Marcus is an IP lawyer of nearly 30 years’ experience with a particular focus in the fields of UK, EU and international trade mark prosecution, trade mark portfolio management, branding and infringement matters. He also advises on internet domain name, industrial design, copyright, defamation and social media platform content issues.
Clients include well-known brands in the pharmaceutical, sports franchising/merchandising, social media and financial services sectors.
Expertise
- Intellectual property
- Trade marks including clearance/availability searching, filing, prosecution, maintenance, opposition/cancellation and disputes
- Copyright
- Designs
- Cease and desist in IP matters
- IP litigation (non-patent)
- Defamation and reputation management
- Metaverse
- Artificial Intelligence (AI)
- Advertising Standards Authority’s CAP and BCAP Codes
- Competition and Markets Authority’s ‘Green Claims Code’
- Online scamming
- Hate speech
- Regulatory aspects of social media
- Online Safety Act
- Electoral law
Experience
General
- Represented Sandoz Limited and related group companies in complex trade mark infringement and passing off litigation.
- Represented iconic international brands in the sports, social media, pharmaceuticals and retail sectors.
- Represented the Canadian distributor of a major high-street cosmetics chain in a dispute regarding the group’s internet domain name
- Defended a major cruise line in an alleged trade mark infringement and passing off matter arising out of the naming of a new vessel.
- Defended a small clothing manufacturer in a complex trade marks invalidation and revocation dispute at the suit of a former high-street chain of department stores.
Healthcare & Life Sciences
- Successfully defended entities in the Sandoz group against an alleged registered trade mark infringement and passing off claim in the High Court brought by the Glaxo group regarding the use of the colour purple per se for a dry powder inhaler used to deliver a generic version of Glaxo’s multi-billion dollar blockbuster asthma/COPD drug, Seretide.
- Represented Sandoz Limited in a UK trade mark opposition against Glaxo Group before the Intellectual Property Office regarding Glaxo’s attempt to register a colour per se as a trade mark.
- Representing Bristol-Myers Squibb Company in pharmaceutical trade mark clearance, filing, prosecution and maintenance matters.
- Represented Novartis AG in trade mark clearance and branding matters.
- Represented Pfizer Inc on copyright advisory and internet domain name dispute issues.
- Represented Lloyds Pharmacy in trade mark portfolio management matters.
Sports
- Represents the NFL (National Football League) for the sport of American football in trade mark matters, including trade mark clearance; cease and desist matters; trade mark filing, prosecution and maintenance matters; opposition; and copy approval
- Represented the NHL (National Hockey League) for the sport of ice hockey in trade mark matters, including trade mark clearance; cease and desist matters; trade mark filing, prosecution and maintenance matters; opposition; and copy approval
- Represented the MLS (Major League Soccer) in trade mark matters, including trade mark clearance; trade mark filing, prosecution and maintenance matters.
- Advising a prominent, London-based, professional soccer club on trade mark protection and infringement matters.
- Represented a start-up, private equity-funded ‘padel’ playing venue business in respect of branding and trade mark registration issues.
Media
- Advised in a High Court defamation case in which Facebook was claimed to be a publisher and where the claimant sued the wrong entity.
- Represented a major operator of international, social media platforms on a wide range of UK matters including social media content issues (defamation claims, online scamming, distance selling issues, hate speech issues, ‘wrong entity’ issues, copyright issues, and trade mark issues); together with regulatory aspects of social media (the Online Safety Act, jurisdictional issues, and electoral law issues).
- Represented the Academy of Motion Picture Arts and Sciences in UK trade mark infringement, passing off and copyright matters.
- Represented a major satellite TV channel on its UK and EU trade mark matters.
- Represented the German publisher Gruner & Jahr in UK trade mark opposition matters.
Financial Services
- Advised a major Singaporean private equity investment business in relation to an opposition to its name change by a well-known UK-based private equity fund.
- Advised a major European bank in relation to trade mark portfolio management and cease and desist matters in the UK and EU.
- Advised an EU start-up enterprise in receipt of private equity funding on its branding for a ‘padel’ tennis sports venue business.
- Conducted numerous soft IP due diligence projects in financing transactions.
- Advised on taking security over IP assets in financing and restructuring transactions.
Electoral Law
- Assisted a social media platform provider in relation to an investigation into a foreign actor’s alleged attempts to interfere with the outcome of elections and referendums.
- Advised on regulated, electoral campaign funding issues.
- Advised on transparency and fairness in online community engagement content encouraging participation in voting.
- Advised on various issues under the Political Parties, Elections and Referendums Act 2000 and Representation of the People Acts.
- Advised a dismissed local councillor on reputation management and potential defamation issues.
Reputation Management
- Advised an art gallery business in a potential defamation matter concerning Google Review comments.
- Advised a major social media platform operator on a variety of defamation and reputation management content issues.
- Advised a dismissed local authority councillor on reputation management and potential defamation issues.
- Advised a number of clients on ‘Greenwashing’ and other misleading advertising matters causing harm to their reputation.
- Advised on ‘unlawful’ interference matters where adverse parties have attempted to interfere in the client’s commercial relationships with third parties.
Reported Cases
- Glaxo Wellcome UK Limited & Another v Sandoz Limited* & Others* [2019] EWHC 2545 (Ch)
- Camille Saskia Richardson v Facebook* & Another [2015] EWHC 3154 (QB)
- GEHE UK plc* v Registrar of Trade Marks (ex parte) [O/491/01]
- NHL Enterprises BV* v OHIM [T-414/05]
- Discovery Communications Inc* v Granville Technology Group Limited [O/107/02]
- Sribhan Jacob Limited* v Checker Leather Limited [O/171/07 and O/66/08]
- Ferrero SpA v Campbell Soup Company* [O/127/11]
- G&J Holdings GmbH* v YouView TV Limited [O/113/14]
- Kevin Hickey v DO-IT sro* [O/173/17]
- Multifit Tiernahrungs GmbH v Matina GmbH* [O/366/21]
*Represented by Marcus Collins
Please note: The experience list above may include examples of work completed prior to joining Keystone Law.
Recognition
Memberships
INTA (International Trademark Association)
PTMG (the Pharmaceutical Trade Mark Group)
Other
Formerly a sessional lecturer on trade marks at Queen Mary College, University of London
Career
Marcus qualified as a solicitor in 1995. Prior to joining Keystone Law in 2024, he worked at the following firms:
- Irwin Mitchell
- White & Case
- Llewelyn Zietman
- SmithKline Beecham