Ireland

Ireland leads the world in winning high-value foreign direct investment projects, suggesting that the future here is extremely bright. The Industrial Development Agency has been remarkably successful in enticing blue-chips from all corners of the globe, although IP-rich US multinationals have flocked to the country in particularly high numbers. This has kept law firms busy, with many enterprises seeking reliable counsel on the commercialisation and transferral of their trademark rights. The potential impact of Brexit is a key talking point; it has caused serious political and economic uncertainty, but the upshot is that more financial technology companies may choose Dublin for their European headquarters in lieu of London – which would be a significant boon for the Emerald Isle. Only time will tell whether this materialises, but practitioners are optimistic.

Firms

1
DFMG Solicitors
Mason Hayes & Curran
Matheson
McCann FitzGerald
William Fry
2
A&L Goodbody
Arthur Cox
Beauchamps
Eugene F Collins
LK Shields
Philip Lee
A&L Goodbody
Full-service A&L Goodbody has been a fixture of the Irish legal services market since 1901. With much-respected asset finance, corporate, real estate and tax teams just down the hall, the IP squad can easily call on business-focused back-up to ensure that its counsel is resolutely commercial. This holistic approach proves popular with companies of all shapes and sizes. The firm’s biggest draw is John Cahir: “He has a fantastic grounding in the field and is a very strong litigator. He is a pleasure to work with – even when he’s on the other side. He never makes things difficult just for the sake of it; he is more practical than that.” The “excellent” John Whelan is another magnet for innovative enterprises, especially those in the high-tech and pharmaceutical fields; he heads the firm’s international technology practice.
Arthur Cox
Corporate powerhouse Arthur Cox really comes into its own in trademark licensing, portfolio management and transfer matters; its sparkling client roster features both national and international household names and it prides itself on its impeccable brand knowledge. Commercially attuned non-contentious star John Menton has represented a plethora of cutting-edge technology companies; broadcasting and telecommunications are fortes. Having headed the firm’s New York office for a spell, he has forged fantastic international links.
Beauchamps
Beauchamps’ trademark team deftly advises some of the continent’s biggest brand owners across the contentious/non-contentious divide; it has abundant experience in contractual and transactional matters and a unique understanding of the software sector. Technology and brands unit head Maureen Daly boasts a formidable track record before the country’s courts. She chairs the IP law committee of the Law Society of Ireland and has contributed to influential volumes Technology and IP law and Data Protection Laws of the World.
DFMG Solicitors
“Proper IP outfit” DFMG Solicitors is “very highly respected and well thought of in the community. Its lawyers are extremely prompt in responding; turnover is routinely fast”. The firm’s comprehensive trademark offering has attracted a panoply of global commercial heavyweights looking for a one-stop shop. It recently represented Gilead Sciences, Philip Morris and Northern and Shell on non-contentious matters; on the contentious front, it assisted Rowex on the Irish arm of the company’s multi-jurisdictional dispute with GlaxoSmithKline concerning the use of the colour purple on inhalers. Working for all these clients, Patricia McGovern takes a “very robust and innovative approach to problems. She is extremely practical, commercial and seriously experienced. She is certainly a fantastic practitioner”. Anti-counterfeiting is one of her strong suits.
Eugene F Collins
Safeguarding innovation across the spectrum of industries, forward-thinking boutique Eugene F Collins maintains an extensive range of specialisms. It complements its well-regarded trademark practice with strong banking and finance, media and broadcasting, and competition practices – a span that ensures complete coverage of any IP conundrum that may arise. Managing partner David Hackett sits on the legal working group of the Irish Internet Association and is a respected e-commerce sage.
LK Shields
Full-service operator LK Shields offers 360-degree counsel to clients, astutely escorting both emerging and established businesses through registration and prosecution and valiantly defending their rights in the most heated disputes. It is especially well known for its work in the software, media and entertainment sectors. Leading the IP and technology team, Deirdre Kilroy is a trademark maven with complementary expertise in data privacy, advertising and outsourcing. She also publishes and lectures widely.
Mason Hayes & Curran
“When it comes to IP knowledge, Mason Hayes & Curran has the best modern team in the country. Its lawyers are extremely sophisticated and really know their stuff – they are truly fantastic when it comes to the intricacies of trademark and technology licensing.” On the non-contentious side, the firm recently advised Theya Healthcare on a number of significant filing matters. On the contentious side, it represented Aymes International and NutriMedical in High Court infringement proceedings concerning Nualtra’s range of products with the NUTRIPLEN mark. Enforcement king Richard Woulfe leads the IP team; he has over 30 years’ experience and is a regular in the Commercial Court. The “marvellous” Peter Bolger “marries corporate-commercial expertise with trademark law. He is highly knowledgeable about both Irish and EU law and provides excellent counsel”.
Matheson
With a Dublin head office complemented by outposts in New York and Palo Alto, Matheson is a favourite of international companies and premier financial institutions in particular; it represents over half of the Fortune 100 companies. “It is very strong in corporate IP enforcement”, as evidenced by its recent representation of Google in infringement and unfair competition litigation brought by Ryanair. It also adroitly assisted Diageo with passing-off matters.
McCann FitzGerald
“You know you’re dealing with people of high calibre when you work with McCann Fitzgerald. The team is of the highest quality. It really has a very strong reputation.” The impressive business-minded firm has the breadth of experience to guide clients through the trickiest contentious and non-contentious matters. Recent highlights include advising Volkswagen on prosecution and strategy concerning its vehicles, spare parts and sponsorship naming rights; and representing Transport International Ireland in connection with licensing and branding issues regarding the outsourcing of free-flow tolling operations on the M50 motorway surrounding Dublin. Involved in the latter work was Paul Lavery, a franchising and distribution specialist who lectures widely and heads the technology and innovation team. Non-contentious whizz Adam Finlay is “highly professional and proactive in seeking innovative solutions to complex issues; he provides an excellent service”. Fiona O'Beirne “is a very knowledgeable lawyer and an easy and ethical person to deal with. She is really experienced in litigation – she knows what she’s doing”. Paula Fearon is a familiar face in the Commercial Court and boasts in-depth expertise in the clothing, food and drink and pharmaceutical sectors.
Philip Lee
Philip Lee has been making waves on the trademark scene since 1993. Headquartered in Dublin, it maintains strategic bureaux in Brussels and San Francisco; it is also the only Irish member of Multilaw, an extensive law firm consortium covering 70 countries. This has made it a top choice for international companies with multi-jurisdictional problems on their hands. “Fantastic” Anne Bateman is a life sciences maven with a wealth of experience before the Supreme Court. Teammate Ann Henry is at her very best handling large-scale regulatory litigation and counts medical devices as a specialism.
William Fry
Resource-rich William Fry offers an A-to-Z IP menu to its many longstanding clients. It is best known for its pharmaceutical prowess and comprehensive anti-counterfeiting practice. It recently represented GlaxoSmithKline in a battle with Rowex and Vacaciones eDreams – one of Europe’s biggest online travel agencies – in infringement, passing-off and competition law proceedings before the Commercial Court. Other notable clients include Asics and Allcare Pharmacy. Leading light Carol Plunkett is a formidable commercial litigator: “She is really well respected, and has been for some time, for her contentious work. She is extremely able.” Laura Scott has been battling side by side with her in the GlaxoSmithKline matter. Scott has adroitly conducted myriad cross-border matters and is a medical devices maestro to boot. David Cullen maintains a strong non-contentious practice; he plies his trade at the bleeding edge of the tech sphere.

