Barker Brettell

Firm overview:

“Barker Brettell illustrates that you do not have to be based in London to be first rate,” says a fellow lawyer. Headquartered in Birmingham, the attorney firm specialises in IP and has a strong reputation among peers, particularly for non-contentious trademark work. 

Barker Brettell advises on filing, searching, and portfolio management for domestic and international clients and was the UK’s tenth-top filing representative in 2022, with 860 filings. For registry disputes, the team handles conflicts before the UK Intellectual Property Office, and has recently succeeded in a number of oppositions, including those brought against financial services company Nufin, food packaging supplier Faerch and for watch brand Spooks.

Team overview:

Catherine Wiseman, head of trademarks for Barker Brettell, “leads an impressive team”. Peers say “she is absolutely a great attorney…there’s something about the way she’s building her practice that is really admirable.” Wiseman files and prosecutes global trademarks, and tailors her work to match client budgets. 

Partner and attorney Lucy Walker is recommended by peers. Walker’s experience includes advising protein bar brand Grenade on all trademarks matters including clearance, filing, registry disputes and infringement actions. During this time, the client went from being a startup to a multimillion-pound company spanning more than 80 countries.

Attorney Tracy Arch is head of the firm’s food & drink sector. Arch developed the global IP strategy for Britvic Soft Drinks and is knowledgeable in 3D trademark registrations. 

Stephen Lowry is a qualified Irish and UK trademark attorney advising on clearance and registration, and representing clients in IPO actions.

Key matters:

• Barker Brettel represented German financial services company Nufin in its UK application for the trademark ‘Moss’ in a number of classes covering its corporate spending platform. An opposition was brought by rival German financial services company Amafin in 2022, relying on its registered mark ‘Myos’, claiming a likelihood of confusion caused by the visual and phonetic similarities of the marks and that the marks are registered in similar goods and services.
  
  When considering likelihood of conclusion, the marks were found to be conceptually dissimilar, but in favour of Amafin, the goods and services of both marks were found to be identical. However, in favour of the client, the registrar concluded that consumers would not overlook the ‘Y’ and the one ‘S’ in the mark ‘Myos’, and that there was a conceptual difference between the marks, given that ‘Moss’ is a word with a meaning. It was deemed there was no likelihood of direct confusion, the client was able to proceed to register its trademark ‘Moss’ and was awarded costs to cover legal fees.

Clients:

Faerch, Inneo Solutions, Nufin, Spooks