Browne Jacobson

Firm overview:

Browne Jacobson is a full-service firm with a stellar list of trademark clients and a strength in advising the automotive, high-end fashion and beauty industries. A client highlights the team’s “speed of response to enquiries, commercial acumen, ability to translate technical legal language into relevant business information and their personable working style”.

On the non-contentious side, the firm handles significant portfolios, and assists clients with trademark clearance and expansion, including for the famous black cab brand, London Taxi Corporation, which instructed Browne Jacobson in relation to its launch of new electric vehicles, TX Taxi. With a number of multinational clients, the firm boasts an impressive global reach and, in the last year, has advised on matters relating to more than 60 different jurisdictions. Browne Jacobson has diversified its offering with an innovative retainer product that provides clients with access to a team of lawyers who can work either remotely or at their offices, under a tailored monthly retainer arrangement. This delivers the fixed-price certainty of an in-house team without the challenges of recruiting additional team members.

Particularly on the litigation front, the firm is often toe-to-toe with fellow ranked firms and has reached success for its clients in well known, award-winning matters. This includes the 2023 landmark case on behalf of dating sites Match.com and Tinder, which set the precedent on honest concurrent use. Browne Jacobson has extensive trial experience, representing on matters in the High Court and the Court of Appeal.

Team overview:

Browne Jacobson has a team of 21 working on IP matters from Birmingham, Nottingham, London, Manchester and Dublin. London partner Giles Parsons receives glowing feedback from peers who say he is “a very smart guy” who is “highly regarded”. Parsons has handled matters up to the Court of Appeal and represented clients in the EU General Court. An all-rounder, he manages IP portfolios, licensing agreements and sponsorship agreements with influencers.

Mark Daniels, based in Birmingham, is a litigator with experience in retail and automotive brands. Notably, Daniels led a case concerning 3-D trademarks and passing off on behalf of the London Taxi Corporation. Declan Cushley heads up the London practice after previously developing the Birmingham IP team in 2005. Cushley protects and enforces brand portfolios both in the UK and internationally and is a go-to advisor for well known names in the fashion industry.

Key matters:

Non-Contentious:

• Clearance and portfolio management for Joonbyrd

A team of Giles Parsons, Faye McConnell and Alice Elliot-Foster work together on the brand portfolio of Joonbyrd, a growing skincare company founded by leading dermatologist, Dr Alexis Granite. Browne Jacobson advises on trademark clearance and filing in the UK, EU, US, Canada, China and Hong Kong. The work is particularly significant given the need for protection as the brand expands into new jurisdictions and receives increasing exposure.

• Trademark portfolio strategy and brand clearance for Muller UK & Ireland

Browne Jacobson is instructed by Muller UK & Ireland to advise on trademark portfolio strategy, brand clearance and ad hoc brand advice. The team has advised Muller on its arrangements for the filing of Irish, UK and EU trademarks, and how to protect its brand and packaging more generally. It regularly advises on clearance or infringement risks in relation to new sub-brands. Recent work has included advising Muller on the licensing of the well-known song Ice Ice Baby in respect of Muller’s Rice Rice Baby campaign.

Contentious:

• Enforcement and office actions for W Sternoff

Browne Jacobson advises W Sternoff , beauty manufacturer and owner of anti-chafe product Bodyglide. The Seattle-based brand sells Bodyglide internationally via sports retailers and online platforms and the cream has grown significantly since being used by healthcare workers during the Covid-19 pandemic.

On behalf of the brand, Browne Jacobson handles issues relating to trademark passing off, infringement, copyright and portfolio management, both in the UK and beyond. Recently, the firm has been instructed on multiple cancellation issues against a Bodyglide competitor in the UKIPO and EUIPO. Thus far, the client has been successful in all disputes. The team, composed of partner Mark Daniels and associate Hayley Smith, handles the ongoing enforcement actions against this competitor.

• Defending litigation proceedings for Easy Forex Trading and Blue Capital Markets t/a easyMarkets

The team has been instructed by Easy Forex Trading and Blue Capital Markets t/a easyMarkets to defend litigation proceedings brought against them for alleged trademark infringement. The plaintiffs, EasyGroup and EasyGroup IP Ireland, hold numerous registered EU trademarks using the word ‘Easy’ as a prefix. The plaintiffs claim that the clients’ use of their own registered figurative EUTM for ‘easyMarkets Simply Honest’ infringes their trademarks.

The plaintiffs had designated Ireland as a suitable jurisdiction for the case, which Browne Jacobson successfully contested on behalf of the clients. The court found there was no targeting by the clients of Ireland for the purpose of online activities, and that therefore they could not be sued in Ireland for the alleged infringement of EasyGroup’s trademarks or the alleged passing off.

Clients:

CC Wellness, Easy Forex Trading, Ei Electronics, Iconic London, Joonbyrd, Mace Group, Muller UK & Ireland, Ocean Technologies Group, QMS, W Sternoff