Intellectual property in West Midlands

Browne Jacobson LLP

Recommended for its ‘strength in depth’, Browne Jacobson LLP has particular strength in the beauty, retail and automotive sectors, alongside a notable involvement in heavyweight litigation cases. The practice acts for clients in the influencer and social media sphere, as well as advising on music industry copyright issues, author agreements and merchandise deals, among other areas. ‘Strategic and methodical thinker’ Mark Daniels heads the practice, with a specialism in contentious IP, routinely handling trademark, patent, database right and copyright cases. Nick Smee is vastly experienced in the automotive, aerospace and manufacturing sectors, while Bonita Trimmer bolsters the practice with a focus on brands and design disputes. Jess Zareh is capable in both the contentious and transactional spaces.

Practice head(s):

Mark Daniels; Declan Cushley (London/Dublin)


Other key lawyers:

Bonita Trimmer; Nick Smee; Jess Johnson


Testimonials

‘Strength in depth, good collaboration. The client was very pleased with the outcome.’

‘Mark Daniels is a strategic and methodical thinker – his strategy avoided a litigation.’

Key clients

Bollin Group


Mace


A Ward Attachments


BodyGlide


Loughborough Universitty


Marstons PLC


DPD


ATE (UK)


Kings College London


Goodyear Dunlop


Clean Power Hydrogen


Aston Martin Lagonda


Ocean Technologies Group


Work highlights


DLA Piper

A team of ‘savvy tactical thinkers’, DLA Piper offers advice on the full range of litigious and non-litigious work, from domain name disputes to IP portfolio management. It routinely handles matters in the media, sport and hospitality sectors, among others. The practice is jointly led by Richard Taylor, who is considerably experienced in leading on litigation and transactional work, and Gareth Stokes, whose expertise encompasses licensing, exploitation and collaboration agreements; he works with clients in the automotive and software sectors. Key contact Satnam Sahota, recommended for her ‘tenacity and calmness’, has vast experience in handling IP litigation, with notable strengths in the media and sports spaces. Ryan Harrison strengthens the practice with particular retail and consumer goods expertise, operating in the non-contentious space.

Practice head(s):

Richard Taylor; Gareth Stokes


Other key lawyers:

Satnam Sahota; Ryan Harrison


Testimonials

‘Strong technical knowledge and interest in trademark law.’

‘Anticipate potential commercial consequences of actions which are not immediately obvious.’

‘Savvy tactical thinkers.’

‘Good value for the quality of advice.’

‘Satnam Sahota demonstrates all the characteristics you want to see in terms of being well organised and very knowledgeable, but there’s also a sort of tenacity and calmness in him which gives you confidence, and also gives the impression he’d be someone you could rely on in an emergency.’

‘It is the first time I have seen this level of forward-thinking engagement from one of our law firms, and it is very unusual to have such a vision.’

Key clients

Premier League


Medtronic


Amano Hotels


City, Uni of London


Bailee Gifford


Wyoming Hyperscale


Alusmasc


Thomas International


Westland Horticulture


JOE Media


Work highlights


  • Act for the Premier League in relation to a large-scale pan-UK enforcement action for copyright infringement.
  • Advise Medtronic on a range of IP issues in its contracts with its large customers (being both public and private healthcare providers).
  • Represented Alumasc in its Patent Court (Shorter Trial Scheme) litigation brought against it by Manthorpe. The matter settled on satisfactory terms to both parties.

Gowling WLG

‘Leading IP practice’ Gowling WLG’s broad offering covers both transactional and contentious issues, with a predominant emphasis on patents and brands/designs, as well as litigation matters. Its client roster includes businesses in the life sciences, retail and high-tech sectors, to name a few. The practice is spearheaded by the ‘top-notch’ and ‘highly competent’ Kate Swaine, whose expertise involves international brand strategy and the enforcement and management of global IP portfolios. Patrick Duxbury is well regarded for his expertise in the life sciences sector, while Luke Kempton is experienced in the biotechnology and pharmaceutical sectors, engaging in various kinds of deals. Both are recommended for being ‘experienced, skilled and committed’. Legal director Michael Carter bolsters the team with strengths in the automotive sector, especially in regard to licensing.

