Allan Poulter

WTR Research

The WTR 1000 focuses exclusively on trademark practice and has firmly established itself as the definitive 'go-to' resource for those seeking world-class legal trademark expertise

Gold - Individuals: prosecution and strategy

With the largest pan-European IP division of any law firm and one of the largest globally, Bird & Bird has a formidable team stationed in London. Some 101 members of its 450-strong international team are based in the capital, coordinating cross-border litigation and managing global strategy for a litany of high-profile patrons in technology-centric sectors. The prosecution practice – comprised of both solicitors and trademark attorneys and led by partners Allan Poulter and Mark Holah – is the biggest of its kind in the country. In recent months, it has acted in multiple oppositions for the Prosecco designation of origin; managed the global trademark portfolio of Fabergé; guided a brand enforcement programme for Chilly’s Bottles; and advised on merchandising projects and a number of Chinese oppositions for Marv Films, the makers of the Kingsman series. Brand strategist Poulter benefits from experience as a barrister, trademark attorney and solicitor, as well as from time spent in-house; overseas peers call him “an extraordinarily perceptive and brilliant strategic counsellor who provides nuanced and practical advice”. Department co-head Holah is likewise dual qualified as a solicitor and trademark attorney, and attracts five-star feedback from clients: “Mark is a tremendous lawyer – he has a well-developed knowledge of the law, staying on top of current cases, which allows him to provide pragmatic advice rather than routine comments that do not actually provide any practical value to clients. You can always trust that Mark has considered all angles and brainstormed the best strategy when working to resolve a matter.” Completing the prosecution unit are Patricia Collis and Christine Danos. Collis is as capable of steering global brand strategy as she is fighting fiercely in opposition and cancellation proceedings; while WTR 1000 debutant Danos is a crafter of forward-thinking global filing strategies who practised in Australia until 2018. “Christine is a bright, capable and valued practitioner and a skilled analyst. She proactively ensures that key deadlines are kept, advises on the best strategy and can explain concepts in non-legal terms.” The firm has also been busy on the contentious front: highlights include continued representation of Merck KGaA in its long-running trademark infringement and breach of contract litigation against Merck Sharp & Dohme in relation to the use of the name ‘Merck’; acting for fashion innovator Rothy’s in commercially significant infringement proceedings; and fighting a complex passing-off action on behalf of Lidl. Leading on the Merck piece is Peter Brownlow, while Ewan Grist took on both latter projects. Brownlow is one of the best-known names in the profession, having been on the scene for two decades, and splits his time between high-stakes disputes work and guiding IP protection strategies, including that of Monster Energy. Grist heads the international product designs group and is an accomplished cross-border trademark litigator: “Ewan is one of the best in his field – not only technically, but also in terms of his outstanding level of responsiveness and client empathy. He can break down complex matters into simple pragmatic advice which is useful to a business.” For transactional issues, the go-to is 35-years-experienced Mark Abell, the global co-head of the franchising, distribution and multi-channel strategies division. He is a favourite among myriad retail and consumer and international education clients.

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