Intellectual property in South West
Burges Salmon LLP
Burges Salmon LLP has a stellar client base of national and international corporates, including the BBC and Starbucks. The group is instructed on contentious and non-contentious work, predominantly in the trade mark and copyright spaces. Advisory work includes managing trade mark portfolios for major brands and IP transactions. On the contentious front, the group is regularly called on to act in IP litigation, domain name disputes, trade mark oppositions, cancellations and appeals, as well as company names tribunal disputes. Co-leading the department are trade mark specialist Jeremy Dickerson and transactional IP lawyer Helen Scott-Lawler. Emily Roberts was promoted to director in 2020, and has experience in leading trade mark infringement claims. Trade mark expert Georgina Shaw joined at senior associate level from BBC Studios in October 2019.
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Testimonials
‘Super responsive; practical commercial advice; efficient and transparent around billing.’
‘We work with Jeremy Dickerson and I always feel very confident in his advice, as a subject matter expert.’
‘Georgina Shaw is an excellent lawyer whose advice is always extremely thorough and well informed.’
‘Very good legal advice and also very commercial. They understand our business, budget constraints and the environment we operate in and tailor their advice accordingly.’
Key clients
BBC/BBC Studios
JET Petrol Stations (Phillips 66)
Discovery, Inc. (owner of the Discovery Channel)
Starbucks Corporation
Yeo Valley
John Lewis & Waitrose
Victoria’s Secret Stores Brand Management, Inc.
Virgin Group
Scottish Professional Football League
VMIC (Vaccines Manufacturing and Innovation Centre)
Work highlights
- Acting for Benefit Cosmetics in its successful defence of trade mark infringement proceedings brought by online retailer Beauty Bay
- Acting as sole UK trade mark counsel to Starbucks
- Advising the BBC and BBC Studios on all UK and EU trade mark applications and registrations as sole counsel
Michelmores LLP
Michelmores LLP is geared towards assisting businesses of all sizes with contentious and non-contentious commercial IP projects. In 2019, the group was joined by dual-English and California bar admitted Charles Courtenay from Latham & Watkins, a solicitor advocate with substantial experience in patent, trade mark, copyright and trade secrets litigation. The department is led by food and drink and manufacturing sector expert David Thompson, who focuses on commercial IP. Associate Charlotte Bolton is also recommended for her contentious IP experience.
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Testimonials
‘A highly-competent regionally-focused firm that has the ability to support both small local organisations and major UK companies. Good range of internal skills. Very personable and approachable.’
Key clients
Numatic International (Henry vacuum cleaners)
PPP Taking Care (part of AXA Group)
Seasalt Holdings
Landmark Information Group (part of Daily Mail Group)
La Prairie Group (part of Beiersdorf/Nivea Group)
Pyrocore
Mindful Chef
Enotria Winecellars
Regional & City Airports
Steinhoff UK Manufacturing
Work highlights
- Advised La Prairie UK on its ongoing relationships with key retail partners, operating a selective distributorship structure.
- Advised Landmark Information Group (part of the Daily Mail and General Trust group of companies) in relation to all of its ongoing data acquisition and licensing arrangements
- Continuing to advise Numatic (the makers of the “Henry” vacuum cleaner) on intellectual property and brand protection strategy.
Osborne Clarke
Osborne Clarke's standalone IP group, led by 'tenacious' Clare Robinson, has developed a niche in the IP aspects of defence contracts,advising on matters include the licensing of IP to the Ministry of Defence and supply agreements. Other sector expertise spans digital business, food and drink, energy and transport, and lawyers are expert in trade marks, copyright and design rights. The firm is often called on by large corporates to advise on IP filings, opposition and portfolio management, as well as commercial and transactional projects and infringement proceedings. Douglas Peden leads on IP rights issues arising in the defence and technology sectors, while Will Robertson focuses on the commercial aspects of technology IP.
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Testimonials
‘The team is highly responsive and highly effective, with an eye on commercial practicality.’
‘Clare Robinson is particularly responsive and tenacious.’
