Practical LawConferences

Victoria is Senior IP Counsel at King (the makers of Candy Crush Saga) which has grown from small developer to one of the biggest mobile games companies in the world in an incredibly short period of time.  She advises on all aspects of soft IP for King’s games from conception to launch and on enforcement globally, and is responsible for the strategy and management of the soft IP portfolio.  Victoria previously worked as an IP litigator at an international law firm.

Mark is Managing Legal Counsel in Outsourcing, Technoloy & IP at RBS and he heads up the IP team.  Mark advises on all contentious and commercial IP matters for RBS Group including for NatWest, Coutts and Ulster Bank.  This has focussed more recently on innovation projects, Fintech and structural reform of the bank.  He is accredited by the Law Society of Scotland as a specialist in intellectual property law. He sits on the Law Society of Scotland’s Panel for Specialist Intellectual Property Law Accreditation and also on the Intellectual Property Law Sub-Committee. He is a ranked individual by Chambers & Partners in the field of IP disputes and brand enforcement matters. Before joining RBS, Mark worked in private practice at both Brodies LLP and Maclay Murray & Spens LLP (now Dentons), specialising in IP and dispute resolution.

Dominic is jointly qualified as both Solicitor and Trade Mark Attorney and heads up Lewis Silkin’s Trade Mark and Portfolio Management Legal Practice Group.

He advises on a variety of intellectual property and commercial matters, including transactions, disputes and strategic advice across a diverse range of industry sectors.  His practice focuses on trade marks, global IP portfolio management, IP rich commercial contracts, designs, domains, brand disputes and rights management.

Having started life as an IP litigator, his practice is now mainly non-contentious dealing with IP rich commercial contracts, management of global IP portfolios, brand disputes and rights management.  He is well known for his work in the brand protection, creative industry and sports sectors.

Diana is an Intellectual Property Advisor at CSC. She provides strategic advice relating to trade marks, domains and copyright infringement to corporate clients including banks, pharmaceutical and tech companies and luxury goods brands primarily in Europe and North America. She is a qualified lawyer in Virginia and has recently completed the QLTS process to become a qualified solicitor in England and Wales.

Diana completed an intellectual property specialisation from the University of Richmond, School of Law and previously has worked in a boutique intellectual property firm and as in house counsel in both Canada and the United Kingdom. This has allowed Diana to file various types of registrations and engage in litigation in numerous jurisdictions and ascertain what works well in practice in terms of brand protection in those regions.

Clare is Founder and Director of Stanmore IP, advising on all aspects of trade mark protection, enforcement and exploitation in the UK and Europe, as well as on a global basis. She has a passion for brands and a real enthusiasm for the way a brand can engage consumers and create a genuine relationship. Clare has worked with clients in a broad range of sectors, from financial institutions, hotel chains, interior designers, online gaming, fashion, food and drink. She started her career as a Trade Mark Officer at Unilever before moving into private practice. Immediately prior to founding Stanmore IP, Clare worked at Berwin Leighton Paisner as a Senior Trade Mark Attorney. At Stanmore IP Clare has worked hard to build a reputation with small business owners working with them directly to provide hands-on practical advice, as well as working with larger companies and managing global trade mark portfolios. Clare regularly speaks at events and sits on the expert panel of many networking and business advice groups.

Michelle Wheeler joined Practical Law in 1998 and is Head of Practical Law IP&IT, Practical Law Media & Telecoms, Practical Law Life Sciences and Sector Head for TMT and Life Sciences. She previously practised at Herbert Smith Freehills and taught the LPC at the University of Law.

Charlotte works with the Orange’s Group Legal Brand Affairs team.  They are responsible for licensing use of the Orange brand globally, registering and maintaining the group’s brand related IP (particularly the trade mark and domain name portfolio’s) and managing brand enforcement conflicts with third parties.

Charlotte has worked in a variety of paralegal roles both in private practice and in-house, and has a particular interest in online brand protection. She is currently completing her qualifications to become a solicitor.

Darren is a brands lawyer, litigator and portfolio manager and a partner at Simmons & Simmons, a Deputy District Judge in the IPEC and an award-winning innovator. Darren is a member of the INTA Famous Marks committee, the JIPLP Editorial Board and last year was named by the Financial Times as Young Legal Innovator of the Year for his work developing a revolutionary trade mark software tool. Darren is a reputed IPKat blogger and writer of the Retromark trade mark round-ups.

Nina is a Legal Director at Mishcon de Reya. As a Professional Support Lawyer within the Intellectual Property Group, Nina provides the team and its clients with up to the minute information, guidance and training on developments in IP law and practice.

