Trade marks

European Trade Mark Attorney; European Design Attorney; UK Trade Mark Attorney; UK Design Attorney; Degree in Law (2:1), Southampton Institute; Masters in Intellectual Property (Distinction),Southampton Institute, including awards for Best Performance on the Masters and Best Dissertation on the conflict between trade marks and domain names.

In his specialist area of trade marks and domain names, Rob is client manager for a leading UK bed company, a top cold roll-forming company, a leading Plc active in the field of insurance and home repairs, a telecommunications company and a pharmaceutical company amongst many others, which have provided him a sound knowledge and experience of the commercial needs and interests of these varied industries.

Rob’s responsibilities include the original drafting and prosecution of trade mark applications in jurisdictions throughout the world, dealing with oppositions and conflict management, passing-off matters, domain name disputes, trade mark ownership, exploitation issues and online brand protection.

Rob always provides a personal, friendly service and concentrates on the specific needs and requirements of each individual client.  This approach has led to an increasing workload from many overseas contacts within the industry who have come to trust and value Rob’s work.

Rob had a key role in the successful UK opposition of a product packaging shape trade mark for a key client through the preparation and filing of detailed evidence from the trade and the application of case law. During his career, Rob also worked on a successful opposition based on the relatively rare ground of a trade mark having a reputation, objecting to the registration of a trade mark for dissimilar goods. Rob also played an important role for a gambling and gaming client in a High Court trade mark case involving the calculation of earlier rights in passing-off compared with the client’s own date of use.

Prior to joining Avidity IP, Rob worked as a Trade Mark Attorney for a top-tier Legal 500 firm in the City and was responsible for management and prosecution of all trade marks, designs and copyright of Camelot Group plc and National Lottery Commission amongst other clients, which required a deeply commercial approach to conflicts and settlements, bearing in mind the marketplace and press exposure of this client.

Rob has also been involved in the organisation and presentation of seminars to members of the legal and marketing professions regarding trade mark registration and licensing agreements. Having been in the profession since 2000, Rob has developed a commercial approach to trade mark issues, considering the realities of the marketplace and the situations which apply to each individual client.

Please refer to Rob's LinkedIn profile to see several client testimonials.

Spanish Degree in Law from the University of Alicante (1992-1998); Intellectual Property Master Course “Magister Lvcentinvs” from the University of Alicante (1998 –1999); Barcelona Bar Association member since 2002; Spanish Patent and Trade Mark attorney since 2011; European Trade Mark Attorney.

In the past Lara has been a client manager for companies across a range of industries including entertainment, music, fashion, chemicals, software, electronics, automotive and aerospace, assisting them in all matters relating to the protection and enforcement of IP rights (patents, trade secrets, designs, trade marks and domain names) and in drafting and negotiating a broad range of commercial agreements.

Further, Lara contributed substantially to the set-up of an in-house IP department for a multinational group of companies in the automotive and aerospace markets by defining the necessary IP policies; providing in-house IP training and legal advice on IP related matters; trade mark, domain name and design portfolios management; instructing external counsel on IP litigation cases and drafting and negotiating all types of commercial agreements with research institutions, Universities, car manufacturers (BMW, Renault, PSA, GM, VW) and others (Philips, Telefonica, INDRA, US Navy, Fractus, Donnelly, DURA, EADS, Fisker) at a national, European and international level.

Lara has drafted, reviewed and negotiated an important number of commercial agreements such as a chemical formula know-how licence to Mexico, sale of a business branch in Spain with assignment of patent rights and licence of design and trade mark rights, international patent royalty-based licences, non-competition clauses, settlement agreements deriving from patent disputes in various jurisdictions, animated film broadcasting licence for Spain and Portugal, joint venture agreements, pan European R & D collaborations with special regard to IP ownership and exploitation, employees assignment of IP rights, assignment in Spain of patent rights and legal actions therefrom and priority rights assignments.

Lara has participated in several litigation cases such as one of the leading employee inventions Court cases in Spain in 2005, with a favorable outcome, patent infringement cases in several European countries (Portugal, France, Germany), invalidity action against ex distributor that registered a trade mark in Turkey without consent and nullity actions to obtain the cancellation in Spain of descriptive and generic trademarks.

In addition, Lara has extensive experience in trade mark and design opposition and appeals procedure in front of the Spanish Patent Office and OHIM and has experience in the High Court of Justice having appealed a decision from the Spanish Patent and Trademark Office and obtained its revocation, after confirmation by the Supreme Court.

Prior to joining Avidity IP Lara worked as a Trade Mark Attorney in a top-tier legal firm in Alicante and Barcelona before leading the Legal Area of the Intellectual Property department of a multinational group of companies.

Publications and Events
Lara is co-author of the article A matter of life or death: counterfeited medicines published in Spanish by Togas.biz along with La Vanguardia on October 27, 2005.

She also gave a lecture in the Patent Centre forum, University of Barcelona, on “Employees inventions in Spain and comparative law and case-law” in May, 2005

Recently, Lara has participated on several occasions in certain automotive forums in IP related matters, such as in the Ministry of Industry for FEDIT.

European Trade Mark Attorney; European Design Attorney; Chartered UK Patent Attorney; European Patent Attorney; Degree in Applied Physics and Materials Science from Manchester Metropolitan University.

John has advised trade mark clients, both large and small, active in a wide range of markets including confectionery, pharmaceuticals, gaming products, man-made fibers, and CAD/CAM software.

John has assisted brand owners with freedom to use issues and prosecution of trade mark applications, including preparing co-existence agreements to enable meaningful registration to occur.

He has also advised in relation to community internet issues encountered, including domain name disputes, take-down notices and abuse of copyright.

John has advised on freedom to operate issues relating to trade marks, has managed global trade mark portfolios for a variety of clients, and has personally prosecuted trade mark applications and prepared and prosecuted challenges to the rights of others both at the UK Trade Mark Registry and at OHIM. John has also advised clients in relation to protecting brand aspects both as trade marks and as registered designs. John is also active in advising on and prosecuting patent matters.

John has spent a number of years as an attorney within a corporate legal services environment, working alongside other legal specialists to provide integrated intellectual property services to the business, including instructing inventors on aspects of the patent application process, negotiating with third parties to ensure freedom to operate and providing the board with strategic intellectual property advice.

UK Trade Mark Attorney; European Trade Mark Attorney; UK Patent Attorney; English Solicitor.

A founder member of the so-called Joint Examination Board (the official body which sets examinations for the qualification of trade mark attorneys in the UK), Don was the first ever chairman of that Board. He continues to play an important role in the training of trade mark attorneys in the UK profession.

Don has a wide ranging practise. However, his skills set plays best in contentious areas, in the UK and elsewhere, where his depth of experience can be brought to bear successfully for the higher profile interests of our clients. As with some other very experienced trade mark practitioners, Don has a valuable intuitive “touch” in areas of practise such as assessment of risk in comparison of resembling marks.

Selection and clearance of new trade marks; UK trade mark filing and prosecution; European trade mark filing and prosecution; preparation and prosecution of UK and European trade mark oppositions; invalidation proceedings; revocation proceedings.

Don has extensive trade mark experience across a wide range of industries but has particular expertise in the areas of clothing, packaging and video games.