Fieldfisher

Firm overview:

Fieldfisher’s UK trademark practice operates out of the firm’s London and Manchester offices, and the firm has strong trademark capability in Germany, France, Belgium, Netherlands, Italy, Spain, Ireland, Austria and China. Its specialist trademark formalities team offers the full prosecution service and is instructed on large numbers of high-profile trademark portfolios, looking after clients’ IP rights in-house rather than outsourcing to external providers.

The firm is particularly adept in contentious matters and acts for some of the world’s best known brand owners including Google, EY, Sazerac, Dell and Grand Theft Auto maker Take-Two Interactive Software. Recent highlights include representing Skykick in its much-publicised Supreme Court dispute with Sky and securing a favourable judgment for Google in Shorts International v Google at the High Court.

Fieldfisher also has an active design law practice which includes involvement in the UK’s largest ever design rights case, Original Beauty Technology v Oh Polly, and it is now acting for Oh Polly a second time in its high-profile action versus Shein. The firm is noted by peers as a key competitor, with one praising Fieldfisher's cost-effectiveness and strategic insights, which have been crucial in handling new brands and trademark disputes.

Team overview:

Hastings Guise leads Fieldfisher’s IP Group and specialises in brand IP, trademarks, passing off and designs.

Partner Nick Rose has earned a reputation for handling large, complex and often groundbreaking IP cases. His practice focuses on the media and entertainment, technology, retail, and sports sectors.

Key matters:

Non-Contentious:

• Global portfolio management for Sazerac

Fieldfisher manages the global trademark portfolio (now including over 3,700 trademark rights in nearly every country of the world) for Sazerac, one of the largest spirits businesses in the world that owns brands such as Southern Comfort, Eagle Race and Fireball.

The work also involves handling ongoing disputes around the world including litigation and contentious registry proceedings and domain name disputes.

Handling matters for Sazerac is a Fieldfisher team that includes Harriet Seymour, Fiona Waples, Lorna Webb and Matthew Palmer.

Contentious:

• Sky v Skykick

Fieldfisher acted for Skykick in this trademark litigation matter dating back to 2018. The Supreme Court handed down its decision in November 2024 and SkyKick was partially successful. The outcome has already had, and will continue to have, a huge impact on the trademark filing strategies of many businesses and it is expected that the UK Intellectual Property Office (UKIPO) will issue guidance/practice updates on that.

John Linneker, Christopher Leung and Natasha Rao were on the team for Fieldfisher.

• Getty Images v Stability AI

Fieldfisher represents Getty Images in its claim for infringement of copyright, database rights, trademarks, and passing off against Stability AI in relation to the large-scale unauthorised use of Getty’s content to train generative AI model Stable Diffusion.

The trial to determine issues of liability is set to take place in June 2025. Getty Images successfully defended an application made by Stability AI to strike out, and/or for summary judgment on, parts of the claim at the end of 2024.

Nick Rose, Tommy McKenna, Christopher Leung and Verity Ellis are key members of the Fieldfisher team.

• Shorts International v Google

Short film distributor Shorts issued proceedings against Google in 2022 for Google’s use of the name ‘YouTube Shorts’. The case was transferred to the Intellectual Property List of the High Court in January 2023 and a trial heard in October 2024.

Fieldfisher successfully defended Google against all claims of trademark infringement and passing off. Google was also partially successful in its counterclaims to invalidate Shorts’ trademarks. Permission to appeal was granted to both parties in late 2024. This decision is highly significant as the court'’s analysis is likely to influence how the validity of descriptive trademarks is considered in future cases.

Members of the Fieldfisher team for Google included Nick Rose, Verity Ellis and Katie Warner.

• Oh Polly v Shein and others

The firm is representing Oh Polly in its claim against Shein and related parties concerning inter alia allegations of infringement of unregistered design right, supplementary design right and copyright in relation to fashion garments and the photographs used to promote them. Litigation is ongoing with a trial anticipated for 2025 or 2026.

Fieldfisher’s team includes James Seadon, Verity Ellis and Charlotte Fleetwood-Smith.

Clients:

Altana, EYGS (formerly Ernst & Young), Dell, Getty Images, Google, Oh Polly, Randox, Sazerac, SkyKick, Take-Two Interactive Software, With Wise