LAWYER
Dylan Balbirnie
Associate | London
Dylan Balbirnie

Mr. Balbirnie advises on intellectual property transactions, IP disputes and IP protection, as well as data protection matters.

Mr. Balbirnie negotiates complex cross-border IP and technology transactions involving the development, licensing, acquisition and sale of IP rights with particular experience in the information technology, life sciences and financial services sectors. He also assists with the IP, IT and data protection aspects of mergers and acquisitions and other corporate transactions.

Mr. Balbirnie also advises on IP disputes and has assisted with IP litigation before the High Court, the UK Supreme Court and the EU General Court. In addition, he has extensive experience representing clients in proceedings before the EU Intellectual Property Office and the UK Intellectual Property Office in connection with trade mark disputes (such as oppositions and cancellation actions).

Mr. Balbirnie's trade mark experience includes advising on brand clearance, trade mark prosecution, trade mark disputes and the commercialisation of trade marks for a broad range of clients, including leading fashion, cosmetics, automotive, homeware, e-commerce, travel and financial services brands.

Alongside his IP work, Mr. Balbirnie is an active member of Dechert’s Cyber, Privacy and AI group. Mr. Balbirnie counsels clients on a broad range of data protection matters, including GDPR compliance projects, data breaches, international data transfers and subject access requests. He also advises financial services clients on the EU’s Digital Operational Resilience Act. He is a regular editor of Dechert Cyber Bits, a bi-weekly publication on privacy and cybersecurity matters.

Mr. Balbirnie has an interest in the life sciences sector. His experience in this area includes drafting research and collaboration agreements, patent licences, research services agreements and material transfer agreements. Mr. Balbirnie also advises in connection with disputes in the life sciences sphere. In addition, Mr. Balbirnie has advised a number of biotechnology companies on a variety of data protection issues.

Mr. Balbirnie often engages in pro bono work. He has advised RAFT, a leading medical research charity, on various IP and commercial matters, from a research collaboration with a leading university to brand protection and contractual arrangements in respect of fundraising events. 

Whilst completing his training contract with Dechert, Mr. Balbirnie spent a court term on secondment to the Chancery Division of the High Court, where he worked as a Judicial Assistant to Mr. Justice Henderson (now Lord Justice Henderson) and Mrs. Justice Asplin (now Lady Justice Asplin).

In 2017, alongside his work at Dechert, Mr. Balbirnie completed a Postgraduate Diploma in Intellectual Property Law and Practice at the University of Oxford.

Representative transactional matters
  • Representing Unique X, a leading, specialist software provider to the cinema industry, in a long-term partnership with National CineMedia, the largest cinema advertising network in the U.S.,  via a complex IT services and licensing transaction.
  • Advising an AI-powered fintech business in its acquisition of the rights to a number of software product lines and customer contracts from one of the world’s largest financial software and data providers.
  • Representing the British biotech company, Bicycle Therapeutics, on various significant transactions including
    • a Research and Collaboration Agreement with AstraZeneca, worth up to US$1 billion, covering possible treatments for a range of respiratory, cardiovascular and metabolic disorders,
    •  a strategic collaboration agreement with Bioverativ, including potential milestone payments of over US$400 million,
    • an agreement with Cancer Research UK concerning possible treatments for cancer.
  • Acting for one of world’s largest pharmaceutical businesses in its negotiation of a time-critical patent licence and settlement agreement to resolve a patent dispute with another of the world’s largest pharmaceutical businesses relating to a vaccine for a tropical disease.
  • Slinger Bag Inc., a leading connected sports company, on its acquisition of Tel Aviv based PlaySight Interactive Ltd, an AI sports technology company in an all-share merger valued at approximately US$100 million.
  • Acting for a British construction and technology business in connection with launching its antimicrobial technologies in the North American market though an exclusive licensing arrangement.
  • Acting for Bank Audi in relation to IP and IT aspects of the sale of 100% of the share capital of Bank Audi sae, Bank Audi sal’s subsidiary in Egypt, to First Abu Dhabi Bank, including transitional services and IP licensing arrangements.
  • Advising a private equity firm focused on the IT industry in relation to software licensing contracts of its portfolio companies.
  • Advising a systematic hedge fund on IP and IT issues relating to the licensing-in of trading algorithms and related software.
  • Assisting with the IP, IT and data protection aspects of numerous acquisitions and other corporate transactions.