She has almost 20 years’ experience of IP litigation and protection and related fields, and has a particular interest in the TMT, life sciences and retail & luxury sectors.  Nina writes and speaks regularly on IP and related issues, including on TV and radio, and worked with the Law Commission on its report into reform of the groundless threats regime.  Having specialised in IP litigation in private practice, Nina has also gained valuable experience in delivering training as a Senior Lecturer in IP law, and more recently as a guest lecturer in IP, and dissertation supervisor.

Mark Holah is a partner in Bird & Bird’s Intellectual Property Practice, based in London.  He is qualified as a solicitor in both the UK and Ireland and is also a chartered trade mark attorney. Mark has been advising clients on intellectual property issues since 1994. His practice focuses principally on brand protection issues, both contentious and non-contentious.  During his career, Mark has acted for clients in virtually every industry sector and he has been fortunate enough to work with many of the world’s most famous and iconic brands.

The legal directories have consistently ranked Mark as an expert. In addition he has been listed as a leading individual in the “Guide to the World’s Leading Trade Mark Law Practitioners” and the International Who’s Who of Trade Mark Lawyers.

Mark is a member of CITMA (the Chartered Institute of Trade Mark Attorneys) and INTA (the International Trademark Association) and currently sits on the INTA Bulletins Committee. He has spoken on branding issues at a wide range of conferences and events, including conferences organised by INTA and IPIC (the Intellectual Property Institute of Canada), and has lectured at the University of Cambridge as part of its Masters of Bioscience Enterprise. He was the first winner of the Adrian Spencer Award, given to the student with the highest mark in the ITMA finals law paper.

Jeremy is a Partner and IP specialist at Bristows. His experience is diverse with a particular focus on trade marks and copyright. He has advised on a number of high profile disputes before the High Court, Court of Appeal, Court of Justice, EUIPO and General Court and has even lead the advocacy before the CJEU. He has acted in some of the leading cases that have developed IP 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, and Cadbury v Nestle which concerned the registrability of the shape of a four fingered KitKat chocolate bar.

As part of his brands practice 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 and consumer goods. In particular 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 community trade marks and designs as well as copyright.

He is lauded by clients as someone who “applies a business lens to his advice and who really invests in the client relationship’.” As well he ” is … no stranger to the cut and thrust of High Court litigation. He’s a valuable asset and always goes the extra mile to ensure your concerns are being properly addressed. He provides practical and timely advice, and is a great strategist who can come up with winning arguments.”

Benet practises in all areas of Intellectual Property law as well as contract disputes with a technical or entertainment law aspect.

Over the past few years Benet has gained particular expertise and experience in trade mark law.  He most recently appeared in Cartier and others v BskyB and others, which established the availability of Internet blocking injunctions in trade mark matters.  He has appeared in a number of significant recent Court of Appeal decisions on trade mark matters: Assos v Asos and Merck KgaA v Merck Sharp & Dohme.  He has frequently appeared before both the General Court and Court of Justice of the EU in appeals from OHIM.  He regularly represents clients at the Intellectual Property Office and on appeal from the IPO both before the Appointed Person and to the High Court.  He is an editor of the Citma & Cipa European Union Trade Mark Handbook and has contributed to Westlaw insights on Trade Mark Procedure and Trade Mark Evidence.

Before being appointed Queen’s Counsel Benet was appointed to the Attorney-General’s A panel of Counsel in September 2015l, whose members deal with the most complex government cases in all kinds of courts and tribunals, often against QCs.   Benet was previously on the C panel, from 2005 to 2010.

Sally is a partner in the firm’s Intellectual Property department and head of the Brands group. She advises on brand protection strategies including clearance, monitoring and enforcement as well as trade mark and design filing. She acts for brands at all stages, from creation through to international expansion, both in preparation for investment following acquisition. Sally advises clients in a wide variety of sectors and is co-head of the firm’s luxury, fashion and retail group. She is lauded by her clients for being an “IP protection and exploitation maven”, with a “true depth of theoretical knowledge [which] she knows how to apply… to great effect”. Prior to qualifying as a lawyer, Sally was a brand manager for multi-national brands where her responsibilities included new product development, advertising, promotion, PR, packaging and sponsorship. Sally is recommended in Legal 500, ranked as an IP Star and recognised  in Managing Intellectual Property’s Top 250 Women in IP Global Index.

Cam is an intellectual property lawyer working in the Trademarks Team at Microsoft. He supports the Cloud, Artificial Intelligence, and Research business. He has responsibility for multi-jurisdictional trade mark portfolio management, including trade mark searches and prosecution. He advises on and co-ordinates multi-jurisdictional trade mark infringement and contentious registry matters. He counsels the business on brand use and guidelines, brand development and naming processes, M&A related due diligence, and copyright issues. use  and registry strategies. Prior to joining Microsoft, Cam worked in private practice in the UK specialising in advising on contentious, advisory and commercial work in all areas of intellectual property law.

