Brandsmiths reveals TM prosecution ambitions as milestone approaches

Anniversaries are usually a time for celebration and reflection.

And while there may be a few corks being popped in the Brandsmiths offices in the coming days, the intellectual property firm has its eyes firmly on the future.

The firm, primarily known for its litigation team, will mark 10 years in the business on Sunday, November 16. The London and Manchester-based outfit was created in 2014 by ex-Mishcon de Reya lawyer Adam Morallee, who is now Brandsmiths CEO.

In an exclusive interview, Managing IP caught up with Morallee and the firm’s newly appointed head of trademarks, Stephen Lowry (pictured), to discuss its aims and why it's now focussing on building a trademark prosecution practice to rival its litigation business.

Morallee tells Managing IP: “Our 10th anniversary is approaching, and the milestone has given us a chance to reflect on our strategy.

“We started as a litigation firm, and we have grown hugely. The aim now is to build a prosecution team, alongside our commercial practice, to rival our litigation team.”

Lowry has in-house experience at Jaguar Land Rover and retailer Boots. He joined Brandsmiths from Barker Brettell in July and was named the firm's head of trademarks this week.

He has experience in all aspects of trademark law, encompassing clearance, prosecution, and portfolio management. He is included in the 2024 edition of IP STARS, Managing IP’s accreditation platform.

Morallee adds: “The appointment of Stephen will help us start to accelerate that goal [building a prosecution practice].

“We have six members of the [prosecution] team now, but the aim is to increase that in the coming months and years by bringing in outstanding individuals and acquiring teams and other firms.”

As it stands, the firm’s IP litigation team comprises around 10 lawyers. A further 10 lawyers advise on IP and related litigation.

The prosecution team stands at six, but the firm is eyeing future hires and has also brought on board a pair of trainee trademark attorneys.

Both Morallee and Lowry believe that expertise in litigation and prosecution is essential for firms if they want to provide clients with a top service.

Lowry tells Managing IP: “More people now want a ‘one-stop-shop’ approach. That wasn’t a trend maybe 10 years ago. There are a few firms that do both (prosecution and litigation) but at some firms there is a tendency for a hard stop after prosecution.”

Under that approach, the same firm would deal with prosecution and litigation, but the two departments might not necessarily interact with each other.

“It may as well be two different firms that the client is using under that approach,” Lowry adds.

“To make that model [a one-stop shop] work you need top-notch people on both sides. Brandsmiths is the perfect fit, and you can see how closely the prosecution team works with the litigation team and vice versa.”

He adds: “We are keen on expanding but we aren’t putting a number on it right now. We want to find the right people that fit the Brandsmiths ethos.”

Trying to compete with the firm’s litigation expertise could prove to be a challenge.

Lowry adds that the firm’s litigation pedigree was part of the reason he came on board.

The firm has appeared twice at the UK Supreme Court on behalf of fashion client Lifestyle Equities this year and is set to appear at the court again for Iconix, owner of the Umbro trademark, in a dispute centring on the brand’s ‘double diamond’ logo.

Over the last five years, Brandsmiths also topped a list of the most active firms at the Intellectual Property Enterprise Court (IPEC) – a division of the England and Wales High Court.

The firm acted for clients in 13 cases at the IPEC, ahead of counterparts such as Bristows (9), Gowling WLG (6), Stobbs (6) and Briffa (6).

Lowry adds: “Acting for clients three times at the Supreme Court in one year is unheard of. It clearly stands by clients and is brave and bold. For our hires, we want to find people that fit that bill.”

Morallee adds: “One of the things we like to say sets us apart is that we give advice. A lot of firms and practitioners say: ‘You could do A, B or C, you decide’. In our opinion – that’s not giving advice. We like to be bold and say: ‘This is what you should do’.”

With assertive decision-making driving decisions, Brandsmiths could be well on its way to creating that ‘one-stop-shop’ powerhouse.