Baker McKenzie
Firm overview:
Full-service, global firm Baker McKenzie is enviable in size and reach, as is its roster of A-list clients such as Google and Warner Bros, and high-value brands that choose the firm for beginning-to-end trademark matters.
Offering a 360 degree service, Baker McKenzie has a strong offering across both non-contentious and contentious matters. The firm handles some of the largest global trademark portfolios—including for Unilever, one of the world’s largest consumer goods companies.
The firm has an enforcement network spanning over 200 jurisdictions to combat counterfeiting for clients, as well as leading strategic trademark litigation and recovering domain names in all the major domain name dispute resolution forums.
Team overview:
A key UK contact for the Brand Enforcement practice, of counsel Julia Dickenson specialises in brand advisory, litigation and enforcement and copyright matters. She advises clients in the luxury and fashion, consumer goods and retail, technology and digital industries on trademark, design and copyright issues.
Partner Rachel Wilkinson-Duffy is knowledgeable in all aspects of trademark and design protection and enforcement, including global filing strategies, clearance searching and contentious work. A past president of the Chartered Institute of Trade Mark Attorneys, Wilkinson-Duffy’s work highlights include co-ordinating a global trademark dispute for a leading cosmetics and skincare brand involving over 90 separate actions in 62 countries, and advising L’Oréal and The Body Shop on brand protection and enforcement matters in relation to their well-known brands. She has been listed by peers as a “standout” non-contentious lawyer.
Key matters:
Non-Contentious:
- Carlsberg acquisition of Britvic
The firm advised global brewer Carlsberg on its £3.3 billion acquisition of international soft drinks business Britvic. As part of the deal, Carlsberg intends to create a single integrated beverage company in the UK to be named Carlsberg Britvic. A team of transactional IP and commercial contract specialists advised on the key licensing analysis and asset verification of a multi-layered portfolio of market-leading brand rights.
The team included Natalie Ellerby, Steve Holmes, Jessica Le Gros, Ash von Schwan and Maulik Mittal.
- Puig acquisition of Barbara Sturm Molecular Cosmetics
Baker McKenzie advised Puig on its acquisition of Barbara Sturm Molecular Cosmetics. Many of the key commercial points of the deal revolved around issues connected to the fact the target operates under an eponymous brand. The team not only needed to ensure that the deal perimeter included all relevant IP rights in order for Puig to operate the business from day 1, but also needed to secure exclusivity to the Barbara Sturm name and image rights in the industry. This involved negotiating certain limitations and obligations on Barbara Sturm as she was kept on by the divested business.
Ellerby and Catherine Woods are the key team members.
Contentious:
- UK and global dispute handling for Haleon
Following completion of separation from GSK, in which Baker McKenzie acted for Haleon across the full range IP matters as part of the demerger, the firm continues to act as Haleon’s preferred IP counsel in the UK. One example of the work the team has provided for Haleon in the past year is its recent appearance before the Appointed Person and ongoing representation before the IPO Tribunal in a UK (and global) dispute involving Haleon’s corporate ‘E’ logo in which a third party, Isdin, is alleging infringement of its own corporate logo. This is a highly valuable and strategic dispute, the outcome of which is vital in ensuring Haleon’s freedom to use its corporate logo.
Rachel Wilkinson-Duffy, Le Gros, Ellerby, Paul McKay are on the Baker McKenzie team for Haleon.
Clients:
CSL/Seqirus, Eli Lilly, General Motors, Google, Haleon, JCB, Jumeirah, Novartis, Novo Nordisk, Pinterest, RedFoxLabs, Rockit, SAP, Signal AI, Unilever, Warner Bros
