As Brexit looms, Ireland is endeavouring to anticipate the changes that will ensue once it becomes the largest English-speaking country in the European Union. UK trademark firms have already established branches in the jurisdiction in order to shore up their position in a post-Brexit world and Irish firms are exploring their own ways to capitalise on the transition – whether by collaborating more closely with their UK counterparts or expanding their offerings in order to provide a more Europe-centric service. Whichever way the cards fall, change is afoot in Ireland and there is no question that the jurisdiction will become increasingly significant on the international trademark stage.
- DFMG Solicitors
- Mason Hayes & Curran LLP
- William Fry
- A&L Goodbody
- Keltie LLP
- LK Shields
- McCann FitzGerald
- Philip Lee
- Pinsent Masons
- TIERNEY IP
- Whitney Moore
Corporate titan A&L Goodbody has long been respected for its IP capabilities. The trademark team is well integrated within the firm’s wider commercial practice and demonstrates a refined understanding of the business of brands. High-profile disputes and transactional projects fall squarely within the remit of the Dublin unit, whose central pillars are John Whelan and John Cahir. As head of the commercial and technology group, Whelan has been involved in some of the most significant IP cases which have come before the Irish courts; he also established the firm’s offices in San Francisco and Palo Alto. Cahir’s deft handling of contentious and commercial IP matters has made him a favourite of domestic companies and multinational corporations alike. Both are also noted authorities on data privacy law and technology.
Clients enlist Acuatus safe in the knowledge that their matters will be handled with a personal touch. By keeping the outfit small, Alistair Payne can lavish close attention on every instruction sent his way, whether it relates to brand protection, infringement or licensing. Recent high-level projects include tackling infringement and enforcement issues for Red Bull; building a brand strategy for Australian multinational Treasury Wine Estate; and crafting Intel’s Irish brand enforcement programme. International players such as these reap significant rewards from the foresight and efficiency of Payne, who has forged numerous longstanding relationships as a result.
The full-bodied technology and IP division at Beauchamps dovetails neatly into the firm’s expansive commercial offering, adopting a pragmatic, business-focused approach to all trademark briefs. Filing, portfolio management and enforcement duties are dispatched flawlessly by the group, the most noted member of which is “knowledgeable strategic adviser” Maureen Daly. A precision portfolio manager and a tenacious enforcer of trademark rights across many forums, Daly recently represented international clothing company BiBA GmbH in infringement and revocation proceedings before the High Court. As head of both the technology and IP group and the freedom of information and data protection group, she is a versatile lawyer who always finds ways to add value.
DFMG Solicitors is home to an impressive and highly reputable trademark offering, which has continued to attract big-name clients over the past 12 months. The outfit is tasked with managing the trademark portfolios of heavyweights such as Gilead Sciences, Philip Morris and IKEA, and is also active on the contentious front, recently battling myriad infringers on behalf of BMW. In addition, the firm is highly proficient in anti-counterfeiting and IP commercialisation. All of this work is orchestrated by Patricia McGovern, an IP doyenne of some 35 years’ standing. “Patricia is clearly one of Ireland’s leading trademark experts. She is diligent, responsive and trusted by clients.”
A well-known name in the UK, Keltie has in recent years been making its mark on the Irish IP market through its dynamic Galway base. The group is recognised for the emphasis it places on client service, the relationships it builds with in-house teams, and its all-encompassing commercial outlook. Its local client base is a diverse one, but it is particularly looked to by the region’s start-up community, with burgeoning businesses across the technological spectrum enlisting the firm for portfolio management and contentious briefs. Heading up the operation is Sean Cummings, an IP all-rounder who is as renowned for his management skills as he is for his astute advice and expert advocacy in administrative proceedings. A talented writer, he contributed a chapter on evidence of use to the Trade Mark Handbook, published by CIPA and CITMA.
