Intellectual property in West Midlands

Browne Jacobson LLP

The highly regarded intellectual property practice at Browne Jacobson LLP is known for taking on high stakes disputes for major clients on a national and international scale, particularly within the beauty, retail, media, higher education and automotive sectors. Mark Daniels  leads the Birmingham team and the firm’s high tech patent litigation practice with a specialism in contentious IP. Associate Nick Smee  is a specialist in both contentious and non-contentious IP work.

Practice head(s):

Declan Cushley; Mark Daniels

Testimonials

‘Great knowledge of patents and IP’

‘Down to earth and makes sure they have fully understood the issues and problems at stake.’

Key clients

Aston Martin Lagonda

A-Ward Attachments

Match Group LLC

Mace Group

Clean Power Hydrogen

Lotus Cars

Marstons PLC

DPD

University of Hertfordshire

Bollin Group

GKN Aerospace

Hyperice

Kings College London

Goodyear Dunlop

Ventive Ltd

Brunel University London

Work highlights

  • Act for the Match Group and recently represented them in litigation which commenced in 2020 to enforce their famous Match and Tinder trade mark portfolio against Muzmatch Limited. The litigation has received extensive press coverage to date including in the Financial Times, Business Insider and Bloomberg as well as in tabloid publications like the Daily Mail. We await the judgment.
  • Represented A-Ward in its successful patent infringement claim against Fabcon, the court finding our client’s parent patent valid and infringed. The case involved complex legal issues and the infringement case was pursued purely on the doctrine of equivalents, following the landmark Actavis v Eli Lilly decision.
  • Advising Clean Power Hydrogen Group Limited (CPH2) on a number of deals to commercialise its core membrane-free electrolyser technology in the production of highly-pure hydrogen, including a 15-year partnership with Northern Ireland Water (NI Water).

DLA Piper

DLA Piper‘s highly reputable intellectual property team handles a broad portfolio of contentious and non-contentious IP work within the retail, media and hospitality sectors, often with cross-jurisdictional elements. Along with Richard Taylor, Gareth Stokes co-leads the practice with a focus on licensing, exploitation and collaboration agreements. Senior associate Satnam Sahota has vast experience handling IP matters within the UK and the Middle East and has taken on matters in the High Court for the Premiere League.

Practice head(s):

Richard Taylor; Gareth Stokes

Key clients

Premier League

JOE Media

Guerbet

Medtronic

Alusmasc

Thomas International

Westland Horticulture

ResMed

Heineken

Baker Hughes

Work highlights

  • Act for the provider of the world’s most valuable sporting league in relation to a large scale pan-UK enforcement action for copyright infringement.
  • Represent Greencastle in the High Court its passing off claim against world-renowned former professional rugby players James Haskell and Mike Tindall, and well-known TV presenter Alex Payne.
  • Advising Medtronic on a range of IP issues in its contracts with its large customers (being both public and private healthcare providers), and negotiating those contracts on its behalf to ensure that its extremely valuable IP in the products that Medtronic manufactures and sells to such customers is fully protected.

Gowling WLG

Split between Birmingham and London, the ‘responsive, helpful, pragmatic and wise‘ IP team at Gowling WLG offers a global IP practice that handles a full range of transactional and contentious intellectual property issues. In particular, the team specialises in tech patent litigation, life sciences, sponsorships and designs litigation. Team leader Kate Swaine  has a strong track record in international brand strategy and enforcement as well as being the co-head of IP for the firm internationally. Patrick Duxbury utilises his background as a microbiologist to expertly handle life science matters. Senior associate Michael Carter  is also recommended for his expertise in IP licensing and enforcement.

Practice head(s):

Kate Swaine

Other key lawyers:

Alexandra Brodie; Huw Evans; Jon Ball, John Coldham; Michael Carter; Patrick Duxbury

Testimonials

Their attention to detail, their thinking out-of-the-box and enlarging the value they drive to the applicants.’

Superb IP team with expertise in patent and design litigation, licensing and transactions. Great knowledge of the law and courts, coupled with exceptional commercial acumen and client care.’

Responsive, helpful, pragmatic and wise.’

The team is very engaged, enthusiastic, does a great job of communicating and providing strategic guidance.’

