Mary specialises in the protection and enforcement of intellectual property rights, including trade marks, copyright and designs. She has extensive experience in conducting trade mark infringement and passing off proceedings, copyright and design actions, trade mark registry proceedings in the UK and OHIM, and appeals to the UK courts and the Court of Justice of the EU, and in disputes involving confidential information and database rights. She also represents clients in Internet and domain name disputes including in ICANN, Nominet and Czech Arbitration Court proceedings and infringements on Internet auction sites, and in relation to advertising issues including complaints to the ASA, and issues involving comparative advertising and product denigration.Mary assists a wide range of clients from the largest international brand owners to SMEs across diverse industries including fashion, retail, food and drink, sports, leisure, entertainment, technology and chemicals. She has particular expertise in the protection and enforcement of so-called non traditional trade marks, having being involved in a number of colour, shape and get up cases including the successful enforcement of the colour green for BP, in its landmark decision in Northern Ireland, the protection and enforcement of Lindt's Gold Bunny product in the UK, and most recently for Cadbury in its long running dispute with Nestle over the protection of Cadbury Purple in the Court of Appeal. Mary is currently involved in several complex multi jurisdictional trade mark disputes, including for high profile brand owners in the communications, manufacturing, and sports industries.She is an active member of the Institute of Trade Mark Attorneys and the International Trademark Association, and speaks regularly on brand issues, notably at events for the luxury brands industry. Mary is listed as an expert in Trademarks by Who's Who Legal 2014.Mary is admitted to practise in England and Wales.Experience highlights: Advising on the protection of non-traditional trade marks including single colours, combinations of colours, shapes, and packaging get up, including for Cadbury in its long running dispute with Nestle over the protection of Cadbury Purple Advising a global sports brand in relation to pan European trade mark disputes Advising on and implementing brand clearance, protection and enforcement strategies for a number of household brands, SMEs, and family businesses Conducting multiple trade mark opposition, revocation and cancellation proceedings in the UK and OHIM for a specialist communications business Defending trade mark infringement proceedings for a household name in the leisure industry
Intellectual property: trade marks, copyright and design
Hall of Fame
The lawyers at the very top of the profession, widely known and respected by peers and clients for their longstanding involvement in market-leading work.
Joint Managing Partner, heading up the part of the firm focussed on creative, innovative and brand-centric businesses. Specialises in advisory and dispute advice involving intellectual property, defamation/reputation management, privacy/data protection and consumer/regulatory work mainly in relation to brand protection/enforcement, advertising/marketing and media/online issues. Clients include brand owners, marcomms agencies and media companies.
David is a highly experienced litigator and one of only a small number of IP lawyers in the UK who have taken both patent and trade mark cases to the Court of Justice of the European Union. He has acted in a number of high profile and often ground-breaking cases before both the UK and European Courts including successfully representing Sky in the first passing off case to reach the UK's highest court (the Supreme Court) in over 25 years (Starbucks v. Sky) and acting for Nintendo in securing the first ever blocking injunction against ISPs in reliance on technological protection measures under the UK's copyright legislation. Additional high profile actions include: HTC v Gemalto; Sky v Microsoft; Napp v Sandoz; ratiopharm v Alza; Sky v Skype; Marks & Spencer and others v One in a Million; Lupin v. Gilead; Ann Taylor v. Holzer; Sony Computer Entertainment v Pacific Game Technology; Racing UK v Satellite Information Services; Arrow Generics v Merck; Cairnstores v Astra Zeneca; and Servier v Lupin. In the patent sphere, David advises on infringement, validity and ownership disputes, the scope of protection of Supplementary Protection Certificates (SPCs) and disputes over standard essential patents (SEPs) including their licensing on FRAND terms (principally for implementers). He also has considerable experience advising on "clearing the way" strategies in relation to pharmaceutical patents. Recent representations include acting for Lupin in its successful application to revoke Gilead's SPC for the HIV treatment Truvada® following hearings before the Grand Chamber of the Court of Justice of the EU and the Court of Appeal in London. In the area of brand and design protection, David has extensive experience advising on brand and design portfolio management with particular expertise acting in administrative proceedings before the UKIPO and the EUIPO and their respective appellate tribunals, including appearing successfully in numerous cases before the General Court of the EU. David is one of only eight UK IP lawyers listed in the Legal 500 "Hall of Fame", is ranked as a leading individual in Chambers (IP, life sciences and patent litigation), IAM Patent 1000 (patents and life sciences), Who's Who Legal (patents, life sciences and trade marks) and is recognised as one of World Trademark Review's "Global Leaders". Recent commentary from the directories includes: "tough as nails... a 'natural litigator' who is 'experienced and aggressive" (World Trademark Review); "a real client's lawyer, always very tenacious in looking after their interests…He is good to work with and gets the best out of his team." and "has impeccable judgement on strategic matters" (Chambers); "outstanding experience in this arena makes him a force of nature in the courtroom" (IAM Patent 100). David was recognised as the UK Practitioner of the Year at the 2020 Annual Managing IP EMEA Awards.
