Morgan, Lewis & Bockius

Firm overview:

US firm Morgan Lewis boasts a UK and European trademark practice working with some of the best-known brands across multiple industries, such as Netflix, OpenAI and VF Corporation—owner of popular apparel names Timberland, Vans and The North Face. The firm advises on all aspects of trademark work covering clearance, prosecution, protection and enforcement as well as new brand risk management, and litigation.

The firm’s in-house digital application VizBridge allows clients to visualise their trademark portfolios via interactive maps, and it has a dedicated Trademark Support Unit team handling docketing and other administrative duties critical to managing large numbers of trademarks.

Morgan Lewis also handles registry disputes before the UK and EU Intellectual Property Offices with a record of success for key clients.

Team overview:

The firm has a team of 16 lawyers across its European offices handling IP matters across the full spectrum of industry sectors with a particular focus on technology, life sciences, retail, luxury, apparel, and automotive.

A senior corporate counsel says that London partners Nick Bolter and Martin Henshall are “reliable, responsive and have a good knowledge of EU and UK trademark law” as well as “good knowledge of my company”. Bolter’s practice focuses on trademarks and designs and he has represented some of the world’s best-known brands in retail, luxury and apparel as well as technology and automotive companies. Also a trademark specialist, Henshall’s clients include Netflix, OpenAI, Timberland, and LoopMe.

Associate Julie Gonard advises clients on EU and international trademark matters with a particular focus on prosecution and disputes. Gonard has advised global brands in the fields of cosmetics, sportswear, pharma, tobacco, and retail.

Key matters:

Non-Contentious:

● Portfolio management for OpenAI

Morgan Lewis handles UK and EU trademark portfolio management for ChatGPT maker OpenAI, including prosecution and enforcement.

● Portfolio management for LoopMe

Tech company LoopMe uses artificial intelligence (AI) to improve brand advertising performance and outcomes. Morgan Lewis has been instructed to take over management of LoopMe’s existing trademark registrations in the UK and US, and assisted with clearance and applications for a new trademark in the UK, EU, and US.

Martin Henshall is the lead partner, with Hanna Hedayati also on the team.

● Portfolio management for VF Corporation

Morgan Lewis manages UK and EU trademark and design prosecution and enforcement for US global apparel and footwear company VF Corporation, which owns brands including Timberland, Vans and The North Face.

The team comprises Nick Bolter, Martin Henshall and Martin Whittle.

Contentious:

● Enforcement, prosecution and portfolio management for Netflix

The firm’s London IP team has represented Netflix since 2017, providing the full range of trademark services with a focus on title clearance, prosecution in the UK and EU and enforcement.

Successful decisions Morgan Lewis has obtained for Netflix include Netflix Studios v Zheng Shu in June 2024, where the UKIPO refused an application for the mark ‘ThinkingCaphellFireClub’ which combined two elements from Netflix’s Stranger Things series, on the basis that the application had been filed in bad faith.

Lead partners on the matter were Nick Bolter and Martin Henshall.

● UK trademark and copyright enforcement work for Ferrari

Morgan Lewis undertakes UK trademark and copyright enforcement work for Ferrari. This contentious work largely involves taking action to combat the sale of counterfeit and replica/recreation “kit car” vehicles in the UK, as well as acting for Ferrari in disputes concerning the misuse of Ferrari’s trademarks and copyright protected works by third parties in the automotive industry and beyond.

Recent notable matters have included a dispute with a manufacturer of replica Ferrari vehicles, a dispute with a record label regarding its branding and various disputes with vehicle dealerships regarding misuse of Ferrari branding.

Nick Bolter and Hanna Hedayati are on the team for Morgan Lewis.

Clients:

Abercrombie & Fitch, Ferrari, LoopMe, Netflix, OpenAI, TGI Fridays, VF, VM Agritech, Voyetra Turtle Beach