Helyn Mensah

Work Department

Intellectual property, civil/commercial.

About

• Introduction
• Intellectual Property
• Commercial
• Regulatory
• Notable Cases
• Qualifications
• Recent Clients
• Testimonials
• Appointments
• Memberships
• Direct Access
• Data Protection Notice
• Privacy Notice
• Transparency Information

AREAS OF EXPERTISE

• Civil
• Commercial
• Intellectual Property
• Mediation
• Regulatory
• Trading Standards

Position

Expertise: trade mark litigation; trade mark registry; passing off; designs; fashion and luxury brands; consumer products; retail and manufacturing. Helyn is a barrister specialising in intellectual property law. She has experience in a broad range of intellectual property matters including registered and unregistered designs, copyright, community and UK trade marks, passing off, IP related contract and breach of confidence cases. Helyn was previously a senior litigation lawyer at the international law firm, Pinsent Masons LLP and, prior to that, a tenant at the specialist IP set, Three New Square, for over eleven years. She joins Chambers to enhance its existing civil and commercial capability and to lead its diversification from media and sports law into the wider intellectual property arena. Helyn has advised a number of well-known domestic and international clients including the Arcadia Group, Phones-4-U, Ritz Hotel, Hard Rock International, Standard Life, Philips Van Heusen, Ford, Ann Summers, Cantor Index, Oyster/TFL, BAT, Agence France-Presse, AXA, Sweaty Betty, Laura Ashley and Burberry. Her practice experience includes such high profile cases as Interflora v Marks & Spencer and Specsavers v Asda.

YEAR OF CALL 1998

Introduction

Helyn is an experienced advocate specialising in all aspects of intellectual property law. She provides tactical, commercially grounded advice, not only to large corporations, including international brands, but also to small and medium size enterprises where the need to act quickly and effectively in relation to intellectual property issues is essential to establishing and maintaining a presence in the marketplace. She is a strategic thinker in this fast-moving area of law and is always sensitive to commercial imperatives as well as issues of reputation management, costs and enforcement.

Helyn joined 33 Bedford Row to enhance its existing civil and commercial capability and to lead its diversification from media and sports law into the wider intellectual property arena. 

She is a first port of call for her work: 

• appearing as an advocate and advising in relation to litigation in various courts and tribunals including the UKIPO, the High Court and the Court of Appeal
• advising clients in relation to IP protection, enforcement or defence
• advising on IP-related contract and commercial issues

Direct Access

Helyn is accredited to accept work under Direct access, also known as Public access, in suitable cases. In order to instruct Helyn on a Direct access basis, contact the clerks on +44 (0) 20 7242 6476 or at clerks@33bedfordrow.co.uk. 

Career

Call 1998.

Intellectual Property

Helyn’s intellectual property expertise includes EU and UK trade marks, passing off, copyright, registered and unregistered designs and breach of confidence. She has particular experience with clients in the fashion, lifestyle, consumer products, retail and manufacturing sectors, and her work has included such high-profile cases as Interflora v Marks & Spencer and Specsavers v Asda.

Commercial

Helyn has been instructed in a variety of civil and commercial cases including the following:

• Advising a global independent IT solutions company in relation to a hardware purchasing agreement and infringement.
• Acting for a filmmaker in a dispute relating to two feature films and conversion of filming equipment; obtained strike out and costs against representatives of claimant for acting without authority.
• Acting in claim for damages arising out of vehicle hire agreements.
• Advising defendant in claim relating to plant installations; circumvented exclusion clauses and raised breach counterclaims resulting in successful settlement.
• Representing diamond mining companies in obtaining Norwich Pharmacal and disclosure orders.
• Advising client in action for breach of contract and breach of implied warranties for sale of goods; successfully represented client on renewed application for leave to appeal.
• Advising on contract terms and defended technology college in an action brought by former employee.
• Acting as junior counsel for Japanese pharmaceutical company in significant ICC arbitration involving wrongful termination of contract and withdrawal.
• Acting  as junior counsel for warehousing and transport logistics company in joint venture and breach of confidence claim; successfully defended client and obtained final orders and costs.

Regulatory

Helyn’s practice reflects her interest in the enforcement of intellectual property rights. Helyn is fully conversant with the bodies that enforce and protect IP from a public law perspective, and is available to advise and provide practical leadership to Local Authorities and Trading Standards in fulfilling statutory duties in relation to IP crime (counterfeiting and piracy).

Helyn has been appointed to two SFO-approved counsel lists, and sits on select regulatory panels, including on the Complaints Committee of the Independent Press Standards Organisation, the Strategic Governance Panel to Open Water (the new English non-household water retail market), and as chair of the Open Water General Data Protection Regulation Committee. 

