Intellectual property in West Midlands

Browne Jacobson LLP

Browne Jacobson LLP's 'responsive and pragmatic' group has a highly regarded IP practice, which assists major national and international companies across various sectors, including the retail, manufacturing, hospitality and financial services industries, with contentious, regulatory and transactional matters. Birmingham group head Mark Daniels has notable expertise in patent, trade mark and copyright litigation, with a particular focus on the hi-tech sector. Legal director Bonita Trimmer is also a key member of the team and is recognised for her wealth of experience in design and brand litigation. Described by clients as 'incredible to work with', associate Nick Smee is also a key name to note.

Practice head(s):

Mark Daniels

Other key lawyers:

Bonita Trimmer; Nick Smee

Testimonials

‘Great team that understands our needs and works efficiently to accomplish our goals. I interact with roughly 35 outside firms both in the US, the UK and around the world and this is one of the top performing firms in this area.’

‘Mark Daniels – easy to connect with. Does great work with and thinks through our legal issues from a business perspective. Expect to work with Mark for many years to come.’

‘Mark Daniels – very good on detail, good commercial sense.’ 

‘Nick Smee, senior associate has been incredible to work with. He continuously lets me know what’s coming, provides strategy of what the other side could do and what we can do if they do certain things. He would make a fantastic chess player as he’s very clinical on what move he makes and has thought through all scenarios and discusses them with me prior to acting.’

Key clients

Aston Martin Lagonda

A-Ward Attachments

PAMIA Limited

Mace Group

BFY Brands

Lotus Cars

Marstons PLC

DPD

University of Hertfordshire

Bollin Group

GKN Aerospace

Hyperice

Kings College London

Goodyear Dunlop

BodyGlide

Brunel University London

Work highlights

  • Advised Lotus Cards on a development agreement for a new electric car platform; advised on the partnership agreement between Lotus and University of Warwick on the establishment of a new advanced technology centre; advised Lotus on its patent filing strategy as well as its global trade mark portfolio.
  • Representing A-Ward in patent infringement proceedings brought against Fabcon Engineering in the IPEC and in relation to “freight container tilting apparatus.”
  • Defended BFY Brands against trade mark infringement and passing off proceedings brought by Corkers Crisps Limited.

DLA Piper

With particular strength in the media, retail and hospitality industries, DLA Piper's team handles a broad portfolio of contentious and non-contentious IP matters, often involving a cross-border element. Team co-head Richard Taylor has developed a strong reputation in IP litigation, whereas fellow co-head Gareth Stokes is best known for handling licensing, exploitation, development and collaboration agreements. Satnam Sahota is another core member of the team, with a notable track record in patent litigation; he is currently representing the Premier League in High Court proceedings regarding brand protection issues. Associate Harriet Arena De La Mora is also recommended.

Practice head(s):

Richard Taylor; Gareth Stokes

Other key lawyers:

Satnam Sahota; Harriet Arena De La Mora

Testimonials

‘DLA Piper has strong IP teams in Leeds, Sheffield, Birmingham and London. They are efficient, robust and insightful. They are particularly good at identifying the client’s commercial goals and using litigation to ensure that they are met.’

‘Satnam Sahota – a strong operator in the field of trade mark and passing off litigation. He manages complex litigation and disclosure exercises well.’ 

Key clients

Premier League

Iconic Labs/ Greencastle

Smile Direct Club

Medtronic

Unicef

Thomas International

Alpinestars

Syneos

UK Research & Innovation

Heineken

Work highlights

  • Acting for the Premier League in relation to a large scale pan-UK enforcement action for copyright infringement.
  • Represent Greencastle in the High Court regarding its passing off claim against world-renowned former professional rugby players James Haskell and Mike Tindall, and well-known TV presenter Alex Payne.
  • Represented Alpinestars in its claims against Dainese alleging the invalidity of two European patents.

Gowling WLG

Gowling WLG's 'passionate and responsive' team, which is split between Birmingham and London, specialises in patent litigation and brand protection work, spanning numerous sectors including the manufacturing, life sciences and advertising industries. The firm recently advised AstraZeneca on its landmark collaboration with Oxford University to develop a Covid-19 vaccine. The 'very pragmatic' Kate Swaine is highly regarded for her strong track record in brand strategy and enforcement matters, having assisted various multinational companies with global IP portfolios. Patrick Duxbury utilises his background as a microbiologist and geneticist to provide life sciences clients with detailed advice regarding collaboration and IP arrangements. Associate Michael Carter is also recommended for his expertise in IP licensing and enforcement work.