‘The associates on the team have been well-trained and provide cost-effective advice that I am very comfortable relying on. In my five years of instructing this team, I have not ever felt that it has simply restated the legal position – it has always provided commercial and immediately applicable advice.‘
‘Clare Robinson provides thorough, honest and commercial advice. She has trained her team well so her associates are highly-capable and very trusted.’
Key clients
Devonport
Eurostar International Limited
Danone
Nisbets
Société Anonyme des Eaux Minérales d’Evian
Pernod Ricard
Martin Millers
Western Power Distribution
P&O Ferries Holdings Limited
London Flavours
Cookpad
Bandai Namco
PlaySportsNetWork
Work highlights
- Advising Devonport Royal Dockyard Limited/Rosyth on a complex set of IP provisions, detailing ownership and rights of use of the numerous IP rights, related to the £1.25bn contract to build the next generation of frigates for the UK Royal Navy.
- Continuing to manage Eurostar’s worldwide trade mark portfolio across over 60 jurisdictions, advising on brand protection, registration strategy and enforcement
- Advising Danone on IP issues at the core of Danone’s campaigns for Actimel, one of its global trophy brands.
Ashfords LLP
The key pillars of the practice at Ashfords LLP are trade mark portfolio management, for which the firm benefits from the presence of five chartered trade mark attorneys, and patent attorney services, such as drafting, filing and prosecutions. The group is also regularly instructed on transactional work, alongside the firm's corporate and private equity teams, and is also well-versed in copyright, trade mark and design rights litigation. Carl Steele heads the team, which benefited from the arrival of experienced brand protection expert Clare Jackman from Norton Rose Fulbright in September 2019.
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Testimonials
‘Very detail oriented, approachable and responsive. As a small start up, relatively new to trade mark issues, we heavily relied on Clare Jackman and her team to walk us through the process. She has been an invaluable resource.’
‘They are extremely responsive, and you have a great deal of comfort that they will get the legal advice technically correct.‘
‘Carl Steele is very responsive and practical in the advice that he gives.’
Key clients
Penhaligon’s (luxury perfumes)
L’artisan Parfumeur (luxury perfumes)
Velcro BVBA (owner of the famous VELCRO® brand)
The Roald Dahl Story Company
Ginsters (Samworth Brothers)
Majestic Wine
J W Anderson (luxury fashion clothing business, owned in part by LVMH)
BlackRock (one of the world’s leading asset and investment management firms)
Post Office
The Brand Architekts PLC (owner of “DIRTY WORKS”, “FISH”, “SENSE SPA””ARGAN 5″, and “THE REAL SHAVING CO.” brands)
Facegym
Lay & Wheeler
Day Pitney (US law firm)
Akermann LLP (US law firm)
Aardman Animations (owner of WALLACE & GROMIT, SHAUN THE SHEEP, CHICKEN RUN, etc.)
Shazam Productions (owner of IP rights relating to the famous “Only Fools and Horses” TM series)
What3words
Pancho Music Inc. (Michael Bublé’s music company)
Beat Capital Partners
Tarian Underwriting
Chord Reinsurance
Munitus Agency
Flow Intermediaries
Brace Underwriting
Work highlights
- Currently acting for Shazam Productions (owner of IP rights relating to the scripts of “Only Fools and Horses”) in a major copyright infringement and passing off case against those involved in the “Only Fools (Cushty) Dining Experience”. If the case goes to trial it will decide whether copyright vests in and protects the characters in OFAH and not just the words they use in the scripts for the BBC shows. This would make new law.
- Acting for a client applying to invalidate an EU designation of an international trade mark registration for ‘aardman’, filed by a Chinese entity. The application is based on bad faith, as well as on damage to our client’s well-known brand. This matter forms part of a strategic campaign against the Chinese applicant who additionally owns several Chinese TM applications and registrations which we are also challenging via various actions, including oppositions, non-use cancellation actions and applications for invalidity.
- Trade Mark Portfolio Management for various clients. The work includes (often on a global basis): clearing, filing, prosecuting, registering, renewing and maintaining, opposing, invalidating and enforcing, licensing and/or assigning hundreds of trade marks. Also, drafting and negotiating co-existence agreements and merchandising agreements and operating watching services to identify third party conflicting trade marks.