Rising stars
Rising stars with regular involvement in their team's key work, and recognition from peers or clients as being ones to watch.
Next Generation Partners
Junior partners with significant recognition from clients and peers in the market and key roles on multiple matters.
Rachel is a Partner in the Litigation group. She advises media clients in a number of sectors on a wide range of contentious media and commercial matters. Having been seconded to the BPI (British Recorded Music Industry) for six months, she gained invaluable experience of rights protection in a music industry context. Rachel was heavily involved in the Newzbin litigation in 2010 which established key precedents in relation to online copyright infringement. More recently Rachel has acted for the major Hollywood studios in cases that have developed precedents and procedures for obtaining injunctions requiring ISPs to impede access to online locations.
John has over 15 years’ experience as a lawyer, with a broad practice covering all aspects of intellectual property and related issues, with particular focus on brands. His practice covers all aspects of brand management and protection, from advising on risk of using new brands or expanding existing use, through protection and registrations, including management on a global basis, to enforcement and dispute management. He manages and advises on both UK and international brand portfolios for a number of well-known brands in a variety of sectors, and advises on complex issues involving of disputes, enforcement, and related filing strategies in multiple jurisdictions. He has advised in many trade mark and passing off disputes and has particular experience running multi-matter enforcement programs against misuse of trade marks and copyright works, both domestically coordinating overseas. He also has a particular interest in parallel imports and exhaustion of rights. John has acted in the High Court (including shorter trials scheme), Intellectual Property Enterprise Court (IPEC) and the UK IPO and the EUIPO (including appeals to the General Court of the EU) and in the European Court of Justice. He has helped clients coordinate customs enforcement actions to prevent counterfeit goods entering the UK and with international online takedown programs. He uses digital tools where available to gain insight into infringement activity, to help clients prioritise action and resource allocation, and inform protection strategies. John completed the Bristol University Post Graduate Diploma in Intellectual Property Law and Practice in 2007, and won the AIPPI national award for the best young contribution for work in relation to trade mark dilution laws in 2010.
Partner. An IP and technology litigation specialist, Ciara is dual qualified in England & Wales and the Republic of Ireland and has acted in several international disputes. Having acted in several disputes before the English and Irish Courts, the UK IPO, the ICC and CIETAC, Ciara's practice also has a significant international element and sees her advising clients on multi-jurisdictional disputes across the full range of IP rights including trade marks / passing off, copyright, patents, design rights, breach of confidential information and IP licence disputes. On the non-contentious side, Ciara supports clients on brand protection and counterfeit issues, IP projects and licensing, sponsorship/endorsement arrangements, franchising and commercial contracts. She also provides specialist advice on IP and technology acquisitions and disposals. Clients range from luxury goods, retail and food to FMCG, technology, media, life sciences, insurance and financial services. Ciara has been published in several leading journals including Managing IP, e-Commerce Law and Policy, SCL, LexisNexis and ILO and regularly speaks at client and industry conferences. Ciara is a member of the editorial team that produces the annual TerraLex Cross-Border Copyright Guide.