Practice head(s):

Kate Swaine


Other key lawyers:

Patrick Duxbury; Luke Kempton; Michael Carter


Testimonials

‘The team is excellent. Their legal knowledge and practical, commercial advice is second to none. They have a broad team in terms of seniority level, which means that they are able to offer competitive pricing for particular matters. Not only are their professional services impeccable, but they are a joy to work with, too!’

‘Gowling WLG is a leading IP practice with a number of fantastic lawyers covering patents, designs, trademarks and trade secrets. The team has breadth and depth and excellent legal and technical knowledge. The team is collegiate and provides exceptional client service.’

‘Luke Kempton and Patrick Duxbury are experienced, skilled and committed lawyers. We thoroughly enjoy working with them. They always respond fast, and their industry knowledge is excellent. Fabulous lawyers to have on your side.’

‘Significant strength and depth across all aspects of IP litigation and advice. It is unrivalled by other firms in the area.’

‘I have worked with Kate Swaine for many years. She is a font of knowledge on brands law, not only in the UK, but globally, and very commercial in her mindset. She is a delight to work with.’

‘A competent, dynamic, responsive and super-friendly female-led team, which is a pleasure to collaborate with. They cover every aspect of IP-law. You can feel the good spirit they have between them when you interact with them, which has positive effects on the overall collaboration and the resulting work products.’

‘Kate Swaine: she is highly competent and engaged and an absolute pleasure to collaborate with. Top-notch in litigious trademarks matters, pragmatic and always a sunshine. I could not recommend her more.’

‘Fabulous people! No stiff city lawyers, but people with the right attitude in getting things done in an international world.’

Key clients

InterDigital


AstraZeneca


BioNTech SE


Oxford BioTherapeutics


KU Leuven


Immedica Pharma AB


Amphista Therapeutics


GlaxoSmithKline


Sosei Heptares


Weetabix Limited


B2022


Keyloop


Major League Baseball


London Stock Exchange and subsidiaries: Refinitiv and LCH


Aston Martin Lagonda


Farfetch


Ghamkol Sharif UK


Industrials UK


Scholl


Aston Martin Lagonda


All Saints Retail Limited


Ezee Group Limited


Aston Martin Lagonda


Dyson Technology Limited


Work highlights


  • Advising InterDigital (“IDG”) in relation to its global dispute with Lenovo.
  • Advised Astra Zeneca on its strategic collaboration with diagnostic company GRAIL, to develop and commercialize companion diagnostic (CDx) assays for use with AstraZeneca’s therapies. This deal recently won the award for partnering deal of the year 2022 at the Scrip Awards.
  • Appointed as exclusive Official Legal Advisers for the Birmingham 2022 Commonwealth Games.

Pinsent Masons LLP

A team of ‘outstanding insight and patience’ that is capable of handling high-value and complex mandates, Pinsent Masons LLP are centrally involved in innovative technologies, ranging from AI and autonomous vehicles to green technologies that address climate change. Cerys Wyn Davies helms the practice; she has vast expertise in the fields of technology, life sciences, manufacturing and education, particularly in regard to cutting-edge technologies. Tom Nener is active in various sectors including retail, sports and life sciences, among others, while Jo Alderson‘s capabilities include handling technology-related developments, licensing and transactions, as well as open source software issues. Senior associate Katy Bourne is considerably experienced in litigation matters.

Practice head(s):

Cerys Wyn-Davies


Other key lawyers:

Tom Nener; Jo Alderson; Katy Bourne


Testimonials

‘The PM team provide high-quality legal advice in a cost-effective way.’

‘We have an extraordinary array of brands, which makes our business particularly complicated and challenging. The team at Pinsent Masons navigate that with aplomb and are excellent business partners.’

‘We get outstanding insight and patience from the team at Pinsent Masons, as we often need educating as clients in this area. They are a pleasure to work with.’

