CMS

Firm overview:

One of the largest UK law firms by lawyer count, CMS is a powerful team to have in your corner. Its expansive global network of offices enables an IP service without borders, and in the UK the firm is acknowledged as a heavyweight trademark contender, managing tens of thousands of trademark records and hefty global portfolios. Its prosecution capability is highly sought out by some of the world’s most recognisable brands. A dedicated trademark records team and internally developed portfolio and dispute management platform contribute to a seamless provision for clients.

The firm has equal clout when it comes to contentious trademark work, which accounts for around 60% of its practice. CMS has abundant reserves of legal talent familiar with handling enforcement and dispute proceedings at the UK Intellectual Property Office, EU Intellectual Property Office, English and Scottish courts and before the Company Names Tribunal.

A client inventory that includes Microsoft, Oura Health, Revlon and Sainsbury’s, as well as a vast range of instructions from US law firms, exemplifies the firm’s prominence.

Team overview:

Over 100 CMS lawyers have a significant trademark practice and more than 60 are focused on trademarks. Key team members include global Co-Head of the IP Group Tom Scourfield, widely recognised for his contentious IP mandates and advisory work on high-profile cases for some of the best known brands. Anna Brackenbury brings over 30 years experience in brand management and boasts a strong track record of managing trademark disputes around the globe.

Eleanor Merrett leads the firm’s growing Northern trademark team which runs out of the CMS Sheffield offices, and continues to build an impressive practice advising a number of household names including Sainsbury’s, Dune shoes and Marie Curie.

“Each strong in the field”, as remarked by a peer, Sarah Wright and Joel Vertes head up the trademarks department. Vertes is “very well reputed” and has a substantial practice across both non-contentious and contentious matters. Wright has built strong relationships with an illustrious range of names, including new portfolios for clients Jaguar Land Rover and Crown Agents Bank alongside well-established relationships with Microsoft, Legal & General and ITV.

Dual qualified solicitor and chartered trademark attorney Kelly Saliger, current president of the Chartered Institute of Trade Mark Attorneys (CITMA) and specialises in trademark prosecution, enforcement and strategy.

Key matters:

Non-Contentious:

• Trademark clearance, filing/prosecution, portfolio management and transactions for Microsoft

Sarah Wright continues to lead a bench of UK and EU attorneys at all levels to deliver a fully comprehensive range of brand services to Microsoft’s Seattle-based trademark team. This covers all aspects of trademark work including clearing, filing, prosecuting and enforcing Microsoft’s significant trademark portfolio in the UK and EU. The team is also instructed on multiple, often multi-jurisdictional opposition and enforcement work.

Following Microsoft’s highly publicised acquisition of ZeniMax Media, parent company of Bethesda Softworks (for a reported $7.5 billion), CMS has been managing the UK, EU and IE trademark portfolio (270+) which includes some of the world’s best known game titles such as Fallout, Doom and The Elder Scrolls.

• Prosecution work for Sainsbury’s

CMS is representative for Sainsbury’s trademark portfolio, which spans not only the supermarket brand, but also the clothing brand TU, homeware brand Habitat, loyalty card Nectar and household name Argos, with a global portfolio of over 800 marks.

• Portfolio management and licensing for Value Retail Management

Creator of The Bicester Collection, Value Retail operates exclusive outlet shopping “villages” worldwide. Its global trademark portfolio currently comprises almost 1,500 trademarks across 46 countries.

CMS has been managing Value Retail’s trademark portfolio for some years now, working with in-house counsel to devise and execute clearance and filing strategies, monitor global watch notices and advise on contentious disputes. Alongside day-to-day maintenance (ie attending to renewals and assignments), CMS has also advised Value Retail on trademark licensing projects.

Contentious:

• Portfolio management for Valeo Snackfoods

In 2023, CMS was appointed to manage the global trademark portfolio for Valeo Snackfoods, which comprises over 450 marks in over 40 jurisdictions. The team is responsible for new filings, renewals, watch services, oppositions and disputes, working closely with the client’s in-house legal team, led by Claire Chadwick. It has worked on around 15 contentious (opposition, infringements and similar) matters in the last year as well as some new filings, a number of clearance searches and a large, on-going recordal project.

• Worldwide trademark portfolio management for Legal & General

CMS manages the worldwide trademark portfolio for L&G, dealing with new filings, and managing any opposition or other registry disputes. The team’s advice covers clearance issues relating to new brand names, dealing with enforcement issues which can range from unauthorised use of L&G’s name and/or its well-known umbrella logo. It also advises where third parties register companies including L&G’s brand names, and recently filed its first three Company Names Tribunal complaints for the client.

Clients:

Anthony Nolan, Booking.com, Dentsu International, Dune, eBay, Equinor, Floris, Hackett, Hammerson, Imagination Technologies, ITV, JoJo Maman Bébé, Kettle Foods/Snyder’s-Lance, Kymab (Sanofi), Legal & General, Microsoft, Oura Health, Pepe Jeans, Revlon, Rightmove, Sainsbury’s, Shark Ninja, Sky, Sotheby’s, The Crown Estate, UEFA