Intellectual property in West Midlands

Browne Jacobson LLP

Browne Jacobson LLP impresses with its 'excellent advisers and real depth to the team' and its strong client roster of household names and brands across multiple industries. The team is led by Mark Daniels, who specialises in contentious patent, trade mark, database right and copyright cases. Cerryg Jones is a well-respected litigator, handling complex and high-value claims involving trade marks and designs. Director Bonita Trimmer stands out for her extensive expertise in brands and design disputes, while senior associate Nick Smee is ' personable and professional' and recommended for non-contentious work including advising on technology agreements and patent licences.

Practice head(s):

Mark Daniels

Other key lawyers:

Bonita Trimmer; Cerryg Jones; Nick Smee

Testimonials

‘Browne Jacobson’s willingness to work creatively with its clients around sourcing, resourcing and delivering legal support remains a massive part of the culture of the firm and bears fruit for its clients. Their pragmatic approach to the legal work and their clear advice makes it easy to treat them as an extension to the team.’

‘In many ways Browne Jacobson offers the best of both worlds. Excellent advisers and a real depth to the team, but more cost effective than going to the one of the more traditional big city firms.’

‘From the Birmingham office, Nick Smee is a stand out for us. Nick’s personable, professional and willing to go the extra mile’

Key clients

Wolverhampton Wanderers Football Club

Goodyear Dunlop

Marstons PLC

Sunrise Records

PZ Cussons

Aston Martin Lagonda

Work highlights

  • Successfully defended Wolverhampton Wanderers FC in a copyright infringement claim relating to the club’s iconic wolf head design.
  • Advising Goodyear Dunlop in connection with trade mark enforcement matters, the UK aspects of its European enforcement programme concerning the parallel importation of tyres, and other issues.
  • Acting for retailer, KLK Forte Industry, in trade mark enforcement and opposition claims against a competitor. The claims relate to novel registered trade mark cases in which allegations of invalidity are based on ‘evergreening’.

Gowling WLG

Gowling WLG is an IP powerhouse with particular depth of expertise in the telecoms, life sciences, brands, automotive and food and drink sectors. The practice also fields a team of technical specialists including Luke Kempton and Patrick Duxbury, who has a background in biochemistry, biotechnology and microbiology. The group is also well regarded for trade mark infringement claims, passing off cases, brand strategy issues and enforcement work, often with an international angle. Key figures include Kate Swaine for branding and portfolio management issues; Nick Cunningham for patent and copyright disputes; and principle associate Michael Carter for litigation involving patents and autonomous vehicles. Litigator Gordon Harris is co-head of the global IP team.

Practice head(s):

Gordon Harris

Key clients

TQ Delta, LLC

Hexatronic Group AB

Pear Technologies Ltd

Shnuggle Ltd

Weetabix

AstraZeneca

Work highlights

  • Defending Hexatronic Group against a competitor in a patent infringement claim relating to the design of the thermoplastic outer sheath coatings of fibre optic cables.
  • Advised longstanding client AstraZeneca on a $6.9bn cancer drug collaboration agreement with Daiichi Sankyo Company.
  • Advising on all aspects Weetabix’s global brand portfolio including brand strategy, clearance and advising on trade mark, copyright and design right infringement issues.

DLA Piper

DLA Piper is highly recommended for the cross-border IP portfolio management issues, licensing arrangements, branding work and design matters. The firm also has a strong record acting for clients at all court levels in trade mark infringement, copyright infringement and domain name disputes. Richard Taylor handles transactions and disputes for global household brands in the consumer goods, life sciences and technology sectors. Gareth Stokes focuses on IP-driven transactions including licensing matters and exploitation and collaboration agreements, for which senior associate Satnam Sahota is also of note.

Practice head(s):

Richard Taylor

Other key lawyers:

Gareth Stokes; Satnam Sahota

Testimonials

‘They are responsive and provide intelligent and practical advice.’

‘Satnam Sahota was supportive and also assertive with the parties with whom we were negotiating. He took no prisoners but was polite and professional in his dealings with the other parties.’

 

Key clients

Premier League

Heineken

UK Research & Innovation

Smile Direct Club

Lotus Cars

Unicef

Work highlights

  • Acting for the Premier League in a UK-wide enforcement action for copyright infringement.
  • Advisng Heineken on its entire UK trade mark portfolio, from rights clearance issues to trade mark and company name disputes.
  • Advised Lotus Cars on its IP holding arrangements, including drafting and advising on internal R&D contracts and external IP licences.