Key clients

Bumble/Badoo


Chiaro Technology


Financial Times


World Athletics


JUUL Labs Inc


ProPharma Partners


Bosch


Holy Moly


University of Birmingham


Fujitsu


Work highlights


  • Advised Bumble on its trademark and IP needs, and have delivered a significant global filing and clearance programme for Bumble to keep up with the pace of the brand’s growth.
  • Advising Chiaro, a medical tech manufacturer of innovative wireless and wearable breast pumps, which it markets and sells under the brand name “Elvie”,  in connection with proceedings against a competitor, Tommee Tippee that launched a competing breast pump product which Chiaro considers infringes its registered design portfolio.
  • Advising World Athletics on the management of its global trademark portfolio which includes filing new trademark applications, issuing opposition and cancellation actions and enforcement against third party infringers.

Freeths LLP

Freeths LLP‘s key area of expertise is in handling IP disputes, notably for consumer-facing brands and retailers. Other areas of expertise for the team include anti-counterfeit expertise, trademark filing and defamation cases, to name a few. Simon Barker leads the practice, acting on lots of high-profile IP disputes. Iona Silverman is another key contact at the firm. Martin Noble joined the team from Shakespeare Martineau LLP in August 2022.

Practice head(s):

Simon Barker


Other key lawyers:

Iona Silverman; Martin Noble


Testimonials

‘Martin Noble is a highly capable lawyer in the soft IP field.’

‘Very proactive and commercial.’

‘Very clear advice, with risks explained and weighted.’

‘Simon Barker offers clear, sensible advice.’

Key clients

Aldi Stores Limited


Poundland


Lyle & Scott


Shoezone


Leighton Vans


Euro Car Parts


Thornton Hundred Motorcycles


Sik Silk


Joseph


Tala


Laura Green


Travis Perkins


Tarmac


Eurocell


City Plumbing Supplies


Carlsberg


Charles Wells


NEC Group


Work highlights


  • Acted for Aldi in Marks and Spencer v Aldi Stores Limited in relation to M&S’s claim that Aldi’s Glitter Gin products infringed certain M&S Registered Designs. M&S were successful at trial but permission has been granted for Aldi to appeal the judgment so the case is ongoing.
  • Acted for Lyle & Scott in a case against American Eagle Outfitters concerning their respective “eagle” brands. The case concerned an historic co-existence agreement and passing off with parallel proceedings in the US.
  • Acting for Moviebox Megastores (International) Limited and other against Oriental Star Agencies Limited which controls the largest UK Bhangra catalogue in the world. The Claimants were fighting to defend against strikes being issued against the Claimants’ Youtube content for what they say are bogus and malicious copyright complaints.

HGF Law

HGF Law provide a ‘common sense approach’ to a wide array of IP matters, including both contentious and transactional matters, with a focus on the life sciences, advanced manufacturing, retail and food and drink sectors. The team routinely advises on IP protection, strategy and litigation. Practice head and ‘great collaborator’ Marie McMorrow is active in litigation and on transactions, often advising clients in the food and drink sector. Other key names in the team include Holly Lovack and Christie Batty.

Practice head(s):

Marie McMorrow


Other key lawyers:

Holly Lovack; Christie Batty


Testimonials

‘HGF Law provides us with specialist IP advice, giving us proactive support in managing our portfolio.’

‘Their common sense approach gives us the ability to balance costs and protect our assets.’

‘The team is great and someone is always available to provide advice.’

Work highlights


  • Representing Zaun Limited before the CJEU.
  • Advising AGA Rangemaster Group Limited across all aspects of its intellectual property rights (patents, registered designs, trademarks and infringement and enforcement claims) which underpin its business.
  • Successfully defending allegations of trademark infringement of the Levi brand by Levi Strauss & Co.

Shakespeare Martineau LLP

The ‘very efficient team’ at Shakespeare Martineau LLP is active in the IP litigation space, with particular experience in patent, design and brand-related work, often with an international element. The team handles a considerable amount of IP matters for universities, as well as working for clients in an array of other sectors, including telecoms, consumer products and transport. Nicholas Briggs spearheads the practice, routinely advising on contentious work, especially patent litigation, while Mauro Paiano‘s broad expertise includes cross-border matters and social media-related cases. Other names to note include Kerry Russell, whose strengths lie in litigation. Martin Noble departed for Freeths LLP in July 2022, while Daniel Goodall left the firm for an in-house role in April 2023.

