Bird & Bird

Firm overview:

Bird & Bird, says a peer, is “the best IP firm in Europe”, and has a “great reputation and inherited knowledge”. The global, full-service firm is outstanding for the full scope of trademark needs and a steadfast choice for high-profile trademark matters in the UK, evidenced by its recent success on behalf of supermarket chain Lidl against Tesco in one of 2023’s most anticipated trademark matters. The top-tier practice attracts top-tier clients, including leading energy drink brand Monster Energy, for which Bird & Bird has coordinated on registry disputes and oppositions in multiple territories across Europe.

The prosecution and portfolio management practice has grown exponentially since its launch a decade ago. Now one of the largest non-contentious practices in the UK and a top 15 trademark filing representative for 2022, the team maintains long-term relationships with clients, including eight years with hotel brand Belmond. 

Bird & Bird handles vast portfolios and the trademark aspects of clients’ rapid international expansion. In the past year the firm conducted 1,000 new product name searches, 100 new trademarks applications and more than 100 disputes for FTSE 100 client Kingfisher, owner of home improvement brands B&Q and Screwfix.

Team overview:

Enviable in size, Bird & Bird has offices in 22 countries and 100 individuals in the UK dedicated to IP, benefiting from the firm’s wide reach. Head of the contentious practice, partner Peter Brownlow leads on multi-jurisdictional matters, including litigation in Singapore, Hong Kong, India and China for Merck and Monster Energy. 

Ewan Grist specialises in enforcement and litigation and notably represents Lidl in the high-profile infringement, passing off and copyright matter against Tesco in the High Court. 

In Grist's team is senior associate and solicitor advocate Tristan Sherliker, who is reported as “fantastic” on the dispute side, and who has previously represented famous fitness brand Crossfit in a trademark infringement matter.

Dual-qualified lawyer and trademark attorneys Allan Poulter and Mark Holah are to thank for the “solid” prosecution and portfolio management team. Poulter offers expertise in brand management and contentious registry proceedings, and in 2023 settled a 60-year dispute for Belmond, marking a milestone moment for the client. 

Holah advises on national and international trademark portfolios, including the impressive expansion strategy conducted for Kingfisher last year and assisting the client internally with a new training programme.

Key matters:

• Led by Ewan Grist, Bird & Bird represents top UK supermarket chain Lidl, known for its discount prices, in a trademark infringement case brought against competitor Tesco. The matter concerns the alleged infringement of Lidl’s logo, a red and yellow circle on a blue background, following Tesco’s use of a yellow circle containing ‘clubcard prices’ on a blue background, indicating a discounted price.
• The matter is significant as similar allegations of infringement are typically brought against the lower-priced supermarkets; whereas here, Lidl suggested that Tesco was “seeking deliberately to ride on the coattails of Lidl’s reputation as a “discounter” supermarket”. The matter was brought before the High Court, and the judgment in April concluded in favour of Lidl’s trademark claims—that Tesco’s mark was similar to Lidl’s both with and without the text. Tesco is looking to appeal the judgment.

Clients:

Belmond, Chanel, Electrolux, Fiorucci, Hanes Brands, Hurr, Kingfisher, Kraft Heinz, Lidl, Merck, Monica Vinader, Monster Energy, Revolut, Rothy’s, SC Johnson