Alex Brodie – Strong female role model in a tech field, still not that common. Good strategic thinker, good relationship with clients.’

John Coldham is a clear, precise and available professional that consistently makes himself available to drive value to the clients.’

Huw Evans – excellent partner, effective manager, excellent communication skills.’

Jon Ball – excellent partner, good insight into case strategy, excellent communication skills.’

Key clients

InterDigital

Neurim Pharmaceuticals

Oatly AB

Comcast/Sky

Aston Martin Lagonda

Kingspan

Freddy SpA

AstraZeneca

Sosei Heptares

Fluid Power Design

Paragraf Limited

Weetabix Limited

B2022

Scholl

Ezee Group International

Northstone

Dyson

Oxford BioTherapeutics

Lab Genius

Eisai Co Ltd.

Work highlights

  • Acting for Neurim in a UK dispute with Mylan (now trading as Viatris) concerning Mylan’s generic copy of Neurim’s highly successful melatonin product, Circadin.
  • Acting for Oatly in trade mark infringement proceedings. It came to Oatly’s attention that Glebe Farm Foods are using a “PUREOATY” mark, in highly similar retail presentation.

Pinsent Masons LLP

The intellectual property team at Pinsent Masons LLP has a strong reputation for handling contentious and non-contentious matters for a variety of high-profile clients, such as JUUL and Bumble. The group specialises in providing advice relating to emerging technologies like digital health, autonomous vehicles and artificial intelligence. Cerys Wyn Davies  leads the team and advises on major technology and life sciences collaborations and license agreements. Tom Nener leads the brand protection and creative rights team while Jo Alderson leads the strategic intellectual property practice. At the associate level, Katy Bourne and Nicky Pereira are both important figures.

Practice head(s):

Cerys Wyn Davies; Clare Tunstall

Other key lawyers:

Tom Nener; Jo Alderson; Nicky Pereira; Katy Bourne

Testimonials

‘Pinsent Masons Intellectual Property practice is multi-faceted and as a client you have a great deal of faith in their expertise across all rights and in both contentious and non-contentious issues.’

‘Solid and dependable team. Client-focused and reliable.’

‘The team are experts in their field. I have used them for IP work globally and they have assisted in every jurisdiction required.’

‘They have an extensive global network that allows them to help clients across all jurisdictions. They are pragmatic and client solution focused.’

‘Nicky Pereira and Bella Phillips are very bright, responsive and also demonstrate knowledge outside of their core specialisms.’

‘Tom Nener is a safe pair of hands who understands and comfortable in both the technical subject matter and the underlying commercial interests of IP disputes.’

‘Iain Connor I have found particularly helpful in demonstrating innovative thinking which goes beyond pure legal advice to demonstrate a clear understanding of the need to think commercially about my organisation as a business.’

Key clients

Bumble/Badoo

World Athletics

Sweaty Betty

Fujitsu

Aston University

Headlam

University of Birmingham

JUUL Labs Inc

The Knowledge Academy

Froneri International Limited

Work highlights

  • Advising World Athletics in respect of its global brand management and enforcement needs.
  • Providing strategic IP advice to Aston University on the university’s innovation strategy.
  • Advising Sweaty Betty in respect of the protection, exploitation and enforcement of its IP portfolio.

Freeths LLP

Freeths LLP is known for handling all types of intellectual property disputes, as well as its trade mark and brands practice, featuring three qualified trade mark attorneys. The team represents a number of notable clients, like Aldi, Travis Perkins and Poundland. Simon Barker  leads the team and has strong expertise in IP litigation and advertising and marketing advice. Iona Silverman leads the non-contentious IP practice, while Kishan Pattni  heads up the reputation management practice.

Practice head(s):

Simon Barker

Other key lawyers:

Iona Silverman; Kishan Pattni; Martin Noble

Testimonials

‘They have a great understanding of our business and the ability advise us in a commercial and practical way, whilst remaining professional.’

‘Very experienced team in soft IP, in particular trade marks / passing-off, and copyright and designs.’

‘Freeths’ IP team has spent time really getting to know our business and brand and what is particularly important to us. The team proactively advise on brand protection, key case law updates that may impact our brand and present their advice in a commercial, pragmatic way.’