Practice head(s):

Nicholas Briggs


Other key lawyers:

Mauro Paiano; Kerry Russell; Daniel Kelly


Testimonials

‘Very efficient team with expertise at all levels and high-quality, interesting work.’

‘Mauro Paiano is an excellent, pragmatic, commercial partner with great sector knowledge.’

‘Our go-to firm in England regarding IP issues and contract law. Equally good as the top firms in the City of London but far more cost-effective.’

‘Nick Briggs is an all-round IP lawyer that always provide sound legal advice. So is Mauro Paiano.’

‘Probably the best regional IP firm in the country. They benefit from their Birmingham location in terms of charging less for top-quality advice.’

‘Nick Briggs is a born litigator. He always wants to win and is prepared to go the extra mile to do so. And to be fair we have a good record together over the last few years.’

‘Kerry Russell produces excellent work and is good with clients.’

‘Expertise in all areas of IP – both hard and soft. Very practical, commercial advice.’

Key clients

Salts Healthcare Limited


Soluble Technologies Group LLC


Norcros Plc t/a triton


Bei Yu Industrial Co


Don & Low Limited


DeLorean Motor Company


Niftylift Limited


Novomatic AG


Work highlights


  • Continuing to act for Salts Healthcare, a Midlands company and an international medical device manufacturer in connection with a claim for patent infringement brought against Pelican Healthcare, a new competitor.
  • Obtained a summary judgment in an IP infringement action in the IPEC on behalf of DeLorean Motor Company.
  • Handled trademark matters for Novomatic AG, including a case that is pending appeal to in Supreme Court.

Shoosmiths LLP

A team that provides ‘commercial and business-focused advice’, Shoosmiths LLP‘s practice covers the full spectrum of matters, ranging from commercial IP transactions to litigation in the brands, technology and life sciences sectors. Its clients include FTSE companies and brand owners, from various sectors such as well as biochemistry, pharmaceutical and software development. ‘Standout’ Andrew Brennan leads the team, with experience in handling complex contentious issues, trademark infringement actions and enforcement actions, to name a few. Victoria Bentley‘s expertise includes patent disputes in the telecoms space, while Dominic Murphy advises clients in a broad array of sectors including biotechnology and fashion, among others. Nichola Jenkins further strengthens the team with experience in the non-contentious side of IP, routinely advising on issues relating to disruptive technologies.

Practice head(s):

Andrew Brennan


Other key lawyers:

Victoria Bentley; Dominic Murphy; Nichola Jenkins


Testimonials

‘The Shoosmiths team are pragmatic and solution focused. They proactively think around ways to deal with the risks we face as a business. I am happy that the fees they charge are reasonable and trust them to come up with a competitive and value-based quote when I need them to do anything out of their usual scope.’

‘The IP team are incredibly helpful, friendly and pragmatic. They are happy to be challenged on advice and the biggest strength is their commitment to a decision rather than sitting on the fence like other firms.’

‘Andrew Brennan is not only a highly skilled lawyer, but also just a nice person to work with. It is not often you look forward to a chat with your lawyer! He gives solid, pragmatic advice and will also accommodate short time frames.’

‘The team’s strengths lie in their commercial and business focused advice. They don’t just focus on the law, they focus on finding a commercial solution.’

‘Andrew Brennan is a standout individual due to his commercialism.’

‘Victoria Bentley can explain complex issues in a straightforward manner.’

‘Shoosmiths are always exceptionally responsive to requests for support. They are very clear on charges and reasonable timescales.’

‘Nichola Jenkins has a wealth of experience in a wide range of Intellectual Property matters. Her willingness to understand the details of complex technologies as well as the associated Intellectual Property means that the advice provided is always fit for purpose.’

Key clients

Next Retail Plc


Topps Tiles Plc


Checkatrade (part of Homeserve Plc)


Volkswagen


LifeArc


Calor Gas Plc


University of Nottingham


Cranfield University


Helix Ltd


Lundbeck


Pharmacosmos


Ann Summers


White Company


Ideal Shopping


LK Bennett


Work highlights


  • Acted for Topps Tiles against Tiles Direct in the Intellectual Property Enterprise Court for trademark and registered design infringement. The Defendants submitted to judgment.
  • Acted for Next Retail as the claimant in a copyright and unregistered design dispute with its competitor, Matalan after Next identified a large number of Matalan’s products alleged to be similar to those from its own children’s clothing collection.
  • Following its acquisition of the Cath Kidson brand and global trade mark portfolio, assisted CK Acquisitions Ltd in recording the worldwide assignment of those trade marks in over 25 countries and now actively manage that portfolio globally.