Notable Cases

Trade Marks and Passing Off

• Advising a manufacturer and supplier of children’s science sets and kits in relation to rival kits and prevention of further sales to market.
• Acting as junior counsel for FMCG retailer in resisting appeal against first instance decision of non-infringement of trade mark.
• Acting for foodstuffs company at first instance and on appeal; successful on appeal against refusal of trade mark registration.
• Acting  for client engaged in an anaesthetic scavenging unit business; successfully resisted passing off (existence of goodwill) and bad faith (ownership of mark) in opposition proceedings brought by principal against territorial agent.
• Acting for music producer in trade mark revocation for non-use; successfully resisted application for procedural strike out at first instance and on appeal.
• Acting  for pharmaceutical company in trade mark opposition proceedings based on prior plant breeder’s right; successfully resisted opposition enabling registration.
• Acting for an American nostalgia brand in relation to an infringement case involving offensive parody and another involving similar signage and adoption of similar get-up.
• Acting for established luxury hotel and related companies in relation to recovery of domain names from cyber squatters; obtained summary judgment against defendants and transfer of domain ownership into name of client.
• Acting in case of general importance in relation to amendment to specifications and examination practice; ex-parte appeal to Appointed Person against Registrar decision; successful in reversing refusal of application and obtaining remittal for fresh hearing
• Acting for foreign principal at first instance and on appeal in claim against UK agent for unauthorised registration of proprietary trade mark; forced agent to relinquish and transfer registration.
• Acting for major American tobacco company on ex-parte appeal in UKIPO for refusal of mark on absolute grounds.
• Acting as junior counsel for international luxury brand in multi-million pound case involving trade mark infringement and counterfeiting operation
• Defending German footwear manufacturer against revocation proceedings for non-use; questions of genuine use and sufficiency raised; registration retained.
• Advising in relation to the protection of entertainment and merchandising brand ‘The Lone Ranger’.
• Advising on trade mark infringement and passing off in relation to unauthorised use of the name and logo of a globally established automotive company.
• Advising leading adult toy and recreation brand on enforcement of trade mark rights against multiple infringers via SEPs.
• Advising major telecommunications company in case involving UK and EU trade mark infringement based on alleged misstatements made during telephone sales.
• Acting for MBE recipient in claim against third party for misrepresentation of regional awards as commercially linked with pre-established award event, internationally televised and supported by persons such as HRH The Queen, Gordon Brown, Tony Blair and David Cameron.

Design

• Advising major high street fashion group in relation to infringement of A/W seasonal collection.
• Advising manufacturer of motorised golf caddies in relation to infringement of UK unregistered design rights; obtained judgment and costs.
• Obtaining judgment for luxury gentleman’s brand in relation to unauthorised importation of clothing into EEA; obtained 100% costs order.

Copyright

• Advising major telecommunications company in case involving infringement of rights in database and compilations.
• Advising in relation to vintage Celia Birtwell/ Alfred Radley garment and fabric designs and transfer of ownership and assets.
• Advising client in relation to copyright infringement and unauthorised use of the ‘Oyster’ brand and technology model in promotional campaigns.
• Advising in relation to revival of copyright for works by literary treasure.
• Advising in relation to Hed Kandi CD jacket illustrations.

Commercial

• Advising a global independent IT solutions company in relation to a hardware purchasing agreement and infringement.
• Acting for a filmmaker in a dispute relating to two feature films and conversion of filming equipment; obtained strike out and costs against representatives of claimant for acting without authority.
• Acting in claim for damages arising out of vehicle hire agreements.
• Advising defendant in claim relating to plant installations; circumvented exclusion clauses and raised breach counterclaims resulting in successful settlement.
• Representing diamond mining companies in obtaining Norwich Pharmacal and disclosure orders.
• Advising client in action for breach of contract and breach of implied warranties for sale of goods; successfully represented client on renewed application for leave to appeal.
• Advising on contract terms and defended technology college in an action brought by former employee.
• Acting as junior counsel for Japanese pharmaceutical company in significant ICC arbitration involving wrongful termination of contract and withdrawal.
• Acting  as junior counsel for warehousing and transport logistics company in joint venture and breach of confidence claim; successfully defended client and obtained final orders and costs.

Recent Clients

Helyn’s clients have included a number of well-known domestic and international entities including the Arcadia Group, Burberry, Phones-4-U, Ritz Hotel, Hard Rock International, Standard Life, Laura Ashley, Ford, Ann Summers, Teva, John Adams, Cantor Index, Agence France-Presse, AXA, Sweaty Betty and Philips Van Heusen.

Testimonials

What others say about Helyn: 

“…advice was thoughtful and well-structured…”

“…quick and thorough and good with clients…”

“…Helyn knows her subject and gives advice in a commercial context…”

“…good client skills and built good rapport…”

“…I have total confidence in her and expect others will too…”

“…came at the issue from the client’s perspective and gave good value advice…”

“…a pleasure working with you…”

Appointments

SFO Panel Counsel List B panel

SFO Prosecution Panel Counsel List

Chair of the Open Water General Data Protection Regulation Committee 

Memberships

Chancery Bar Association, Intellectual Property Bar Association, International Trade Mark Association.

Education

LLB (Hons) First Class;

BVC and Postgraduate Diploma in Professional Legal Skills (ICSL); Alumni: Oratory School, Kensington;

St Thomas More RC, Sloane Square.