Intellectual property in Wales

Blake Morgan LLP

Blake Morgan LLP handles a range of contentious and non-contentious IP work for public/third and private sector clients, including a growing number within the media and retail sector. Team head Lee Fisher is well-versed across the bandwidth of "hard" and "soft" IP and leverages his broader commercial litigation smarts to good effect on behalf of clients bringing or defending claims, including in injunctive proceedings. Praised for her 'responsive, efficient, and highly professional' service senior associate Joanna Corbett-Simmons also continues to gain a strong reputation among public and private sector clients, particularly in relation to misuse of confidential information and infringement of copyright, trade marks and design rights.

Practice head(s):

Lee Fisher

Testimonials

The team was able to grasp the situation quickly, and was subsequently able to provide a robust response to the situation they were engaged to pursue.’

Joanna Corbett-Simmons was responsive, efficient, and highly professional.’

Key clients

Clarins (UK) Limited

Development Bank of Wales

University of Wales

University of South Wales Trinity Saint David

Vetline Limited

Digital Health Care Wales

Aquaspira Limited

ALuK (GB) Limited

Personnel Hygiene Services Limited

The Tinopolis Group

Work highlights

  • Advising Clarins UK Limited in relation to the importation of grey market goods and ensuring the validity of its selective distribution network (including litigation against third party retailers outside of the network).
  • Defending injunction proceedings on behalf of a number of individuals from their former employer after they left and set up a competing business. The proceedings were based upon breach of confidence.
  • Developing and delivering bespoke seminars for the University of Wales on IP and product development.

Capital Law Limited

Led by Wayne Beynon, the ‘personable, friendly and focused’ team at Capital Law Limited provides ‘solutions-focused‘ advice to a private sector focused client base, including tech companies and those in the creative industries, seeking to commercialise and to protect/enforce their IPR. On the litigation front, the firm is particularly adept at handling contentious trade mark and copyright matters, where its willingness to provide a flexible approach to fees ensures that smaller companies/individuals are able to realistically bring claims against clients with much deeper pockets. Beynon handles much of the high-profile litigation, including for media and entertainment clients bringing/defending defamation, contract and IP-related actions. Senior associate Kellsey Logue  continues to flourish on the non-contentious front, including on behalf of tech companies seeking to commercialise their IPR.

Practice head(s):

Wayne Beynon

Testimonials

The team has a good ability to clearly understand customer needs and suggests robust processes and solutions-focused advice.’ 

They are able to advise on the international aspects on intellectual property matters across jurisdictions with minimal fuss and very reassuring advice.’ 

Key clients

TXO Systems Limited

Pixsy Inc.

Cardiff City Football Club Limited

NUBY UK LLP

Smart Green Shipping Alliance Limited

Lean Competency Services Ltd

Menter a Busnes

Sero Group

University of South Wales

Handmade Films Group

Work highlights

  • Representing TXO Systems on a complex parallel imports/trade mark infringement dispute with Sun Microsystems Inc and Oracle International Corporation.
  • Providing ongoing advice to Smart Green Shipping on its innovative new green shipping project – work which includes IP considerations, including in relation to licences and assignments.
  • Represented Nuby, a US-owned international mother and baby brand on a defended European Registered Design Right case in the IPEC.

Geldards LLP

Led by the 'vastly experienced and accomplished' Michael Lindsey, Geldards LLP has a particularly strong reputation representing public and private sector clients in trade mark, copyright, design right and passing off disputes. In this regard, Lindsey recently settled a long-running multi-jurisdictional copyright infringement case on behalf of the Welsh government which involved the co-ordination of legal teams based in the US and Europe. Associate Gosia Evans was also involved in this matter and is noted for her international IP expertise. On the non-contentious front, Christopher Williams has considerable experience advising manufacturing, healthcare and transport clients on the exploitation and licensing of IP.

Practice head(s):

Michael Lindsey

Testimonials

Michael Lindsey is vastly experienced and accomplished.’

Key clients

Pendragon PLC

Welsh Government

Tessitura Network, Inc.

British Boxing Board of Control Limited

DTR Medical Limited

Mountain Warehouse Limited

Hoover Limited

Sofa Brands International Limited

CMS Industries Limited

Work highlights

  • Advised Pendragon in respect of registered trade mark infringement and passing off case which resulted in the change of trading name and style of a rival retailer.
  • Advised the Welsh Ministers in respect of multi-jurisdictional claims related to an alleged infringement of copyright.
  • Ongoing management of the Sofa Brands Group’s international trade mark portfolio, development, exploitation and overall protection of its brands, as well as dealing with copyright and design right issues.

Acuity Law

Led by Cordelia Payne, who splits her time between the firm’s Cardiff and London offices, Acuity Law handles a range of non-contentious and contentious IP matters, including on the licensing/commercialisation of IPR, trade mark/passing off claims, and data protection/privacy matters for entrepreneurs, SMEs and larger corporates. As well as providing advice on a standalone basis, many smaller clients, in particular, utilise the firm’s Acuity Counsel Service and its newly launched Reputation Management service, affording them cost-effective ongoing advice on a monthly retainer basis.

