Charles Russell Speechlys

Firm overview:

Full-service international firm Charles Russell Speechlys utilises its corporate knowledge in private wealth and capital to provide commercially informed advice to its trademark clients. The brand protection team advises on global IP portfolios for clients such as restaurant chain Wagamama, and assists with rebrands, including for accounting firm Moore UK. Advising on the creation through to exploitation of trademarks, the team advises on obtaining registration for non-traditional marks using sounds, shapes and colours. 

On the contentious side, the team is experienced in oppositions, revocations and cancellations as well as appeals to English courts. Charles Russell Speechlys has succeeded on complex and high-profile matters, including obtaining a colour registration for Cadbury’s purple before the High Court and acting for Manuka Honey before the UK Intellectual Property Office (UKIPO), in the first opposition to be heard by a panel of three rather than one.

Team overview:

Mary Bagnall, head of the IP group, is “extremely knowledgeable, super-responsive, very diligent and thorough”, and is chosen by clients for “the most important matters”. Covering all IP issues, Bagnall is experienced in complex trademark disputes, notably advising on the matters for Cadbury and Manuka Honey. 

Trademark attorney Charlotte Duly is head of brand protection and advises on both non-contentious and contentious trademark matters. Clients compliment her “structured and pragmatically balanced advice”. 

Nick White brings expertise in emerging technology and related risks to brand protection, including issues regarding blockchain, Web 3.0 and NFTs. Previously director of the British Association for Sport and Law, White is equipped to advise the firm’s biggest sporting clients, such as the International Tennis Federation.

Key matters:

• Led by Mary Bagnall, Charles Russell Speechlys represented the Australian Manuka Honey Association (AMHA) in a long-running opposition against registration of the mark ‘Manuka Honey’.
• The mark was initially filed in 2015 by a group of New Zealand honey producers within the Manuka Honey Appellation Society (MHAS). Sourced from the nectar of the manuka tree, manuka is known for its antibacterial and health properties and is a lucrative ingredient of the product. The matter was significant for honey producers, particularly those based outside of New Zealand, as registration would give exclusivity of the term ‘Manuka Honey’ to manufacturers within MHAS.
• The case raised some complex issues as the plant is native to both countries. Australian manufacturers opposed a monopoly on the ingredient by a single nation, while New Zealand honey producers highlighted the significance of manuka as a Māori cultural treasure. Opposing the mark, the client claimed that ‘Manuka’ was descriptive, indicating that the honey was sourced from the manuka tree and therefore had not acquired distinctive character.
• Historically, the matter was heard by a panel of three for the first time in the UKIPO, and concluded in favour of Charles Russell Speechlys’ client that the term was descriptive. Following the UK result, AMHA has succeeded in the EU, Australia and China, and the term ‘Manuka Honey’ is available for use by honey producers regardless of its geographic origin.

Clients:

Australian Manuka Honey Association, Cadbury, International Tennis Federation, Moore UK, Spring Studios, Wagamama