Mishcon de Reya

Firm overview:

“This law firm is in the premier league for anything IP related,” says a senior in-house counsel who instructs Mishcon de Reya for UK trademark matters. The firm handles brand strategy, protection, enforcement and transactional work for leading brand owners such as Nintendo, HPE and Iceland.

Mishcon de Reya adopts a collaborative approach across its contentious and non-contentious practices which are “very much one team”, offering value-led IP strategies to clients. The team has a particular reputation in cutting-edge cases regarding online marketplaces and internet service provider (ISP) liability and a very active brand and designs’ protection practice.

A go-to for high profile and bet-the-company matters, the firm has acted in some of the most significant UK and EU IP cases over the past year, notably Sky v Skykick—widely recognised as the most important trademark case of recent years—and Thom Browne v Adidas.

Team overview:

Mishcon de Reya has one of the largest IP practices in the UK with more than 50 lawyers and patent and trademark attorneys.

Head of IP and chair of the Patent Group David Rose is “one of the most respected IP lawyers in the sector” according to a leading peer, with another noting he is “very clever … very disarming”. Rose is one of only a small number of IP lawyers in the UK who have taken both patent and trademark cases to the Court of Justice of the European Union. High-profile cases he has acted in include Starbucks v Sky and Sky v Skykick.

Sally Britton heads the firm’s Brands group, and advises on brand protection strategies including clearance, monitoring and enforcement as well as trademark and design filing. She “deserves her name in lights” , say peers, “she does an excellent job”.

Jeremy Hertzog is chair of innovation, with his work in the last 12 months including matters such as Thom Browne v Adidas. Hertzog has extensive experience in both obtaining and defending injunctions and regularly advises on complex contractual and licence disputes.

Managing associate Stuart Lester leads the firm’s Advertising & Marketing group. Lester’s expertise encompasses trademark and design disputes at the UK Intellectual Property Office (UKIPO) and EU Intellectual Property Office (EUIPO) as well as online enforcement challenges and company name complaints.

Other notable members of the firm include Louisa Dixon, who has a strong technology practice including the protection of brands in the software and life sciences sectors, and IP disputes specialist Gareth Dickson who has nearly two decades of experience in contentious work particularly for those with online businesses and involved in digital technologies.

Leading brands lawyer Angela Fox joined the firm from Maucher Jenkins in the spring of 2024, bringing over 27 years of experience in trademark practice to the firm.

Recent strategic hires the firm has made also include Rob Griffiths from Deloitte; Nick Allan from Lewis Silkin; Stephanie Foy (Brandsmiths), and Richard Parsons (Maucher Jenkins).

Key matters:

Contentious:

● Sky v Skykick

In November 2024, the Supreme Court handed down its judgment in Sky v Skykick, a case widely recognised as one of the most important UK trademark cases for many years.

The court upheld the decision of the lower Courts that use of the mark ’SkyKick’ on a cloud-backup product amounted to trademark infringement. However, the court’s finding on validity represents a fundamental change in UK trademark law and is likely to have profound implications on the scope of protection (and therefore enforcement) of existing trademark registrations and filing practice for new applications.

Mishcon de Reya represented Sky, with David Rose and Dominic Walsh as key members of the team.

● Thom Browne v Adidas

Mishcon de Reya acts for luxury fashion designer Thom Browne in an ongoing dispute with Adidas, which claimed that Thom Browne had infringed its three-stripe marks by using a ‘4 bar’ mark on various garments and accessories. This resulted in proceedings issued by Thom Browne in the High Court of England to invalidate some of Adidas’s three-stripe trademarks.

In a November 2024 judgment, Justice Joanna Smith dismissed Adidas’s counterclaim for trademark infringement and passing off entirely. The judge also held that eight of Adidas’s marks were invalid and narrowed the specifications of almost every trademark challenged.

This judgment has particular significance in that it provides new guidance in respect of the registrability and infringement of non-traditional type of trademark known as “position marks”, and the assessment of the similarity between a position mark and sign.

Mishcon de Reya also handles the UK trademark portfolio for Thom Browne. Key partners or lawyers involved included Jeremy Hertzog, Stuart Lester, Eleanor Wilson and Zoe Albon.

● TVIS v Howserv (Vetsure v Petsure)

The firm’s client, operator of ‘Vetsure’ pet insurance, succeeded at the Court of Appeal in its claim for trademark infringement and passing off against the rival pet insurance brand, ‘Petsure’. It also successfully cancelled Petsure’s trademark registrations. The defendant has sought permission to appeal to the Supreme Court and a damages inquiry is ongoing.

Peter Nunn, Zoe Albon, and Dominic Walsh are involved in the matter.

Clients:

Alexander McQueen, Apax, Benefit Cosmetics, bet365, CBS, Deloitte, Global, Entain/Ladbrokes, Hewlett Packard Enterprise (HPE), HgCapital, Iceland, Levi's, Lion Capital, Louboutin, Mark Anthony SRL, MGA Entertainment, Nintendo, Nuclei/IWG, Sanofi, Schneider, Sky, Skyscanner, Vetsure