Kilburn & Strode

Firm overview:

One to watch, competitors acknowledge Kilburn & Strode’s growth as it invests more in its trademark practice with lateral hires and new client wins. The list of brands instructing the attorney firm includes Mercedes-AMG, Delta Airlines and WhatsApp. The team assists with large-scale rebranding programmes, conducting the clearance and filing needed to protect a new trademark as well as supporting fast-growing portfolios. In 2023, partner Rowena Tolley launched new initiative BrandFit, giving clients a trademark ‘health check’ to understand their commercial aims and then select a matching protection strategy.

Established in London in 1906, Kilburn & Strode has grown to become a leading patent and trademark firm with offices in locations including the UK, Germany and the US. A recently opened Netherlands office strengthened the firm’s cross-border capabilities, handling contentious matters in multiple territories for easyGroup, cross-border enforcement actions for Porsche and acting on matters before the UK and EU Intellectual Property Offices (IPOs), and the Benelux and Irish registries. Clients facing cross-border counterfeiters benefit from the firm’s relationships with border forces, Trading Standards, custom agents and the Metropolitan Police Intellectual Property Crime Unit.

Team overview:

Peers say Kilburn & Strode “has had a big push to expand and get better people… they’re all individually very good attorneys”. A nearly 20-person London team links to offices in Eindhoven, Hilversum, Rotterdam and Munich. Attorney Iain Stewart focuses on portfolio management and dispute resolution and splits his time between the UK and the Netherlands. Stewart’s client wins in 2023 include film production company Monkey Paw, creator of horror films Get Out and Us, founded by Oscar-winning director Jordan Peele.

Rowena Tolley joined the firm two years ago and is a “very, very solid practitioner”, says a peer. Tolley’s growing practice involves assisting international clients such as Mastercard and Renault, managing portfolios and complex strategic matters. She leads the food and drink team and was key in the firm’s BrandFit initiative. Carol Nyahasha joined the team from Elkington + Fife six months ago and is a “good attorney”, rated by peers. Nyahasha brings three years of experience working in-house for PepsiCo in the US.

Key matters:

• Kilburn & Strode advised The Entertainment Industry Foundation (EIF) on registering its slogan ‘Stand Up To Cancer’. The non-profit charitable organisation funds 300+ charities in the US, working with A-list celebrities, fundraising and raising awareness of its initiatives. The client applied to register the mark ‘Stand Up To Cancer’, but the UKIPO examiner found that the mark lacked inherent distinctiveness. The team of Iain Stewart and Fernando Di Blasi advised that the slogan may have been used enough in the UK to have acquired distinctiveness through its use. The client, with the help of Kilburn & Strode, gathered evidence relating to the market share and recognition of the slogan in the UK to demonstrate an overwhelming amount of use of the slogan as a trademark. The UKIPO waived the objection and concluded the slogan had acquired the necessary distinctiveness through use.
• Rowena Tolley, Claudia Festen and Alicia Nash made up the team advising Elasticsearch (Elastic) on a trademark matter, subsequently winning Kilburn & Strode the tender to handle the client’s future trademark and patent matters. Elastic is a search engine and AI platform, powering well-known brands Uber and Shopify. The client had put its work out for tender, instructing Kilburn & Strode in the meantime. During this time, the firm handled a European trademark opposition matter, concerning the use and registration of the mark by a third party. The firm succeeded and restricted the party’s use of Elastic’s mark which prompted discussions between the firm and client to discuss Elastic’s international portfolio and brand protection strategy. Recently, Kilburn & Strode won the tender for all IP matters for the client.

Clients:

Delta Airlines, EasyGroup, Elastic, The Entertainment Industry Foundation, Mercedes-AMG, Porsche, WhatsApp, Zoom