Of Counsel – Intellectual Property, Technology & Media
I am Of Counsel and a solicitor with over 20 years of experience of intellectual property, data protection and commercial agreements. I act for businesses, schools, charities and private individuals. I represent parties in intellectual property disputes, and advise on contracts in all technology sectors and regulatory compliance.
I enjoy helping clients reach a good understanding of intellectual property and show why it can add value to their enterprises, create revenue and protect key assets. I advise on the acquisition, protection and exploitation of intellectual property rights, especially trade marks, design rights, patents, database rights, domain names, copyright, confidential information and trade secrets. My practice is relevant particularly to the branded goods and services, software, pharmaceuticals, marketing, advertising and entertainment sectors. Clients range from start-ups and SMEs to well-known multinational companies.
Particular recent experience has related to advice on the acquisition and management of intellectual property portfolios, the transfer and licensing of intellectual property rights, due diligence investigations in corporate transactions and handling disputes relating to infringement of trade marks, copyright, design rights and passing off. Many of these disputes have been resolved before the stage of court proceedings. I have also dealt with online defamation and copyright infringements.
I assist clients with a variety of contractual arrangements including technology contracts and standard terms relating to software acquisition, website use, app development, social media, databases and provision of managed services, Software-as-a-Service agreements, cloud computing and hosting as well as internet-enabled sale of goods and services to consumers.
I provide regulatory compliance advice on data protection legislation inclusive of the General Data Protection Regulation. I have drafted privacy statements and data processor agreements and advised on investigations instigated by the Information Commissioner’s Office and data subject access requests.
Other commercial experience has related to agency and distribution agreements, R&D agreements, services outsourcing (including IT outsourcing to clients by local government bodies), franchising, gaming, sponsorship and sales promotion. I also advise on competition law.
Several of my matters have an international dimension. Previous experience as in-house counsel with multinational companies in the pharmaceutical and food sectors has provided me with some useful insights into what business clients expect from their lawyers.
- Cases and recent matters
- Acted in the High Court (Chancery Division) for the successful appellant in Whyte & Mackay-v-Origin Wine  EWHC 1271 in which upheld oppositions to our client’s JURA ORIGIN trade mark were overturned
- Successfully defended an automotive sales chain in connection with an imported retro-styled vehicle alleged to infringe design rights and registered designs in a classic sports car design
- Advising a company making specialist viewing equipment on the exploitation new designs without infringing design rights belonging to a well-known multinational or breaching existing agreements
- Drafted a suite of agreements for a cognitive technology company to cover development and promotion of artificial intelligence solutions relevant to a variety of business sectors
- Advised on the setting up of a new social media network for creative and multi-media members and the hosting of competitions within it for crowdsourced advertising campaigns
- Advised various clients on the protection and exploitation of real and fictional characters in printed publication, TV, film and merchandise
- Acted for a well-known restaurant chain in connection with restraining trade mark infringements by food delivery businesses
- Advised on an agreement relating to novel software relating to the provision of refuelling services for airlines
- Corporate Deals
- Fellow of the Royal Society of Arts
- Allied member of the Chartered Institute of Trade Mark Attorneys.
I enjoy classical music, art, travel and cookery.
Barlow Robbins is recommended for outsourcing, data protection, e-commerce, software, cloud computing and hosting matters.
Legal 500, 2017
Laurie Heizler is very knowledgeable and thorough.
Legal 500, 2017