Agencies

Agencies

1
FRKelly
Tomkins & Co
2
Cruickshanks
MacLachlan & Donaldson
Cruickshanks
The “very strong” trademark team at Cruickshanks has been turning heads in Ireland for more than 80 years now. Flanked by highly respected design specialists, it offers clients an exhaustive service and is a common sight at both the Irish Patents Office and the EUIPO. Leading the team, Mary Rose O'Connor is a deep well of filing and prosecution expertise; she has a sparkling client roster replete with household names from every sector imaginable.
FRKelly
FRKelly is “certainly a leading firm in the trademark space – everyone there is wonderful. The team is fantastically run and the service is really excellent”. The group’s outward-looking filing specialists are renowned for their thoroughness and continue to attract clients the world over. Niamh Hall and Mary Bleahene earn warm plaudits as “truly fantastic attorneys”. Hall co-wrote popular guides Intellectual Property Law in Ireland and Concise European Trademark and Design Law and is au courant with the latest developments in the field. Bleahene is a design dynamo with over 20 years’ experience. Brenda O'Regan is feted for her domain name expertise; she was part of the working group that drafted the ‘.ie’ dispute resolution policy and is currently working with the Irish Domain Name Registry on a formal policy development process. Having chaired the Trademarks Committee when the Trademarks Act was passed in 1996, Shane Smyth has matchless knowledge of the statute.
MacLachlan & Donaldson
Since its establishment in 1967, MacLachlan & Donaldson has burned bright in Ireland’s IP firmament. Treasured for its stellar trademark prosecution and consultancy output, it expertly manages the international portfolios of some of the world’s largest companies. The set’s eminent reputation is due in no small part to managing director Cliff Kennedy, a former president of the Association of Patent and Trademark Attorneys. “He has been in this business forever and he’s fantastic. He is really responsive and a pleasure to deal with. He’s just a wonderful IP lawyer.” The seasoned Peter MacLachlan is another lodestone; he specialises in building up, and then safeguarding, the IP portfolios of exciting start-ups.
Tomkins & Co
“Long-established” Tomkins is “really out ahead”. Celebrated for its holistic thinking and business acumen, it serves as the European legal hub for a raft of major international clients. While it operates deftly across the board, it has a particular flair for life sciences, pharmaceuticals, engineering and communications briefs. EU trademark virtuoso Simon Gray currently lectures on intellectual property for the Irish Law Society, as he did previously at the John Marshall School of Law in Chicago. With over 30 years’ experience in the field, former secretary of the Association of Patent and Trademark Attorneys of Ireland Seamus Doherty can be counted on to resolve the thorniest matters before the EUIPO. Peers “heartily endorse” Louise Carey, who debuts in the WTR 1000 this year; she brings serious contentious muscle to the table, while ensuring that the team’s portfolio management counsel is alive to all possible eventualities.