Rob is a partner specialising in both contentious and non-contentious IP issues with a particular focus on trade mark and copyright matters. He has particular expertise in the life sciences, offshore construction and luxury brands sectors. Rob has a masters degree in Chemistry from Imperial College, London and a post-graduate diploma in IP law and practice. He trained and qualified into the IP team at Clifford Chance before joining Stephenson Harwood in 2009 specialising in all intellectual property matters. Rob acted on DataCard Corporation v Eagle Technologies Limited ([2011] EWHC 244 (Pat)) where the firm successfully argued for the extension of trade mark law in relation to post-sale confusion. His other more recently reported cases include: Glaxo Wellcome UK Limited v Sandoz Ltd [2017] EWHC 3196 (Ch), Parainen Pearl Shipping Ltd v Kristian Gerhard Skipsrederi AS [2018] EWHC 2628 (Pat), Smart Reamer Drilling Systems v NOV Downhole Eurasia [2018] 1265 (IPEC) and Pathway IP Sarl v easyGroup Ltd [2018] EWHC 3608 (Ch). He has also successfully argued that residual goodwill subsists in the NICHOLSON gin brand (UK Decision: Opp 0520-14) and has successfully convinced OHIM's Board of Appeal that the shape of GSK's DISKUS inhaler was distinctive (R2074/2013-2). On the non-contentious side, Rob's highlights include working on the public takeover of Biocompatibles plc by BTG plc, the US$3.8 billion sale of Piramal Enterprises' domestic formulations division to US pharmaceuticals giant Abbott, the acquisition of the worldwide rights to Florbetaben (a pioneering molecular imaging product for the diagnosis of early Alzheimer's disease) from Bayer Pharma AG and the US$220 million acquisition of EKOS corporation. Rob is a recommended lawyer in the Legal 500 UK directory for intellectual property and pharmaceuticals and biotechnology with "notable strengths in trade mark work". Rob has been described as “a very brainy guy who thinks deeply about his cases. He is always stress-testing and playing devil’s advocate to be as well prepared as possible. He is unflappable and his measured manner is very reassuring.” (WTR 1000, 2019) Rob also wrote the intellectual property chapter of the book Offshore Construction Law and Practice published by Informa Law from Routledge.
Kostyantyn advises on all matters involving intellectual property, dispute resolution, regulatory and commercial issues. Being from a litigation background, he is able to represent clients at all stages of a dispute, from pre-action advisory and clearance work, to litigation in the High Court and beyond. Kostyantyn has a particular focus on the video games and esports sectors, but his broader client includes other members of the creative industries, brand owners, streamers and content creators, software and engineering companies, importers and distributors. They range in size from one-person start-ups to global companies with large in-house legal teams. As part of his regulatory practice, Kostyantyn advises on advertising laws, self-regulatory codes, and related consumer protection issues, including dealing with regulators such as the ASA, Clearcast, CMA and Trading Standards in the context of complaints, investigations and pre-clearance discussions.
Ben is a Partner in RPC's Intellectual Property and Technology group and advises on all aspects of intellectual property protection and enforcement, with a focus on trade marks, passing off, copyright, designs and confidential information. Ben works with clients across a wide range of industries, including food and drink, media, retail, online/e-commerce, financial services and insurance.
Caroline specialises in commercial contracts, with a particular focus on technology and intellectual property. She works with clients across a broad range of sectors, from TMT and FinTech to life sciences, retail and insurance. Caroline has considerable experience working on the commercialisation of IP and a broad range of technology contracts, including complex licensing and distribution models, development, support and other IT services agreements, IP strategies and exploitation, procurement and outsourcing. Caroline also advises on data protection, consumer law and e-commerce. Caroline is admitted to practise in England and Wales.
Leading individuals
The strongest partners in their field, leading on market-leading deals and endorsed by peers and clients alike.
Partner in the litigation Group. Specialises in all aspects of intellectual property litigation including trade marks, passing off, copyrights and related rights, designs, patents and confidential information. Also has substantial experience in contractual disputes relating to IP, principally around licensing and distribution disputes (both litigation and arbitration). Has also advised clients on trade mark portfolio management including advising on clearance searches, where to register, registrability, costs and procedure.
