David Bernstein

Owner at de Chalains IP
Ranked in South Africa
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

Recommended - Individuals: prosecution and strategy

Appearing in the WTR 1000 for the first time this year is thriving boutique de Chalains: “Knowledgeable and user friendly, it gets the job done with minimum fuss, even in difficult situations – and without breaking the bank either.” It offers shrewd, hands-on portfolio management and enforcement services to an enviable list of clients, particularly in the sports industry, where the firm has carved out a niche: for example, it undertakes filing and prosecution for the Rugby World Cup as well as the British and Irish Lions Designated Activity Company. This brief is the preserve of David Bernstein, who “applies a laser-sharp focus and solves problems creatively”. He provides strong leadership to the team alongside fellow managing principal Reinhold Gregorowski. Gregorowski has ample international know-how and particular expertise protecting rights across Africa. He gets even the most difficult jobs done efficiently and to the highest standard.

David Bernstein's Profile

David Bernstein obtained a BA in 1989, an LLB in 1991 and an LLM in 1996, specialising in IP law. Subsequent to qualifying as an attorney of the High Court of South Africa at a well-known firm specialising in IP matters, Mr Bernstein co-founded a niche IP boutique in November 1998 with Jean de Chalain.

Since then, Mr Bernstein has honed his craft, boasting over two decades’ worth of hands-on experience in the IP arena, with a penchant for and particular expertise in trademark matters. His practice is primarily focused on dispensing considered strategic advice, prosecuting, enforcing and litigating trademark matters in South Africa and throughout the African continent.

Mr Bernstein has considerable expertise and a wealth of experience in the protection and enforcement of trademark portfolios owned by international sports teams, supporters clubs and championships. He also acts for and on behalf of blue-chip and big-ticket clients in the sports products, protein powders, energy drinks, nutritional products, entertainment, 4x4, SUV, video game, fashion, horse racing, education, restaurant, craft beer, wine and whisky industries.

Mr Bernstein relishes challenges by taking on difficult, so-called ‘no-win’ cases and prosecuting unconventional trademark applications through to registration with aplomb. He also has a significant depth of expertise in the consolidation and management of large filing programmes, rebranding exercises and trademark portfolio reviews across the African continent.

Over the past 22 years Mr Bernstein has enjoyed and maintained close working relationships with many long-standing clients who value his adroit, prompt attention to their matters with a knack for responding quickly yet thoroughly to complicated queries in a down-to-earth and straight-forward manner that is understandable yet devoid of sugar-coating.

Among his accolades, Mr Bernstein has been recognised by MIP as a leading individual and IP STAR for trademark matters since 2016. Moreover, in February 2020 WTR 1000 ranked Mr Bernstein as a recommended legal trademark professional and leading individual for trademark prosecution and strategic advice.

Firm Profile

Established in 1998, de Chalains IP is a leading South African IP firm with its head office in close proximity to the High Court and Trademarks and Patents Office in Pretoria, South Africa’s administrative capital. The raison d’être for the establishment of the firm was simple: to create a unique firm by providing our clients with astonishing levels of service excellence at affordable rates.

This mantra encapsulated a commitment to nurturing and caring for our clients’ trademark and patent portfolios in the most streamlined and cost-effective manner. This focused, proactive approach provided a solid base from which to develop and evolve into the 21st century as an award-winning full-service IP boutique offering clients a refreshing and authentic alternative to much older and larger firms, culminating in Managing Intellectual Property recognising the firm for 11 consecutive years as a leading light for trademark prosecution in South Africa.

Moreover, the firm’s professional staff all started their careers at large, well-known South African IP law firms; they have all honed their skills and craft over many years, developing extensive experience and expertise in different facets of IP law, including trademark prosecution, procurement, maintenance, administration and enforcement, patent registration, copyright, domain name registration and enforcement, and IP due diligence investigations.

In addition to the above-mentioned services, the firm regularly conducts IP portfolio reviews, and assists clients in optimising the effectiveness of their rights obtained through registration.

Being lean, nimble, adroit and dynamic presupposes a degree of flexibility and agility exemplified by our total commitment to personal services tailored to suit our clients’ specific needs and budget requirements.

Since inception, the firm has gained a formidable reputation for accurate, swift and thorough service with advice dispensed in a straightforward, understandable manner without unnecessary jargon and legalese.

The firm’s client base continues to expand and ranges from corporates (including blue-chip listed companies) to attorneys, trademark agents, search houses and businesses. The firm represents clients  across a broad and diverse spectrum of sectors and industries, including automobile, 4x4, video/virtual reality games, electronic, financial, pharmaceutical , entertainment, restaurant, horse racing, education, wine, craft beer, sports supplements and fashion, e-commerce, fashion and luxury goods, fast-moving consumer goods, food, hospitality and leisure, gaming, Internet, manufacturing, medical devices, universities and research, tobacco, sports, telecommunication, information technology and retail.

de Chalains IP also takes pride in assisting clients with specialised IP services across the African continent. To this end, the firm has over may years established and continues to maintain close working relationships with reputable local associates in all jurisdictions.

The firm remains dedicated to building and maintaining long-lasting, mutually beneficial working relationships with clients, while simultaneously ensuring high-quality service at reasonable cost.

Get unlimited access to all WTR content