Freeths LLP

Freeths LLP attracts praise for its 'responsive and practical team' which is 'not shy to give commercial recommendations.' The group provides the full breadth of services, with an integrated trade mark and design filing and prosecution offering. Other areas of expertise include patent litigation, licensing issues and brand protection work. Simon Barker is 'a real expert in his field with a commercial edge'; Kishan Pattni and 'practical and a quick-thinkerRhian Banks, who is a trade mark attorney, are also highly recommended.

Practice head(s):

Simon Barker

Other key lawyers:

Kishan Pattni; Rhian Banks

Testimonials

‘Great value for money, a responsive and practical team. Not shy to give commercial recommendations.’

‘Simon Barker – Extremely responsive and great at what he does. A pleasure to work with.’

‘The team is comprised of a good mix of lawyers and trade mark attorneys so I find that the requirements of the business are well served in one team. There is a good span of experience and I have found the advice to be both timely and commercial.’

‘Simon Barker – very knowledgeable. A real expert in his field with a commercial edge.’

‘Rhian Banks: had all of the details of the case at her fingertips; practical and a quick-thinker; always available to discuss the case as needed.’

Key clients

Aldi Stores Limited

Tarmac

Travis Perkins

William Hill

Poundland

Eurocell Group Plc

Work highlights

  • Successful represented Poundland in opposition proceedings against third- party trade mark applications for FIVEPOUNDWORLD and 5POUNDWORLD.
  • Defended Aldi Stores in a claim for copyright infringement relating to a make-up compact by Charlotte Tilbury.
  • Acted for Visual Foods Holding in the Intellectual Property and Enterprise Court in trade mark infringement and passing off claims relating to the import and sale in the UK of chicken in allegedly counterfeit packaging.

HGF Law

Intellectual property specialist firm HGF Law has a notable breadth of experience in the electronic, engineering, life sciences and brands sectors. The Birmingham team, which is led by Marie McMorrow, acts for clients in big-ticket patent and trade mark litigation, counterfeiting and protected designation of origin disputes and copyright infringement claims and also handles transactional IP work. The firm also has a patent, design and trade mark registration practice.

Practice head(s):

Marie McMorrow

Key clients

AGA Rangemaster Group

E.Mishan and sons Inc and Blue Gentian LLC

Spirit AeroSystems, Inc

Zaun Limited

Amity Limited

Amtico International Limited

Holland and Barrett International Limited

Vivid Arts Limited

Work highlights

  • Advising Spirit AeroSystems, Inc on Airbus’ Fuselage of the Future project, including the high-value Phases 1 and 2 of an R&D programme for new-generation aircraft fuselage and licence arrangements.
  • Represented E.Mishan & Sons Inc and Blue Gentian LLC as inventors and claimants in patent infringement proceedings against Hozelock Limited.
  • Successfully brought IPEC proceedings for Amtico International against two unauthorised online distributors of its products for copyright infringement arising from the unauthorised use of Amtico’s library of product images.

Pinsent Masons LLP

Cerys Wyn Davies leads the Birmingham practice at Pinsent Masons LLP and specialises in technology-driven IP and data issues relating to licensing work, collaboration arrangements and M&A transactions. The firm is also a key name for patent litigation and corporate transactions, with a strong client base comprised of technology and life science companies, universities and retailers. Director and 'standout litigator' Tom Nener joined the group in mid-2019 from HGF Law and is highlighted for his 'technical brilliance and strategic insight' in relation to brand development and strategic protection work. The 'technically proficient' Jo Alderson and associate Katy Bourne are also highly recommended.

Practice head(s):

Cerys Wyn Davies

Other key lawyers:

Tom Nener; Jo Alderson; Katy Bourne

Testimonials

‘Tom Nener is the whole package. He combines technical brilliance with strategic insight and always has a knack of achieving what the client wants. He is responsive, commercial and personable. Tom is always one step ahead of his opponents and is a standout litigator in all fields of Intellectual Property law.’

‘Jo Alderson is both technically proficient and commercially pragmatic. She remained exceptionally calm during a high pressure transaction and managed stakeholders on both client side and the other side with great assurance and patience helping us navigate some emotionally charged issues to a successful outcome for all sides.’