Practice head(s):

Kate Swaine

Other key lawyers:

Patrick Duxbury; Michael Carter

Testimonials

‘Gowling is able to quickly assemble, run and deploy the needed experts for complex matters, namely litigation. No matter the opponent they were able to win the case.’

‘A top rate IP team based in Birmingham and London. Very experienced and skilled IP litigators.’

‘Client focused team who are collegiate and good to work with on contentious patent and trade mark infringement cases. Superb track record of winning difficult disputes.’

‘The team is keenly aware of the complexities in this area, including the intersection between these fields and other areas such as privacy.’

‘Approachable, excellent knowledge of legislation and case law, astute and wholly relevant legal and practical client advice.’

‘A very modern practice, always ahead of developments, unique international collaboration – the team is really integrated also culturally. Very diverse team.’

‘Kate Swain is the best – a real leader of the international IP group at Gowling.’

Key clients

InterDigital

Neurim Pharmaceuticals

Oatly AB

Comcast/Sky

Aston Martin Lagonda

Kingspan

Hextatronic Group

Freddy SpA

AstraZeneca

Sosei Heptares

Work highlights

  • Advising InterDigital on its cases of validity and infringement in respect of the patents in suit, and working to develop its FRAND case.
  • Acting for Neurim in a UK dispute with Generics UK concerning Mylan’s proposed generic copy of Neurim’s highly successful melatonin product, Circadin.
  • Advising Oatly on a number of different brand, advertising and reputational issues.

Pinsent Masons LLP

With particular strength in the higher education and life sciences industries, Pinsent Masons LLP leverages its national team to advise clients on licensing, brand enforcement and data protection matters and trade mark litigation. Cerys Wyn Davies is highly regarded for her work for technology and life sciences clients, which includes handling licence agreements, data transfers and matters involving the use of artificial intelligence and digital technology. Tom Nener, who leads the firm's brand protection and creative rights team, assists clients with the registration of new patents, designs and trade marks, while Jo Alderson is a key member of the firm's transactional IP practice. Associate Katy Bourne is also recommended.

Practice head(s):

Cerys Wyn Davies; Tom Nener; Jo Alderson

Other key lawyers:

Katy Bourne

Testimonials

‘One of the team’s best qualities is the application of pragmatic legal advice. They have recently introduced an innovative technology product around maintaining a client’s IP portfolio.’

‘Pinsents IP team is fantastic. A real of variety of experience be it soft or hard IP. They work hard to be purpose led by ensuring they stay on top of clients needs. Tom Nener particularly stands out.’ 

‘Pragmatic, appropriate, calm and considered when in negotiations. Sensible commercially considered advice given.’

‘Our main contact is Cerys Wyn Davies who I cannot recommend highly enough. Cerys is an expert in her field and we use her for our IP and data protection matters. She understands our business, which is complex, and can provide pragmatic advice. She is always available at short notice for urgent matters and provides an excellent service for us.’

‘Tom Nener – incredibly skilled at making the adversary trip up on their own words and discerning the wood from the trees. During a complex, multi-jurisdictional dispute, we have managed to maintain consistency throughout, which has started to result in many wins throughout the world. We have Tom to thank for keeping us on track, and fighting our corner to the nth degree.’

Key clients

The Financial Times Group

E.ON

Sage Group Plc

University of Manchester

The Robert Bosch Group

ISS

INTO University Partnerships

Aston University

Ferm Living

BP Technology Ventures

Juul Labs Inc

Work highlights

  • Advising and supporting The University of Manchester Innovation Factory on the negotiation and conclusion of an exclusive, worldwide licence agreement and collaborative research funding agreement between The University of Manchester and US-based leading clinical-stage gene therapy company AVROBIO.
  • Acting for Juul Labs Inc on all of its brand enforcement activities in the UK, including in relation to counterfeit goods.
  • Advising Oovee on a licence agreement with Saber underpinning the development of console ports and enhancements to the original Spintires PC game.