Individuals: enforcement and litigation

John Cahir - A&L Goodbody
Maureen Daly - Beauchamps
Patricia McGovern - DFMG Solicitors
Alistair Payne - Acuatus
Carol Plunkett - William Fry
Anne Bateman - Philip Lee
Paula Fearon - McCann FitzGerald
Ann Henry - Philip Lee
Fiona O'Beirne - McCann FitzGerald
Laura Scott - William Fry
John Whelan - A&L Goodbody
Richard A Woulfe - Mason Hayes & Curran

Individuals: prosecution and strategy

Peter Bolger - Mason Hayes & Curran
Niamh Hall - FRKelly
Patricia McGovern - DFMG Solicitors
Alistair Payne - Acuatus
Mary Bleahene - FRKelly
John Cahir - A&L Goodbody
Louise Carey - Tomkins & Co
David Cullen - William Fry
Maureen Daly - Beauchamps
Seamus Doherty - Tomkins & Co
Adam Finlay - McCann FitzGerald
Simon Gray - Tomkins & Co
David Hackett - Eugene F Collins
Cliff Kennedy - MacLachlan & Donaldson
Deirdre Kilroy - LK Shields
Paul Lavery - McCann FitzGerald
Michael Lucey - PURDYLUCEY Intellectual Property
Peter MacLachlan - MacLachlan & Donaldson
John F Menton - Arthur Cox
Mary Rose O'Connor - Cruickshanks
Brenda O'Regan - FRKelly
Niall Rooney - FP Logue Solicitors
Shane E Smyth - FRKelly
Niall Tierney - Tierney IP
John Whelan - A&L Goodbody

Ireland: The Bar

Senior counsel

Cian Ferriter SC - Distillery Building
Michael J Howard SC - Distillery Building
Niamh Hyland SC - Dublin International Arbitration Centre
Denis McDonald SC - Distillery Building
Michael McDowell SC - Distillery Building
Jonathan Newman SC - Distillery Building

Junior counsel

Paul Coughlan - Law Library
Caren Geoghegan - Distillery Building
Glen Gibbons - Distillery Building
Yvonne McNamara - Distillery Building
Ray Ryan - Law Library

Senior counsel

Cian Ferriter SC enters the WTR 1000 in recognition of his “fantastic advocacy and exhaustive understanding of intellectual property”. “Michael Howard SC is a brilliant advocate with wonderful knowledge of IP law.” Omnipresent in Irish courtrooms, he has an “excellent rapport with clients”. Niamh Hyland SC is singled out for her “significant IP experience and sound practical counsel”. Denis McDonald SC works wonders in the courtroom, but is also admired for his “brilliant mediation skills”. IP sage Michael McDowell SC is au fait with every line of the national trademark legislation and has a track record that is virtually second to none. Jonathan Newman SC supplements his IP skillset with valuable franchising and competition know-how.

Junior counsel

The “very responsive” Paul Coughlan is a “fabulous advocate who can be relied on for worldly advice”. Trademark ace Caren Geoghegan is hailed by peers as “bright, intelligent, very responsive and proactive”. European law ace Glen Gibbons is at his best in multi-jurisdictional matters. Yvonne McNamara “has razor-sharp intellect and is truly immersed in intellectual property. She has encyclopaedic knowledge of the legislation and case law”. “Seriously experienced in trademark law”, Ray Ryan knows what it takes to secure the right results for clients.

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Issue 68