Key clients

JUUL Labs UK Holdco Limited

Rolls Royce

The Financial Times Group

Smith & Nephew PLC

ISS

E.ON

Halfords

Work highlights

  • Represented JUUL Labs in its brand enforcement activities, including issuing proceedings against multiple infringers and obtaining 16 interim injunctions.
  • Advised Halfords on the acquisition of the intellectual property in the core software assets relating to its online mobile tyre and car part delivery and fitting service from its previous supplier, which is in administration.
  • Advised Coventry City Council on the intellectual property aspects of its £150m development of an innovative affordable tram system utilising light rail technology.

Shakespeare Martineau LLP

Shakespeare Martineau LLP is a 'very well regarded all-round IP firm' in the Midlands, with a depth of experience in trade mark enforcement work and design and patent infringement disputes. In the non-contentious space, the team is instructed by universities to advise on the IP implications of strategic partnerships with overseas universities, the registration of trade marks and licenses and the drafting of IP rights policies. Patent litigator Nicholas Briggs is 'exceptionally strong across the board', as is Mauro Paiano, who represents clients in IP litigation.

Practice head(s):

Nicholas Briggs

Other key lawyers:

Mauro Paiano

Testimonials

‘The IT team are really on top of current law and practice, they are true specialists, and they are practical in their advice and maintain a commercial perspective.’

‘Very well regarded all round IP firm.’

‘Mauro Paiano is great to work with, leads his team well, knows his industry well and is just a really pleasant reasonable guy.’

‘Mauro Pianano – capable of advising across the whole range of IP, patents, trade marks, copyright, designs.’

‘Nicholas Briggs is exceptionally strong across the board.’

Key clients

Marflow Engineering

Poundland Ltd

Multi Access Ltd

Salts Healthcare

Mzuri Ltd

Volumatic Ltd

Work highlights

  • Representing plumbing manufacturer Marflow Engineering in a patent infringement claim to enforce its patent against competitor, Cassellie.
  • Defending Mzuri Limited, a manufacturer of agricultural machinery equipment, in complex patent infringement claims involving two patents and overlapping proceedings before the European Patent Office.
  • Advised Poundland on High Court proceedings issued by over-the-counter pharmaceutical manufacturer Thornton & Ross.

Mills & Reeve LLP

Claire O’Brien is the key contact for contentious IP work at the Birmingham office of Mills & Reeve LLP; she has extensive courtroom experience in the Intellectual Property Enterprise Court, High Court and Court of Appeal in disputes involving trade marks, designs, copyright, patents and breaches of confidence. Senior associate Natalie Welch is also recommended for IP protection, exploitation and enforcement work, particularly in the automotive sector.

Practice head(s):

Claire O’Brien

Other key lawyers:

Natalie Welch

Testimonials

‘A great service, with top-quality lawyers.’

‘Claire O’Brien is a great IP litigator, who is easy to work with and keeps her clients’ interests at the top of the agenda.’

Key clients

Jaguar Land Rover Limited

Institution of Engineering and Technology

Manchester Underwriting Management Limited

VetPartners Limited

Work highlights

  • Advising Jaguar Land Rover on its applications to register the shape of its Defender vehicle as a 3D trade mark.
  • Advising the Institution of Engineering and Technology on numerous copyright infringement matters relating to the unauthorised copies of IET publications, primarily the IET Wiring Regulations BS 7671.
  • Acting for Manchester Underwriting Management in copyright infringement claims relating to the unauthorised reproduction of architect’s plans for the proposed redevelopment of a commercial and residential property.

Shoosmiths LLP

Andrew Brennan leads the UK-wide IP practice at Shoosmiths LLP and has a notable reputation representing clients in the technology, engineering and consumer brand sectors in IP litigation involving the technical aspects of patents, confidential information and software. Other core areas of work include handling IP commercialisation arrangements, brand protection issues and licensing matters. Victoria Bentley stands out for high-tech patent litigation and IP work in the telecoms and life sciences sectors.

Practice head(s):

Andrew Brennan

Other key lawyers:

Victoria Bentley

Testimonials

Andy Brennan provides a good figurehead for this team. The best aspect of the team is the practicality of the advice, taking into account both commercial and legal aspects.

Shoosmiths have exceptionally broad experience in IP associated transactions, they provide clear guidance on risk as well as creative approaches to solving complex issues.

