology licensing work, media issues and brand activations; Paul Carlyle, who leads the media and technology team; and John MacKenzie, who is an experienced litigator.
Joanna Boag-Thomson; John Mackenzie; Paul Carlyle
Scottish Enterprise and Highlands & Islands Enterprise
Pernod Ricard Group
Diet Chef Ltd
BI Wines and Spirits Ltd
Collagen Solutions plc
University of Aberdeen
The Scottish Professional Football League
The National Trust for Scotland
City of Edinburgh Council
Artemis Investment Management LLP
Brand IP Licensing Ltd
RSVP Design Ltd
The Tartan Army Ltd
Capital Document Solutions Ltd
Sainsbury’s Bank plc
People Can Fly
Winduna Enterprises Ltd
- Managing the entire trade mark portfolio of the Scottish Professional Football League.
- Acted for CYBG on the IP aspects of a £400m deal to fund loans through UK financial technology group Salary Finance, including negotiating the related licences.
- Acting for RSVP Design in a dispute relating to its colourblind trade mark including successfully opposing an application by Future Factory for a declaration of invalidity.
- Assisted Pernod Ricard Group with its acquisition of a cocktail bar brand and trade mark portfolio.
- Assisted Winduna Enterprises, producer of the animation series Winnie the Witch, with its negotiation of agreements with new investors, global distribution rights issues and its negotiations with Channel 5.
The Dundee-based IP team at Thorntons Law LLP covers the full spectrum of mandates including novel issues relating to new technologies, plant variety rights and music copyright. The group, which is led by Lesley Larg, recently saw the promotion of Loretta Maxfield to the partnership; Maxfield heads up the firm's data protection sub-team. Other key names include Liam McMonagle, who focuses on the television, gambling and education sectors; and Alastair Lang, who handles technology and SME-related work.
‘Liam McMonagle is very pragmatic and knowledgeable, and able to respond within tight timescales.‘
University of Stirling
Hillcrest Housing Association Limited
The James Hutton Institute
Robert Gordon University
Design Dundee Limited (V&A Dundee)
Postcode Lottery Limited
St Andrews Links Trust
DF Concerts Limited
- Advised St Andrews Links Trust Group on all aspects of the global management and exploitation of its key brands, and international partnership and licensing arrangements.
- Representing the University of St Andrews in a high-profile dispute against Student Gowns relating to the defendant’s use of the university’s trade mark to sell the client’s distinctive red gowns worn by its undergraduates.
- Advised Robert Gordon University on IP licences granted to a university spin-out involved in medication.
Anderson Strathern is notably strong in the Scottish public, education, sports and media sectors, where its IP specialists handle contentious and advisory mandates; the group has also recently expanded its client roster in the charity sector. Douglas McLachlan heads up the department, which also benefits from the expertise of corporate partner Simon Brown and litigator Katrina Lumsdaine.
‘Katrina Lumsdaine always gives a fair and balanced view of the legal position and is rigorous in exposing the weakness in the oppositions case.‘
‘The team at Anderson Strathern has demonstrated that it can handle complex combined intellectual property and contractual disputes very effectively.‘
The Rangers Football Club Limited
The Skills Development Scotland Co Limited
East Lothian Housing Association
Sudarshan Chemical industries Limited
Deepak Nitrite Limited
Edge Energy Limited
STV ELM Limited (related to Scottish Television “STV”)
Scottish Book Trust
MyWay Digital Health Limited
Willow Tea Rooms Trust
- Acting for The Rangers Football Club on various issues including trade mark opposition proceedings, bringing actions against people infringing the client’s trade marks, advising on sponsorship issues, and taking down Facebook accounts, websites and other online or social media presences that were selling infringing merchandise.
- Advising Sudarshan Chemical Industries on a range of IP matters including acting in trade mark litigation in China, and managing its international trade mark portfolio.
- Representing Deepak Nitrite in an international patent litigation against a Swiss-German chemical company in the High Court in London.
- Advising Scottish Television on its procurement of a contract for remote lottery terminals for the Scottish Children’s Lottery.
Boutique IP firm Bonaccord fields founding partner and practice head Patricia Barclay, who acts exclusively in the life sciences space. Barclay focuses on non-contentious mandates and handles the full range of advisory mandates including fundraising matters and issues pertaining to innovative technologies including virtual reality and photonics.