Freeths LLP

Freeths LLP's team, which includes trade mark attorneys, handles the full spectrum of IP issues for large national and international clients with a presence in the Midlands. With over twenty years of experience, Simon Barker is well versed in trade mark, patent, design and copyright transactions and disputes, acting before various bodies including the UK Intellectual Property Office and EUIPO. London-based partner Iona Silverman, who joined the firm from Baker McKenzie in November 2020, frequently assists Barker with national and international IP transactions and joint venture agreements. 'Commercial and pragmatic' managing associate Kishan Pattni is recognised for his strength in reputation management and brand protection work.

Practice head(s):

Simon Barker

Other key lawyers:

Iona Silverman; Kishan Pattni

Testimonials

‘Have developed an excellent understanding of the world within which they offer advice and legal assistance. A long history of working within this sector has developed strong grounding and background/context to allow for good, early decision making.’

‘The firm provide an unparalleled and comprehensive IP service, assisting with multinational projects and complex licensing arrangements.’ 

‘Simon Barker – readily available to provide advice on a myriad of different issues related to IP law.’

‘Simon Barker – top notch understanding of the commercial and legal issues in the IP field.’

‘Iona Silverman – wonderful client handling skills.’

Key clients

DBS Limited trading as SikSilk

Queen Mary University of London

Visual Foods Holdings Ltd

Oaktree Capital Management UK LLP

Aldi Stores Limited

HI55 Ventures Limited

Hastee Technologies Limited

Carlsberg

MyNexus Limited

Tarmac

Poundland

Eurocell PLC

Angiodesign Ltd

Incora

DBS Clothing Ltd T/A SikSilk

Travis Perkins

Work highlights

  • Defending Aldi in a High Court claim brought by Beiersdorf in which Beiersdorf alleges that Aldi’s Lacura sun screen infringes Beiersdorf’s trade mark rights regarding its Nivea sun screen bottle.
  • Drafted and negotiated agreements for SikSilk with a number of celebrities, including international footballers and their management companies, a singer/songwriter with over a million Instagram followers and a junior celebrity for the promotion of kids’ clothing.
  • Advised Carlsberg on its £780m deal with Marston’s plc to form a new joint venture beer company in the UK, Carlsberg Marston’s Brewing Company.

HGF Law

'Stellar IP practice' HGF Law has particular expertise in transactions and litigation involving aviation, manufacturing, retail and hospitality clients. It also has strong experience in contentious matters, with several members of the team regularly handling cases before the IPEC, the High Court and the Court of Appeal. Marie McMorrow, who is singled out for her 'laser-like focus and relentless energy', is regularly instructed by clients engaged in IP litigation, encompassing trade mark, patent, copyright and breach of confidentiality matters. Associate James Talbot stands out for his experience in brand management work and licensing agreements.

Practice head(s):

Marie McMorrow

Other key lawyers:

James Talbot

Testimonials

‘A stellar intellectual property litigation practice with huge experience.’

‘HGF have provided expertise that is specific to our requirements across a broad range of needs. From IP litigation to international contracts for distribution and sales, HGF have proved to be proactive and rigorous when providing the services we need in a timely manner. The costs are very competitive in comparison with other law firms, and the broad range of expertise has allowed HGF to handle the diverse elements of law through a single partner for clarification and ease of communication.’

‘Marie McMorrow has been the legal adviser and partner of our business for over sixteen years and has always been relevant to our changing needs. Marie has acted as both adviser and partner for her specialties and has brought in other specialists where required. Regardless of the time or day, Marie is always there to help, and having been the lead solicitor in the High Courts for our business, has proved her worth under the most rigorous examination of our position and succeeded in bringing about a positive outcome in all instances.’

Key clients

Alan Nuttall Limited

Full Support Healthcare

Hobbs Limited

RAC

The Good Birth Company Limited

Zeus

Shiftec

AGA Rangemaster Group

Amtico International Limited

D.O.R.C International BV

E.Mishan and sons Inc

Blue Gentian LLC

Hadley Industries plc

Holland and Barrett International Limited

Maher Engineering Limited

Ricardo plc

Spirit AeroSystems, Inc

Zaun Limited

Work highlights

  • Represented E. Mishan & Sons and Blue Gentian in a long-running patent dispute with Hozelock, culminating in Court of Appeal proceedings.
  • Acting for Full Support Healthcare Limited, a leading supplier of medical equipment and PPE, in trade mark infringement claims against UK importers.
  • Advising Zeus Juice UK on all aspects of its IP, including the creation and development of its UK and pan-European brand portfolio.

