Stobbs IP

Firm overview:

Brand advisory firm Stobbs IP is an industry-disrupting IP specialist offering trademark services at a competitive rate with its manifesto stating “if you have ever worked with or within the law profession before, this is nothing like that”. The firm handles intangible assets using a broad, business-informed approach tailored to the client’s goals and budget, leading one brand owner to describe Stobbs as having “an unrivalled understanding of our IP portfolio and the needs and demands of the business.”

There is admiration from the trademark community about the firm’s “unbelievable” business model and success—“the bane of our lives. They’re just everywhere”—but questions are raised over whether Stobbs is deploying the resources to match its high-volume approach and keep its expanding roster of clients happy.

Despite the mixed views of its peers, Stobbs has accumulated an enviable list of clients, and handles IP portfolios for the likes of Meta, O2 and Nike. Described as “responsive and knowledgeable about trademark issues worldwide”, the firm offers day-to-day trademark clearance, filing and renewal as well as strategic, commercially-focused advice, and is particularly respected for the high quality of its non-contentious offering.

On the contentious side, Stobbs handles matters in the Intellectual Property Enterprise Court, High Court and Court of Appeal and is especially familiar with trademark registry disputes, handling matters for confectionary company Mars and whiskey brand Jack Daniel’s. The firm takes a holistic approach to litigation, fielding teams with different skillsets depending on the situation following a “triage” from a set of senior practitioners.

Team overview:

Stobbs has four offices in Europe, located in London, Dublin, Munich and Eindhoven in the Netherlands. In-line with its unique approach, the firm has intangible asset directors rather than ‘partners’ leading its vast team of fee-earners.

It’s no surprise, say peers, that Julius Stobbs is listed in the rankings. A “first-rate operator and hugely intelligent”, Stobbs opened the firm in 2013. He is adept in brand and portfolio management, and when things become contentious. Stobbs receives high praise from his peers, being branded as “one of the most unique trademark capabilities at this point in time” and a “maelstrom of bright ideas”.

While there is praise for the founder, there have been some notable departures over the past year, with head of dispute management Chris Sleep joining Abion and head of brands Joel McDonald moving to Addleshaw Goddard.

The deep bench of talent at Stobbs includes intangible asset director Louise Goodsell, whose experience encompasses all key aspects of trademark law, including portfolio management. Her skills extend to contentious matters such as negotiating domain name purchases and trademark disputes.

Another key team member, Daniel Hardman-Smart oversees the firm’s Renewals team and assists trademark clients with everything from clearance searches and prosecution to registration and enforcement.

With a mixed practice of non-contentious, contentious and commercial work, Chris Hawkes stands out for his legal intellect and expertise in relation to trademarks, IP and media and entertainment law.

Qualified UK and EU trademark attorney Claire Beheny has been with Stobbs since its inception in 2013 and specialises in managing large global portfolios for UK-based direct clients, and handling European work for US-based clients.

Key matters:

• Domain Name Recovery for Nike

Famous for its trainers and sportswear, Nike trusted Stobbs with the domain name recovery relating to the client’s well-known shoe brand, Converse. In a Uniform Domain-Name Dispute-Resolution (UDRP) case, a complaint was filed against the respondent who was known for buying and selling domain names and had been involved in a number of similar disputes. The respondent in question had won all previous UDRP disputes but one. Stobbs investigated the respondent and the previous proceedings to show a pattern of bad faith and found evidence of previous UDRP decisions confirming that the CONVERSE mark is distinctive and well-known.

The respondent argued that Nike was attempting reverse domain name hijacking and that CONVERSE was an ordinary term found in the dictionary. Following an additional rebuttal from Nike and then again from the respondent, the panel ruled in favour of Nike. The domain was transferred to Nike, influenced by the global reputation of CONVERSE’s brand in the US, where the respondent was located. The outcome was positive for brand owners using dictionary terms as a secondary meaning and further shines a light on the issue of selling domains where the only buyer could be the complainant, as seen in this situation.

Clients:

7-Eleven, Adobe Inc, All Saints Retail, Balfour Beatty, Barclays Bank, Britvic Soft Drinks, Capri Sun GmbH, Channel 4, Dua Lipa, Facebook (Meta), FIFA, GoPro, Grandmaster Flash, HSBC, Instagram, Jack Daniel's, Jurgen Klopp, Just Eat, Mars Wrigley Confectionery, Mattel, McDonald's Corporation, Nike, O2 Worldwide, Paramount Pictures, PayPal, Pharrell Williams, Tik Tok, Tommy Hilfiger Europe