Bristows

Firm overview:

Though recognised primarily for its patent practice, rival firms consistently rate Bristows “extremely high” in the trademark sphere. The IP practice offers the full range of trademark services from portfolio management through to high-ticket litigation. Assisting diverse clients, the full-service commercial firm “is doing excellent prosecution”, say peers, and manages global trademark portfolios, clearance searches and filings for industry-leading names, the Financial Times and British hotel chain Rocco Forte.

Before the UK Intellectual Property Office (UKIPO), Bristows has succeeded on behalf of elite clients, including fast-food chain McDonald’s, protecting its renowned trademarks. In addition to registry disputes, the team handles cases in the Court of Appeal and the Supreme Court, and is highlighted as a top firm for trademark litigation among peers. Notably, Bristows succeeded on behalf of Cadbury (Mondelez) before the Court of Justice of the European Union (CJEU), which concluded that Nestlé’s four-finger Kit Kat was not inherently distinctive. Recently, the team represented Muzmatch, which describes itself as a “Muslim dating and marriage app”, in a trademark dispute resulting in a significant new ruling by the Court of Appeal on honest concurrent use.

Team overview:

Adding to the team in London, Bristows opened offices in Brussels in 2018 and in Dublin in 2023. More than 20 lawyers and attorneys make up the firm’s brands team. Unrivalled in reputation is the “brilliant” dual-qualified Jeremy Blum, who is highly recommended by peers for his litigation practice. Experienced representing both applicants and defendants, Blum acts before UK courts, Intellectual Property Offices and the CJEU.

Key matters:

• Bristows represented McDonald’s in a trademark opposition before the UKIPO. The client brought that matter against the trademark ‘Makhalal’, arguing the marks were similar to a number of its own products and would cause confusion for consumers. Additionally, issues of passing off were raised, as the applicant for ‘Makhalal’ had previously used a number of names similar to the McDonald’s brand for its restaurant and food items, including ‘Big Mac’, ‘Big Mak’ and ‘Mac Halal’. The client argued that the applicant sought to create a connection between the two marks to gain a commercial advantage. Bristows’ client succeeded in full, and McDonald’s was awarded £4,800 towards the costs of the proceedings.
• In a highly reported matter in 2023, Match Group, owner of Match.com, Tinder and Plenty of Fish, brought a case against Bristows’ client Muzmatch, owner of a Muslim dating app, alleging infringement of its registered trademark of a small heart and the word ‘Match’. Muzmatch did not succeed before the Intellectual Property Enterprise Court, and appealed, relying on the argument of honest concurrent use: where two parties use similar designs in good faith for a significantly long period and as a result, the court can permit registration of both trademarks. The Court of Appeal upheld the decision at first instance and provided guidance confirming the difficulty for defendants to rely on honest concurrent use, especially when the use of a trademark is infringing from first use. The matter reiterated the importance of due diligence before using designs that are similar to existing trademarks.

Clients:

Cadbury (Mondelez), Financial Times, McDonald’s, Muzmatch, Rocco Forte