Vicky Butterworth > Marks & Clerk > London, England > Lawyer Profile

Vicky Butterworth

Work Department

Intellectual Property

Position

Vicky is an experienced intellectual property lawyer. Her particular focus is on trade marks and brands, copyright, registered and unregistered designs and confidential information.

She advises clients on the protection, enforcement and commercialisation of intellectual property rights across a broad range of sectors including creative industries, software, extended reality, FMCG, sport and retail.  Vicky advises companies ranging from small start-ups to big multinationals as well as individuals and charities. 

Clients appreciate Vicky’s strategic and creative thinking in relation to disputes and commercial issues. Vicky is recognised in World Trademark Review (2021) as “knowledgeable and user-friendly” and a Recommended Practitioner for Enforcement and Litigation, and in Legal 500 (2021) as offering “strong trade mark, copyright and database protection capabilities”. 

Vicky has extensive experience and expertise in relation to litigation in the High Court and Intellectual Property Enterprise Court (IPEC) and alternative dispute resolution, particularly mediation. She is also regularly called upon to advise clients on pre-litigation strategies with a view to achieving a resolution without the need for litigation.

Vicky’s work on commercial IP matters includes brand portfolio management, due diligence, clearance for advertising campaigns, audits, early stage creation of brands, registration strategies, collaboration agreements, IP ownership issues, licensing and coexistence arrangements.

Vicky is a Solicitor Advocate having been awarded Higher Rights of Audience. She is an associate of the Chartered Institute of Trade Mark Attorneys and a member of Marques, the British Literary and Artistic Copyright Association and the Copyright Society of the USA. Vicky is also on the IP Consulting Editorial Board for LexisPSL.

Experience

• Litigation: represents clients in IP disputes (from interim court applications to full-scale trials on liability and, separately, damages) in the High Court, IPEC and Court of Appeal. Alongside court proceedings, works closely with Marks & Clerk’s trade mark attorneys on trade mark oppositions and cancellation actions in the UK Intellectual Property Office. 
• Pre-action dispute resolution: works with clients to resolve disputes early without the need for court proceedings. Advises on formal enforcement options other than litigation, including domain name and Company Names Tribunal complaints, customs detentions and online takedown procedures.
• Commercial IP: broad experience in commercial and transactional matters involving both IP issues and wider commercial issues. Recent work in this area includes work for a university, a charity and a number of household name brands.
• Areas of particular interest: core member of Marks & Clerk’s Brand Protection and Commercial teams and the Creative Industries and Extended Reality sector groups.
• Examples of areas on which recently advised: parallel imports, TV formats, 3D printing, immersive theatre, keywords / Google Ads, software development and graphical user interfaces.

Example cases

Quiksilver v Charles Robertson (trade mark dispute)

Ultraframe v Eurocell – damages enquiry (patent and design right dispute)

MMI v Cellxion (patent dispute)

Hollister and Dansac v Medik Ostomy Supplies (trade mark dispute)

Wade and Perry v BskyB (confidential information dispute)

Ultrasoft v Hubcreate (copyright and database right dispute)

Professional Highlights

Vicky is recommended by Legal 500, World Trademark Review and Managing Intellectual Property.

Fashion & Sustainability: The future of the fashion and textile industries – Podcast series

Education

Higher Rights of Audience (Civil Proceedings) (2005)

Post Graduate Diploma in Intellectual Property Law, University of Bristol (2003)

Qualified as a Solicitor in England & Wales (2002)

Law LLB, University of Bristol (1998)