Foot Anstey
Foot Anstey's intellectual property team, led by trade mark, design and patent litigation expert Paul Cox, handles IP portfolio management for a number of major corporates. The group is particularly noted for handling an anti-piracy campaign for Sky against illegal online streamers, and is regularly called upon in contentious matters defending IP owners, including anti-counterfeiting and enforcement work. The group also assists with license agreement negotiations and transactions. Senior associate Rachel Pearse is another name to note for IP litigation.
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Testimonials
‘The team were fantastic at all levels and during hearings were very good to ensure that I knew what was happening and were always available with any questions that I may have had.’
‘Paul Cox was great and really understood the impact on our business and I felt that this was very well integrated into all advice provided.’
Key clients
Sky
Reach Plc
Eden Project
Royal Academy of Dance
The Spectrum Collections
PA Group
Pay.UK
Nuco Training
Vexo International (UK)
Pinnacle Photo Agency
International Dance Supplies
TI Media
TOMY
Signet Trading (Trading as H Samuel)
Cath Kidston
Ecco
The Parts Alliance
Munch Fit
University of the West of England
UK Interactive Entertainment Association
Work highlights
- Successfully defended an injunction application brought against Nuco Training and First Aid Awards by Mental Health First Aid England (MHFAE) who sought an order attempting to restrain the client from using the term “Mental Health First Aid” and providing their Mental Health First Aid courses. The team advised the clients on defending a claim issued by MHFAE for copyright, trade mark infringement and passing off.
- Acted for the Eden Project in relation to an £18m ERDF/ Government funded collaborative research project which aims to generate sustainable geothermal power at the Eden Project site in Cornwall. A new joint venture company (Eden Geothermal ) was established to run the project, which then needed to be granted a licence to use the ‘Eden Project’ and ‘Eden Geothermal’ trade marks.
- Continue to manage Tomy UK Co ‘s international trade mark portfolio. The work required for this client includes the provision of Trade Mark Clearance advice on new brands, the registration of trade marks and dealing with opposition and infringement matters.
Humphreys & Co.
'Technical experts, who are easy to work with,' the team at Humphreys & Co. has an busy trade mark prosecution practice, but is also regularly instructed on copyright and design work in both contentious and non-contentious situations. Robert Humphreys heads the department, which houses experienced IP lawyers Tristan Morse and Ruth Annand, both of whom 'are especially noteworthy for their copyright and design expertise.'
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Testimonials
‘Very accessible team, highly competent, giving sound workable advice.’
‘Technical experts, who are easy to work with.’
‘Ruth Annan and Tristan Morse are especially noteworthy for their copyright and design expertise.’
‘Ruth Annand is knowledgeable, dedicated and kept us well informed throughout the proceedings. We would have no hesitation in recommending Ruth and her team.’
TLT
TLT 's technology and IP team is led by James Touzel and stands out for trade mark and brand protection issues, with an impressive client list that includes major national and international corporates. The group also regularly advises on the exploitation and licensing of content copyright, and assisting early-stage technology-sector clients with the commercialisation of their IP assets. Trade mark expert Jo Pritchard manages portfolios, as well as having an active disputes practice. Duncan Reed focuses on IP commercialisation, while senior solicitor Kiera Dale has experience in disputes before the UK and EU intellectual property offices.
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‘Good value for money, methodical in updating progress across a number of matters.’
‘Nick Fenner is sensible and provides well priced advice.’
Key clients
BGL (Comparethemarket.com and comparethemeerkat.com)
Matthew Clark Bibendum
Merlin Entertainments (including Alton Towers, Madam Tussauds, and Thorpe Park)
Ecotricity Group
Brabantia (UK)
Imperial Tobacco
Muji Europe Holdings
WHSmith plc
Pyroban
Manpower
Work highlights
- Advising People Matter Technology, the provider of a mental health wellbeing app to be used in an employment context, on data protection obligations, including preparing the privacy notice, advising on lawful basis and special category personal data processing conditions and inputting into data protection impact assessments conducted in connection with the use of the app.
VWV
VWV has developed a solid practice assisting educational institutions with international school licensing projects in multiple jurisdictions. The group also focuses on trade mark portfolio management and is a go-to firm for charities in the south west. Doug Locke leads the group and much of the schools work. Promoted to partner in October 2019, dual qualified solicitor and trade mark attorney Paula Williams is noted for commercialisation projects.
