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15 June 2009 | By Katy Dowell
4 September 2006
23 October 2006
7 July 2008
19 June 2008
West End firm Mishcon de Reya is ploughing investment into its IP business in a bid to expand the practice into trademark filing work.
It follows the hire of Davenport Lyons head of IT and brands Simon Tracey and two associates.
Tracey specialises in trademark registration work and was a partner in Davenport’s contentious IP team.
“He’s coming in to bolster an existing department and bringing a significant extra capability with experience in managing trademark portfolios,” said partner Kasra Nouroozi.
It is Mishcon’s first step into volume IP work, which Nouroozi said had always been considered a ”collateral liability unless you get the volume”.
Now, he said, the firm was in the right position to take a step into the volume arena.
“We’ve got a very good shot of getting significant IP work from this,” he added.
Davenport is also planning to ramp up its IP capability by bringing in a new partner to replace Tracey.
Davenport partner Michael Hatchwell said that, with larger firms pulling away from IP work, there is space for another large player in the IP world.
When asked about Mishcon’s prospects in the practice area, Hatchwell said: “They’re well placed to grow it.”
Anonymous | 19-Jun-2009 10:31 pm
You have to have volume to make the trade mark registration business work. However, contrary to some commentrators it can turn into a nice little earner and very profitable if done well and provides a way of channelling IP litigation work to the IP department as a whole. Trade Mark filing teams tend to have very long standing and regular client contact. Therefore, undoutably I agree with Mischon's reasoning. The question is that Davenport Lyons have already attempted to have such a business (they did have trade mark attorneys in house), so why if Tracey is leaving that firm where it appears they made little impact into the trade mark filing business, he now thinks it will work at Mischon? Maybe a different firm, a different and more successful outcome? We will shall see how the two firms fair.
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Anonymous | 23-Jun-2009 8:42 pm
Well I think it does them both well.. Tracey likes his anticounterfeiting work (he got DL to do the work with Ledbury Research on Exposing Fakes), and I think that Mishcons have had issues with trade mark firms.The fashion work that Simon likes fits well - but Mishcons will have to be patient for the critical mass... I have to be honest that I don't think Simon or Mishcons have the profile for the big FMCG brands - the P&G's, the Unilevers, the Coca Colas - that would make the filing practice sparkle.
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