Work in the IP field

Practice Areas

Intellectual property and Technology

Advice on the protection of trade marks, designs and patents
Licensing and exploitation of IP rights
Enforcement and IP disputes
Cancellation and opposition proceedings
Protection of confidential information
Rights in passing off and allied reputational rights

Commercial agreements:
- IP licences and assignments
- Joint ventures
- Sponsorship and brand sharing
- Research and development
- Co-existence Agreements

Corporate transaction support - due diligence and associated IP advice
Technology outsourcing
software licence and supply
Corporate due diligence and change of control
Tax structuring

Non-contentious IP

Involved in the development of the Carabao brand for energy drinks, including sponsorship arrangements (training kit deal with Chelsea FC) sponsorship of London Fashion Week, a Brazilian football team, advertising advice in relation to Red Bull, distribution Agreements across the world, licensing deals and so on.

Advising the IP and R&D company of Aramco on various research and development projects and ventures with universities

Advising Telegraph Media Group on a variety of disputes and IP arrangements for its publications.

Acting for Nutriformis in its sponsorship of Andy Murray and others for collagen supplements.

SABBA SA – advising this exclusive international jewellery group.

Advising Grow Group plc (medical cannabis group involved in Joint Venture for production of prescription Cannabinoids)

Advising PlanetArt Inc (FreePrints) on a range of commercial and advertising issues.

Advising Exinity Group (Alpari) on its IP holding arrangements for tax and licensing purposes.

Acting for Qomply Ltd (Financial reporting software) on its contractual arrangements with customers.

Acting for Otherway Limited, a London advertising agency on its accounts with various brands including Heineken.

Zenova plc – advising on warranties in relation to fire resistant paint products

Assisting Magnomatics in relation to the commercialisation of their Direct Drive magnetic gearing systems.

Providing IP and contractual and commercial advice for football publisher, Sidan Media.

Assisting a leading supplier of safety equipment, Survitec, in relation to the rolling out of licensing and distribution and servicing agreements for their equipment on a world-wide basis.

Advising on the re-organisation of the worldwide trade mark portfolios of Chloride and Exide batteries.

Assisting a Hong Kong company on its analysis of legal risk in relation to the provision of BitTorrent services. Also assisting in relation to the legal issues arising from VPN services.

Advising on a range of Advertising Standards Complaints and Clearcast clearance for major brands such as easyJet.

Advising Nordpoolspot on putting together a very substantial tender in relation to a Cross Border intra-day system for electricity capacity management. This included advising on the holding of IP rights and the sharing of such rights among the various potential participants in the scheme.

Advising BlippAR on the commercialisation of its Augmented Reality software / services.

Advising Jagex on software arrangements and licensing of its Multiplayer games.

Advising Knoll (Furniture) on its commercial terms - including agency arrangements and distribution agreements in Europe.

Representative mandates

Disputes

Acting for Gaming Realms plc in High Court proceedings for infringement of copyright in gambling software (AlchemyBet v Trinitas Gaming t/a Rogue and others) Read more here.

Acting for Songtradr in Songtradr and Os vs BlueBox Music and Os. (2022) (copyright and breach of confidence in relation to blockchain white paper). Link here.

Acting for Gaming Realms plc in Gaming Realms plc v River iGaming Limited (2020) (gambling disputes over IP). Comments on transaction here.

Trade mark opposition proceedings for the mark “Oxford Innovation” brought on behalf of Oxford Innovation Park Limited.

Acting for PCL its its successful action in Process Components Limited v Kek-Gardner Limited 2016 (copyright, confidential information) [2016] EWHC 2198 (Ch). Commentary here and article on Court of Appeal findings here.

Successfully compromising Trade mark opposition proceedings brought by Amazon and Wholefoods against a client using the mark 365CBD.

Acting for Europcar in Enterprise Holdings, Inc v Europcar Group UK Ltd & Anor, [2015] EWHC 17 (Ch) (13 January 2015), (trade marks, infringement, more than 100 worldwide opposition proceedings and cancellation actions). Commentary here and here

Acting for Gregory Elias and United Trust in successful overturning of a world-wide freezing order (2021) (unlawful means conspiracy claims re software)

Dealing with the enquiry / damages aspects of Ferne McCann’s trade mark dispute for the mark “FERNE” and its use by Poundland.

Acting for Artiq in a dispute over floating boat sculptures designed by Steve Messam

Acting for Zippo Lighters in relation to Lorillard Inc v Zippo Manufacturing Co, (2015) (trade marks, declaration of non-infringement). Comment here.

Maximuscle v Promax Nutrition (2009) (trade marks, infringement, validity of CTM).

Advising Watermark in Watermark Publications v Sportswift T/a Card Factory (2008) (Copyright artistic works).

Acting for Cantor Gaming in Cantor Gaming v Game Account Global Ltd [2008] FSR 4 (copyright, computer software). Judgment here.

Acting for Aggregate Industries in Aggregate Industries v Camel Construction (2006) (reg. design - street furniture).

Acting for Financial Information Technology in Financial Information Technology v SPILA (2005) (copyright, computer software) (Isle of Man High Court).

Acting for Coflexip SA in their successful claim against Rockwater in Rockwater v Coflexip (2003) and [2004] RPC 46 (patent, subsea technology) (first instance and Court of Appeal). Comment here

Acting for CAI in Credit Agricole Indosuez v PNC PLC (IT systems) 2003.

Acting for Siemens in Slough Heat and Power v Siemens (Technology and Construction Court) 2001.

Advising Cantor Fitzgerald in Cantor Fitzgerald International and Os v Tradition UK and Os (first instance [1998] RPC; Court of Appeal [2000] RPC 95) (copyright in software systems / trade secrets). Court of Appeal Order on Costs Newspaper comments on case here.

Advising David Instance in Instance v Faubel (patents, pharmaceutical labelling) (2001).

Acting for the British Promotional Merchandise Association in BPMA v Tarsus Martex (trade marks and metatags) (2000).