Experience

Advised Chartered Body on Decision of the Privy Council to Provisionally Allow Use of an Infringing Title by Competing Chartered Body

Advised client on overall strategy inclusive of possible infringement action, strategic further filings, the essential function of a trade mark in the context of a collective mark and implications of the Privy Council decision for the protection of Professional titles in future. 

Provided Advice to Legislators Regarding Continuing Effect of EU Trade Marks and Designs in the U.K.

On their request, advised members of the House of Lords on certain defects in the post-Brexit legislation concerning the continuing effect of EU trade marks and designs in the U.K., leading to a government undertaking and insertion of interpretive note in the Parliamentary record.

Secured Geographically Limited Trade Mark Protection for Slogan in Scotland

Secured geographically limited trade mark protection for the slogan SCOTLAND’S ANIMAL WELFARE CHARITY, in what may have been the first U.K. trade mark to be granted geographically limited protection on an acquired distinctiveness basis after the change in UKIPO's policy to follow the EUROPOLIS decision of the European Court of Justice.

Acted in Strategically Important EUIPO Appeal Decision Based on Noncompliance with Underlying Law

Secured a strategically important victory by identifying that the European Union Intellectual Property Office's practice did not comply with the underlying law concerning translations, in a wider commercial dispute, where infringement proceedings had been filed in Germany and client’s business customers had received cease and desist letters directly.

Secured Surrender of U.K. Trade Mark Registration and Cessation of Use of the Free-Riding Mark

Achieved commercially imperative victory for a leading international learning company against direct competitor by securing surrender of offending U.K. registration and cessation of use by competitor and its business partners. Compelling reputation evidence submitted in the invalidation proceedings forced the other side into settlement.

Holistic Advice to Market-Leading Business Publisher

Acted for market-leading business publisher in connection with: protecting key award title from potentially misleading spin-off brands as a result of the acquisition of the latter by former licensee; protecting long-standing magazine title in key markets and facilitating access into the U.S. market by entering into commercial settlement talks with prospective U.S. competitors; finalising long-running co-existence agreement negotiations with major rival with regard to the parties' use of similar marks; conducting a "root and branch" brand audit in order to consolidate and strengthen the existing trade mark portfolio and identify gaps in protection following the visual revamp of a number of established brands.

Acted for Leading Computer Games Software Companies in Protection, Enforcement of Brands

Advised on and registered trade marks related to one of the best-selling video game franchises of all time, including numerous sub-series and spin-off games, media titles and game characters, as well as enforcing such rights through EU customs applications to secure the destruction of numerous shipments of infringing goods – both straight counterfeits and unauthorized third party products.

Acted in Complex Joint EU Revocation and Invalidation Action Brought by Former Licensees

Acted for one of the world's largest CD and DVD media distributors in a complex joint EU Revocation and Invalidation action brought by its former licensees, which was appealed to the European Court of First Instance (now the General Court) triggering tense settlement negotiations.

Acted for Well-Known U.K. Bar Chain in Actions Against Unauthorised Outlets Overseas

Acted for well-known U.K. bar chain against unauthorised outlets in Italy and Spain on the basis of its EU-wide trade mark registrations.

Acted for Leading High-Street Fashion Retailer in Pre-action Infringement Matter in Italy

Acted for a leading high-street fashion retailer against infringing shoe manufacturer in Italy in a cease and desist matter, and secured removal of mark from remaining stock.

Coordinated Pan-European Brand Clearance Programs

Coordinated and advised leading Japanese tyre manufacturer on the availability for use and registration of new brand names across a number of European countries, all at a pre-agreed cost and by a stipulated deadline.

Trade Mark Clearance Advice for Major Japanese IP Support Provider

Advised on over 700 candidate marks for numerous high-profile Japanese companies on behalf of a major Japanese IP support provider.

Pharmaceutical Product Name Clearance Advice

Reported on the availability for use and registration of proposed pharmaceutical product name for a leading U.K. generics manufacturer on a time sensitive basis in order to gain MHRA approval.

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London, England
Royal College of Surgeons of England
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Princeton, NJ
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St. Louis, MO
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Wilmington, DE
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