Jeremy is an IP specialist and has advised on many contentious matters. He has a particular focus on trade marks, design and copyright as well as confidential information. He has advised on a number of high profile disputes before the High Court, Court of Appeal, Court of Justice, EUIPO and General Court. He has even led the advocacy before the Court of Justice. Jeremy has acted in some of the leading cases that have developed intellectual property law such as: L’Oreal v eBay which concerned the liability of online e-commerce platforms and was the first case to consider injunctions against non-infringing intermediaries Cadbury v Nestle which concerned the registrability of the shape of a four fingered KitKat chocolate bar Glaxo v Sandoz concerning the colour and shape of an asthma inhaler for passing off Jeremy also has extensive registered design, unregistered design and copyright litigation experience for a diverse range of products ranging from luxury jewellery and fashion, plastic containers, artworks, pharmaceutical products and consumer goods. Jeremy is a specialist in advising on strategies to combat IP infringement in the digital world and has advised on a number of cases regarding online infringement. As a consequence, Jeremy also has a particular interest in cross border injunctions and jurisdiction for ~EU trade marks and designs as well as copyright. As part of his breach of confidential information practice, Jeremy has considerable experience in arbitration. Jeremy specialises in arbitration involving technical subject matter and his cases have ranged from chemical compounds used in deodorants to chemical processes. Many of his arbitration cases involve substantial damages claims
Simon specialises in copyright and design rights, database rights, trade marks, passing off, domain names and breach of confidence. As a litigator he has acted for clients in the High Court, Court of Appeal, Supreme Court, Court of Justice of the EU, as well as in the Copyright Tribunal and the IP Enterprise Court, including appearing as a Solicitor Advocate. He also manages international brand portfolios for clients. He is particularly active for clients in the design industry, including some of the country’s leading furniture, textile, fashion and product design companies. For example, he acted for the successful defendant in the important design rights case Neptune (Europe) Ltd v DeVol Kitchens Ltd [2017] EWHC 2172 (Pat). Simon also specialises in online intellectual property issues, such as representing the NLA and six of the national newspapers in the proceedings brought against Meltwater and the PRCA on copyright in newspaper headlines, summaries and internet browsing, which went to the European Court of Justice, the Supreme Court and the Copyright Tribunal. Simon is an Appointed Person, a judicial role hearing trade mark appeals from the UKIPO, is the Honorary Secretary of BLACA (the British Literary and Artistic Copyright Association), a member of INTA’s EU Design Reform Task Force and the INTA Rights of Publicity Committee, a tutor on the Oxford IP Diploma course, the co-author of “Intellectual Property”, a text book published by Palgrave MacMillan, currently in its sixth edition, is an Editorial Advisory Board member of the European Copyright and Design Reports and sits on the Advisory Panel of Intellectual Property Magazine.
Jeremy is the Chair of Mishcon de Reya's Intellectual Property Department. He is a very experienced litigator who specialises in protecting and enforcing IP rights across all IP disciplines including patents, confidential information and trade secrets. He represents clients in a broad range of industries but with a particular emphasis when it comes to patent matters on the pharmaceutical, technology and automotive sectors. Jeremy has extensive experience of both obtaining and defending injunctions. This extends to without notice search, freezing and disclosure orders. He also regularly advises on and represents his clients in complex contractual and licence disputes, often with a multi-jurisdictional element. In addition, Jeremy has been involved in numerous ad hoc arbitrations, subject to a variety of governing substantive and procedural laws, including arbitrations governed by the LCIA, ICC, UNCITRAL, CIArb and ICSID Rules. Chambers and Partners calls him a "great strategic thinker". He is a member of the International Trademark Association (INTA) and the Anti-Counterfeiting Group (ACG). Having joined the Firm in 1996, he has been a Partner since 2003.
Paul is a Partner in the Intellectual Property department specialising in advertising and marketing law and brand protection matters generally. He joined Bristows in 2009.Paul is a Partner in the Intellectual Property department specialising in advertising and marketing law and brand protection matters generally. He joined Bristows in 2009.Though his experience covers the full range of intellectual property issues (both contentious and non-contentious), Paul's work focuses on advertising regulation, content licensing, and trade mark and copyright infringement. His experience includes advising on: global IP protection, multi-platform advertising clearance, social media campaigns, global brand restructuring, passing off disputes, brand launches, and the preparation and defence of ASA, PhonepayPlus, Trading Standards and CMA investigations. Paul's wide range of clients includes major brand owners, car manufacturers, retailers, airlines, financial service providers and media companies. Paul regularly speaks on brand protection and advertising law matters and has been widely published, including in the leading advertising industry guide - Ad Law - published by the Institute of Practitioners in Advertising. He was recently appointed as the UK editor of INTA's Trade Dress portal.
