D Young & Co

Firm overview:

Pan-European IP firm D Young & Co provides trademark services to a number of the world’s most valuable brands and is known among peers for the strength of its non-contentious practice. The trademark team handled a significant increase in work from 2023-24 from both new and existing clients, with active trademark clients up 42% from 1,621 to 2,309. D Young & Co is highly rated by international counsel who refer work to the firm for its “sound advice” and expertise in UK trademark law.

The firm provides the full spectrum of trademark prosecution, administration and enforcement services, with attorneys and practitioners in the UK and Germany offering a one-stop-shop for European law. Notable achievements for the past year include taking on TikTok as a client, and consumer goods company Church & Dwight transferring its full UK trademark portfolio to the firm.

In litigation, the combined team acts before the UK courts, German courts, EU Intellectual Property Office (EUIPO) and UK Intellectual Property Office (UKIPO) as well as forums for arbitration and mediation. The firm’s cross-border disputes work includes representing Skechers in the UK and Germany as well as coordinating enforcement actions for the world’s third-largest footwear brand in multiple other jurisdictions.

Team overview:

D Young & Co’s trademark team is located across all three of the firm’s offices in London, Southampton and Munich.

London and Munich-based partner and solicitor Tamsin Holman has been practising contentious IP for over 20 years. Clients she has represented include Rolex, Skechers, Guinness World Records and Marriott Hotels. She is rated by a peer as an “excellent attorney”.

Also based between those two offices, Matthew Dick specialises in brand-related law and litigation, with a particular focus on trademarks and designs. Dick handles matters for key clients including recent successful high-value opposition and dispute matters for Meta, American Eagle, and Hard Rock. A client appreciates his clear, straightforward advice and says he is “super smart, very engaging … a very good trademark lawyer”.

Senior associate and trademark attorney Kate Cheney, based in Southampton, advises on the registrability of marks, clearance, enforcement and filing strategies. A peer says she has worked with Cheney for a long time and is “inspired by her professionalism”.

In London, Peter Byrd advises businesses on how best to protect their brands and handles related disputes, for clients in sectors including fashion, retail, food and drink, pharmaceuticals, entertainment, and technology.

Key matters:

Non-Contentious:

• Prosecution and enforcement work for Cosmetic Warriors (Lush)

From its first patent filing for Cosmetic Warriors in 2002, D Young & Co now handles the entire trademark and design portfolio across 75 countries for the client, which owns the Lush cosmetics brand. Gemma Kirkland coordinates the team on global trademark filing and opposition work, with Tamsin Holman doing the same on the enforcement side.

Recent work includes securing a global agreement with Hush Kozmetik regarding the branding of ‘Hush’ cosmetics on the basis of rights in ‘Lush’, and handling the rebrand from ‘Lush Living’ to ‘Luscious Living’ in South Africa.

• Filing and enforcement services for Skechers

The team provides comprehensive filing and enforcement services for Skechers around the world (in all countries other than the US), which involves everything from filing trademarks and designs to disputes against other footwear companies in instances of infringement.

Recent cases have involved proceedings/disputes in Denmark, Sweden, Finland, France, Spain, Italy, Switzerland, Poland, Romania, Taiwan, Australia, Japan, UAE, KSA, South Africa, Tanzania, India, Singapore, Malaysia, Indonesia, China, Colombia and Chile.

Key members of the team include Anna Reid, Tamsin Holman, Matthew Dick, Phil Leonard, Agnieszka Stephenson, Kamila Geremek and Abigail Macklin.

Contentious:

• Opposition proceedings for Rolex

D Young & Co was successful in opposition proceedings at the UKIPO for client Rolex. This case was of key commercial importance for Rolex, as the other side had contacted the press early on in the case and had tried to drum up support for its position via a petition. Ultimately the client was successful in the opposition proceedings and was very pleased with the result.

Anna Reid and Agnieszka Stephenson were involved in the matter.

• Opposition and litigation work for Instagram

Matthew Dick represents Instagram in all trademark opposition matters before the UKIPO. He has acted in over 130 such matters since January 2020 and also handles related UK infringement/enforcement matters.

Other key members of the team include Olivia Oxton, Abigail Macklin and Sophie Rann.

• Enforcement and litigation work for Industrial Cleaning Equipment (Southampton)

D Young & Co successfully acted for Industrial Cleaning Equipment (Southampton) in a trademark infringement claim and the subsequent appeal to the Court of Appeal. The case involved a number of claims for invalidity of UK registered trademarks and there are also related trademark oppositions at the UKIPO.

The matter is now the leading case on the law of acquiescence and the firm believes it is the first time the Court of Appeal has departed from retained EU case law in an IP context.

In August 2024 the UKIPO finally implemented various court orders and updated the defendant’s trade mark registrations confirming these were invalid.

Anna Reid, Peter Byrd and Kamila Geremek all worked on the case.

Clients:

American Eagle, Akzonobel (Cuprinol, Dulux, Hammerite), Cosmetic Warriors (Lush), the Dow Chemical Company, Marriott International, Skechers, Teva Europe