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
England - London • TMT (technology, media and telecoms)
Charles Russell Speechlys LLP
The ‘well-resourced’ and ’nimble’ team at Charles Russell Speechlys LLP maintains a strong practice in brand protection, IP-related transactions and dispute resolution, with the capability to advise on strategy, rebrands and various trade mark and design portfolios. Practice head Mary Bagnall’s wealth of experience in advising a multitude of clients on the protection and enforcement of soft IP rights means she is invaluable to clients in the courtroom. Nick White is notably active in the leisure, fashion and food and beverage industries, while Charlotte Duly handles global re-branding projects and various contentious matters for clients. Other names to note include senior associates Caroline Young and Olivia Gray, as well as associate Peter Byrd.
Legal 500 Editorial commentary
Testimonials
Collated independently by Legal 500 research team.
‘Nick White and Charlotte Duly are responsive and helpful. They add value in the advice they provide and are top-notch communicators.’
‘The Charles Russell Speechlys LLP IP team in the UK is well-resourced, nimble, provides timely and insightful advice, and is very practical in assisting clients with responding to IP infringement claims.'
'Charles Russell Speechlys LLP has an international reach, but mid-tier rates, which we appreciate.’
‘They have provided our company with responsive and exceptional IP representation in the UK.’
Key clients
- Actis
- Essity Hygiene and Health (formerly SCA)
- Cadbury
- Moore Global (network of accountants) – Formerly Moore Stephens
- Hachette
- Wahaca
- Chocoladefabriken Lindt & Sprungli AG
- Samaritans
- Rapha Racing
- Gulf Air
- wagamama
- Australian Manuka Honey Association
- World Rowing
- Honest Burgers
- Itsu [grocery]
- Howard de Walden Estates
- Immodulon Therapeutics Limited
- Emergex Vaccines Holdings Limited
- Rentschler Biopharma
- FIFA
- International Tennis Federation
- Freddy’s Flowers
- Aldo
- V&H Limited
- M Group
- Dementia UK
Work highlights
- Successfully opposed a UK certification mark for MANUKA HONEY by Manuka Honey Appellation Society.
- Successfully registering Cadbury’s colour purple as a trade mark without contours and with no description defining its use in a landmark decision which will impact on the registration of single colours in the UK and the way the IPO must now deal with them.
- Continuous management and protection of the global IP portfolio for Wagamama.
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Next Generation Partners
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.
Practice head
The lawyer(s) leading their teams.
Mary Bagnall