Baker McKenzie

Firm overview:

“In terms of international presence, [Baker McKenzie] ticks those boxes and has some very loyal clients,” says a fellow lawyer. The full-service, global firm is enviable in size and reach, as is its roster of A-list clients such as Google and Warner Bros, and high-value brands that choose the firm for beginning-to-end trademark matters. 

Anchored in London, it manages nearly 700,000 trademark records worldwide and represents clients in cross-border disputes and matters up to the Court of Appeal and Supreme Court. For non-contentious matters, the firm handles some of the largest global trademark portfolios, one of which belongs to the sought-after consumer goods organisation, Unilever. 

Baker McKenzie is more than well-equipped to advise during uncertain landscapes for brand owners, working alongside the biggest names in technology on the newest innovations, and tackling highly sensitive matters, including advising brands on exiting the Russian market.

Team overview:

Recognised for its “strong trademark team”, Baker McKenzie’s UK practice benefits from 44 offices worldwide. The trademarks unit, part of the firm’s IP and technology group, has a team of 13 in London, including three partners and one counsel. 

Partner Rachel Wilkinson-Duffy "is an exceptional individual who manages to combine a busy international practice with being president of CITMA,” says a peer. Wilkinson-Duffy acts on national and international trademark, design and domain name matters, with clients spanning pharmaceuticals, finance and fashion.

Counsel Julia Dickenson has represented brands before the Intellectual Property Enterprise Court, High Court, Court of Appeal and Supreme Court. Dickenson’s speciality lies within the luxury sector, where she advises on complex brand strategy for high-profile fashion and beauty companies. 

Head of trademarks Jessica Le Gros is responsible for the firm’s largest portfolios, both in size and value. Managing approximately 200,000 trademarks worldwide, Le Gros specialises in global clearance and complex global disputes.

Key matters:

• Baker McKenzie advises multinational consumer goods company Unilever on global brand protection and disputes, including metaverse-related issues and large transactional matters involving tens of thousands of trademarks. Recently, the team was involved in a trademark and domain name matter against a UK takeaway service. The alleged infringer had registered ‘Miss Whippy’ and sold food and milkshakes using the trademark. Following a strategic approach and negotiations to protect the client’s ‘Mr Whippy’ mark, the matter concluded with the application for ‘Miss Whippy’ being withdrawn and its owners discontinuing further use of the name. The team involved includes Ben Allgrove, Jessica Le Gros, Julia Dickenson and Nadine Archer. 
• Baker McKenzie’s Le Gros is advising upmarket fruit supplier Rockit in relation to various disputes and a global settlement agreement. The settlement concerns the client’s trademark ‘Rockit’ relating to its product of miniature, bite-sized apples, which the client has exclusive rights to and is marketed under the same name. The counterparty, Rokit Natural Energy, is a beverage company. The key claims are in relation to the similarity between fruit and fruit juices, alcoholic drinks and other beverages. Baker McKenzie handles both the defensive and offensive matters on behalf of Rockit. With the matter spanning the UK, EU and China, the dispute is significant to the client and its ability to expand its product into future markets.

Clients:

CSL/Seqirus, Eli Lilly, General Motors, Google, Haleon, JCB, Jumeirah, Novartis, Novo Nordisk, Pinterest, RedFoxLabs, Rockit, SAP, Signal AI, Unilever, Warner Bros