Hilary Atherton

I'm a senior associate in Bird & Bird's market-leading Intellectual Property Group in London.

I specialise in advising clients in various industries on the protection, exploitation and enforcement of their IP, predominantly brands, trade marks, designs, copyright and know-how.

I work with some of the world's best-known brands in the fashion and luxury goods, media, food & beverage, automotive and financial services sectors, among others.

I'm a member of Bird & Bird's multi-disciplinary global Retail & Consumer Group and have particular experience in providing pragmatic and commercially-tailored IP advice to retail and consumer clients. This includes devising and implementing multi-jurisdictional IP protection and enforcement strategies, providing brand clearance advice and infringement risk assessments, advising on comparative advertising issues, tackling online counterfeits and grey market goods, and resolving IP-related disputes including infringement, licensing and domain name disputes.

My litigation experience includes acting in several high-profile, multi-jurisdictional IP cases for clients in the High Court and Court of Appeal. I also regularly represent clients in trade mark and design proceedings in the EUIPO and UKIPO.

I spent over a year on secondment to a world-renowned diamond company, where I managed IP and commercial-related legal matters across a number of group companies and brands in various markets worldwide. As well as a fascinating insight into the diamond industry and wider retail sector, my secondment gave me first-hand experience of the role, challenges and priorities of an in-house lawyer. I find this invaluable when advising and working with clients here at Bird & Bird.

• Ongoing management of Monster Energy's trade mark portfolio across Europe, including related proceedings at the UKIPO, EUIPO and EU General Court.
• Regularly advising one of the world's most famous fashion houses on brand clearance, comparative advertising and IP infringement issues.
• Acting in design invalidity proceedings relating to high-end swimwear designs
• Tackling the importation of counterfeit and knock-off products through a Europe-wide Customs enforcement project for a major multinational consumer electronics company.
• Defending a claim brought against a well-known fashion retailer for copyright infringement and breach of contract relating to an international advertising campaign.
• Successfully acting for Mattel in the Court of Appeal in relation to the iconic SCRABBLE brand.
• Spent over a year on secondment leading the IP & Commercial legal team at a world-renowned diamond company.

• Spear & Mattel v Zynga (SCRABBLE brand and tile shape mark)
• Daimler AG v Sany Group (three-pointed star mark)
• Monster Energy Company v Integrated Supply Network LLC & J&S Products Ltd (trade mark infringement & passing off)
• Shark AG v Monster Energy Company & Coca-Cola Enterprises (can design)
• Kenexa v Alberg (trade secrets)
• easyGroup IP Licensing v easyJet Airline Company (licensing dispute)
• Acted for Nando's in trade mark opposition proceedings in the UKIPO against Ndinos