‘It is very useful (and unusual) to be able to access this level of expertise without having to engage a larger London-based firm.‘
‘It is Patricia Barclay’s in depth expertise that allows Bonaccord to stand out from the crowd.‘
‘Patricia Barclay has a knack for simplifying processes and guiding a client to the best outcome. She is fast and attentive and is experienced on both the buyer and seller-side of major transactions.‘
DWF has a strong track record advising the Scottish government; the group, led by Colin Miller, also advises a range of clients across various industry sectors including the food and drink, retail, pharmaceuticals, education and infrastructure arenas. Clients instruct the group to assist with the protection of brands and IP assets at a national and international level.
‘The DWF team is very experienced, knowledgable and responsive to client needs as they arise.‘
‘Colin Miller is an extremely capable individual whose willingness to take ownership of issues enables the client to have the peace of mind and confidence that the issue is in the best hands. He has good communication skills, fairness in billing and a broad knowledge of the sector.‘
The Scottish Government
Cirrus Response Inc.
British Home Stores International
- Instructed to advise BHS International on a trade mark licence deal with one of its former suppliers, which will continue to manufacture and sell household furnishings under the BHS brand.
- Advised Angostura on the protection of its trade marks in its distribution contracts in the EU and South East Asia.
- Advised Maven Capital Partners on its IP licensing arrangements with the Tinderbox coffee chain.
- Assisted Monsoon Accessorize on its renewal as a concessionaire at Edinburgh Airport, including the related trade mark and copyright issues.
The team at Morton Fraser has substantial contentious and advisory IP expertise with particular experience in handling university spin-outs, the protection and commercialisation of IP rights for early to mid-stage companies, IP due diligence, and brand protection issues. Group head Austin Flynn is the key contact for non-contentious advice while Richard McMeeken handles IP litigation; associate Julie Nixon has notable experience in the life sciences sector.
‘The firm has the ability to understand my business needs and aims, and provide excellent, practical, and realistic solutions’.
‘Julie Nixon has great skills, a background in relevant science, and most importantly can find solutions that meet our aims, whilst at the same time being realistic about the needs of other parties. Julie has been proactive in her work with us’.
Historic Environment Scotland
Scotland’s Rural College (SRUC)
Mars Blacksheep Hotels Ltd
Shot Scope Technologies Limited
- Acting for Mercia Technologies on the IP aspects of its investment for equity in a start-up technology company, as well as its investment into a life sciences spin-out.
- Advised Mars Blacksheep Hotels on the trade mark applications for its key properties.
BTO Solicitors LLP is singled out for its contentious IP work including passing off matters, trade mark and copyright infringements, database infringements, restrictive covenant breaches, domain disputes, website IP disputes and content take-downs. The team's client base spans a variety of sectors including the retail, charity, leisure, IT and media industries. Litigator Paul Motion heads up the group, which also fields newly promoted partner Lynn Richmond.
Other key lawyers:
Springbank Distillers Ltd
Epicurean Dairy (UK) Ltd t/a The Collective
Quorum Cyber Security Ltd
Milton Hotels Ltd
Fathom Financial Consulting Ltd
Kingfisher Building Products Ltd
Johnston Carmichael LLP
The Big Partnership Group Ltd
Turner Iceni Ltd
Gleann Mor Spirits Co Ltd t/a Leith Rum
William Cadenhead Ltd
- Representing Epicurean Dairy in a passing-off claim against Aldi relating to the packaging of one of the clients products.
- Assisting Quorum Cyber Security with IP issues related to its delivery of cyber security services including the revision of standard contracts and terms and conditions for its services and products.
- Advising Turner Iceni on the drafting of an agreement with a third party relating to a joint venture for the development of software and related technology.
- Representing Gleann Mor Spirits in an application for a UK trade mark, which was refused by the UK registry.
TLT's Glasgow-based group sits as part of the firm's national network and has particular strength in IP enforcement work, and brand and reputation management issues including substantial experience in prosecuting trade mark applications, dealing with oppositions and cancellations and handling exploitation issues. John Paul Sheridan leads the Scottish IP disputes team, which also includes litigator Tom McEntegart.
John Paul Sheridan
Other key lawyers:
‘The team is very friendly and approachable, and offers a breadth of knowledge to support a range of enquiries.‘
Matthew Clark Bibendum Limited
KD Media Ltd
Tempest Brew Co
- Advising BT on the infringement of BT Sport’s copyrights across the UK by various pub license holders and premises managers who allegedly showed the client’s broadcast without the proper commercial subscriptions.