Osborne Clark
Firm overview:
International full-service firm Osborne Clarke has a litigation-focused trademark outfit, offering a team with trial experience to brands facing cases up to the Supreme Court. In recent months, the practice has grown with lateral hires from Gowling WLG, Slaughter & May and notably was joined by John Linneker from Fieldfisher in November 2024. Linneker represented Skykick in last year’s landmark case against Sky, strengthening the firm’s litigation skill.
Whilst primarily recognised for its contentious practice, the firm handles an impressive amount of trademarks for household-name brands. Osborne Clarke manages the global trademark portfolio for Toni & Guy, a well-known hairdressing brand with nearly 500 salons worldwide.
In line with its client’s needs, much of Osborne Clarke’s trademark work involves an international element. Global brands such as Mattel, Nokia and Fred Perry operate in multiple jurisdictions and benefit from the firm’s reach. The team of solicitors and attorneys not only handles big-ticket litigation, but is experienced in registry disputes in the EU and UK Intellectual Property Offices (IPOs) and co-ordinates with international offices to protect and enforce client’s rights in jurisdictions where infringement and counterfeit threats are recurrent.
Team overview:
Osborne Clarke has offices in London and Bristol, with international locations found in Europe, North America and Asia. The team consists of five trademark attorneys and ten solicitors, including its recent hires from Gowling, Fieldfisher and Slaughter & May.
Arty Rajendra is “extremely analytical to the highest degree”, according to an industry peer. Head of IP disputes, Rajendra specialises in litigation and handles trademark and copyright infringement matters for a stellar list of clients.
John Linneker joined Osborne Clarke in November 2024, bringing an impressive resumé in IP litigation. Handling cases of all sizes, including those before the Court of Appeal, Supreme Court and the Court of Justice of the European Union, Linneker acted on the Sky v Skykick matter which was widely reported on last year for its landmark ruling on bad faith.
Another addition to the firm in 2024, brand protection specialist Jasmine Lalli joined from Gowling WLG and focuses her practice on clearance, enforcement, and litigation, as well as strategic advice.
Richard May, dual-qualified trademark attorney and solicitor, brings skills adopted from previous private practice firms, boutique firms and as former in-house counsel. May handles the prosecution and strategy work for some of the firm’s prominent clients, including Toni & Guy and Gallo Wines. He is complimented on his “clear, practical advice” when navigating the peculiarities of the UK trademark system.
Key matters:
Non-Contentious:
● Portfolio management for Fred Perry
Osborne Clarke manages the global trademark and design portfolio for Fred Perry, a renowned sporting and fashion brand. Arty Rajendra and Leanne Gulliver handle the vast portfolio and advise on brand protection, enforcement and combating counterfeitters in jurisdictions where infringement challenges are likely to arise, including China, India and Turkey. The team has achieved favourable outcomes in opposition proceedings before the EU Intellectual Property Office (EUIPO). Notably, one matter concluded that the Fred Perry logo had enhanced distinctiveness in the clothing and footwear market.
Contentious:
● EUIPO matters on behalf of Peanut App
A team of Arty Rajendra, Richard May and Sian Edmonds represents Peanut App in the EUIPO against Peanuts Worldwide (PWW). Peanut App is a community platform that connects women interested in motherhood, pregnancy and menopause. Osborne Clarke represents the client in a non-use revocation action against PWW’s trademark ‘Peanuts’ and is defending two oppositions brought by PWW against an application for ‘Peanut’.
The matter is significant as it questions the validity of the trademarks owned by PWW, known primarily for its Charlie Brown and Snoopy characters. The EUIPO decisions cancelled the trademarks in 11 classes, including computer software and education. PWW has appealed, and Osborne Clarke is also defending similar opposition proceedings brought before the UKIPO.
Clients:
Cancer Research, Christopher Ward, EJ Gallo, Fred Perry, Howdens, JPMorganChase, Nokia, Peanut App, Toni & Guy