Shakespeare Martineau LLP

Shakespeare Martineau LLP's 'very efficient and sensible' team excels in IP litigation involving manufacturing, telecoms, construction, retail and life sciences clients. In addition, the firm has a niche in assisting universities with trade mark infringement and passing off disputes, as well as drafting comprehensive IP rights policies. Nicholas Briggs has a broad practice and excels in patent exploitation and litigation matters, while Mauro Paiano is well-versed in all forms of IP litigation before the UKIPO, EUIPO and the High Court. Associate Daniel Goodall stands out for his varied caseload, which encompasses IP creation, protection and enforcement mandates.

Practice head(s):

Nicholas Briggs

Other key lawyers:

Mauro Paiano; Daniel Goodall

Testimonials

‘Very sound knowledge of the whole range of IPRs, and so can advise all businesses fully on their IP needs.’

‘An excellent firm at all levels. National quality service at out of town rates; and they seem to win all their cases too.’

‘The team provides practical, commercially savvy legal insights that address client needs.’

‘Nicholas Briggs – one of the most determined and competitive solicitors I know.’

‘Mauro Paiano – very calm, provides solid advice upon which the client can rely with confidence.’

‘Nicholas Briggs is easy to work with; diligent and bullish when necessary.’

Key clients

Salts Healthcare Limited

Poundland Limited

Mzuri Ltd

Bei Yu Industrial Co

Primatel Limited & Primatel Products Limited

Volumatic Limited

Work highlights

  • Advising Salts Healthcare Limited in connection with High Court patent proceedings and parallel opposition proceedings at the European Patent Office, where the validity of the patent is being challenged across Europe.
  • Advising Mzuri Limited regarding parallel patent proceedings in the Intellectual Property Enterprise Court and the European Patent Office.
  • Advising Poundland Limited in relation to a case brought by Globefill, which raises interesting questions regarding the protection of shapes through registered designs and trade marks.

Shoosmiths LLP

Shoosmiths LLP frequently advises consumer brands, including Volkswagen Group and Next, in relation to IP enforcement work. In addition, the team has also amassed a wealth of experience in patent and design infringement matters involving technology and life sciences clients. Andrew Brennan is known for handling complex contentious issues across various industries, including trade mark infringement claims and patent litigation. Victoria Bentley also has a wealth of experience in IP litigation, with a particular focus on the technology sector. Trade mark attorney Dominic Murphy is also recommended.

Practice head(s):

Andrew Brennan

Other key lawyers:

Victoria Bentley; Dominic Murphy

Testimonials

‘The team has grown considerably over recent years and has a good mix of IP-related skills. The key aspect of their approach, from my perspective, is the practicality of their advice. They listen to the client’s aims, and resources, and tailor their advice accordingly. Moreover, in such a male dominated profession, it is good to see so many female solicitors on the team — which also seems to help with the balanced, practical advice they give.’

‘Ability to cut through to the core issues without use of unnecessary legal jargon. The willingness to align their service at all times with our needs, budget and desired outcomes.’

‘Victoria Bentley’s guidance and advice has always been strategic and fair with the long term objective in mind.’

Key clients

Next Retail

Volkswagen Group

Calor Gas

Lundbeck

Pharmacosmos

Ann Summers

The White Company

LK Bennett

Topps Tiles

University of Nottingham

DataLase Ltd

Integral Powertrain Ltd

Spicer Consulting

Connected Places Catapult

McDonalds

EasyGroup

DHL

Work highlights

  • Represented Topps Tiles direct against Tiles Direct in the Intellectual Property Enterprise Court for trade mark and registered design infringement.
  • Acted for Marine Information Solutions in relation to a claim against a former employee for breach of his employment contract and misuse of confidential information.
  • Advised Hilco on the sale of the Warehouse and Oasis brands, to online fashion retailer BooHoo for £5.2m.