The trademark practice at full-service law firm LK Shields has evolved significantly since Peter Bolger joined its ranks three years ago. The “super-bright trademark adviser” and IP, technology and privacy head counsels national and international companies – many of which are clients of the wider corporate practice – on trademark enforcement and strategy, as well as IP-related agreements. Under Bolger’s guidance and stewardship, his team has developed a well-rounded offering that capitalises on the firm’s commercial and IP acumen.
Mason Hayes & Curran LLP
Mason Hayes & Curran is distinguished among Ireland’s commercial law firms by the refinement of both its prosecution and its contentious services. Star trademark professional Brian McElligott is a registered Irish and EU trademark and design agent who knows how to whip major international portfolios into shape and devise smart brand strategy. In combination with his commercial IP abilities, this makes him a fine choice for those seeking to build a distinctive profile; one such company, XS Direct Insurance Brokers, recently dialled him up to clear and register marks, and handle oppositions, in line with these aims. On the disputes side, IP head Gerard Kelly has played frontline roles in some of Ireland’s headline-grabbing infringement suits. The respected litigator puts in resonant performances before the Irish Commercial Court, the Court of Appeal and the Supreme Court. Recent highlights include successfully representing Julius Sämann of Little Trees car air freshener fame in an infringement spat with Ryanair. Kelly also provides value-additive prosecution and strategic advice – most recently for the Agricultural and Processed Food Products Export Development Authority, an Indian statutory body, in connection with the protection of Basmati rice.
Matheson’s IP team sits within a thriving technology and innovation group, which itself is part of the firm’s wider commercial offering. This set-up promotes a dynamic, commercial approach to brand matters, from portfolio strategy to transactions. The firm’s legal practice areas are complemented by specialist media and entertainment, life sciences, and retail and leisure sector groups, ensuring that all guidance is underpinned by a fine-grained understanding of clients’ industry needs. The rainmaker when it comes to intellectual property is Deirdre Kilroy, who is not only a trademark protection and enforcement maven, but also a master drafter of commercial contracts and data protection expert.
Highly rated for patents, McCann FitzGerald has trademarks covered too; the synergies between its practitioners ensure that pharmaceutical brand matters are handled with alacrity. Numerous drug and medical device clients engage the firm in complete confidence to manage their intangible assets and seamlessly execute on transactional IP instructions. It works effectively at an international level, aided by footholds in the United States and Belgium. On the contentious side, Fiona O’Beirne and Shane O’Brien are the main draw. A veteran of the IP scene, O’Beirne has a reputation for being “tough but fair”. O’Brien has a pristine track record in Commercial Court patent litigation and has also notched up several wins in trademark cases. He blends IP and regulatory expertise in a compelling way. For licensing and franchising know-how married with strategic trademark insights, brand owners need look no further than Adam Finlay.
Intellectual property is a central plank of Philip Lee’s commercial law offering. Taking advantage of its presence in San Francisco, Brussels and London, the firm renders excellent international support on IP rights protection, defence and monetisation. Under the watchful eye of the “superb” Anne Bateman, the team acquits itself with distinction in litigation and deftly supervises IP-driven deal making. Bateman garners enthusiastic praise from sources as “one of the sharpest IP minds in Ireland”: “Anne has a wealth of knowledge and takes a focused and granular approach to her work.”
Since it opened in 2018, the Dublin office of international outfit Pinsent Masons has enjoyed extraordinary growth, with significant team expansion and new instructions rolling in. Contentious IP activity is a forte, although the team is also well equipped for brand clearance and prosecution briefs and can advise rights holders throughout all phases of the trademark lifecycle, creating crucial value in efficiency. Heading the Dublin IP team is Ann Henry, “a tenacious trademark litigator with a passionate commitment to getting the best result for her clients. Her advice is clear and well reasoned, and she cares about her work as if the brand in dispute was her own”.