Practice head(s):

Cordelia Payne

Key clients

Popex Entertainment Limited

BIPV Limited

Rupert Sanderson

Elizabeth Day

Modla Products Limited

Whickr Group Limited

REDA Industrial Materials FZE

Alma de Ace Limited

Artic Industrial Materials

Catch the K Limited

The Room Group Limited

Pink Storage Limited

Noor AlHayawiiya Foodstuff Trading LLC

Rossi Asiaghi Limited

One Rebel Limited

Dig Club Limited

1968 Photography Limited

Birmingham County Football Association

Work highlights

  • Representing Rupert Sanderson Shoes Limited, the internationally renowned, luxury shoe designer andbrand, in relation to two separate opportunistic intellectual property rights infringements bothinvolving company name registrations and UK trade mark applications incorporating the RUPERT SANDERSON name.

Eversheds Sutherland (International) LLP

Led by Matthew Gough , 'a genuine legal heavyweight', Eversheds Sutherland (International) LLP's sweet spot lies in its non-contentious IP work for Wales and England-based clients, including those in the retail and financial services sectors. A significant amount of this work relates to IPR-related contractual work (including on licensing agreements) as well as IP-related auditing work pursuant to transactions handled by the corporate group. Eve England  is the other partner in the group and is 'brilliant' at handling IP issues in the digital space, in particular.

Practice head(s):

Matthew Gough

Other key lawyers:

Eve England

Testimonials

Their prompt service, attention to detail and high levels of expertise are a welcome reassurance.’ 

Matthew Gough and Eve England are superb lawyers and partners to our business.  Their depth of technical legal issues overlaid by a deep understanding of the sectors and markets in which we operate is unparalleled.’

Matthew Gough is a genuine legal heavyweight and constant source of knowledge, counsel, humour and helpful advice.’

Eve England is brilliant.’

Key clients

Schools Software Solutions Limited

Specialist Risk Group

Scansource Europe SPRL

Pollen Street Capital Limited

Thames Water

Work highlights

    Harrison Clark Rickerbys

    Now headed by David Beynon, following his arrival from Geldards LLP in September 2021, Harrison Clark Rickerbys continues to enhance its visibility in the market, particularly for transactional/commercial IP matters. Beynon, who  is well-versed at advising healthcare/life sciences and tech-focused clients on the exploitation/commercialisation of their IPR, joins Nicola McNeely, who dispenses ‘practical and commercially sensible solutions’ to clients, including on cutting-edge IP matters relating to blockchain and digital assets.

    Practice head(s):

    David Beynon

    Other key lawyers:

    Nicola McNeely

    Testimonials

    A hugely helpful team dispensing accurate information and dealing with issues in a competent and efficient manner!’

    Nicola McNeely stands a class apart. She communicates the most complicated of legal situations in the most simple and straight forwards terms so all parties may grasp the salient points.’

    Nicola McNeely puts forward practical and commercially sensible solutions.’

    ‘Nicola McNeely is exceptional, whether dealing with her client’s counterparts in multi-billion dollar international businesses, the most senior of public servants in the UK or overseas or working with sector/industry experts, she always receives rave reviews for her excellent work, professional manner and expertise.’

    Key clients

    Tessitura Network, Inc.

    Bio-Diagnostics Limited

    Prima Dental Manufacturing Limited

    ITS Software Systems Limited

    Captain Fawcett Limited

    QPQ (Global) Limited

    Allpay Limited

    Digital Swiss Gold (USA), Inc.

    Amber Energy Solutions Limited

    Hype for Type Limited

    Work highlights

    • Handling a range of IP and licencing matters for Tessitura Network, Inc, a US-headquartered global provider of innovative relationship management and ticketing platforms.
    • Advising Bio-Diagnostics Limited, a leader in the field of medical diagnostics, in respect of an agreement with the UK Health Security Agency relating to the urgent objective assessment of COVID-19 antibody assays it developed and manufactured.
    • Ongoing work for Captain Fawcett includes strengthening the client’s trade mark portfolio internationally, with strategic trade mark applications in key jurisdictions, such as China, Russia, Australia and the US.

    Hugh James

    Benefiting from 'huge IP expertise' across a number of Hugh James' practice groups, including corporate/commercial and litigation, provides 'clear and concise' advice to a range IP-rich clients from the gaming, sport and fintech sectors. Formerly in-house at Welsh broadcaster S4C, team head Aled Walters  has a 'deep understanding' of IP and rights-related issues impacting media clients, in particular. 'Affable and tactically astute' commercial litigator Tracey Singlehurst-Ward is a key contact for clients engaged in IP disputes and has a strong track record in relation to copyright and trade mark infringements, breach of confidence and passing off.

    Practice head(s):

    Aled Walters

    Testimonials

    The responsive team provides clear and concise advice.’

    Hugh James offers huge expertise in its intellectual property practice. Having worked with the team within the complex area of international broadcast IP I knew that I was always in safe hands. Expert insights, robust contracting and complementary experience across the team have helped us grow our presence within the international market.’

    Tracey Singlehurst-Ward is a pleasure to deal with. On the front foot with advice, what to and what not to do. Affable and great zoom manner. Clear on costs and concise with advice.’

    Aled Walters brings a wealth of experience to lead the team. Always delivering a deep understanding of the business.’ 

    Key clients

    SJJ System Services Limited

    Bar 44 Limited

    Route Media

    LaAD Sports Limited

    Inspired Entertainment Inc

    Celtic Manor Resort

    Wales International Convention Centre

    Welsh Government

    Wildflame Productions Limited

    Novomatic Netherlands B.V.

    Work highlights