Mills & Reeve LLP

With a varied roster of private and public sector clients, Mills & Reeve LLP is best known for its expertise in trade mark litigation and the related regulatory matters. Claire O’Brien, who leads the firm's national IP litigation practice from Birmingham, has strong credentials in trade mark, design, copyright and patent litigation throughout the UK court system. Senior associate Natalie Welch is also very experienced in contentious IP work.

Practice head(s):

Claire O’ Brien

Other key lawyers:

Natalie Welch

Key clients

Jaguar Land Rover Limited

All Fill International Limited

K&S Partners

HDI Global Speciality SE

Canniffe Data Services Limited

Joint Council for Qualifications

The English Golf Union Limited

IKON Gallery

Black Country Living Museum

Black Country Healthcare NHS Foundation Trust

Birmingham City University

Akerman LLP

Work highlights

  • Assisted Jaguar Land Rover with its application to register the shape of its (heritage) Defender as a 3 dimensional trade mark.
  • Advised the Joint Council for Qualifications and its members on an enforcement action to shut down numerous websites selling fake examination certificates.
  • Advised The Agricultural and Processed Food Products Export Development Authority in relation to enforcing the exclusivity of the name “BASMATI” for rice, including proceedings before the General Court.

Wright Hassall LLP

With a particularly strong presence in the manufacturing, automotive and digital technology sectors, Wright Hassall LLP focuses primarily on IP litigation. 'Tenacious litigator' Rhys Jarman frequently handles copyright disputes involving computer software and photography companies; in addition, he has a strong track record in advising clients on the protection and enforcement of product designs and trade marks.

Practice head(s):

Rhys Jarman

Testimonials

‘Pragmatic advice and access to good multi-disciplinary teams.’

‘Rhys Jarman – great at explaining the issues quickly and always able to offer a quick response; a very safe pair of hands. Takes time to understand our businesses and the sectors that we operate in.’

‘Rhys Jarman is an excellent client communicator and a tenacious litigator who never loses sight of the pragmatic interests of his clients.’

Key clients

Wasps Holdings Limited

MG Motor UK Limited

Scholastic Limited

Coventry City of Culture Trust

Antolin Interiors UK Limited

Tumble Tots (UK) Limited

Butchers Pet Care Limited

Maxi Caledonian Limited

Tata Technologies Europe Limited

Epwin Group plc

Work highlights

  • Advised an international publishing house in relation to a dispute with a major competitor and an ex-employee concerning breach of confidence, copyright infringement and database rights infringement.
  • Advised a leisure equipment manufacturer and retailer in respect of a dispute concerning the ownership of a patent application.
  • Advised a digital font foundry in relation to a number of claims against third parties which have used the client’s bespoke digital fonts.

Eversheds Sutherland (International) LLP

In 2020, Eversheds Sutherland (International) LLP expanded its team with the recruitment of trade mark attorney Katie Smith from Stobbs IP. The newly bolstered practice focuses on patent, trade mark and copyright matters, predominantly on the non-contentious side. Among recent highlights, the team advised Ingevity Corporation on the IP aspects of its $590m cross-border acquisition of Perstorp Group's business. Rupert Bent handles a varied portfolio of contentious and transactional IP matters, including licensing, branding and R&D agreements.

Practice head(s):

Rupert Bent

Other key lawyers:

Katie Smith; Lisa Highet

Testimonials

‘I was impressed with the commercial awareness of the intellectual property team. They also turned around complex drafting in reduced timelines understanding the time pressure in-house lawyers are often under.’

‘Rupert Bent has a pragmatic and commercial approach. Other experts in the field I have found are able to identify issues but not able to offer pragmatic commercial solutions in the same manner as Rupert.’ 

‘Lisa Highet – personable and efficient, able to work under tight timelines.’

Key clients

National Grid PLC

University of Westminster

Tombola Limited

Manchester International Festival

Halewood International Limited

Genting Casinos UK Limited

Work highlights

  • Advising National Grid on various matters, including its contracts for the provision of cutting-edge technology projects and collaborative agreements with joint venture companies.
  • Assisting the University of Westminster with its entire IP portfolio and strategy, including employment contracts and lecture capture policy.
  • Advising Tombola in relation to the IP aspects of various transactions and branding matters.