‘Simon Barker and Michaela Selvester are always very professional but pragmatic.’

‘Simon Barker – very experienced in dealing with competing products to the market leaders. Is great at handling lay clients’ expectations and guiding them through the whole litigation process.’

‘Simon Barker is excellent – calm, pragmatic, experienced and will find every point.,

‘Iona Silverman – very experienced in soft IP matters, in particular trade marks and passing-off. Very level headed in reaching and advising upon a commercial settlement.’

‘Martin Noble has a good understanding of patent and design law, combined with sound strategic sense.’

Key clients

Aldi Stores Limited

We are TALA Limited

Lyle & Scott Limited

SikSilk

Eurocell Plc

Poundland

Self-Portrait

Travis Perkins

Barratt Homes

City Plumbing Supplies

Center Parcs

A-Safe HQ limited

William Hill

Mr Green

Tarmac

Charles Wells

Work highlights

  • Acted for Aldi in the highly publicised claim by M&S that Aldi’s Cuthbert the Caterpillar cake infringed trade marks in M&S’s Colin the Caterpillar cake.
  • Advise Aldi, often via its advertising agency, on all aspects of its advertising and marketing, including television, online and print adverts and social media marketing.
  • Instructed by high-end fashion brand Lyle & Scott (“L&S”) in a claim against global clothing giant, American Eagle Outfitters, Inc. (“AEO”) (market capital of $3.757billion). The claim is for passing off and breach of co-existence agreement in relation to the use of the parties’ respective eagle logos.

HGF Law

HGF Law has a standalone IP practice with expertise in contentious and transactional matters across all matters of IP including trade marks, copyright, designs and patents. The group has a particular focus on advanced manufacturing, healthcare, retail and food and drink. Marie McMorrow takes the lead, and handles disputes involving complex patent litigation, breaches of confidentiality, trademarks, anti-counterfeiting and copyright infringements. James Talbot and Christopher Robinson  are both important senior members of the team.

Practice head(s):

Marie McMorrow

Other key lawyers:

James Talbot; Chris Robinson; Rebecca Field

Testimonials

‘Have worked with HGF for many years so they know our business, their on line portal is also very useful.’

‘Marie McMorrow, main issue never lost a case, always there when needed.’

‘Rebecca Field, the most efficient and responsive person covering our Trade Marks.’

Key clients

Leon Restaurants Limited

Edinburgh Weavers Limited

Design Reality Limited

The Lakes Distillery Company plc

Welcome Eyewear Limited

Unibrands Limited

Extras Limited

The Curious Way Limited

Rotork plc

Equilabs

Amtico International Limited

AGA Rangemaster Group Limited

RAC Motoring Services

Holland & Barrett International Limited

Spirit AeroSystems, Inc

Full Support Healthcare Limited

Zaun Limited

Work highlights

  • Appealed to the Court of Justice of the European Union (CJEU) ( First Instance) against a decision of the EUIPO in favour of Zaun’s application to invalidate the EU registered design of Praesidiad BV ( formerly Betafence BV). Praesidiad is seeking to overturn the decision of the EUIPO and to reinstate its EU Registered Design.
  • Advise the client on a design right dispute against a competitor in the flooring sector and an ex-employee relating to the client’s signature merchandising displays used across over 200 independent Amtico retailers. Daniel Selmi instructed on behalf of Amtico.
  • Provide strategic brand planning advice on a global basis and advise on advertising, brand enforcement and infringement issues.

Shakespeare Martineau LLP

The team at Shakespeare Martineau LLP excels in handling litigation within the telecoms, construction, retail, life sciences and manufacturing sectors, a lot of which involves cross-jurisdictional elements. The firm also has a particular niche in handling a variety of non-contentious IP law issues for universities, especially regarding trade marks and licenses. The team is headed by Nicholas Briggs , whose work has an emphasis on patent litigation and other contentious work. Mauro Paiano  has experience in all forms of litigation before the high court and associate Daniel Goodall ‘s broad caseload includes IP creation, protection and enforcement mandates.

Practice head(s):

Nicholas Briggs

Other key lawyers:

Maruo Paiano; Kerry Russell; Daniel Goodall; Stewart Argo

Testimonials

‘Straight talking and considerate to the client’s specific needs. Great at building relationships that add value to the service for the client. Strong at IP litigation.’