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Key clients
Rugby School
World Sailing
Airbus
Norland College (aka Norland Nannies)
Hunters Property Group
Cranleigh School
Western Global Holdings
Marlborough College
Malvern College
The British Library
The Perse School, Cambridge
The King’s School, Canterbury
King’s College School, Wimbledon
Cheltenham College
Work highlights
- Advising Rugby School on its international licensing programme. This involves registering the school’s trade marks throughout the world, preparing licensing documents, advising on negotiations and co-ordinating advice from overseas lawyers.
- Advised World Sailing, a world governing body, on its rebrand, and continue to register its trade marks throughout the world, and advise on international trade mark enforcement.
- Assisted The Perse School with an international licensing project after the client switched from a London-based firm.
DAC Beachcroft LLP
Andrew Allan-Jones leads the group at DAC Beachcroft LLP, which handles contentious and non-contentious IP work. The group is regularly instructed on licensing deals, transactions and in disputes.
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Testimonials
‘Very friendly and understanding. They obviously enjoy their work and can view situations from others’ points of view. I’ve had a few interesting conversations with them where they have changed my inaccurate perception of what the “stone-cold lawyer” is like to work with. The team are very much into the subjects and when we require their help, I sometimes get a sense of excitement from them.’
‘Andrew Allan-Jones has a heavyweight knowledge of case law and great problem-solving abilities.’
Mewburn Ellis LLP
At Mewburn Ellis LLP, Sean Jauss leads the intellectual property team, which has a particular strength advising on patent and trade mark issues, from a contentious and non-contentious perspective, including in relation to IP transfers and commercialisation. Senior associate Caroline Hart is also recommended for enforcement and defence proceedings.
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Testimonials
‘I have had an excellent experience with this practice. Questions are answered quickly and completely. Advice has been thoughtful and precise and reflective of our company’s financial and commercial position. The Bristol team have coordinated well and seamlessly with our main contact in London.’
‘Outstanding knowledge and quality of advice on patent claims and other matters.’
‘They tune in precisely to our business needs and support us in a holistic way.’
‘Sean Jauss has been excellent in providing considered, reasoned advice.‘
Key clients
Haydale Graphene Industries plc
Medical Air Technology
UCL Business
Wista
Banhams Patent Locks
Croygatt
Glia
Second Sight
Sarepta Therapeutics
Rockley Photonics
Thrings LLP
The team at Thrings LLP focuses on advising SMEs on the full spectrum of IP issues, including applications and registrations, commercialisation and enforcement. The group is led by Megan Jefferies, whose background in commercial litigation is well-suited to contentious IP work.
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Key clients
Pima Ventures UK, trading as Bolt
Lovehoney Group
Kenro
Taxi Studio
Bristol International Balloon Fiesta
Proctor + Stevenson
Essilor
Anthony Best Dynamics
Awareness Technologies.
Miller Harris
Work highlights
- Advising on Lovehoney ‘s global IP portfolio. This has included defending UK and EU opposition proceedings, third–party trade mark applications in the USPTO and Singapore IPO and working to counter conflicting Chinese trade mark applications.
- Assisting Miller Harris with a co-branding agreement with McQueens, continuing to advise on international trade mark applications and oppositions, resolving issues with Amazon Brand Registry, conducting freedom-to-use searches for new brands.
- Advising Bolt on worldwide brand protection and registration, patentability, and licensing advice on the use, editing and redistribution of third-party content and user-generated content.
Battens Solicitors Limited
The IP team at Battens Solicitors Limited has substantial expertise in trade mark and copyright issues, licensing for television and publishing, as well as media production issues. Peter Livingstone leads on advisory work, which includes commercialisation. Brian Levine is responsible for contentious IP and represents clients across the UK.
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Key clients
Michel Haddi
Bryers LLP
Mallinson Sadler
Testimony Films
Work highlights
- Assisting photographer Michel Haddi with pursuing a variety of infringers worldwide and obtaining settlements for wrongful use by them of his copyrighted images of icons such as David Bowie, Debbie Harry and Tupac Shakur.
