Brandsmiths

Firm overview:

Boutique IP firm Brandsmiths is “one to watch”, say peers. The firm offers the full range of trademark services, but focuses primarily on contentious matters. Particularly skilled before Intellectual Property Offices (IPOs), Brandsmiths has filed more than 5,000 trademark oppositions, revocations and invalidations in the UK and EU and, according to the Chartered Institute of Trade Mark Attorneys, had more appearances before the UKIPO than any other firm between 2018 and 2022.

The team of lawyers and attorneys has rights of audience up to the highest UK courts. In 2022, it had two matters before the Court of Appeal, and four cases pending before the Supreme Court. Notably, in 2023 Brandsmiths succeeded before the Court of Appeal in a matter against Amazon, now being appealed by the online retailing giant. 

Clients comment that “Brandsmiths' work is amazing” and the team “presents the case exactly as needed in court”. Peers recommend the firm for large multi-jurisdictional work as the team coordinates disputes across Europe, with experience before the Court of Appeal in Greece, Germany and Spain and the Supreme Court in France and Turkey.

Team overview:

Opening in 2014, the team has grown from three to more than 65 individuals specialising in IP, litigation or both. Andrew Lee is the head of intellectual property at Brandsmiths, deemed by clients as “highly professional in trademark litigation” and by peers as “willing to push boundaries”. Lee’s speciality lies in trademarks, passing off and copyright matters. 

Aaron Wood is a trademark attorney, and is one of a few attorneys with full rights of audience in the UK. Wood has undertaken the most dispute hearings of any attorney in the past five years and represents companies in fashion, fragrance, and sport as well as celebrities.

Key matters:

• Andrew Lee, Claire Meyers and Sophie Turner-Flynn represent Lifestyle Equities in Lifestyle Equities and another (Respondents) v Amazon UK and others (Appellants)—a matter against Amazon concerning the sale of trademarked goods on a foreign website. In the UK and EU, Lifestyle owns trademarks related to ‘Beverly Hills Polo Club. However, in the US, the marks are owned by an unrelated entity. Brandsmiths’ client claimed that Amazon infringed on its trademarks by selling the US manufactured goods to UK and EU consumers. Amazon conceded that the listings on its UK and German website were infringement, but those on the US site were not, since they were not targeted at UK or EU customers. Before the High Court, Lifestyle’s claim was dismissed and the client appealed. The Court of Appeal overturned this decision and granted an injunction against Amazon, disagreeing that the goods were not aimed at UK and EU customers. Amazon appealed to the Supreme Court with the case commencing in November 2023.
• Brandsmiths represents Canadian multinational client Entertainment One (eOne), owner of the renowned children’s programme Peppa Pig, in a trademark, copyright and passing off matter against Vietnamese media company SConnect. eOne brought the case in relation to SConnect’s programme Wolfoo, which allegedly infringes UK and EU registered trademarks for ‘Peppa Pig’ as well as the programme’s artistic works and audio clips. In the ongoing matter, the case has received widespread attention due to the high-profile nature of the character Peppa Pig and prompted lobbying efforts to the Vietnamese government by the defendant. Brandsmiths’ client succeeded in a challenge as to whether English courts have jurisdiction in infringement matters on international internet platforms. The judge concluded that Wolfoo had targeted UK viewers and eOne is seeking a global injunction, a remedy that is rarely granted.

Clients:

Abbott Lyon, Beverly Hills Polo Club, Entertainment One, Extreme International, Full Colour Black, Iconix Brand Group, Kenilworth Creations, Lifestyle Equities, Pentland Brands, Vinted, YMU