Taylor Wessing

Firm overview:

Home to one of the largest IP teams in Europe, global law firm Taylor Wessing has a “solid reputation” among clients in the trademark sphere. The full-service firm has impressive reach, its international filing practice manages 75,000 trademarks overall, including 4,500 global marks in 190 jurisdictions for multinational telecommunications company Orange. The team is particularly skilled in registering non-traditional trademarks, achieving success for luxury jeweller Tiffany and for premium gin brand Hendrick’s, and ensures it is at the forefront of innovative technology, advising on metaverse-related risks. The contentious practice takes on registry disputes and contentious matters before the UK courts, and is braced for high-stakes matters. The team’s key highlights include advising the billion-dollar digital communications client Cisco on a high-value claim concerning the trade of counterfeited and grey Cisco products, and acting on behalf of a famous perfume brand in trademark infringement litigation.

Team overview:

Taylor Wessing has more than 30 locations across Europe, Asia, the Middle East and the Americas. In the UK, partner Roland Mallinson brings 20 years of trademarks experience to the team and is “big in the profession”, say peers. Mallinson advises on both contentious and non-contentious trademark matters and handles disputes before the UK and EU Intellectual Property Offices (IPOs), English Courts and Court of Justice of the EU. France Delord is a partner in the firm’s UK brand management team. Qualified as a solicitor and French trademark attorney, Delord specialises in global trademark portfolio management. Jason Rawkins is the head of the fashion and luxury group and advises on trademarks, designs and domain names and notably assisted Tiffany & Co on registering its signature colour, often referred to as ‘Tiffany blue’, as a trademark.

Key matters:

• Taylor Wessing’s Roland Mallinson and Magdalena Borucka advise family-owned spirits company William Grant & Sons, owner of famous scotch brand Glenfiddich, gin brand Hendrick’s and spice rum Sailor Jerry. The team secured a trademark registration of a 2D image of a Hendrick’s bottle with a black label, strengthening brand asset protection. In an opposition challenge, the UKIPO objected to the mark stating a lack of inherent distinctiveness. The client submitted evidence demonstrating acquired distinctiveness, including a survey, and the decision at first decision was overturned.
• Jason Rawkins and Fabio Lo Iacono advise newly-won client Zoopla, a British property company with numerous subsidiaries, including PropertyFinder Group and Upmystreet.com. Following the move from another large firm, the client’s work involves worldwide portfolio management, including clearance, filings and subsequent oppositions and disputes. Recent highlights include the global clearance of a new group name.

Clients:

American Airlines, Burberry, Cisco, Orange, Tiffany, William Grant & Sons, Zoopla