How Appleyard Lees is making its mark on Cambridge
It has been a period of growth in the city for the IP specialists. Editor Paul Brackley catches up with Chris Hoole to discuss trade mark strategy.
For those in the world of trade marks, Brexit brought forth a kind of transfer deadline day.
Fortunately, at Appleyard Lees, the team has been organically growing as it has won new clients, meaning it was able to navigate the demand without resorting to any 11th hour panic signings.
Its burgeoning headcount is a sign of the growing strength in the city of the company, which has its heartland in the north but opened an office here early in 2017.
Since then, the company - which has sponsored the Cambridge Independent Science and Technology Awards since arriving - has built its reputation in the city, moved from New Bateman Street to larger premises at Castle Park, made key hires and added trainees to its ranks.
The firm offers the full suite of intellectual property services, with Julia Gwilt, a partner in the electronics and software team, and Barbara Fleck, a partner in the life science team, with expertise in biotechnology and agri-science, bolstered by Parminder Lally, a senior associate patent attorney, and by Chris Hoole, who relocated from Leeds in 2020 to build the Cambridge office’s trade mark team.
“We are getting more visibility with local clients and I think the ability to offer both patent expertise, trade mark expertise and commercial IP expertise - licensing agreements, non-disclosure agreements and the like - is appealing to the local market, and particularly to start-ups,” said Chris, a dual qualified solicitor and chartered trade mark attorney.
“We are growing, which is much-needed. It’s really nice to have the support on the ground.”
Associate Daniel Bayley joined the trade mark team in spring from Taylor Vinters.
“Like me, he is a trade mark attorney and solicitor and his area of expertise is trade marks and contentious IP. He’s also assisted me on some of the anti-counterfeiting work I do for Puma,” said Chris. “On his first week, we sent him to a raid… welcome to the job! We are over the moon that he’s joined us.”
A first year trainee trade mark attorney Mykhailo Pokrachynskyi has also joined the team.
Chartered Institute of Trade Mark Attorneys (CITMA) qualified trade mark paralegal Sandra Stevenson is another who has joined the office from Taylor Vinters.
Another colleague from the Leeds office, Chris Thomas, an IP solicitor and trainee trade mark attorney, joined on October 22.
And Claire Bothma, a senior trade marks associate attorney, who previously worked for a large South African firm, Adams & Adams, joined the Cambridge office this month. She is currently covering maternity leave for a colleague elsewhere in the company.
“So we’ve gone from one to six in the trade marks team,” says Chris.
And it has been a particularly important time for that team thanks to Britain’s exit from the European Union.
“There was a deadline following Brexit, which meant trade mark owners had to file UK trade marks by September 30, which kept our team very busy,” recalled Chris.
“We were getting instructions from a lot of foreign associates, who were filing 20 trade marks a day at one point. The team worked tirelessly.
“By 9am on the last day, we’d already had seven instructions through to file trade marks.
“So Brexit has been very interesting for us. EU trade marks used to protect you in the UK and across the other member states.”
For UK companies with existing trade marks in the EU, registrations were carried over.
“As long as it was registered, you were fine, as you would get a registration in the UK based on your EU right, so it was business as usual,” explained Chris..
“The complexities arise where trade mark owners don’t have any registered rights in the EU, or if there was an EU trade mark that was pending, either because it was filed prior to 2021 and was still going through examination, or because it was opposed by a third party.
“In those situations, the applicant had the option of filing up a trade mark in the UK until September 30, which claimed what is called ‘priority’.
“If, for example, you filed a trade mark in the EU in July 1, 2020, normally that would get a six-month window to file in another country.
“But there was a special scenario in the Withdrawal Agreement in which those pending applications could find a priority claim up to September 30, 2021, retaining the July 2020 priority date, which could be very beneficial if someone filed in the meantime.
“So that was an important deadline and applicants were looking to see if they needed to file extra marks in the UK.
“Now you apply to both, filing in the UK and in the EU.
“We work with a number of associates and trade mark attorneys across the EU, whom we have very good relationships with. They will file trade marks in the EU for us. As far as the client is concerned, it is business as usual.
“You can also file an international trade mark as well, which can offer protection in EU countries too.”
For start-ups, trade marks can be something of a mystery and, if the right checks are not carried out, that can lead to problems down the line.
“The strategy for a start-up with finding and protecting their brand begins with establishing whether that brand name is available and what level of risk is present if they were to go ahead and register that trade mark,” says Chris.
“We can come in at very embryonic stages where the start-up has come up with a name.
“The ideal situation is we advise them pre-launch, before they've spent significant sums on the brand itself and in that scenario they can carry out those clearances and check what other third party brands are out there that are registered or not, and any rights that exist.
“We can run those clearances and that will lead to a registered trade mark in their own right.
“The next step is filing to protect it with the Intellectual Property Office in the UK first and foremost and looking at options overseas as the client needs.
“We work with numerous foreign associates in the EU and further afield. Those relationships have only strengthened since Brexit.”
Start-ups may not always seek early advice, however.
“There are situations where start-ups come to us and trade marks haven’t been of paramount concern,” notes Chris. “It may be that the brand is free to use and there are no issues, or you may find you are confronted with an issue, because they have been approached by a competitor or someone in a similar field who has already protected that name or a similar name. Or you may identify one, and then it is a case of advising the client on a risk-based strategy approach on how to proceed in the most appropriate and cost effective way at that stage.
“The advice is always to think about trade marks as early as possible. There are tools online and the IPO is very helpful.
“What can happen is someone finds a domain name and maybe the company name is available, but it doesn’t provide security that the trade mark is available.
“The rights that are enforceable are what is protected with the IPO. It can be missed in the excitement of a launch.”
Other clients have ongoing relationships with Appleyard Lees, using its expertise to help with new product launches or rebrands.
“One of my clients is a large supermarket chain, which is a good example of a client where we act regularly on new brand launches and clearance activities, because there is a high frequency of products being launched. For some clients, like Puma, we see ourselves as their in-house arm in the UK,” says Chris.
The company has been buoyed recently by good rankings in the Legal 500 guide and in the World Trademark Review, and clinched the Intellectual Property Award at October’s Yorkshire Legal Awards, with judges noting: “This firm is very good at what it does and goes the extra mile to look after clients. Its IP work is of the highest quality, as is its contribution to the local community, particularly through its growth fund for start-ups seeking IP protection.”
Now it is helping to celebrate the good work of others by sponsoring the AI Company of the Year category at the Cambridge Independent Science and Technology Awards, reflecting one of its specialisms.
And the plan for the future?
“We hope that we will continue to grow and expand, and offer the best service to the client and a good working environment too,” says Chris.