Powell Gilbert

Firm overview:

Litigation powerhouse Powell Gilbert has a flourishing brands practice that acts for some of the world’s most sophisticated businesses and organisations. Its notable clients include Procter & Gamble, Ocado, Prada and Gillette.

From its Fleet Street London office and recently opened location in Dublin, Powell Gilbert focuses on litigation and contentious work but is also able to devise creative solutions to meet clients’ commercial objectives without the need to serve legal proceedings. The team represents clients in high-stakes cases before the UK courts and in referrals to the European Court of Justice and EFTA Court, as well as implementing strategies for multi-jursidictional litigation.

Team overview:

With over 60 people (of which 46 are fee earners, including 15 partners), Powell Gilbert has one of the largest IP litigation teams in the UK.

Simon Ayrton, partner and head of department, specialises in IP litigation, arbitration, and counselling. He advises clients on trademark and passing off, patents, breach of confidence, copyright, and design-related issues in a wide variety of industries. Ayrton’s clients include reMarkable, Prada, Ocado, and Edwards Lifesciences.

Partner Tom Oliver is known for his prowess in IP litigation, representing clients in the English courts and handling multi-jurisdictional disputes. He boasts particular expertise in the consumer goods, fashion and luxury, food and beverage, and life sciences sectors.

Joel Coles, who operates from the London and Dublin offices, is widely known for his patent work but also has experience of handling multi-jurisdictional trademark actions and is praised as “very smart, very technically prepared” and “very business oriented”.

Key matters:

Contentious:

• Defending the brand of global consumer products giant Procter & Gamble

Powell Gilbert handles multiple actions for Procter & Gamble against various traders in counterfeit, parallel traded and lookalike goods. Twenty-five of the client’s brands each generate more than $1 billion dollars in annual sales.

Powell Gilbert has taken action this year in relation to counterfeit and parallel traded Gillette razor blades, lookalike shampoos and lookalike detergents.

The firm is also running a specific enforcement programme to assert P&G trademarks against multiple online traders in counterfeit Oral-B electric toothbrush heads, including bringing infringement proceedings before the Intellectual Property Enterprise Court.

Simon Ayrton leads the team, which also includes Alex Borthwick.

• Advisory work and handling infringement for Ocado Group

Powell Gilbert is advising Ocado in respect of its potential claims for trademark infringement and passing off against a supplier of fruit and vegetable products under a similar brand name.

The team includes Ayrton, Borthwick and Mackinnon.

• Lambretta UK High Court proceedings

Powell Gilbert acts for the defendants in these proceedings relating to the UK part of an ongoing global saga concerning the ownership of the Lambretta brand. The defendants, collectively known as the ‘Lambretta Consortium’, have revived the Lambretta brand and built a substantial business across the world in relation to clothing and motor scooters. The claimant alleges that it is the owner of goodwill in respect of ‘Lambretta’ and / or the alleged well-known mark ‘Lambretta’, in the UK, along with numerous other claims.

The defendants are defending all allegations and have issued a counterclaim which includes groundless threats of trademark infringement made by the claimant.

The outcome of these proceedings will provide an important precedent for the revival of an abandoned brand and interpretation and application of Section 10B of the TMA. Joe Coles is the key partner involved.

Clients:

Lambretta, Ocado, Prada, Pro Archery, Procter & Gamble, reMarkable, Sculpt, Stokke