Brandsmiths

Firm overview:

Described by its clients as “a highly specialised boutique”, Brandsmiths has a strong foothold in technical and high-stakes litigation. “For a small firm, Brandsmiths are very, very good,” says a peer. The expanding team welcomed fashion powerhouse Christian Dior, multinational toy corporation Hasbro and consumer products giant Colgate-Palmolive to its client base last year. Outside of the courts, Brandsmiths offers clearance, prosecution and portfolio management services. The firm hired a new head of trademarks in 2024 with the goal to grow its non-contentious practice and match its reputation in the contentious space.

Brandsmiths is a frequent visitor at the UK Intellectual Property Office for oral disputes and notably succeeded in two matters before the Supreme Court in 2024, including the closely watched Lifestyle Equities v Amazon. The team is set to appear before the Supreme Court for another client again in 2025.

The IP specialist firm “provides a level of personal attention that I haven’t experienced with larger firms” says a peer, noting Brandsmiths’ “ability to handle complex matters with ease.” While the IP community generally concurs on the high level of talent at the firm, there is some speculation about how the “aggressive” tactics used by its litigators will play out in the long term.

Team overview:

The “incredibly competent and reliable” team at Brandsmiths operates from its two offices in London and Manchester. An industry peer notes the “personable lawyers” at the firm along with the team’s “great depth of knowledge of IP and strong results”.

Andrew Lee is the head of IP and an experienced litigator, taking on the firm’s more high-profile matters in the High Court, IPEC, Court of Appeal and Supreme Court, including landmark matters on behalf of Lifestyle Equities.

Brandsmith’s recent hires included new head of trademarks, Stephen Lowry, who joined the team in July 2024. Lowry, previously at Barker Brettell, plans to strengthen the firm’s prosecution practice with his 12 years of experience in trademark clearance, prosecution and portfolio management. Partner John Battersby has expanded the firm’s business from the Manchester office and provides brand protection for fashion brands Broken Planet and Never Fully Dressed.

Key matters:

Non Contentious:

• Brand protection for Broken Planet

Manchester partner John Battersby advises on brand protection for the fashion brand Broken Planet, including the expansion of its international trademark portfolio.

Brandsmiths handles the counterfeiting and infringement issues faced by the London-based brand, coordinating with UK and EU customs to combat imports of counterfeit goods.

Contentious:

• Lifestyle Equities v Amazon UK Services

Brandsmiths represented its client Lifestyle Equities (‘Lifestyle’), in the 2024 Supreme Court landmark case against online retail giant, Amazon. Clothing brand Lifestyle owns the UK and EU trademarks for the wording and logo of ‘Beverly Hills Polo Club’. An unrelated company to Lifestyle owns the same trademark and sells identical products in the US.

Lifestyle argued that ‘targeting’ had taken place when Amazon marketed the US products to UK and EU consumers and therefore infringed its trademark, suggesting that as the products were accessible and could be purchased by UK consumers from Amazon’s US website, this amounted to Amazon targeting UK consumers.

Brandsmiths represented Lifestyle from the first instance and the High Court dismissed Lifestyle’s claims of targeting. This was overturned in the Court of Appeal which found that while the products were marketed to US consumers, Amazon had made it easy for UK consumers to purchase and have the products shipped to them. Amazon appealed to the Supreme Court, which affirmed the decision in favour of Brandsmith’s client Lifestyle.

For brand owners, the decision is significant in reinforcing the rights of UK trademark rights against cross-border online marketplaces. It also serves as a reminder for international online retailers like Amazon to be careful when marketing goods outside the relevant jurisdiction.

• Iconix Luxembourg v Dream Pairs Europe, Top Glory Trading Group

In January 2024, Brandsmiths represented Iconix, owner of the famous sportswear brand Umbro, in the Court of Appeal. The matter concerned Umbro’s diamond-shaped mark, seen on its clothing and footwear products, and was brought against European footwear company DreamPairs, which used a similar motif on its trainers.

At the first instance, the High Court dismissed Umbro’s claim, asserting that the similarities between the marks were faint. Umbro appealed to the Court of Appeal, arguing that the High Court had not considered the likelihood of post-sale confusion, particularly that DreamPairs’ mark would look more similar to the Umbro mark when worn on someone’s feet and looked at from above. The Court of Appeal agreed with the post-sale argument and ruled in favour of Umbro. For new brand owners, the ruling is significant for decisions around trademark design and encourages consideration of the mark in a real life perspective, including from different angles.

The Supreme Court will hear the appeal on March 17 and 18, 2025, marking Brandsmith’s third trip to that court in two years.

Clients:

Bremont Watches, Broken Planet, Christian Dior, Colgate-Palmolive, Entourage Sports and Entertainment, Everton Football Club, Hasbro Consumer Products, Iconix, Lifestyle Equities, Mitchells & Butler