Jones Day

Firm overview:

Jones Day’s UK practice is a reliable advisor for high-risk and urgent matters faced by brands in today’s unpredictable global market. The full-service firm utilises its integrated network of international offices, particularly in the US, France and Germany, to act as a central point for clients with multi-faceted trademark needs. The team advises on all aspects of non-contentious and contentious trademark matters including complex IP-related licensing and transactions for impressive brands.

Like most of its practice, the firm’s non-contentious work is multi-jurisdictional. The team advises the Qatar Foundation, a non-profit promoting education, science and community development, on its endeavours into green technology and the associated brands’ clearance searches in the US, UK, EU and Qatar. For its contentious matters, Jones Day finds itself against top firms in the UK Intellectual Property Office (UKIPO) and High Court and is ready to take on appeals where needed. Its key matters include trademark-related licensing cases on behalf of Alaska Airlines and an opposition against influencer apparel brand Skims, owned by Kim Kardashian.

Team overview:

In the UK, Jones Day has a small trademark team with big reach in its access to offices in the US, Europe, Latin America, Middle East and Asia. Rebecca Swindells leads on a number of the firm’s key trademark cases, coordinating and operating quickly on highly sensitive matters from the London office. An all-rounder, Swindells advises on complex brand strategy, large scale transactional and licensing matters, and litigation.

Key matters:

• Rebecca Swindells and associate Andrew Aistrup advise Hims & Hers Health on global trademark matters. Hims is an American health and wellness company, launched in 2017, providing treatments for mental health, dermatology and sexual health via a digital platform. In addition to advisory and prosecution work in the UK, Jones Day represents Hims in opposition proceedings against the application for ‘Hims by Skims’, filed by Kim Kardashian’s clothing brand Skims. Hims argued the mark was similar to its own and would likely cause confusion in the marketplace. The UKIPO hearing is pending.
• Swindells leads associates Aistrup and Liz Hatcher advising Alaska Airlines on a trademark-related High Court licensing litigation with The Virgin Group. The Virgin Group brought the matter against Jones Day’s client, Alaska Airlines, in respect to the ‘Virgin’ brand which has been licensed to a separate company, Virgin America, now owned by Alaska Airlines. The case concerned whether the client should keep paying an annual royalty fee for the remainder of the licence term, despite the client no longer using ‘Virgin’, rebranding its planes to Alaska Airlines in 2019. The matter is ongoing and is subject to an application for permission to appeal.
• In a related matter, during disclosure, documents were unearthed leading to a new claim that Virgin has breached its licence agreement with Alaska. It is claimed that Virgin granted the same rights, despite an exclusive agreement, to Virgin Atlantic, an airline jointly owned by Delta Airlines and Virgin. The next step is a case management conference to decide the trial timetable.

Clients:

Alaska Airlines, Diffulice, Hims, Qatar Foundation, YS Garments