Potter Clarkson

Firm overview:

Among trademark attorney firms, Potter Clarkson has the respect of its peers, who notice its growing team. The IP firm offers brand clearance and registration services and was responsible for 430 UK filing applications in 2022. With the help of its Trade Mark Watch service, the firm identifies infringing parties. Potter Clarkson has experience on such challenges in the UK Intellectual Property Office (UKIPO) and the High Court, to protect the rights of clients’ marks. For new brands, the firm’s fixed-fee SafeLaunch platform takes a list of potential new trademarks and runs searches to provide a risk assessment before a client enters the market. To tackle issues borne from the growing risks in the online world, Potter Clarkson’s specialist monitoring service keeps tabs on social media and trading forums for potential counterfeiters, and has announced a soon-to-be-launched AI Hub to navigate and understand its impacts.

Team overview:

Potter Clarkson’s IP team is stationed across London, Nottingham, Stockholm, Lund, Copenhagen and Aarhus, with a newly opened office in Glasgow. Nottingham-based Sanjay Kapur is “superb”, says a peer. Partner, board member and attorney, Kapur specialises in trademarks and brand strategy. Partner and solicitor Mark Kramer has represented clients in the High Court, Intellectual Property Enterprise Court, up to the Court of Appeal. Kramer leads the London litigation and licensing team and has experience preparing global litigation strategies.

Key matters:

• Potter Clarkson succeeded before the UKIPO in a matter regarding the mark ‘OKTOBERFEST’. The matter was brought by the Municipality of Munich, seeking to register the mark and challenging the examiner’s view that the mark is non-distinctive. Potter Clarkson filed third-party observations, for interested brewing and hospitality sector parties, which led to withdrawal of the trademark. The outcome was significant to the client and industry businesses as Oktoberfest is a key holiday that generates interest in events.
• UK distiller Fishers Gin faced a potentially damaging opposition from rival gin brand Koval, based on a visual similarity between the design of the brands’ bottle labels. Potter Clarkson, with Fishers Gin, presented a case that led to the EUIPO Opposition Division and the Board of Appeal ruling the brands’ labels were dissimilar, stating the dominant and distinctive feature was the brand name.
• As part of a long-standing relationship with an Italian IP firm, Potter Clarkson advised one of Italy’s largest banking groups on UK trademark matters. Potter Clarkson  successfully preserved the integrity of the group’s trademarks portfolio in three successive UK opposition cases.

Clients:

Fishers Gin, Italian IP firm