- Protecting Robin Chapman’s marks in the specialist drinks sector and defending infringement proceedings.
BPE Solicitors LLP
Key areas for the team at BPE Solicitors LLP are trade marks and design, and it also has experience in IP protection matters before the UK and EU intellectual property offices. Advisory expert Iain Garfield leads on the group's trade mark, commercialisation and brand protection offering, while Riyaz Jariwalla heads the disputes work.
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Testimonials
‘Commercial sense dovetailed with legal knowledge, thus acting like a trusted adviser.’
‘Speedy responses, care to spell out the situation in easily understood language, timely advice.’
Key clients
LightwaveRF Technology
Agria Pet Insurance
SOHO Coffee Co
Cotswold Outdoor (Outdoor & Cycle Concepts)
Cheltenham Festivals
Summit Medical Group
The Traffic Group / AGD Systems
Quolux
TravelLocal
Rosemary Water
Lifemarque
CyNam (Cyber Cheltenham CIC)
Motorcycle Industry Association
Spectrum Medical
Mears Group
CLEAN Linen Services
Gillmans Electrical
Pure Gym
Work highlights
- Advised the Cheltenham Literature Festival 2019 on the terms of Sky Arts’ preferred form of sponsorship agreement, and supported the negotiation of its terms.
- Advised SOHO Coffee Co on the appointment of a master franchisee to develop the brand in the Middle East. The work included advice on protecting the client’s trading names and logo as registered trade marks in countries throughout the Gulf region.
Royds Withy King
Royds Withy King has benefited from the arrival of Dan Meadon-Bower from TSB Bank, with his hire adding a commercial expert who leads on IP transactions. Philip Banks-Welsh , who is also head of the dispute resolution department at the firm, leads on contentious IP matters.
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Key clients
Wildfowl & Wetland Trust
Airsprung Group Plc
Retraining of Racehorses
Novia Financial Plc
Apec
TM Group (UK)
Goodfellow Publishers
Against Breast Cancer
Work highlights
- Advising a specialist engineering company on obtaining trade mark protection in the UK, EU and US
- Advised a leading healthy foods brand in relation to new product names and assignments of IP assets
- Advised celebrity barber Joe Mills in relation to his ‘Mills x Primark’ collaboration with Primark.
Stephens Scown LLP
The group at Stephens Scown LLP focuses on brand protection and exploitation, with particular expertise in trade marks. Clients are a mixture of start-ups and corporates with a national presence. Ben Travers heads the department, with experience in contentious and non-contentious matters.
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Testimonials
‘The team at Stephens Scown fully understand my business including our values, business aims, how we work, what we sell etc. By them taking this caring approach, the advice they give us is always in line with how our business operates.’
‘They’re responsive, extremely knowledgeable, approachable and have a total appreciation for my business.’
Key clients
St. Austell Brewery Company
Paddle Logger
Quest Apps
Bluegrass Group
University of Plymouth (ATI)
Conquering Horizons
Thatchers Cider Company
Work highlights
- Advising St. Austell Brewery Company on its international trade mark protection.
- Provided Paddle Logger with advice on brand protection and also drafted the terms and conditions of use and the privacy policy for its mobile application.
- Advising Thatchers Cider Company on its global trade mark strategy including contentious and non-contentious matters.
Willans LLP
At Willans LLP, Paul Gordon leads on IP litigation, handling disputes involving patents, trade marks, design rights and copyright infringement and passing-off claims, and is able to draw on alternative dispute resolution knowledge. Commercial IP expert Kym Fletcher leads the non-contentious practice, and has experience in negotiating sponsorship agreements and providing brand protection advice to global bodies at a federation level.
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Key clients
Federation Internationale de L’Automobile
Harmony Medical Distribution
Midland Chemicals
Stichd Sports Merchandising UK
Ferryfast (including Keyfesh IT)
Poundstretcher (to include Crowncrest Leicester plc)
Thinkproject!
Puma International Sports Marketing
Cheltenham Festivals
Padpilot
Work highlights
- Acting for Stichd Sports Merchandising UK (part of the PUMA Group) in respect of the value of lost intellectual property licencing and merchandising rights incurred with the administration (liquidation) of the Force India Formula One Team.