“Thoroughbred professional” Niall Tierney founded this self-titled firm six years ago after a career spent in private practice and in-house in Ireland, Switzerland and the United Kingdom. The name has since become synonymous with reliable prosecution at a domestic and European level, swift and effective trademark and domain name enforcement, and sage pre-filing and clearance counsel. During the past 12 months, the firm has tackled important trademark tasks on behalf of a major global high-technology giant, a heritage piano manufacturer and Avalon Photonics, a medical device company headquartered in Hong Kong. Tierney himself is a registered Irish and UK trademark attorney and Irish-qualified barrister who is warmly endorsed by the market: “Niall is a deeply knowledgeable and skilled practitioner before trademark offices and courts. His advice is always precise and clear, and he has extensive experience both locally and internationally.”
Although recognised primarily as a patent firm, Whitney Moore plays a strong hand in the trademark sphere too – much to the benefit of its multinational clients, which have diverse portfolios and IP needs. Across the IP spectrum, contentious work is the focus here – the team has abundant experience in infringement litigation and knows how to put together and present a strong case. It also performs well in a strategic advisory role. Anchoring the practice is litigator Robin Hayes, whose CV is replete with highlights of trademark, patent and copyright work. He has fought and won several trademark cases at the Supreme Court.
Whether measuring by size or by quality, William Fry’s full-service trademark and designs practice consistently comes out on top. Its dedicated team comprises 21 professionals, 14 of whom are dual-qualified as solicitors and trademark attorneys. With this wealth of resources, the firm has all bases covered: “William Fry is unmatched in its field. The team is extremely helpful and proactive in advising on the intricacies of trademark protection, from both an Irish and UK perspective.” Prestigious trademark portfolios under its care include those of Valeo Foods and Diageo, both of which are carefully managed by Leo Moore. “Leo is a pleasure to deal with. He is smart and fastidious, and his solutions-oriented approach leads to top-notch results. He stands out not only for his market insight, but also for his understanding of client needs.” Representing Diageo alongside Moore is master strategist David Cullen, who captains the commercial IP group: “David is always attentive, proactive and meticulous, whether handling a simple trademark search or advising international branding strategies.” Laura Scott, meanwhile, is singled out as “someone to rely on in litigation matters”. She is a familiar face in the Irish Commercial Court and has recently spent time there as part of a large-scale multi-jurisdictional passing off action on behalf of GSK. Celebrated IP name Carol Plunkett remains on hand as a consultant and is an outstanding strategic sounding board for colleagues and clients.
- Tomkins & Co
- Hanna Moore + Curley
- MacLachlan & Donaldson
Cruickshank’s accomplished patent and trademark attorneys excel at navigating the most effective and efficient paths to rights protection before the Intellectual Property Office of Ireland. The agency has provided a consistently superior service for many decades now and is a prime pick for companies looking to protect their intellectual property in Ireland and across the European Union. Captaining the side, Mary Rose O’Connor can be counted on for everything from registration and portfolio management to enforcement and advice on trademark licensing.
FRKelly is Ireland’s premier patent and trademark attorney firm, with an incredible bench of 30 IP professionals across three offices in Dublin, Cork and north of the border in Belfast. Quite simply, it is “the biggest show in town, with the greatest depth and range in terms of trademark abilities”. The group has cultivated an outstanding international network and is particularly popular among rights holders and representatives from the United States, for which it serves as an entry point to the European market. FRKelly is also firmly embedded in Ireland’s vibrant high-technology start-up scene; several players began by engaging the firm on the patent side, but now also instruct it on brand matters. Top names include Sumi Nadarajah, Mary Bleahene, Brenda O’Regan, Niamh Hall and Shane Smyth, each of whom brings something special to the mix. A qualified Irish and European trademark attorney, a solicitor in England and Wales and an advocate and solicitor in Malaysia, Nadarajah has impressive international qualifications and is an ace at global filing strategy. Bleahene is noted for her encyclopaedic trademark knowledge and flair for brand selection, trademark prosecution and rights enforcement. O’Regan is an authority on pharmaceutical trademarks and the fast-moving consumer goods sector. Hall, who has a background as a solicitor, is a versatile IP and IT practitioner and financial services sector expert. She co-wrote an influential Irish IP treatise together with Shane Smyth, who was instrumental in shaping Ireland’s 1996 Trademarks Act.