‘Strong team, focused on detail with a commercial approach.’

‘A well balanced team that has both strength and depth, and so can allocate an appropriate level of expertise to each case and task.’

‘Daniel Goodall is a sharp performer with a keen eye for detail, and pragmatic advice.’

‘Mauro Paiano has a wealth of experience and expertise in all areas of IP, including trade marks, copyright and designs, and unusually for practitioners outside of London in patents as well. He gives very sensible, commercially focused advice.’

‘Nick Briggs. Excellent leadership and interpersonal skills.’

Key clients

Salts Healthcare Limited

Soluble Technologies Group LLC

Mzuri Ltd

Bei Yu Industrial Co

Primatel Limited & Primatel Products Limited

DeLorean Motor Company

Niftylift Limited

Novomatic AG

Rokit Drinks International Limited

Work highlights

  • Act for Salts Healthcare, a Midlands company and an international medical device manufacturer, which had been sued by Coloplast, the Danish  owner of a European patent for features of an ostomy bag
  • Enforcing trade mark rights for the “DeLorean” and “DMC” trade marks which are associated with the iconic DeLorean motor car which is featured in the film “Back to the Future”. The case reflects the need for the trade mark proprietor to protect its trade mark portfolio and its reputation, particularly in the face of damaging social media content posted online by the defendant.
  • Acted for Mzuri Limited in successfully defending a claim for infringement of two patents, in the Intellectual Property Enterprise Court (IPEC), by the manufacture and sale of our client’s flagship seed drill.

Shoosmiths LLP

Shoosmiths LLP has a particular level of experience in IP enforcement work for major consumer brands like Next and Volkswagen Group. The team also specialises in patent and design infringement matters for technology and life sciences clients. National team leader Andrew Brennan  is known for handling extremely contentious issues and advising on the commercialisation of IP assets. Victoria Bentley is prominent in the field of connected technology and advises clients on enforcement strategy and Dominic Murphy  is noteworthy for his experience as a trade mark attorney.

Practice head(s):

Andrew Brennan

Other key lawyers:

Victoria Bentley; Dominic Murphy; Nichola Jenkins

Testimonials

‘Very friendly, responsive and clearly on top of all our work and issues arising.’

‘There is a breadth and depth of expertise who understand the domain as well as the legal aspects.’

‘The IP team are incredible easy to deal with. They breakdown the issue quickly and offer pragmatic, commercially focused advice which I can quickly relay to the Board. They are experts at what they do.’

‘I have been impressed by the way this firm has embraced changes in technology including AI.’

‘The team demonstrated very good knowledge of the subject matter, both of letter and the practical aspects of the law, and were very helpful in guiding us through the matter.’

‘Andrew Brennan is my go to IP lawyer. I have a number of litigation/passing off claims where Andrew’s advice has been pragmatic and commercial. I wouldn’t use anyone else.’

‘The advice and support from Victoria Bentley over the last few months has been exceptional.’

‘Victoria Bentley exhibited a thorough knowledge of IPR law and practices and led our project brilliantly.’

Key clients

Next Retail

Volkswagen Group

Calor Gas

Lundbeck

Pharmacosmos

Ann Summers

The White Company

LK Bennett

Ideal Shopping

British Car Auctions

Topps Tiles

LifeArc

University of Nottingham

DataLase Ltd

Integral Powertrain Ltd

McDonalds

EasyGroup

DHL

Frog Bikes

Work highlights

  • Acting for Next Retail Ltd as the claimant in a copyright and unregistered design dispute with its competitor, Matalan.
  • Instructed to act for Topps Tiles, against Tiles Direct in the Intellectual Property Enterprise Court in July 2020 for trade mark and registered design infringement. The trial is currently fixed for May 2022
  • Instructed to act for Deramores Retail Limited (part of the Ideal Shopping Direct Group) to defend a claim for passing off, brought by a competitor Spectrum Yarns Limited, relating to the name of a particular line of yarn

Mills & Reeve LLP

Mills & Reeve LLP works for a varied number of private and public sector clients within the automotive, higher education and healthcare sectors. Claire O’Brien leads the practice with a specialty in contentious IP and a focus on trade mark, passing off, design and copyright litigation. Senior associate Natalie Welch is also very experienced with contentious work.