- Advising Federation Internationale de L’Automobile on all legal aspects relating to the setting up of its new multi-disciplinary motorsport event, the FIA Motorsport Games.
- Advising Poundstretcher in connection with a threatened claim for passing off, trademark infringement and breach of copyright.
Harrison Clark Rickerbys
In Cheltenham, Steven Murray leads on intellectual property matters for Harrison Clark Rickerbys. Murray is a contentious IP lawyer with a focus on copyright and design right infringement, particularly in relation to fonts. Associate Cris Manuel-Hughes is another name to note in the office.
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Key clients
Symec Technologies
Coaltown Coffee
The Royal Mint
Digital Swiss Gold
Amber Energy Solutions
Community Utilities
Digital Asset Services, trading as CoinCover
Hype For Type
Galebreaker Agri
Dawsons Music
Crowd Emotion
Crayon
Weatheralls Distillery
Keystone Law
Jessica Bent and Charlie White make up Keystone Law's IP team in the south west, advising on IP audits, trade mark registrations, copyright and design rights issues, commercialisation and dispute resolution issues, including invalidity actions.
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Key clients
Marine Conservation Society
Bath Spa University
Bitmap Books
Adam Matthew Digital
Anglia Home Furnishings
Mytton Williams
Laceys
The intellectual property group at Laceys is part of the corporate and commercial department, and has a solid practice assisting media companies with commercialising their portfolios. The group is also instructed by start-up technology companies to support their R&D projects. Sam Freeman heads the team.
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Testimonials
‘The team is efficient, approachable and able to advise on complex IP matters in a way that is both commercial and easy to understand. Their advice is thorough, but to the point.’
‘Brendan Herbert has an extensive knowledge of IP, and is able to identify a range of practical solutions when it comes to resolving IP disputes. He is pragmatic and proactive in his approach.‘
Murrell Associates
At Murrell Associates in Truro, senior associate Rebecca Anforth has developed a niche in assisting local start-ups with collaboration and cross-licensing agreements, brand protection and exploitation, as well as advising on infringement matters.
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Testimonials
‘A friendly and approachable team. They work well together and have a pragmatic and solution led approach to their work.’
‘Great people, approachable and communicative making them easy to work with in a collaborative and effective manner.’
Key clients
Flexi-Hex
Inspire Cornwall CIC
SUMO Services
Jigsaw XYZ
Connexi Partnerships
Finisterre UK
Celtic Sheepskin & Co
Events Intelligence
Intermedia Brand Marketing
Hub Box
Eight Wire
Project 2 VR
Work highlights
- Advised Connexi Partnerships on the terms on which it contracts with both rights-holders and brands.
- Advised Flexi-Hex on the licence of certain patents and know-how to a leading supplier of lightweight papers.
- Advised Project 2 VR on the licence of its software to an industry leading designer and manufacturer of bespoke modular buildings.
Steer & Co
Steer & Co's founding partner Rebecca Steer has substantial experience in the commercialisation of IP, advising a wide variety of local media, digital creative and technology businesses. Nic Ruesink-Brown is often instructed in IP disputes, as well as focusing on fair, reasonable and non-discriminatory (FRAND) licensing.
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Testimonials
‘Very smart, pleasant, pragmatic and hard-working.’
‘The Team is highly professional and very “on the ball”. Also, they get things done fast and exactly when they say they will.‘
‘Rebecca Steer is a very strong listener but at the same time is not afraid to share her opinions.’
Key clients
Calling the Shots
Abducere
Aspect Film and Video
Calvium
Dengro
Graphcore
Xmos
Moortec
Great State
Rally
Vvast
Splash Worldwide
Work highlights
- Ongoing advice to Graphcore – an AI company – on the ownership of IPR in collaboration projects. Specifically, advice was given on the collaboration between Graphcore and Microsoft.
- Advice and negotiation of trial agreement for the use of fintech algorithms by a leading bank as part of a trial which seeks to share information about customers without personal data.
- Advised patent attorney (Page White and Farrer) and client VR Electronics on the assignment of certain rights in robotic suits.