Lane IP

Firm overview:

Lane IP “burst on the scene impressively” over a decade ago as a boutique firm. Championing a different approach to aid clients on their IP matters, the firm is said to be “sometimes more agile” than traditional outfits. Along with trademark prosecution and enforcement, Lane IP is a trusty advisor for online brand protection and domain name disputes. The firm has succeeded on behalf of global cosmetics company Charlotte Tilbury before the Belgian Centre for Arbitration and Mediation (CEPANI) and for The Premier League before the WIPO Arbitration and Mediation Centre in matters against bad faith filings by Chinese applicants. Peers consider Lane IP “strong on investigations” and ready to respond quickly when the alarm is raised for counterfeit goods.

Team overview:

In addition to its UK and Ireland locations, Lane IP has opened offices in China, Hong Kong and Australasia. The firm’s founder Steve Lane is a solicitor and barrister in New Zealand and a qualified UK trademark attorney. Joining in 2021, “lateral hire Mark Hickey has decent clients and strengthened the team”. Bringing 18 years of experience from fellow ranked firm Murgitroyd, trademark attorney Hickey has assisted multinational companies in the oil and gas, pharmaceutical, tobacco and fast-moving consumer goods industries.

Key matters:

• Lane IP represented multinational consumer goods company Unilever Global in a UK Intellectual Property Office (UKIPO) and a High Court matter against DC Comics. The matter concerned a UKIPO opposition brought by DC Comics against the client’s mark ‘Wonder Mum’ relating to personal care products under class three.
• DC submitted nearly 300 pages of evidence, arguing that the existing trademark registrations of ‘Wonder Woman’ in other classes was sufficient to show a reputation in class three. The hearing officer dismissed the opposition, commenting that DC’s evidence was “ill-focused”, and noted that Unilever’s products did not have the words ‘wonder woman’, or DC’s logo or character likeness.
• DC Comics appealed to the High Court, arguing that the hearing officer had erred when assessing the similarity of the two marks. The High Court upheld the UKIPO’s decision, referring to the differences pointed out by the hearing officer.

Clients:

Charlotte Tilbury, The Premier League, Unilever