Keltie
Firm overview:
A leading peer rates the “high quality service and advice” from Keltie, which provides IP services from three offices in the UK and two in Ireland. Having this geographical coverage enables the firm—the first in the UK to establish a significant practice in Ireland following Brexit—to provide comprehensive trademark and design prosecution services to clients spanning both the EU and UK.
Better known for its non-contentious work and seen as “top tier” by a leading peer, Keltie advises clients on trademark and design filing and prosecution, oppositions and appeals, due diligence and transactional matters. Founded in 1988, it was one of the first law firms to break free from the more traditional, hierarchical model of working and instil a people-focused culture.
The firm also handles contentious matters when they arise but works with clients at the search and filing stages to secure the most complete protection possible, with the aim of avoiding litigation or opposition later on. It has particular experience acting for clients in the sports, entertainment, fashion, finance, sustainable energy and automotive sectors, with the bulk of the work coming directly from clients rather than agencies.
Team overview:
Alistair Gay co-heads the firm’s trademark practice, specialising in trademark, design and copyright law. In addition to advising on general trademark clearance, prosecution and registration matters, Gay has considerable experience in handling enforcement issues and the strategic management of international trademark portfolios.
Manuela Macchi has a substantial trademark practice and provides commercially-driven advice to clients particularly in the sport, pharmaceutical and fashion industries. Macchi founded and heads the firm’s Sports Trademarks Practice and has authored numerous articles on the topic. One peer praises her “wise advice”, “pragmatic approach to work and excellent interpersonal skills”.
Key matters:
Non-Contentious:
- Clearance, registration, enforcement and strategy for Lotus Cars
Keltie is responsible for the international management (excluding China) of trademarks for Lotus Group including its famous ‘Lotus’ and ‘ACBC Roundel’ trademarks. The firm counsels the client on trademark clearance for, inter alia, new vehicle projects, trademark filings, cease and desist matters, and opposition, revocation and invalidity matters.
The firm has worked with Lotus for more than four years across all IP rights to develop its portfolio, and manages portfolio matters spanning over 80 countries. The trademark portfolio includes over 2,000 applications and registrations.
Alistair Gay and Ayesha Akhtar are key members of the team.
- Filing, prosecution and strategy work for Gumtree
Charlotte Wilding handles all aspects of the UK trademark work for Gumtree, including new filings and prosecution, existing applications, watching services, oppositions and cancellations.
- Filing, prosecution and strategy work for Motors.co.uk
For client Motors.co.uk, Wilding handles all aspects of the UK, EU and Swiss trademark work, including new filings and prosecution, existing applications, watching services, oppositions and cancellations.
Wilding also assisted with the due diligence and purchase of the ‘Cazoo’ brand in the UK, EU and Switzerland.
Contentious:
- Portfolio management, oppositions and enforcement work for Mattel
In addition to managing the UK and EU Intellectual Property Office (EUIPO) portfolio for toy multinational Mattel, this year Keltie has been particularly busy on the opposition front—likely due to the heightened interest in Mattel’s brands following the success of the Barbie movie and related merchandise.
On the Keltie team for Mattel are Manuela Macchi and David Yeomans.
- Enforcement and prosecution work for Investcorp
Keltie successfully defeated invalidity proceedings and non-use cancellation proceedings brought against the client’s ‘Investcorp’ registrations. Gay leads the team.
Clients:
CRH, Gumtree, Investcorp, Lotus Group, Marex, Mattel, Motors.co.uk, PGA European Tour, Robert Walters, Ry, Skorpio (Rick Owens), Stryker Corporation and related companies