Fieldfisher

Firm overview:

Full-service firm Fieldfisher is “knowledgeable, practical and responsive”, says a longstanding client. Widely recognised by peers for the strength of its patent and trademark practice, Fieldfisher is particularly strong on the contentious side, apparent in recent matters on behalf of iconic clients such as Google and Peloton, and advising on unchartered territories, including an AI matter for stock photo supplier Getty Images. As well as representing big names, Fieldfisher is equally proficient taking on industry giants for the lesser-known, as seen in the ongoing matter against broadcaster Sky, where the team represents cloud management software company Skykick. The firm advises diverse brands on the full spectrum of trademarks, with key markets in the technology, energy, and financial sectors. Outside of the court, the team has experience negotiating settlements and the non-contentious practice manages global portfolios for top international brands, some involving thousands of marks.

Team overview:

Impressive in size, Fieldfisher has 26 locations in Europe, Asia and the US. Many of Fieldfisher’s lawyers have expertise spanning trademarks, patents and copyright, including John Linneker, partner and co-head of the IP group. Linneker leads the team on the Skykick matter. Hastings Guise, dual-qualified as a solicitor and attorney, advises on brand expansion, managing multi-jurisdictional clearance and protection programmes for clients including trademark disputes and opposition matters. Guise has represented Entertainment One in Europe in a matter concerning the famous Peppa Pig character and its related trademarks.

Key matters:

• Skykick UK and another (Appellants) v Sky and others (Respondents) In the highly publicised matter, Fieldfisher represents Skykick against the well-known broadcaster Sky in the ongoing trademark litigation before the Supreme Court. The case was brought initially by Sky, alleging that Skykick had infringed on its flagship ‘Sky’ trademark in relation to cloud storage and email migration. Fieldfisher’s client counterclaimed, alleging that Sky’s monopoly on the word ‘Sky’ in multiple classes was in bad faith. The ongoing case has garnered widespread attention and has been heard in the Court of Appeal as well at the European Court of Justice for clarity on bad faith. The Supreme Court outcome could have consequences for brand owners and form a new ruling in the UK around bad faith and filing in multiple trademark classes. John Linneker leads a Fieldfisher team of Sheena Sheikh Brown, Christopher Leung and Natasha Rao.
• Fieldfisher has acted on UK trademark matters on behalf of Google, owner of the YouTube platform, and its parent company Alphabet for a number of years. Recent work includes registering the ‘YouTube’ logo on the basis of acquired distinction in the UK. This was a significant outcome for the client, demonstrating that a large portion of the public associate the logo with YouTube.
• Fieldfisher also represents Google in High Court proceedings regarding the mark ‘Shorts’. The matter was brought against Google, who uses the mark in relation to videos on YouTube under the title ‘Youtube Shorts.’ The matter is ongoing. The team assisting Google includes Amy Reynolds, Nick Rose, Linneker, Sheikh Brown, Jude Antony and Katie Warner.

Clients:

Caffè Nero, Curry’s, Dell, EY, Google, Getty Images, Linux Foundation, Peloton, Randox Laboratories, Sazerac, Skykick, Take-Two Interactive Software