J A Kemp
Firm overview:
J A Kemp is a large European patent and trademark attorney firm, commended for providing “deep, insightful advice” that goes “above and beyond” the service provided at other firms, say international peers. Its clients range in size, industry, and location from startups to global brands, and include desirable names in high-end fashion and automotives. A go-to for foreign firms seeking “great work and pushing the boundaries”, J A Kemp advises on trademark matters in the UK and beyond. Managing approximately 50,000 trademarks, the firm’s strength lies in its growing non-contentious practice.
As well as expanding and exploiting portfolios worldwide, the firm brings particular experience in securing non-traditional trademarks for its clients, including colour trademarks and positional trademarks. J A Kemp monitors trademarks, marketplaces, social media and domain names to catch imitators and infringers and is well-equipped to bring and defend oppositions, revocations and cancellations before the UK and EU Intellectual Property Offices.
Team overview:
J A Kemp’s team can be found in London, Oxford and Cambridge and includes a range of trademark attorneys, patent attorneys, attorney-litigators and solicitors. Dual-qualified attorney and solicitor James Fish leads the firm’s trademarks and design group. Fish is proficient in multi-jurisdictional trademark clearance and he has developed expertise in prosecuting unusual and non-traditional trademarks. London partner Charlotte Stirling handles global portfolios, some with hundreds of trademarks, and is adept in handling infringement issues in the online sphere.
Solicitor Aaron Newell is “a very smart and astute lawyer”, and tackles complex, high volume and cross-jurisdictional matters for a range of clients. Also qualified as a solicitor and barrister in Canada, Newell is particularly knowledgeable in domain name disputes, having previously been appointed as a Uniform Domain Name Dispute Resolution Panelist by the US National Arbitration Forum.
Partner Tom Albertini has 20 years’ experience in trademarks and has advised some of the world’s most well-known brands on all aspects of prosecution, portfolio management, enforcement and dispute resolution.
Ben Mooneapillay heads up the Oxford office, drawing on over 25 years’ experience in the trademark profession to provide the full range of contentious and non-contentious trademark services.
Key matters:
Non-Contentious:
- Online brand protection for GW Pharma
GW Pharma is a British pharmaceutical company producing cannabis-based medicine. With Aaron Newell taking the lead, J A Kemp has been instructed on numerous disputes in recent months following the company’s growth, and registered domains were found to infringe on the client’s trademark ‘Epidiolex’. Epidiolex, registered by the client in multiple jurisdictions, is a cannabidiol product used to treat certain rare conditions in newborns, and has received approval for use in the US and Europe since its development in 2015.
At the WIPO Arbitration and Mediation Centre, the client recovered 33 domains following a UDRP dispute, all of which used the Epidiolex name. The team continues monitoring for cybersquatters and taking action through cease and desist letters, website takedowns and legal proceedings. GW Pharma’s parent company, Jazz Pharmaceuticals, also instructs J A Kemp on filing, prosecution and opposition matters.
- Lead trademark counsel for Imperial War Museums (IWM)
J A Kemp is representing IWM, the UK-based family of five museums which record and showcase experiences of modern conflict. The London-based trademarks team is acting as lead counsel for this client following a referral from a global law firm peer. IWM operates a significant commercial programme that helps fund its work, including major partnerships with the Royal Mail and Royal Mint and licensing arrangements with toy and model manufacturers. The client has a family of brands for each of its sites and experiences and also develops logos for specific campaigns such as the First World War Centenary.
Led by Ben Mooneapillay, the team has taken over this client’s entire existing portfolio and is assisting with updating the portfolio in the UK, China and the US.
- Non-traditional trademark filing work for MIPs
J A Kemp represents Sweden-based company MIPs, which specialises in helmet safety and brain protection. The team’s work has included the registration of non-traditional marks, such as registering the colour yellow as applied to the inside layer of protective helmets and registering the ‘MIPS Yellow Dot Indicia’ as a positional mark. The team has expanded MIPs’ IP portfolio to include over 100 active trademarks and registrations.
Clients:
GW Pharma, Imperial War Museums, MIPs, Royal British Legion