Hanna Moore + Curley
Hanna Moore + Curley is recognised for its “impressive depth of expertise in electronics and information technology”, but has other key selling points, too: it understands that the success of innovative products will invariably be limited without the right trademark protection, and puts its shoulder to the wheel to secure optimal brand coverage in Ireland, Europe and beyond. The person to contact is Marie Walsh, an “eminent expert on China-related trademark matters”.
MacLachlan & Donaldson
“A long-established firm with a significant market presence”, MacLachlan & Donaldson provides a reliable cradle-to-grave trademark service from offices positioned on either side of the border. As it coordinates filings globally, clients can rest assured that their trademarks will be appropriately safeguarded in all relevant territories. The go-to is director Peter MacLachlan, who appreciates the business criticality of brands and develops commercially astute strategies for their protection.
Tomkins & Co
With a long history dating back to 1930, Tomkins is one of the country’s most well-established trademark agencies. Its all-inclusive offering covers filing, prosecution and enforcement of trademark rights across Ireland, the United Kingdom and Europe; but its influence is felt worldwide, as it coordinates trademark strategies at a global level together with many elite foreign associates. At the heart of the practice is Hazel Tunney, an attorney who gained fame in 2019 for her role in the landmark SuperMac v BIG MAC case. A seasoned crafter of European filing stratagems, she has a keen interest in the protection of intellectual property online. “Hazel is an outstanding trademark attorney with an impressive track record of successful decisions before the EUIPO. She is a leading light who really knows her stuff and is very proficient at what she does.” Tunney has valued colleagues in Simon Gray and Seamus Doherty, each of whom has 30-plus years of highlights on his CV. Gray has contributed much to the trademark profession at large, but clients most value his appreciation of the business of brands. Doherty has a practical mind and gets things done for patrons hailing from a diverse cross-section of industries. Like Gray, he is also well connected internationally. Completing the line-up of WTR 1000-ranked individuals from Tomkins is incumbent secretary of the Irish Association of Patent and Trademark Attorneys Judy McCullagh, an exceptionally well-rounded practitioner with a passion for trademark law.
Other recommended experts
Newly at Burges Salmon, Louise Carey is a dual-qualified trademark attorney and solicitor who confidently tackles any and all contentious trademark matters, and is also capable of handling post-registration challenges such as licensing issues. David Hackett, who heads the IP and IT function at Eugene F Collins, has vast IP knowledge which stretches beyond trademarks and into copyright, software development and e-commerce issues. He is appreciated for his responsiveness, problem-solving outlook and creative solutions.
Individuals: enforcement and litigation
- Patricia McGovern - DFMG Solicitors
- Fiona O'Beirne - McCann FitzGerald
- Alistair Payne - Acuatus
- Carol Plunkett - William Fry
- Laura Scott - William Fry
- Anne Bateman - Philip Lee
- Maureen Daly - Beauchamps
- Robin Hayes - Whitney Moore
- Ann Henry - Pinsent Masons
- Gerard Kelly - Mason Hayes & Curran LLP
- Shane O'Brien - McCann FitzGerald
Individuals: prosecution and strategy
- Peter Bolger - LK Shields
- John Cahir - A&L Goodbody
- Simon Gray - Tomkins & Co
- Niamh Hall - FRKelly
- Patricia McGovern - DFMG Solicitors
- Alistair Payne - Acuatus
- Niall Tierney - TIERNEY IP
- Mary Bleahene - FRKelly
- Louise Carey - Burges Salmon IP Ireland Limited
- David Cullen - William Fry
- Sean Cummings - Keltie LLP
- Maureen Daly - Beauchamps
- Seamus Doherty - Tomkins & Co
- Adam Finlay - McCann FitzGerald
- David Hackett - Eugene F Collins
- Ann Henry - Pinsent Masons
- Gerard Kelly - Mason Hayes & Curran LLP
- Deirdre Kilroy - Matheson
- Peter MacLachlan - MacLachlan & Donaldson
- Judy McCullagh - Tomkins & Co
- Brian McElligott - Mason Hayes & Curran LLP
- 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