Mishcon de Reya

Firm overview:

A go-to for high profile and bet-the-company matters, Mishcon de Reya maintains a reputation among clients and peers as a “powerful” player in the trademark litigation sphere. The full-service, commercial firm currently represents British broadcasting company Sky in the closely watched Supreme Court matter against Skykick, a case anticipated to set a new UK ruling for bad faith trademarks. In another highly-reported matter, Mishcon de Reya represents Thom Browne against Adidas concerning the use of the four-stripe design. Spanning multiple jurisdictions, the UK trial is expected in 2024.

Clients report Mishcon de Reya is “always looking to protect client interests” and “can cut complex issues, get to the bottom of it and give you commercial advice quickly and easily”. The non-contentious practice advises industry-leading brands, including Japanese video game company Nintendo, British supermarket chain Iceland and iconic French fashion house Louboutin, which engage the full-service firm for brand strategy, protection and enforcement. Providing the full trademark service, the team offers watching, searching, filing and maintenance services, and assists with the expansion and protection of global portfolios.

Team overview:

After merging with Taylor Vinters in January 2023, the IP practice has more than 45 lawyers, trademark attorneys and patent attorneys praised by clients for being “highly professional with solid and strong legal skills”, and “always very approachable… nothing is too small”. David Rose is “probably one of the most knowledgeable people in the field”, says a client. Rose is the head of IP at the firm and litigates on high-profile matters in the UK and EU, including representing Sky against Skykick in the Supreme Court matter relating to bad faith filings. Jeremy Hertzog is “one of the best in the game”, says a client. Known for his capabilities in IP litigation, Hertzog leads on the Thom Browne dispute brought by Adidas in the UK, defending the client against claims of infringement and passing off.

Partner Sally Britton is the head of the brands group and co-chair of the retail group. Britton “deserves her name in lights” say peers, “she does an excellent job”. Her focus is on strategic portfolio management and she is also the lead Brexit advisor to the British Fashion Council. Stuart Lester, managing associate, is recognised by the firm’s top clients as a key part of the team and brings experience in domain name matters, as well as brand protection and enforcement.

Key matters:

• Skykick UK and another (Appellants) v Sky and others (Respondents) Mishcon de Reya has advised Sky for a number of years on protection and enforcement of its ‘Sky’ trademark. Significantly, a team of David Rose, Dominic Walsh, Eloise Harding and Felicia Oduntan represent Sky in its seven-year long dispute with Skykick, described as “one of the most important UK trademark cases in years”.
• Sky brought an opposition in regards to the use of ‘Skykick’, alleging trademark infringement in a number of goods and services. In response, Skykick raised the question as to whether Sky’s marks were valid, suggesting that the broadcasting company “employs a strategy of applying for overly broad trademarks for goods and services which it does not deal in.”
• Before the High Court in 2018, after the judge sought advice from the Court of Justice of the EU, it was found that Sky had acted in bad faith and the marks were partially invalid. Subsequently, Sky appealed and the Court of Appeal disagreed with the findings at first instance, dismissing Skykick’s cross appeal on infringement. Skykick appealed this decision and the Supreme Court decision is pending following the hearing that took place in June 2023. The case is significant for brand owners as it should result in clarity around bad faith under the Trade Marks Act, and has the potential to narrow specifications for future trademark applicants.

Clients:

Alexander McQueen, Bet365, Hewlett Packard Enterprise (HPE), Iceland, Louboutin, Nintendo, Sky, Sony Interactive Entertainment, Thom Browne