D Young & Co

Firm overview:

D Young & Co works with some of the most famous and valuable brands in the world. The pan-European IP firm is known among peers for its non-contentious practice. In addition, “extremely happy” clients report that the team takes on trademark matters from cradle to grave, evidenced by the firm’s relationship with cosmetics company Lush. D Young & Co handles a portfolio spanning 75 countries for Lush, developing global filing strategies, managing prosecution and opposition matters worldwide, and acting in multi-jurisdictional infringement litigation. 

Numerous new clients joined D Young & Co in 2023, including elite brands both through tender wins and referrals from the firm’s patent practice. A regular before the UK Intellectual Property Office, the team represents its A-list clients in trademark opposition matters, and since 2020 has acted in more than 100 of these disputes on behalf of Meta-owned social media platform Instagram. 

The litigation practice has expanded since first established in 2011, and in 2021 issued the highest number of cases before the Intellectual Property Enterprise Court (IPEC). The firm works hand in hand with its WIPR-ranked German office for clients with UK and EU needs, navigating separate enforcement matters following Brexit. An example is Skechers, for which D Young & Co has advised on matters before the IPEC in the UK, the German courts, and EU Intellectual Property Office, as well as matters outside of Europe.

Team overview:

The trademark team of eight partners and 17 fee earners is located across all three of D Young & Co’s offices in London, Southampton and Munich. London- and Munich-based partner and solicitor Tamsin Holman is “pleasant, to the point and sharp”, says a client. Holman brought her experience as a barrister to set up D Young & Co’s litigation practice. She focuses on all IP disputes, working with the firm’s German litigators to coordinate multiple proceedings in numerous jurisdictions at one time. 

Working alongside Holman is London-based Anna Reid, a go-to for IPEC matters. Reid advises on a range of IP matters for clients such as Rolex, Skechers and Lush.

Peers notice London- and Munich-based Matthew Dick’s “strong relationships” with clients, “how much they value the work and advice, and he’s had some of those clients for a very long time”. Dick focuses on brand-related law, specialising in trademarks and is the client partner for top clients, handling the global portfolio for Turnbull & Asser, Global Blue and the UK portfolio for Skechers. 

Among D Young & Co’s eight recent hires is Peter Byrd, moving from Charles Russell Speechlys. Byrd is “a star of the future” and, as a senior associate, he brings a broad brands-related practice, advising on trademark rights and disputes.

Key matters:

• Tamsin Holman and Anna Reid were in the team representing Skechers before the Intellectual Property Enterprise Court (IPEC). The matter concerned the client’s claim for infringement of three of its UK registered designs, including the bestselling GO WALK shoes, and concluded in a settlement. In addition to the proceedings, Holman and Reid handled domain name disputes and counterfeit website issues to tackle copycats of Skechers’ shoes. The work involved collaborating with Alibaba.com to take down the infringing sites and products. In the wider strategy to protect the Skechers brand, the team has pursued Uniform Domain-Name Dispute-Resolution Policy (UDRP) complaints, and handled customs disputes and claims against other shoe manufacturers involving detentions of products. The work covers the UK and Germany, involving external counsel in disputes across numerous other European countries.
• In Industrial Cleaning Equipment (Southampton) v Intelligent Cleaning Equipment (CA-2023-000692, IP-2021-000046), D Young & Co partner Anna Reid, senior associate Peter Byrd and solicitor Kamila Geremek handled a trademark infringement and passing off case in the IPEC for Industrial Cleaning Equipment. The case related to the use of ‘ICE’, an acronym of the client’s name, on professional cleaning equipment in the UK. Industrial Cleaning Equipment brought the matter against defendant Intelligent Cleaning Equipment for using the sign ‘ICE’ and misrepresenting consumers that there was a connection to the claimant’s services. The defendant argued that the client’s trademarks were invalid and the issue of acquiescence, where a proprietor of a trademark has acquiesced for five years, was discussed. The client succeeded in multiple claims and the court concluded there was a likelihood of confusion and a high degree of similarity between the marks used by the parties. A number of findings have been appealed, and the case was recently heard in the Court of Appeal.

Clients:

American Eagle Outfitters, Church & Dwight, Dupont De Nemours, Fresenius Kabi, Heineken, Instagram, KWS Saat, Lush (Cosmetic Warriors), Marriott International, Rolex, Teva Pharmaceuticals / Ratiopharm, The Dow Chemical Company, The Shard, Skechers, Swarovski, Exxon Mobil, UPS