K&L Gates

Firm overview:

Global firm K&L Gates is establishing itself as a major player in the London market with some key client wins over the last year that add to its already impressive roster. Since July 2024, the London team has managed the UK trademark and design portfolio for Ralph Lauren, expanding an existing relationship that includes advising on global design protection strategy. With one peer commenting that K&L Gates is “experienced, pragmatic and service-minded”, clients take advantage of the expertise in the firm’s London office that can easily extend internationally when needed.

The firm continues to manage the portfolio for prolific UK design filer Nike and has also secured new instructions with leading names such as L’Occitane, Ennismore, Mölnlycke Health Care and Lacoste. It is also managing the global or regional IP portfolios for Aman Hotels, Ennismore, and Chubb Fire & Security.

For UK matters, around a third of K&L Gates’ trademark practice is devoted to prosecution work, with another third to litigation and the remaining 40% directed to advisory/transaction work.

With the high cost of litigation in the UK and reputational risks for larger brands, K&L Gates is often enlisted to resolve disputes under the radar and has built up long term relationships with clients based on trust. The firm has acted for numerous household-name brands in litigious matters in the UK in recent times.

Team overview:

A trusted advisor on global disputes, Arthur Artinian is credited with establishing the firm’s IP function in London, and is internationally recognised for his work on cross-border IP counselling, prosecution, litigation, enforcement and transactional matters. He has worked closely with the creative industries throughout his career and advises a number of iconic fashion houses, design, publishing, art and architecture firms.

Alongside Artinian in London is partner Simon Casinader, who leads a number of the team’s key client relationships. Casinader provides advice around contentious and non-contentious IP matters, including working with clients to prosecute, manage and enforce international trademark and design portfolios.

Key matters:

Non-Contentious:

• Prosecution and advisory work for Nike

The London team advises and acts for Nike on trademark prosecution matters in the UK including prosecution, enforcement (including oppositions), litigation and strategy. The work covers matters for Nike as well as Converse.

K&L Gates has been advising Nike on strategic UK trademark filings, including in relation to non-traditional marks, and has been able to successfully register a number of marks which form an important part of the client’s portfolio. These include UK trademarks in relation to elements of Nike’s iconic footwear lines.

The team includes Arthur Artinian, Simon Casinader, Georgina Rigg and Sophie Verstraeten.

• Global IP counsel for Ennismore

The firm has recently been instructed by market-leading hospitality brand Ennismore to manage a number of global IP portfolios for businesses including The Hoxton, Delano, Rixos, Mondrian and SLS as well as the Ennismore house brand. The London team advises on global trademark filing strategy, oppositions, clearance and infringement issues.

The team also represented Ennismore on the global trademark clearance and prosecution strategy for the launch of its Dis-Loyalty hotel membership programme.

Handling matters for Ennismore are Casinader, Artinian, Serena Totino, Millie Pierce and Verstraeten.

• Global trademark counsel for Mölnlycke Health Care

K&L Gates advises medtech company Mölnlycke, which specialises in sustainable solutions for wound care and surgical procedures. In 2024, the London team took over the management of Mölnlycke’s global trademark portfolio and advised the client on infringement and prosecution matters worldwide, including for its ‘Epaderm’, ‘Hibi’, ‘Hibiwash’, ‘Safetac’, and ‘Mepilex’ brands.

Artinian, Casinader, Totino, Pierce and Verstaeten are key members of the team.

Contentious:

• UK trademark oppositions for Luxottica Group

The team advises Luxottica on the management of the company’s UK brand portfolio and UK trademark oppositions, including enforcement and opposition actions relating to the ‘Ray Ban’, ‘Aviator’, ‘Persol’ and ‘Oakley’ brands.

K&L Gates represents the client in a range of disputes at the registry level, protecting the rights in Luxottica’s eyewear brands. Over the last year, it has successfully settled a number of disputes relating to the client’s core brand assets, resulting in positive outcomes for the client without the expense of contested registry or litigation proceedings.

Artinian and Casinadar are key contacts on the team.

• Portfolio management and dispute handling for Chubb Fire & Security

As well as managing the global IP portfolio for Chubb Fire & Security—a subsidiary of APi Group—the firm has recently advised the client on complex trademark disputes and contractual matters involving the company’s international operations.

The Chubb brand has existed for over 200 years with a global footprint that requires management in multiple jurisdictions.

On the team are Artinian, Casinader, Catherine Adam and Pierce.

Clients:

Aman, Bumi Armada, Coty, Gucci, Chubb Fire & Security, Ennismore, InfoTrack/Groundsure, Jill Sander, Luxottica, Mölnlycke Health Care, Ralph Lauren, Trip Advisor