Intellectual Property

Intellectual property is a vital asset for many businesses. It encapsulates the ideas, designs, brand names, know-how, images, creations and technologies of that business; and how those assets are protected, exploited and managed at each stage of their life cycle can have a significant impact on the value of the underlying business.

Teacher Stern’s commercial lawyers are experts in all areas of intellectual property registration and protection. We advise on:

  • trademarks (registered and unregistered)
  • patents
  • copyright
  • image rights
  • brand management
  • trade secrets
  • false advertising and related unfair competition issues

We work closely with our clients to develop IP protection policies to ensure that their intellectual property assets are not inadvertently diluted and are properly protected. We advise on licensing intellectual property rights and making the most of our clients’ ideas – without prejudicing their protectability. In recent years we have represented and advised both public and private companies in IP licensing and exploitation transactions, many involving highly complex issues, cutting edge technologies or well-known trademarks, brands and copyrighted works.

Our intellectual property team also advises a large number of clients on the registration and acquisition of domain names and how best to protect those names. We represent clients in relation to internet specific intellectual property issues including domain name privacy, meta tags and deep linking infringements.

Where necessary, the lawyers in our intellectual property team work closely with other lawyers in our dispute resolution team to ensure that our clients’ rights are protected in the robust manner they sometimes need to be.

Representative Intellectual Property Work

Examples of our team’s intellectual property work include:

  • Advised numerous hospitality clients in relation to intellectual property matters and brand protection strategies including Goodman Restaurants, Burger and Lobster, Galvin Restaurants and Ed’s Easy Diner.
  • Advised numerous clients on trade mark registrations and trade mark disputes.
  • Advised clients on, and created, “white label” documentation for use by large corporate clients wishing to take a third party’s goods and/or services and package them as their own.
  • Advised clients on the transfer, acquisition, licencing and disposal of brand names.
  • Advised on domain name disputes and resolution strategies.
  • Advised on the establishment of international IP licensing and licence fee structures.

Key contacts:

Photo of Kelly Whitfield

Kelly Whitfield

Partner Corporate and Commercial
Work 37-41 Bedford Row London WC1R 4JH United Kingdom Tel: +44 (0) 20 7611 2303

Biography

Kelly is an experienced corporate and commercial lawyer with broad transactional expertise in a wide range of sectors.  Kelly provides advice on all aspects of private company mergers, acquisitions, investments and disposals acting for both buyers and sellers and has experience in working in, amongst others, the transport, property investment and management, media and advertising, manufacturing and health care sectors.

Kelly also handles certain financing arrangements, including debt/equity conversions, convertible loan note and invoice discount financing and advises on a broad spectrum of commercial contracts, including complex manufacturing and distribution agreements, white label licensing agreements, shareholders’ agreements and limited liability partnership arrangements.

Another area of Kelly’s expertise is employee benefits, in particular share schemes (both HMRC approved and unapproved schemes) where she has spent much time developing this area of practice around the concept of using an analytical approach to create effective business solutions for clients that genuinely contribute to improved performance across their business.  Together with the rest of the employment team, Kelly works with our clients to fund cost reductions, ways to improve motivation and performance and attain staff retention targets through arrangements such as share option schemes, flexible working and salary sacrifice schemes.

Kelly is listed as a key lawyer in the Legal 500 2021 rankings.

Representative Experience

Kelly has:

  • acted as one of the lead advisors on the acquisition by Metroline Limited (a wholly owned subsidiary of ComfortDelGro Corporation) of 31 bus routes operated from five separate bus depots in West London from First Group plc for a consideration of £57.5 million
  • advised on a complex joint venture arrangement between two significant healthcare providers collaborating to provide comprehensive specialist treatments to patients at single geographical locations
  • acted as the lead corporate advisor on a complex restructuring and refinancing of an extensive London based property holding and management business for a family owned and managed enterprise
  • acted for the trustees of a significant London based property portfolio on its restructuring from a trust arrangement into a limited liability partnership structure
  • advised on the sale of a corporate entity operating a central London based hotel
  • acted on the investment into a successful South Kensington based patisserie venture

Kelly also leads our Corporate Social Responsibility team which is comprised of people from all aspects of the firm creating an enthusiastic and imaginative team of people that are passionate about making a difference in the community.  Kelly and the CSR team have been involved in baking cakes, rowing dragon boats and painting walls to name just a few of the activities that the firm has been involved with recently.

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37-41 Bedford Row London WC1R 4JH United Kingdom