Simon is a European Trade Mark Attorney and a Partner at Tomkins. He has vast experience in all aspects of trade mark law and practice in Ireland, the UK and Europe, spanning over 30 years. He manages extensive trade mark portfolios for domestic and multinational clients. Simon has published articles on trade mark law and practice and has lectured on this subject in colleges in Ireland and the USA. He is the former President of the Association of Patent and Trade Mark Attorneys. Recognised by the World Trade Mark Review Top 1000 (2018) as being “a font of commercial wisdom”, he is one of Managing Intellectual Property’s IP Stars for 2017.

Steve is a Partner at BLM and a Council Member, Member of Legal Affairs & Policy Board and Technology & Law Reference Group, The Law Society. He specialises in intellectual property, media and social media law with a particular emphasis on the creative, digital and technology sector. Steve is listed as a recommended lawyer in tier 2 of the Legal 500s 2014, 2015 and 2016 North West Technology, Media & Telecoms section. He is a regular spokesperson and has given interviews to the local and national press through BBC Breakfast, Sky News, ITV, BBC Radio 2, BBC Radio 4, BBC Radio 5 Live and LBC London. Steve’s first book, “Legal Issues of Web 2.0 and Social Media”, was published in June 2011 and his second book “Legal Issues of Corporate Communications in an Online World” was published in June 2012.

Simon’s practice covers all areas of intellectual property law, including trade marks, passing off, designs and copyright.

In recent years he has worked on several notable trade mark cases including Sky v SkyKick, Zuma Restaurant v Zuma Dog Food, Iceland v Iceland, Kit Kat, Specsavers v Asda, IP Translator, Interflora v M&S, Budweiser, Intel, L’Oreal, Adam Opel, Arsenal, Bovemij, UDV and DHL Express. He appears regularly before all the relevant tribunals including the High Court, Court of Appeal, Patents Court and UK Intellectual Property Office. He has extensive experience of the Court of Justice of the European Union (CJEU) and General Court in Luxembourg. To date, he has acted in more than 20 references to the CJEU and more than 50 cases before the General Court on trade mark appeals from OHIM.

He was appointed a silk in 2016 and is described in the current Chambers and Partners Guide as “esteemed for his practical and tactically minded counsel and experienced in acting in CJEU, Court of Appeal and IPEC cases” and “as strong advocate who is very good to work with and a strong team player”. The Legal 500 describes him as “creative, practical and excellent in court”.

John is General Counsel at the TONI&GUY group, having joined the company from Allen & Overy as its first in house counsel in 2003.  John’s responsibilities cover the TONI&GUY and Essensuals hairdressing businesses and the label.m products business.

Kate is a solicitor and registered trade mark attorney, with over 25 years’ experience in relation to trade marks and related copyright, design and internet matters. She leads the Trade Mark Registration and Protection team at the firm and her work includes advising on the adoption, registration and enforcement of trade marks and designs internationally.  Many of Kate’s clients are in the leisure and retail industries with interests across the globe. Kate is the Immediate Past President of the UK Chartered Institute of Trade Mark Attorneys and is Vice Chair of the INTA Pro Bono Committee. Kate was awarded an MBE in 2016 for services to education.

“Kate O’Rourke has been at the very forefront of the IP discussion around Brexit and sources have high praise for her performance in this role” WTR 1000, 2018

“She is highly professional and results oriented and a leading expert in her field.” WTR 1000, 2018

Kate is included in the IP Stars 2018/19 rankings.

Tony, Partner at Boult Wade Tennant, is a leading Chartered and European Trade Mark Attorney, as well as a Chartered Patent and European Patent Attorney and European Design Attorney, providing a full range of trade mark advice (both UK and international) to direct corporate clients. He has extensive experience of prosecution work and oppositions at the UK Trade Mark Registry and the EUIPO, as well as co-ordinating trade mark litigation for clients in Europe, the USA and the Far East. He has Trade Mark clients in the fields of music, publishing, theatre, professional services, toys and computer games, the motor industry, telecommunications, pipeline industry and financial services. Praised for being “wonderful for strategic advice … first rate with clients … [and] – an excellent listener” he is ranked in Band 1 among UK wide Trade Mark attorneys in various leading directories, including: Chambers and Partners, WTR 1000’s Leading Professionals, WIPR Leaders, and MIP IP Stars.

