Charles Russell Speechlys
Firm overview:
Particularly noted for its capabilities in private wealth and capital, Charles Russell Speechlys uses its corporate acumen to provide commercially informed advice to trademark clients. The firm offers the specialisms of an IP boutique within an international, full-service setting, with IP practitioners collaborating with colleagues in multiple departments on client projects.
Charles Russell Speechlys is managing approximately 5,000 active trademark records, and has filed over 300 new trademark applications over the past year. The firm delivers a ‘Brand Protection Plus’ service, protecting and maintaining expansive global trademark portfolios as well as advising on matters such as reputation management, advertising compliance, promotional activities and internet-related issues. Brand owners particularly value the team’s efforts in understanding the history of their business with all its twists and turns to offer fully-informed advice on current and future steps.
On the contentious side, the team is experienced in oppositions, revocations and cancellations as well as appeals to English courts. The practice operates in synergy with the firm’s International Disputes and Regulatory team, drawing on cross-sector expertise in complex cases. The team has advised Cadbury in protecting its iconic purple colour for many years and is coordinating more than 15 trademark oppositions globally for cycling lifestyle brand Rapha.
Team overview:
Mary Bagnall, head of the IP group, has a substantial brand protection practice including litigation in the major forums of the UK and EU. High-profile matters she has been involved in include the protection and enforcement of Lindt’s Gold Bunny in the UK and the successful enforcement of the colour green for BP in a landmark decision in Northern Ireland. One peer said “If I get her on the other side, I know I’m in for a really interesting case, she’s very analytical, a really good opponent”.
Head of brand protection Charlotte Duly advises a broad range of clients in trademark, design, copyright and domain name matters, as well as contributing to major trademark organisations in roles including co-chair of Marques. Peers label her as a “brilliant lawyer” with an “in-depth knowledge of UK trademark law” who “finds very creative solutions to complex legal issues”.
IP and digital specialist Nick White has particular expertise in sports and works across the leisure, fashion, and food and beverage industries. White advises governing bodies like FIFA, World Rowing and the ATP as well as well-known individuals including Marcus Rashford, Sir Chris Hoy, and Josko Gvardiol.
Another notable member of the team is Olivia Gray, who has worked with clients including Formica, Cadbury and Honest Burgers. James Yow’s capability in high-stakes legal challenges includes a High Court appeal concerning non-traditional marks and a significant role in a major art provenance dispute. A major client praises the “fantastic job” Yow did in preparing evidence for them.
Key matters:
Non-Contentious:
- Filing and prosecution work for Dave Mustaine and Megadeth
Charles Russell Speechlys has taken over the global portfolio for US thrash metal band Megadeth, providing a strategic review of its brand protection which included identifying territorial gaps to ensure key markets are adequately protected and supporting the band with the evolution of the goods and services it offers.
- Filing, prosecution and opposition work for S-RM Intelligence and Risk Consulting
The firm maintains the global portfolio for corporate intelligence and cyber security consultancy S-RM, including clearing and filing new brands, advising on trademark watching, devising strategies and taking steps where necessary to protect the S-RM brand.
- Filing, prosecution and opposition work for Moore Global Network
Charles Russell Speechlys continues to advise on Moore Stephens’ global rebrand to Moore, as well as the restructuring of the network and brand licensing arrangements for this well-known network of accountancy firms. The rebrand involves a trademark filing project involving over 100 countries, and the team worked with corporate colleagues across the firm to reorganise the licensing of the brand to a more efficient model.
Contentious:
- Advisory and enforcement work for Cadbury
The firm continues to advise Cadbury in relation to the enforcement of its brand rights in the colour purple, including now by reference to its trademark registrations for ‘Cadbury Purple’. This includes recent action to enforce Cadbury’s rights against those who would use the colour to trade off the reputation the brand has acquired and prevent against the loss of rights accumulated over decades.
- Opposition work and enforcement against counterfeiters for Rapha Racing
Charles Russell Speechlys advises Rapha Racing on all aspects of its IP protection including the expansion of its trademark and design portfolio, for instance the prosecution of several tricky trademarks globally such as ‘Performance Trailwear’ and ‘Never Just A Ride’. The firm also takes action on behalf of the client against third-party rip-off brands and counterfeiters, and is currently acting on or coordinating more than 15 trademark oppositions globally.
- Opposition and enforcement work for Vollebak
For high-end apparel manufacturer Vollebak, renowned for its unusual garments such as the Garbage Watch and 100 Year Hoodie, the firm has assisted with a trademark squatter in China. While the pirate had managed to get an earlier registration in China, the team secured a victory before the Trademark Review and Adjudication Department which ordered cancellation of the mark for the client’s key goods.
Clients:
Cadbury, Dave Mustaine/Megadeth, Howard De Walden Estates, International Tennis Federation, Justice and Care, Match Hospitality, Moore Global Network, Rapha Racing, SRM Intelligence and Risk Consulting, Vollebak.
