Ireland

The Irish trademark scene is – by common consensus – becoming ever more internationalised as London-based firms look to find a way around Brexit and larger international players start to plan their market entry. Practitioners foresee a number of possible effects, with one being the side-lining of the traditional family firm structure as smaller trademark offerings are forced to compete with those that have attained critical mass. Another medium-term result could be closer collaboration between the UK and Irish trademark authorities, as crucial knowledge and skills are in even greater demand on both sides of the Irish Sea.

Firms

  • DFMG Solicitors
  • Mason Hayes & Curran
  • McCann FitzGerald
  • William Fry
  • A&L Goodbody
  • Acuatus
  • BEAUCHAMPS
  • LK Shields 
  • Matheson
  • Philip Lee

A&L Goodbody

Commercial firm A&L Goodbody houses a fully formed trademark offering with phenomenal international links. Enforcement, commercial transactions and passing off are all covered under the A&L Goodbody umbrella – and clients benefit immensely from the partnership’s network of bureaux on both sides of the Atlantic. Litigators and strategists John Cahir and John Whelan steer the ship in Dublin. Cahir is a trademark and data protection sage whose first-rate technology and privacy work has made him a firm fixture in the contact books of some global titans. The dextrous Whelan also maintains a vibrant practice, which primarily centres on commercial contract, privacy, IP and telecoms matters.

Acuatus

Acuatus has made a fantastic name for itself on the Irish market because every brief receives the undivided scrutiny of formidable IP litigator and sole partner Alistair Payne. “A class act based in Dublin, he is now in an environment where he can completely control what he works on. He is the best IP litigator in the city – and, indeed, Ireland.” Payne’s client list – which includes Danone Group on the prosecution side and Rondo Foods, Diageo and Intel for contentious matters – also stands testament to his quality.

BEAUCHAMPS

A full-service firm active across virtually the entire spectrum of commercial law, Beauchamps possesses an excellent technology and IP offering. Able to work with clients of all sizes and stages – especially those in the food and beverage, communications, pharmaceutical and retail industries – the outfit offers flawless trademark filing, litigation and transactional work. Enforcer and prosecutor Maureen Daly has acted for a client list including the FA Premier League Ltd, travel site Expedia and healthcare giant Fresenius Netcare GmbH. “Effective, proactive and commercial,” Daly possesses substantial data protection expertise in addition to her renowned trademark practice.

DFMG Solicitors

Wide-ranging commercial firm DFMG Solicitors houses an enviable trademark offering, which attracts clients from far and wide. The one-stop shop is comfortable handling Irish and EU trademarks at all points in their lifecycle and treats all matters with extreme care and diligence. Patricia McGovern is “a world-class IP lawyer who tirelessly works on her clients’ behalf to protect their commercial interests”. “Her depth and breadth of knowledge in IP, IT, data protection and competition law ensures that the portfolios she touches are always secure and compliant. She is really excellent.”

LK Shields 

Leading Irish full-service partnership LK Shields combines its legal and commercial acumen superbly – forming a trademark offering that is irresistible to clients in the know. The firm is a steadfast partner to a legion of patrons for whom branding is business-critical. 2017 recruit Peter Bolger leads the charge – a known filing and commercialisation maven, his practice straddles trademark, privacy, media and design law.

Mason Hayes & Curran

Mason Hayes & Curran is a major player at the Irish Commercial Court, having been involved in a significant proportion of the IP disputes that have taken place there in the past five years. Although the practice maintains a strong emphasis on top technology patrons (including Facebook, which it is advising in a dispute with Allianz), it has also undertaken sterling litigation work for Trinity College Dublin against a local gym infringing the TRINITY mark and for souvenir producer JLM Gifts in an infringement and passing-off matter regarding cartoon sheep characters depicted on its products. The firm further boasts a strong trademark prosecution and strategy offering, with patrons including Joyce’s Supermarkets, the Technological University Dublin and BFree Foods Ltd trusting it for filing matters globally. “All-rounder” Gerard Kelly is active across both wings of the practice. His “responsiveness, commerciality, pragmatic approach and deep legal knowledge” set him apart. Joining him in the WTR 1000 this year is Partner Brian McElligott. Focusing on non-contentious matters, he is “diligent, flexible and always willing to both listen and give excellent advice”. “He has a clear focus and is skilled at distilling even the most complex of issues into practical counsel. His sound legal knowledge and excellent responsiveness make him (and his firm) a go-to.”