Natasza is an in-house lawyer at Vodafone Group and has broad experience in commercial and intellectual property, working in these sectors both in private practice and in-house for global companies (Caterpillar Inc., Sony Music and Vodafone Group).

She is responsible for all intellectual property matters relating to Vodafone’s brand including overseeing clearance of product names, devising global trade mark filing strategies, managing over 300 intellectual property litigation matters worldwide, brand protection/enforcement and licensing. Additionally, Natasza advises on Vodafone’s commercial activities including global advertising campaigns, advertising/marketing clearance, social media and drafting terms and conditions. Natasza also works on M&A deals and recently acted as lead IP counsel for Vodafone’s £16bn acquisition of Liberty Global’ s European assets.

Helen is Head of Legal – Intellectual Property at Thomas Cook, with responsibility for developing and leading Thomas Cook Group’s IP strategy, managing the Group’s global trade mark and domain portfolios, defence and protection of Thomas Cook’s global intellectual property portfolios and advising the Group in respect of IP matters generally. Prior to joining Thomas Cook, Helen was Senior Legal Counsel – at Orange Group, where she led the Group portfolio and brand enforcement team, managed the Group’s global trade mark portfolio and advised the international business on IP licensing and brand protection issues. She has also worked as a lawyer at the BBC, where she advised on IP and media litigation issues. She qualified into the Media and IP Litigation team at Richards Butler LLP (now Reed Smith LLP) and later joined the Commercial Litigation team at Nabarro LLP before embarking on an in-house career.

James heads up the in-house IP team at fashion brand and retailer Superdry.

Based in the UK, Superdry has grown rapidly in recent years.  It now has operations in over 50 countries worldwide and sells its products globally.  Its designers produce over 10,000 new designs for clothing products, accessories and trims every year.

James’ team is charged with safeguarding Superdry’s intellectual property rights around the world.  They deal with IP litigation, registry proceedings, prosecutions and brand and design clearance.  They also work closely with the business to manage supply chain issues, licensing, distribution and marketing initiatives.

Prior to joining Superdry, James worked as an IP litigator at Pinsent Masons and then Lewis Silkin in London.  During his time in private practice, was involved in several high-profile trade mark cases involving issues such as genuine use, comparative advertising, and AdWords.

Catrin is responsible for protecting and enforcing the world-famous Dr. Martens brand and trade dress.

Dr. Martens sells its footwear globally through its own stores and ecommerce and with the help of wholesale and retail partners.

Prior to joining Dr. Martens, Catrin was Head of IP at Pinsent Masons, where her team won the Managing IP Trade Mark Litigation Team of the Year Award and also the Lawyer IP Team of the Year in 2014.

Catrin also spent five years working in global projects for KPMG where she led the Legal support for Consumer Markets and Retail.

Giovanni is a qualified solicitor and trade mark attorney, also qualified as an Italian lawyer, with over 17 year experience in managing, protecting , exploiting and enforcing global brands in a variety of business sectors and jurisdictions.

As Counsel – Brands at BP, Giovanni is responsible in particular for the protection of BP’s Colour Green trade mark, which he has been able to successfully enforce in numerous jurisdictions world-wide.

Sarah is an IP Partner at CMS and Head of Trade Marks. Sarah has over 15 years’ experience in advising companies on how to protect, monetise and enforce their brands and designs.

Sarah has experience of advising pharmaceutical and medical device businesses on a broad range of IP work, including devising trade mark filing strategies, conducting clearances searches and managing international portfolios, as well as advising on all types of contentious matters before UKIPO, EUIPO and UK Courts.

In addition, Sarah has experience of non-contentious matters including drafting and negotiating all types of licensing and franchising arrangements and co-existence agreements. Having spent her first 5 years at a very large city firm, she is equally adept advising on the IP aspects of corporate acquisitions and disposals. Sarah also routinely advises agencies and brands on advertising issues including pre-clearance advice and assists clients with ASA complaints.

Sarah’s approach is focused on providing strategic and pragmatic advice which delivers the client’s commercial objectives. Legal 500 describes her as “‘efficient and practical’ in her approach”.

Lia is Corporate Counsel – Intellectual Property at Caterpillar, with responsibility for trade mark activity for the flagship brand regionally, including trade mark clearance, prosecution, maintenance and enforcement, anti-counterfeiting initiatives, UDRP and Nominet proceedings, as well as for managing customs liaison in multiple jurisdictions. In addition, she has global responsibility for all trade mark aspects of several subsidiary brands headquartered in Europe. Lia manages the European, mid-East and Russian trade mark portfolios and provides trade mark portfolio advice and support to the wider internal legal team. She also has responsibility for managing the regional outside counsel teams.