Victoria Bentley: super clever, very diligent, listens and produces works of the highest standard.’

Key clients

Connected Places Catapult

DataLase (a SATO group company)

University of Nottingham

easyGroup

Antimicrobial Resistance Centre (AMRC)

Work highlights

  • Advising the University of Nottingham on a large number of R&D and IP commercialisation agreements.
  • Representing easyGroup in a trade mark infringement claim with vehicle rental company, ER Travel Services (trading under the name ‘EASIRENT’).
  • Advising the research and innovation team at Connected Places Catapult on IP ownership, dissemination and licensing issues relating to its research contracts.

Wright Hassall LLP

Wright Hassall LLP acts for a notable roster of clients in the music, entertainment and gaming sectors and has notable expertise in software licensing issues, patent and trade mark prosecutions and brand strategy work. Key names include the 'exceptionally tenacious' Rhys Jarman, the 'friendly and approachable' Iain Colville, who handles trade mark and branding work, and associate Luke Moulton, who clients single out as a 'rising star'.

Practice head(s):

Rhys Jarman

Other key lawyers:

Iain Colville; Luke Moulton

Testimonials

‘The intellectual property team at Wright Hassall provides professional and commercially relevant advice, is friendly and personable and responsive.’

‘The Wright Hassall IP team as a whole provide very clear and commercially sensible advice. They are excellent at assessing the legal position and identifying how they can use this information to benefit the client in a particular issue. Where they differ from others is their ability to apply this expertise to the budget of the client and obtain maximum value.’

‘Rhys Jarman has a great client manner. Rhys is exceptionally tenacious in pursuing his clients interests without overplaying their hand.’

‘Iain Colville is great with clients! Iain is friendly and approachable and takes an organised and pragmatic approach to his work, delivering an excellent customer experience and achieving great results for his clients.’

‘Luke Moulton (associate) is very clear headed and focused. A rising star.’

Key clients

Wasps Holdings Limited

MG Motor UK Limited

Scholastic Limited

Baxi Heating UK Limited

Antolin Interiors UK Limited

Tumble Tots (UK) Limited

Butchers Pet Care Limited

Work highlights

  • Acted for an interactive games developer in a multi-jurisdictional dispute with a major bookmaker concerning an agreement for the development and licence of internet and mobile games software to be operated through a remote games server.
  • Acting for a publishing house in a dispute with a major competitor and an ex-employee concerning breach of confidence, copyright infringement and database rights infringement.
  • Advised a major international automotive manufacturer on various trade mark clearance and infringement issues.

Eversheds Sutherland (International) LLP

At Eversheds Sutherland (International) LLPRupert Bent handles IP litigation relating to patents, trade marks, designs and copyright, and also acts in passing off and domain name disputes. He also assists with non-contentious work including advising clients on licensing, branding and R&D agreements.

Practice head(s):

Rupert Bent

Testimonials

‘The firm did a very thorough job.’

‘Rupert Bent was very good.’

Key clients

National Grid Plc

UK Centre for Ecology & Hydrology

Tombola Limited

Genting Casinos UK Limited

Halewood International Limited

Footasylum plc

Work highlights

  • Advising the National Grid on contractual work relating to the research and development of its activities in the UK.
  • Advised the Centre for Ecology & Hydrology on the IP aspects of its transition to independence from UK Research and Innovation and the Natural Environment Research Council.
  • Represented Tombola Limited in two domain name complaints relating to ‘tombola.io’ and ‘tombola.game’ which ran in parallel using two different UDRP procedures.

VWV

At VWV, Frances Anderson is noted for her extensive knowledge of the technology and IP sectors, with particular expertise in software development, system procurement and cloud computing issues. Other key areas of strength include handling the IP aspects of university knowledge transfers and commercial contract work.

Practice head(s):

Frances Anderson

Key clients

London School of Economics

University of Greenwich

Birmingham Assay Office

Royal Society for the Prevention of Accidents (RoSPA)

Rugby School

Buckinghamshire New University

Work highlights

  • Advising a university on the status of intellectual property developed by a consortium of members (including the University) relating to various online learning materials in biomedical sciences.
  • Advising a client on IP issues relating to the acquisition of a large collection of recorded music donated to the institution many years ago.
  • Advising a software company on the development and licensing of economic modelling software products in the pharmaceuticals sector.