Mills & Reeve LLP

A firm that provides ‘top-quality advice’, Mills & Reeve LLP works for clients in various sectors, including healthcare, automotive and technology under the leadership of the ‘excellent’ practice head Claire O’Brien, who specialises in contentious IP, with a focus on trademark, design, copyright and patent litigation. Senior associate Natalie Welch‘s capabilities include IP protection, exploitation and enforcement, as well as domain name disputes.

Practice head(s):

Claire O’Brien


Other key lawyers:

Natalie Welch; David Hall; Fay Lyttle


Testimonials

‘The firm is a signatory to the IP Inclusive EDI Charter and its IP team members support our work to improve EDI and wellbeing in the UK’s IP sector.’

‘Claire O’Brien has been particularly supportive of IP Inclusive’s work. She has engaged actively with our Women in IP community and hosted and facilitated online discussions for us. She is enthusiastic, responsive and efficient and has been a pleasure to work with.’

‘A strong regional firm, offering good value for money whilst still providing top-quality advice.’

‘Claire O’Brien is excellent with clients and is prepared to get stuck into the hard work as well. I enjoy working with her.’

Key clients

Kohler Mira Limited


Jaguar Land Rover Limited


K&S Partners on behalf of The Agricultural and Processed Food Products Export Development Authority (APEDA)


The Chancellor, Masters and Scholars of the University of Cambridge


OPES Corporation Oy


Dockyards London Limited


MD Orthopaedics Inc


Smart Skincare


Brigade Electronics Group PLC


Innovate Healthcare Systems Limited


IELTS Australia Pty Limited


The British Council


Work highlights


  • Advising Kohler Mira Limited on its patent infringement claim against Norcros Group (Holdings) Limited in relation to an innovative electric shower.
  • Advised Jaguar Land Rover on its UK applications to register the shape of its classic Defender vehicle as a 3-dimensional trade mark which was opposed by Ineos.
  • Advising K&S Partners on behalf of The Agricultural and Processed Food Products Export Development Authority (“APEDA”) on a trade mark protection of the name “Basmati” as an indicator of a particular class of rice.

Wright Hassall LLP

Wright Hassall LLP‘s ‘strong team of individuals’ is particularly active in the manufacturing and technology sectors, handling both contentious and non-contentious branding and trade mark matters. Rhys Jarman leads the team, specialising in the protection and enforcement of IP rights, as well as advising on technology disputes. Iain Colville is particularly experienced in trade marks and branding, while Luke Moulton is active in the advanced manufacturing and engineering, technology and media and entertainment arenas.

Practice head(s):

Rhys Jarman


Other key lawyers:

Iain Colville; Luke Moulton


Testimonials

‘In-depth knowledge, expertise and experience.’

‘Rhys Jarman – outstanding commitment and dedication to clients’ cases.’

‘A strong team of individuals with specialisms and a breadth of knowledge and experience.’

Key clients

Primus Medical Indemnity Limited


MG Motor UK Limited


Scholastic Limited


Lauralu UK Limited


Vital Power Limited


Tumble Tots (UK) Limited


Ridleys Coaches Limited


Board MIT Limited


Expert Tooling and Automation Limited


Whale Tankers Limited


Work highlights


  • Representing a manufacturer of measurement instruments in a long-running dispute concerning claims in relation to its proprietary software, and the misuse of confidential information and copyright infringement by a former employee.
  • Advising Vital Power, a leading provider of critical power services, in respect of its brand protection and commercialisation, including trademark opposition proceedings brought by Vitol Holding.
  • Advising a major European reseller of technology consumables in relation to multi-party High Court proceedings brought by an international major technology manufacturer, in which it is alleged that the client supplied counterfeit products to the market.