News
IPMT Podcast: The impact of Brexit on the UK trade mark and anti-counterfeiting systems
06 September 2021
Clare Matheson
Senior AssociateLondon
Email [email protected]hoganlovells.com
Phone +44 20 7296 2000
Fax +44 20 7296 2001
Practice groupIntellectual Property, Media, and Technology
Clare is an intellectual property litigator and commercial IP lawyer in the firm's London Brands team, which Chambers describes as "one of the best all-round IP groups in London" with "very able and hard-working associates". Clare has extensive experience advising clients on every aspect of their brand strategy including the development, protection, exploitation and enforcement of intellectual property rights (in particular trade marks) and the IP aspects of corporate and commercial transactions, with a focus always on delivering strong commercial outcomes.
Clare has many years of experience working with clients on intellectual property litigation and brand strategy, with a focus on the areas of technology and e-commerce across a broad range of sectors, including online retail, consumer, life sciences and TMT.
She is currently acting for a major online retailer in a High Court trade mark litigation case and recently acted in one of the first fully remote High Court IP trials in the UK in a patent dispute. At present she is also advising her clients in relation to the implications of Brexit on their brand strategy, including in relation to "cloned" UK trade mark rights automatically created from EUTMs following Brexit and filing UK Applications for Action to request Border Force to detain goods suspected of infringing clients' intellectual property rights.
Education and admissions
Education
Postgraduate Diploma in Intellectual Property Law and Practice, Oxford University, 2017
Legal Practice Course (Distinction), The University of Law, London, 2015
LL.B. Law, University of Birmingham
Bar admissions and qualifications
Law Society of England and Wales
Solicitor, England and Wales
Representative experience
Acting for a global fast-moving consumer goods brand in trade mark infringement proceedings issued in the UK High Court
Acting in a High Court litigation case in relation to parallel imports
Acting for a major online retailer on use of third party brands in its online stores in the UK High Cout
Acting for a software company in relation to infringement of their intellectual property rights, including trade marks and copyright
Advising on the intellectual property aspects of a range of high profile corporate and commercial transactions
Advising a variety of clients in relation to clearance, registrability and brand protection issues
Acting for a pharmaceuticals client on a US$100m Commercial Court claim against a supplier for economic duress, breach of contract, the tort of intimidation, and unlawful means conspiracy
Advising on domain name acquisition and protection strategies, and acting in WIPO and Nominet domain name complaints
Acting for a well-known sports shoe manufacturer to protect its trademark rights in the UK
Acting for clients in oppositions, applications, invalidity actions, co-existence negotiations and related issues
Acting for an aerospace electronics company in a patent dispute in one of the first fully remote High Court intellectual property cases
Advising on IP aspects of employment contracts
Advising on IP aspects of real estate transactions
Latest thinking and events
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Sky v SkyKick: Sky gets its kicks as UK Court of Appeal finds broad trade mark specifications are not grounds for invalidity
26 July 2021
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09 April 2019
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08 April 2019
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UK implements the Trade Mark Directive
17 January 2019
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UK Treasury to Get a Grip on Public Sector IP
11 January 2019