Matheson

Commercial solicitors’ firm Matheson offers superlative trademark capabilities on both sides of the Atlantic. With offices in London, New York, Palo Alto and San Francisco as well as Dublin and Cork, the partnership is perfectly placed to be the gateway to Ireland for top US clients, who can expect a seamless, bean-to-cup trademark offering. Dublin-based transactional sage Deirdre Kilroy heads the IP team. Her “extensive trademark knowledge, efficiency and commerciality” make her an astute choice for IP-rich deals of all shapes and sizes.

McCann FitzGerald

McCann FitzGerald is “one of the most reputable law firms in Ireland, packed with excellent IP litigators and non-contentious practitioners alike”. The full-service firm enjoyed rapid growth in 2018, adding 31 qualified lawyers to its ranks and maintaining its overseas presence in the United States and Brussels. Another recent development has been technological: McCann FitzGerald’s forward-thinking 2018 Legal Technology Solutions initiative combines best project management practice with market-leading innovation to make the client experience even smoother. Patrons including the National Transport and Road Safety Authorities and Transport Infrastructure Ireland rely on the firm’s strategic arm, led by Paul Lavery, for sure-footed guidance. The author of the first Irish work on commercial secrets, he is consistently ahead of the curve on franchising, data protection and confidentiality trends. Registered trademark agent Adam Finlay is an equally outstanding strategist. “Highly professional with an expert level of knowledge, he gives top-class service.” Enforcement aces Fiona O’Beirne and Shane O’Brien excel in the Commercial Court. Head of litigation O’Beirne is “dedicated, resolute, thorough and forensic”, while O’Brien is a dual-threat solicitor and trademark agent whose advocacy is first rate.

Philip Lee

Philip Lee has assembled a team able to advise rights holders on every aspect of their businesses – excelling particularly in the IP space. With bureaux in San Francisco, Brussels and London, the firm enjoys an impressive overseas reach, which adds to its outstanding courtroom and boardroom-based trademark capabilities in Ireland. Leading commercial solicitor Anne Bateman “is instinctively focused, with an innate attention to detail”. Her quality in trademarks is supplemented by her data protection knowledge, which is such that she runs the data protection certificate offered by Public Affairs Ireland.

William Fry

The sheer quality of commercial firm William Fry’s broad IP practice is a result of a number of factors, with the firm’s scale, knowledge-sharing approach, outstanding depth of experience and commercial awareness all combining to create an offering that few can resist. The partnership has a broad range of talent residing on both sides of the practice. Carol Plunkett and Laura Scott take the lead in the courtroom. Consultant Plunkett has been acting in the country’s most cutting-edge IP cases for a remarkable length of time now, which is testament to her enduring quality. Scott, who works adroitly across multiple areas of intellectual property, is “smart, commercial and possesses excellent technical ability”. David Cullen and Leo Moore, meanwhile, fly the flag for the non-contentious wing of the partnership. Head of technology Cullen is “outstanding, especially on the data protection side of things”. The versatile Moore is a pivotal figure in the firm’s technology, foreign direct investment and sports groups.

Agencies

Agencies

  • FRKelly
  • Tomkins & Co
  • Cruickshank
  • MacLachlan & Donaldson

Cruickshank

Patent and trademark attorney outfit Cruickshank is a multidisciplinary practice with the ability to seamlessly match its clients’ technical needs to the strengths of its individual attorneys. The preferred option for a whole host of leading Irish patrons, the firm is chosen primarily for its strong domestic coverage and ability to execute before the Irish Patents Office. Mary Rose O’Connor is an unfailing source of “prompt, proactive advice”. She is equally at home – and equally effective – operating in Ireland and the European Union.

FRKelly

FRKelly is an innovator’s dream partner. Those who knock on the patent and trademark agency’s doors in Dublin or Belfast will receive accurate, commercially minded advice, first-rate client service, extreme responsiveness and an ability to think outside the box that few other firms can match. The outfit houses a wealth of trademark attorney talent, foremost among which is the dual-qualified Niamh Hall. “A practitioner of the highest calibre,” she is known throughout Ireland as one of the country’s leading experts in EU marks. Also dual-qualified is transactional specialist and legislator Shane Smyth – his input was instrumental in the drafting of the Irish Trademarks Act 1996. Domain name savant Brenda O’Regan has also been involved in national legislative development; she was part of the working group that drafted the ‘.ie’ Dispute Resolution Policy. Mary Bleahene has more than 20 years’ trademark experience. The committee member of the Licensing Executives Society is described by one overseas associate as “highly responsive with great turnaround times – just wonderful”. The multitalented Sumi Nadarajah is qualified not only as a European trademark and design attorney, but also as a solicitor and barrister in England, Wales and Malaysia. “Fantastic to deal with, prompt in her delivery and strategic, she is a top trademark lawyer with excellent skills. Her holistic approach and business acumen set her apart.”