Practice head(s):

Claire O’Brien; Mark Pearce

Other key lawyers:

Natalie Welch; Fay Lyttle; David Hall

Testimonials

‘The personal service and the fact they explain everything to you in terms and ways you can understand.’

‘Their lawyers are first class and have a brilliant knowledge of the law and sectors in the areas in which they operate.’

‘Very responsive and capable team who dealt with our Intellectual property issue quickly and efficiently with high levels of communication and transparency.’

‘As well as providing the legal advice, they are well aware of the commerciality in dealing with issues.’

‘I work with Claire O’Brien in this context. I have always found her responsive, efficient and helpful, with a “can-do” attitude to the projects she\’s involved with.’

‘I have worked with Claire O’Brien, a fantastic lawyer, knowledgeable and personable. Knows what I want and the right way to go about it.’

‘Natalie Welch – Natalie provides valuable, practical and pragmatic assistance on our contentious IP matters.’

Key clients

SWIS Distribution Ltd and Steven Jewell

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

FIDAL on behalf of Involvex S.A.

Jaguar Land Rover Limited

(1) The Chancellor, Masters and Scholars of the University of Cambridge (2) IELTS Australia Pty Limited (3) The British Council

BOXT Limited

OPES Corporation Oy

Joint Council for Qualifications

Birmingham City University

All Fill International Limited

Work highlights

  • Advising Jaguar Land Rover on its applications to register the shape of its heritage Defender vehicle as a 3-dimensional trade mark.
  • On behalf of The Agricultural and Processed Food Products Export Development Authority (“APEDA”) Advising on trade mark protection of the “Basmati” name as an indicator of a particular class of rice. Successfully appealed to the General Court which upheld extended passing off as a ground of opposition.
  • Providing urgent advice to SWIS Distribution which faced an interim injunction application from its former US supplier. This was a “David and Goliath” battle which we helped the client to navigate successfully.

Wright Hassall LLP

Wright Hassall LLP has a strong focus in the automotive sector, being the legal patron of industry body Made in the Midlands. The team has experience handling a wide range of branding and trade mark issues. Team head Rhys Jarman handles copyright disputes involving computer software and is the firmwide sector lead for digital gaming.

Practice head(s):

Rhys Jarman

Testimonials

‘Iain Colville and Rhys Jarman are both absolutely top-notch. Great strategists with attention to detail to match.’

‘The team at Wright Hassall go above and beyond at every opportunity. They look to understand clients requirements, applying their legal expertise and attention to detail at every junction, providing the highest standard of service. I would not hesitate to use them going forward.’

‘Rhys Jarman – Whilst being an extremely experienced and knowledgeable legal practitioner, Rhys never fails to speak to you as an individual and in a language you understand. He takes the time to understand issues, explains where he needs more details and then collates all the information into a comprehensive legal argument. He makes difficult processes as painless as possible and I would recommend him without hesitation.’

‘The IP team at Wright Hassall is very professional and responsive, with no matter being too great or too small. The quality of the advice is outstanding, with even the most complicated scenarios being made easy to comprehend and digest.’

‘Rhys Jarman, Iain Colville and Luke Moulton are all extremely knowledgeable and very friendly, offering direct and easily accessible advice based on a wealth of practical experience.’

 

Key clients

Wasps Holdings Limited

MG Motor UK Limited

Scholastic Limited

Coventry City of Culture Trust

Vital Power Limited

Tumble Tots (UK) Limited

Royal Agricultural Society of England

Tata Technologies Europe Limited

Epwin Group plc

Maxi Caledonian Limited

Work highlights

  • Advised an innovative supplier of personal care products on a number of alleged design right infringements against competing retailers and manufacturers.
  • Advised a well-known events’ organiser in relation to a trade mark licence with an exclusive service supplier. We advised in particular on the impact of the COVID-19 pandemic and related issues.
  • Advised a medical indemnity insurer in respect of the defence of High Court proceedings for an alleged infringement of database rights and an alleged misuse of confidential information by a former employee of the claimant, another medical indemnity insurer.