Venner Shipley
Firm overview:
At the end of 2024, Venner Shipley joined forces with London-based IP firm AA Thornton—a move that doubled the size of its trademark team to establish it as a major force in the UK market. The firm’s stellar client list includes FTSE 100 companies, global corporations, SMEs, and startups, all of which benefit from the added strength and depth resulting from the 2024 merger. Venner Shipley is particularly adept in portfolio management, with a highly skilled senior team providing strategic advice in this area.
The team excels in dispute resolution, combining the expertise of trademark attorneys with specialist IP lawyers—including an in-house barrister who also sits as a deputy judge in the IP Enterprise Court—to provide a comprehensive service for clients’ most complex problems. Venner Shipley works across a wide range of industries, including insurance, FMCG and fashion.
Team overview:
Under the leadership of Clare Turnbull since late 2020, the trademarks team has more than doubled in size and handles a significantly larger portfolio of work. Turnbull has over two decades of experience and is renowned for creating business-savvy trademark filing strategies. She was appointed to the International Trademark Association (INTA) committee for non-traditional trademarks for the 2024-2025 term. One peer commends her for “always going that extra mile to add value”.
Partner and trademark attorney Sarah Darby has handled the global trademark portfolios for high-profile brands such as Jimmy Choo, 3 Mobile, Virgin and The Gym Group, and advises on all types of trademark matters from brand inception to infringement actions.
Another key member of the team, Ian Gill is dual qualified as a trademark and patent attorney, equipping him with a broad base of knowledge and practical experience, “a fantastic attorney”, as one peer comments.
Louise Foster and Yoann Rousseau are gaining increasing recognition for the strength of their trademark practices. Foster’s recent highlights include securing a successful decision in defence of a client’s trademark application against an opposition by Monster Energy. Rousseau, leveraging his experience in-house counsel, consistently achieves favourable results for clients, demonstrating a deep understanding of both legal and commercial perspectives.
Key matters:
Non-Contentious:
- Advisory work for Yahoo!
Camilla Sexton leads the Yahoo! work at Venner Shipley and supports the client’s goals in the UK and European Union. She advises on UK and EU trademark strategy for selected brands, prosecutes applications and oppositions on their behalf and engages in dispute settlements when appropriate.
- Trademark registration for The Canned Wine Company
Venner Shipley has advised The Canned Wine Company since it was a startup, registering its logo as a trademark in various jurisdictions. The team, led by David Birchall, also successfully registered its ‘TooGoodToBottle’ strapline in the UK, overturning the UK Registry’s initial refusal of that mark. In 2024, the firm registered ‘Canned Wine’ in pure-word form as a UK mark, overcoming the Registry’s refusal on the basis that it was simply descriptive.
- Certification trademark application for The Circular Textiles Foundation
The Circular Textiles Foundation works with textile recyclers to ensure clothing can be recycled into new textiles at the end of use. Following successful registration of the UK certification trademark, the team has now been instructed to secure protection for an EU certification trademark. The client has created a scheme in the field of fibre-to-fibre textile. Certification trademark applications are highly specialised, but the team, led by Lucy Pope, has been able to identify the issues quickly as it has significant experience in this area.
Contentious:
- Admiral Group v Admiral Markets
The team represented FTSE 100 insurance company Admiral Group in a trademark infringement, passing off, and breach of contract dispute against Admiral Markets in relation to its rebrand to ‘Admirals’. The case settled during mediation and represented a successful outcome for the client.
Geoff Hussey, Sarah Neil and Peter Lyons are key team members involved.
- Defending oppositions for GPD Holdings
GPD operates a cryptocurrency platform under its mark ‘CoinFlip’, and recently decided to enter into the UK and EU markets. However, the company became aware that a third party had fraudulently applied to register its mark at the UK Intellectual Property Office and EU Intellectual Property Office.
The client’s applications are facing opposition. To address this, the team has defended these oppositions by filing non-use cancellation actions. It is believed the third party is fraudulently trying to defend these non-use actions, despite the marks not having been used in practice.
Ian Gill and Sarah Neil are key contacts for the matter.
Clients:
The AA, Admiral Group, Canned Wine Company, Circular Textiles Foundation, First Grade International, GPD Holdings, Norwex, Vice, Yahoo!, Zimmer
