Bird & Bird

Firm overview:

Bird & Bird is a “hugely experienced and highly resourced set of IP specialists”, says a peer. The global, full-service firm covers the complete scope of trademark needs and is a steadfast choice for high-profile trademark matters in the UK. Its prosecution and portfolio management practice has grown exponentially since its launch over a decade ago, and is now one of the largest non-contentious practices in the UK.

The firm is particularly singled out for its contentious work and is “excellent for litigation” with strong recommendations in this area. Having built up its brand as a disputes heavyweight, Bird & Bird is a popular choice with the C-suite and is often called in when the stakes are at their highest. The team’s world-renowned IP department has handled some significant trademark disputes, such as acting for supermarket chain Lidl in a much-publicised logo clash with Tesco. “They are a strong practice that, in a number of ways, sets the mark,” a peer comments.

Team overview:

A client says of the Bird & Bird team: “They do amazing work, are very communicative, understand our business, and are just good people.”

Mark Holah, based in London, is a brand protection expert and has acted for clients in virtually every industry sector, including famous and iconic brands. Holah is dual-qualified in the UK as a solicitor and chartered trademark attorney as well as a solicitor in Ireland, and has been on several International Trademark Association (INTA) committees.

London partner Allan Poulter is a go-to contact for all aspects of international brand management, protection and enforcement. His achievements in contentious matters include settling a 60-year dispute for Belmond, marking a milestone moment for the client.

Peter Brownlow leads on multi-jurisdictional matters and manages high-profile disputes as well as specialising in non-contentious work. This includes managing Monster Energy’s trademark work across Europe and Asia and the re-branding of Everything Everywhere to EE.

Head of the International Product Design group Ewan Grist protects and enforces innovative or high tech product design and associated branding.

Tristan Sherliker was on the Bird & Bird team representing Lidl in the high-profile trademark and copyright dispute with Tesco, and is renowned for his work in resolving IP disputes before the London courts.

Key matters:

Non-Contentious:

• Advising Valoo on rebrand

Bird & Bird advised Adola, the company that electrified the Finnish fibre optics market, on its rebrand into Valoo. The work included preliminary research to ensure the usability of the new brand, several trademark applications to protect it and the updating of the official business name.

The team was led by partner Henri Kaikkonen and Bird & Bird associates Jennika Sucksdorff and Marla Melin.

Contentious:

• Lidl v Tesco (2024)

With a team led by IP partner Ewan Grist, Bird & Bird acted for Lidl in its much-publicised dispute with Tesco. Lidl claimed that Tesco’s Clubcard Prices logo infringed a number of IP rights in its own logo, which was protected as a trademark in two forms. In March 2024, the Court of Appeal upheld the High Court’s finding of trademark infringement and passing off—in a case that was far from straightforward, according to Grist.

Solicitor-advocate Tristan Sherliker, partner Emma Green and associates Bryony Gold and Sam Peterson were also on the Bird & Bird team for Lidl.

• Extreme Networks v Extreme E [2024]

Bird & Bird represented Extreme E in its trademark dispute with Extreme Networks, which opposed Extreme E’s application to register a mark in the UK for services in class 41. The UKIPO found a likelihood of confusion between the two companies’ marks, and Extreme E appealed to the High Court, which overturned the decision.

Extreme Networks took the dispute to the Court of Appeal which, in a judgment handed down in November 2024, reinstated the hearing officer’s decision.

Clients:

Aldi, Belmond, Chanel, Electrolux, Extreme E, Fiorucci, Hanes Brands, Hurr, Kingfisher, Kraft Heinz, Lidl, Merck, Monica Vinader, Monster Energy, Revolut, Rothy’s, SC Johnson, Valoo