MacLachlan & Donaldson

MacLachlan & Donaldson has been protecting trademark rights in Ireland for more than 50 years – a fact that gives some sense of its longstanding market reputation. Firmly established among the top 250 EU trademark filers, the partnership is a dependable source of pre-filing searches, prosecution, maintenance and licensing expertise. Irish and European trademark attorney Peter MacLachlan routinely operates across all of these areas as part of his own practice. As the firm’s managing director, he also provides strong leadership and sets the overall direction of travel.

Tomkins & Co

“Tomkins & Co has a really excellent name in Ireland – there are some very experienced people there.” The firm expertly blends its established tradition of high quality with an especially dynamic current team of practitioners. This combination has made it a beacon for top clients including Irish fast food outlet SuperMac’s, which enlisted the firm for one of Ireland’s highest-profile IP cases of 2019, whereby it managed to cancel McDonald’s BIG MAC mark before the EUIPO. The partnership has five of its fee-earning trademark partners listed in the WTR 1000. Simon Gray is “one of the most experienced ‘soft IP’ attorneys in Ireland”. His commerciality and industry involvement are first rate. The scientifically trained Judy McCullagh has a sixth sense for knowing what each individual client wants. Of counsel Louise Carey leverages her 30 years’ trademark experience to develop bespoke solutions that hit the spot every time. Hazel Tunney has had a remarkably successfully year pleading on behalf of SuperMac’s before the EUIPO – a venue at which well-known counsellor and networker Seamus Doherty has also tasted success on many occasions over the past 30 years.

Other recommended experts

Eugene F Collins’ David Hackett is a detail-oriented, diligent professional whose practice encompasses trademark, copyright, licensing and software development matters. He sits on the legal working group of the Irish Internet Association. Ann Henry is now at Pinsent Masons, having recently moved from another top Irish offering. A smooth operator with a wealth of trademark experience, she is widely agreed to have been an excellent addition to the global law firm’s roster. John Menton heads up Arthur Cox’s commercial department, a role to which he is ideally suited due to his experience dealing with top technology clients in the firm’s New York office in the 1990s. Galway-based Niall Tierney, of the eponymous Tierney IP, is an IP consultant with the ability to guide trademarks through the Irish and EU structures with ease. He earned his stripes working in Ireland, Switzerland and the United Kingdom.

Individuals: enforcement and litigation

  • John Cahir - A&L Goodbody
  • Maureen Daly - BEAUCHAMPS
  • Patricia McGovern - DFMG Solicitors
  • Fiona O'Beirne - McCann FitzGerald
  • Alistair Payne - Acuatus
  • Carol Plunkett - William Fry
  • Anne Bateman - Philip Lee
  • Ann Henry - Pinsent Masons
  • Gerard Kelly - Mason Hayes & Curran
  • Shane O'Brien - McCann FitzGerald
  • Laura Scott - William Fry
  • John Whelan - A&L Goodbody

Individuals: prosecution and strategy

  • Peter Bolger - LK Shields
  • Simon Gray - Tomkins & Co
  • Niamh Hall - FRKelly
  • Patricia McGovern - DFMG Solicitors
  • Alistair Payne - Acuatus
  • Niall Tierney - TIERNEY IP 
  • 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
  • David Hackett - Eugene F Collins
  • Gerard Kelly - Mason Hayes & Curran
  • Deirdre Kilroy - Matheson
  • Paul Lavery - McCann FitzGerald
  • Peter MacLachlan - MacLachlan & Donaldson
  • Judy McCullagh - Tomkins & Co
  • Brian McElligott - Mason Hayes & Curran
  • John F Menton - Arthur Cox
  • Leo Moore - William Fry
  • Sumi Nadarajah - FRKelly
  • Mary Rose O'Connor - Cruickshank
  • Brenda O'Regan - FRKelly
  • Shane E Smyth - FRKelly
  • Hazel Tunney - Tomkins & Co
  • John Whelan - A&L Goodbody