Forresters

Firm overview:

Full-service IP firm Forresters marked its 140th anniversary in 2024 and continues to be a trusted agent for UK and international trademark work. In addition to three UK offices, Forresters has a presence in Munich, allowing it to operate as a truly European firm. Key trademark clients include household names such as Huawei and Sony, and iconic British brands including The Scout Association and Moss Bros. Just under half of the team’s work focuses on prosecution services, which includes handling UK and EU trademark clearance for Chinese consumer electronics company Honor—ranked number two in the list of filing organisations in the UK for 2023.

The firm is a worthy opponent in litigation and is depended on for a broad variety of contentious work, including high-profile actions before the UK Intellectual Property Office and EU Intellectual Property Office as well as EU General Court and other fora. 

Team overview:

London partner Steven Wake is “efficient" and "pragmatic”, says a peer. Wake specialises in all aspects of UK and international trademark law and practice, and has succeeded in securing registration of seemingly unregistrable marks as well as preventing infringement in David versus Goliath situations.

Other notable members of the team include Liverpool partner Kate Cruse who, as one peer notes, "thinks outside the box". She advises clients worldwide on their trademark filing strategies as well as excelling at contentious work. Also noteworthy is managing partner Matthew Shaw, who draws on his technical expertise as a patent attorney in his trademark practice and uses an analytical approach to understand clients’ brands.

Key matters:

Non-Contentious:

• Significant new work for Gillian Anderson’s beverage brand G Spot

Forresters was referred by a mutual connection at Double Dutch (an existing client) to a board member at G Spot, a beverage brand owned by Gillian Anderson. After meeting with Mark Bhandal at Forresters, G Spot was impressed with Forresters, and opted to name the firm as its preferred provider for trademark work. The team now manages its trademark portfolio, including handling renewals.

• Clearance, filing, prosecution and advisory work for Honor

Chinese consumer electronics manufacturer Honor is primarily known for its smartphone devices, but also as a maker of tablet computers, wearables and mobile device software. Looking at UK trademark filings in 2023, Honor is ranked number two in the list of filing organisations. Forresters, led by senior associate Daniel March, handles UK and EU trademark clearance, filing, prosecution and advisory work. The firm has also represented Honor in many opposition cases at the UKIPO and EUIPO in the last 12 months.

Contentious:

• Cancellation actions and handling high-profile dispute for Sony

The firm recently renewed a long-standing relationship with Sony, a household name in consumer electronics. Mark Bhandal continues to provide UK legal assistance in relation to a high-profile 12-year-old case that went to the General Court, which meant delaying litigation in Spain.

Bhandal is now engaged in filing fresh cancellation actions against Marpefa on behalf of Sony. Work on this matter is ongoing.

• Success in opposition work for Moss Bros

Forresters maintains a strong relationship with popular UK clothing brand Moss Bros. Moss Bros relies on Forresters, namely senior associate Mark Bhandal, for contentious work in the EU and US on a regular basis.

A key element of Moss Bros’ IP strategy has been safeguarding its trademarks against third party infringement, including a pro-active opposition strategy. In the past 12 months, Forresters helped Moss Bros to oppose ‘Moss & Device’, an opposition which is now reaching its final stages. Another opposition was filed for ‘Moss Co’ in Poland, as well as ‘A Moss’ in the EU. The team was also successful in oppositions in the US against ‘Moss Milk’ and ‘Moss Couture’.

• Direct client work with globally recognised British brand Scouts

Forresters has a long-standing relationship with iconic organisation The Scouts Association. Led by Daniel March, the firm handles all the client’s UK trademark applications, oppositions, contentious matters and renewals. The team has recently been active in preventing another party trading off the name and reputation of the Scouts. It has been successful in UK oppositions and cancellation actions against a party seeking to set up an organisation and register trademarks trading off the name Scouts.

Agreements have been reached with several other parties regarding registration of marks containing Scouts.

Clients:

Condor Group, Honor, Huawei, Montirex, Moss Bros, The Scouts Association, Sony