Paul Kavanagh is head of Dechert’s intellectual property UK team and focuses his practice on all matters relating to IP, including in relation to issues arising as a consequence of Brexit. He handles matters related to trade mark, copyright and designs, as well as patents, with particular experience across the luxury goods, retail, media and technology industries. He also represents clients with IP related privacy and cybersecurity issues, including complex strategic counselling on key laws such as the GDPR/UK GDPR, UK Data Protection Act, e-Privacy Directive and CCPA, as well as cross-border data transfers, data breach investigations, tactical data subject access requests made in relation to litigation and deal support for mergers and acquisitions. Mr. Kavanagh regularly speaks at conferences and seminars and has contributed to various IP related journals, periodicals and books.
In 2024, Mr. Kavanagh was recognized as a leading practitioner in World IP Review's 2024 UK Trade Mark Rankings. In 2024 and 2023, he was also recognized as a leading trade mark practitioner by World Trademark Review in its annual WTR 1000. He is routinely ranked as an "IP Star" for trade marks in the UK by Managing Intellectual Property, most recently in 2023, and was previously recommended for trade marks by Who’s Who Legal. Mr. Kavanagh has been regularly ranked for IP by Chambers UK in recent years, where he was noted for bringing “a vast amount of experience and a good commercial brain to bear in his work in trade marks, design rights and copyrights” as well as for being "very proactive and hardworking" and praised by clients as “technically able” and "well networked, commercially astute and pragmatic." A previous edition of Chambers UK described Mr. Kavanagh as “an impressive authority on trade marks" and noted that he "earns praise from clients for his 'commercial instincts'." The Legal 500 UK previously cited that Mr. Kavanagh "understands client's needs" and "keeps entirely focused on them to ensure the best result," commending him as an "excellent" team lead.
International Work
- Advising on the international development of business whether through acquisition of businesses or intellectual property.
- Recently advised International joint ventures in Germany, Sweden, India and China both for Licensor and Licensee.
- Advised on International licensing issues.
- Protection and enforcement of intellectual property rights around the world for brands across a wide range of sectors.
- Advising in relation to comparative advertising issues.
- Advising on intellectual property strategies across a range of IP disciplines.
- Recently advised on major IP litigation in India, Ireland, Spain and China.
Trade Marks
- Advising on the creation, clearance and registration and policing of international brands including for instance ASOS, The White Company, Thomas Cook’s new logo, Asprey and Garrard, Travelex, Thomas Cook, Cheyne and IKOS.
- Producing the strategy and co-ordinating the protection and defence of well known various trade mark registrations around the world.
- Providing watching services whether domain names, trade mark or corporate names.
- Providing strategic and local advice both defending and procuring trade mark infringement.Negotiating co-existence arrangements which operate in multiple jurisdictions.
- Resolving licensing disputes around the world in Denmark, Norway, Greece, Germany, China, India, Gibraltar, and UAE.
- Providing the English law advice in the Californian proceedings between Franklin Mint v Diana, Princess of Wales Memorial Fund. Developing a worldwide strategy for the challenging of the Memorial Fund’s trade marks.
Patent Work
- Establishing patent protection and enforcement strategies for technology businesses involved in personal organiser software; sound recognition systems and telecommunication infrastructure strategy for technology and trade secrets.
- Managing and supervising patent litigation, design infringement and unfair competition actions in Australia, USA, Germany, China and Hong Kong.
Copyright/Designs/Data Privacy
- Advising USA financial corporations on data protection.
- Advising on the acquisition of algorithms and software, on behalf of USA computer and dealing with licensing risk issues.
- Advising on technology and privacy issues.
- Bringing first design infringement case in the Republic of Ireland based on EU design legislation.
- Advice re acquisition of many different designs from diamonds, luxury goods, toys and kitchen equipment.
- Bringing unregistered design infringement cases in UK, China, Taiwan and Hong Kong.
- Recognized as a "Leading Practitioner" by World IP Review in their UK Trade Mark 2024 Rankings
- Recognized as a "Recommended Individual" by World Trademark Review in their WTR 1000 2023 & 2024 Rankings
- Privacy and Cybersecurity CLE for KKR – Dechert LLP, Webinar (April 9, 2021)
- Trends in the Enforcement of Privacy Laws – ACC Israel, Webinar (March 18, 2021)
- Cybersecurity Breakfast Roundtable for Asset Managers – Dechert LLP, London (February 25, 2020)
- How Will Brexit Impact Businesses With International Operations? Are You Prepared, Deal or No Deal? – Dechert LLP, New York (October 10, 2019)
- GDPR: The First Six Months – Dechert LLP, Webinar (January 23, 2019)
- GDPR: The First Six Months – Dechert LLP, New York (October 11, 2018)
- European Data Protection Legislation and the Asset Management Industry – Dechert LLP, Webinar (December 6, 2017)
- Transatlantic data transfers: Will new EU-US and UK-US agreements work? - Thomson Reuters-Regulatory Intelligence
- 5 Takeaways From ICO's Biometric Recognition Guidance - Law360 (October 18, 2023)
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- Cardiff Law School, LL.B.
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- England and Wales
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- Law Society
- International Trade Mark Association