Edwin Coe

Firm overview:

At London law firm Edwin Coe, the intangible assets team’s bread and butter is brand management, exploitation, and protection. On the non-contentious side, the firm’s proficiencies include acquiring trademarks, new brand launches, negotiating commercial agreements, and advising on IP matters in M&As. Edwin Coe has a joint venture office in Malta that deals with EU Intellectual Property Office (EUIPO) filing and other EU work.

Heavyweight litigators stand ready to enforce or protect clients’ marks when contentious matters arise, with litigation accounting for around 60% of the firm’s trademark practice. A peer describes Edwin Coe as a “good value firm that handles complicated multi-party trademark disputes” with none of the “bureaucracy that you’d find in a larger firm”.

Work highlights for the firm include advising Paddington Bear on its international trademark portfolio including brand protection and exploitation issues, and acting for multinationals such as Garmin, Rivian, WPP, Sony Pictures Television, EasyGroup, and Colart.

Team overview:

Chartered trademark attorney Simon Miles heads up the IP practice and is well-known in the London IP legal community. Described as a “very sound partner, who has wonderful client handling expertise”, Miles handles the full spectrum of trademark work but is mostly recognised for his litigation practice. He has worked with a number of major global companies in creating, exploiting and protecting their brands.

“We are always in good hands with Claire”, says a leading peer of partner Claire Lehr, who has over 20 years’ experience in the trademark field. She “maintains a presence in all representations” and has significant expertise in advising startups, from their initial searches to trademark filings.

IP partner Maggie Ramage contributes a wealth of experience to the firm, including in-house stints handling the worldwide trademark affairs for California-based Raychem and as trademarks manager for British Telecommunications. Ramage is also a member of the European Trade Mark Communities Association (ECTA), serves on the Professional Affairs Membership Committee, and was part of the ECTA Brexit Task Force.

Associate Eleanor Showering is noted for the high calibre of her trademark work and she was an integral part of the team’s work on disputes involving client EasyGroup including two High Court actions.

Key matters:

Non-Contentious:

• Prosecution, strategy and protection work for Sony Pictures Television (Kids)

Edwin Coe advises client Sony Pictures Television on brand protection and the management of its trademark, designs and copyright portfolio. This includes worldwide brand protection issues for entertainment properties Octonauts, Creature Cases and Hilda.

The firm also undertakes filing and brand protection strategies when properties are sold into new territories such as China and Russia.

The team comprises Simon Miles, Karen Lee and Eleanor Showering.

• Worldwide portfolio management for Colart International

Client Colart is part of the Lindéngruppen group and employs over 1,000 people in 13 countries.

Edwin Coe manages the company’s global trademark portfolio of over 550 marks for brands that are famous in the art world, including ‘Winsor & Newton’, ‘Reeves’, and ‘Snazaroo’. There are currently 30 pending trademark applications the firm is managing for the client.

The team also carries out enforcement actions worldwide, including currently in China, Argentina, Vietnam and Pakistan.

Key Edwin Coe contacts for the work are Lee, Showering and Lauren Barlow.

• Portfolio management for BodyBio

Edwin Coe manages the trademark portfolio of BodyBio, a US-based nutritional supplement company that has entered into the UK and EU markets in the last few years.

The firm advises the client on a range of commercial (principally distribution) agreements and product compliance, as well as taking action against infringers in Turkey and handling proceedings in Australia, New Zealand and China.

Nick Phillips, Hannah Simpson and Barlow are key team contacts.

Contentious:

• EasyGroup v Easy Live (Services) and others

Edwin Coe represented EasyGroup in a High Court action against Easy Live (Services) and others, which concerned an action and counterclaim for non-use together with invalidity proceedings. A trial took place in May 2024 and the judgment was handed down in September of that year, with an appeal hearing to take place on several aspects of the judgment later this year.

The appeal relates to a number of legal issues including: the importance or otherwise of conceptual similarity of trademarks on the test for similarity of mark and sign, and the correct analysis of actual instances of confusion on the test for likelihood of confusion.

Simon Miles leads the team for Edwin Coe which includes Showering, Kenny Cheung and Barlow.

• EasyGroup v Easyfundraising and others

Claimant EasyGroup alleged trademark infringement and passing off of several UK marks including ‘easyJet’, ‘easyHotel’, and ‘easyLife’ in this high-profile action. The defendants provide online platforms through their websites hosted at easyfundraising.co.uk and easysearch.co.uk which enable members of the public to raise funds for causes when they search or shop online.

Following a September 2024 judgment, an appeal will take place on certain issues relating to revocation and infringement in 2025.

Miles, Lee, Showering, Cheung, and Barlow are all on the team.

• Opposition and invalidation work for Garmin

Edwin Coe oversees the UK and EU trademark portfolio for Garmin, which results in significant opposition and invalidation work at the EUIPO and UK Intellectual Property Office (UKIPO). Throughout the year the firm has advised on numerous contentious matters involving the well-known trademarks ‘Ant+’, ‘Tacx’, ‘Edge’, ‘Autonomi’, and ‘Fusion’.

The firm was involved in oppositions to prevent several parties including a China-based online wholesaler and retailer securing a raft of trademarks conflicting with Garmin’s well-known ‘Vivo+’ marks, used in relation to watches and other wearable activity trackers.

Key members of the team include Miles, Lee and Showering.

Clients:

BodyBio, EasyGroup, David Pawson Education Trust, Garmin, GroupM/WPP, Helix OpCo, Herb UK, Hydronix, Paddington and Company, Physique Management Company, Rivian IP, The Elf on the Shelf (the Lumistella Company), Vesper Marine