Representative IP disputes

  • Representing the well-known British retailer, The White Company, in successful trade mark infringement and passing off proceedings in the Intellectual Property Enterprise Court. 
  • Advising a European pharmaceutical company in High Court litigation arising from a dispute over a pharmaceutical product licence.
  • Advising one of the world’s leading online fashion retailers, Asos plc, in its successful defence of high-stakes trade mark infringement proceedings brought against it by a Swiss company, involving proceedings in the High Court, Court of Appeal and an application to the Supreme Court. 
  • Advising the Hong Kong telecoms group PCCW in connection with a trade mark infringement and passing off dispute with British Sky Broadcasting in relation to the NOW TV brand, which included proceedings before the High Court, the Court of Appeal and the Supreme Court and various invalidity actions, revocation actions, oppositions and appeals before the EU Intellectual Property Office. 
  • Representing the iconic British luxury brand, Asprey, in various trade mark proceedings, including invalidity proceedings and oppositions, before the UK Intellectual Property Office and EU Intellectual Property Office. 
  • Acting on multiple trade mark disputes and registry objections for the Chinese e-commerce conglomerate, Alibaba before the EU Intellectual Property Office, including trade mark revocation and opposition proceedings. 
  • Acting for a world-famous luxury fashion house in a dispute relating to the ownership of copyright in various clothing and brand designs.
  • Acting as global trade mark counsel for a leading producer of industrial components, including handling numerous trade mark and passing off disputes, as well as advising on design right issues.
  • Acting as global trade mark counsel for the highly-regarded algorithmic asset management business, IKOS Asset Management, and its related technology business, including handling various trade mark oppositions before the EU Intellectual Property Office. 
  • Representing a well-known British automotive brand in multiple trade mark disputes with rival automotive brands. 
  • Advising a British asset management business in connection with a trade mark and passing off dispute with a North American business arising out of the client’s adoption of a new name, involving multiple related cancellation and opposition proceedings at the UK Intellectual Property Office and the EU Intellectual Property Office.
  • Representing a leading German automotive brand in various UK trade mark matters, including multiple trade mark oppositions in the UK Intellectual Property Office in relation to the name of one of its car models.
  • Representing an Egyptian bank in its successful defence of trade mark opposition proceedings in the EU Intellectual Property Office brought by a European banking group.
  • Advising an award-winning Caribbean chain of luxury holiday resorts in various trade mark matters, such as its successful defence of a challenge to one of its trade marks brought before the EU Intellectual Property Office by a well-known airline.

Representative Privacy and Cybersecurity matters

  • Advising Moderna on a range of UK and EU data privacy issues, including in connection with its leading COVID-19 vaccine, such as developing a suite of contracts to govern its data sharing and processing arrangements, advice on transfers of personal data between the EU and the U.S., and advising on its position in connection with a data breach suffered by a third party.
  • Advising a transatlantic biotechnology company on the re-use of data collected during the course of clinical trials across multiple jurisdictions in Europe and Asia for a series of new testing.
  • Representing a leading private equity firm focused on investing in Central and Eastern Europe in connection with a data breach suffered by a recently acquired portfolio company. The company operates the largest bakery retail network in Southeast Europe, serving food and beverages to more than 36 million customers per year through approximately 220 directly-owned stores in Croatia and Slovenia, and franchise stores across ten countries.
  • Advising one of the world’s leading biotechnology companies on issues relating to the disclosure, transfer and sharing of medical data (including clinical trial data) arising under a variety of EU, UK and U.S. data protection laws, advising specifically on how those issues apply in the context of discovery/disclosure in U.S. litigation.
  • Counselling one of the largest accounting and consulting firms in the U.S.  on data protection compliance ahead of a proposed sale, including reviewing a suite of privacy related documents.
  • Advising a British biotechnology company on bringing its practices into compliance with the GDPR ahead of the GDPR coming into force.
  • Managing a GDPR compliance project for a global retailer of gaming accessories.
  • An agent for Sandals, Beaches, The Royal Plantation Collection and Grand Pineapple Resorts in the Caribbean in assisting with strategic advice on GDPR compliance including advice and counselling regarding data breaches and data subject requests.
  • Advising on the privacy aspects and implications of an independent investigation by the former Court of Appeal judge, the Rt. Hon. Dame Elizabeth Gloster DBE, into the Financial Conduct Authority’s regulation and oversight of London Capital & Finance Plc.
  • A global insurance company on data protection issues relating to the transfer of personal data from the EU to the U.S.
  • A GDPR compliance project for a European venture capital firm.

 

Services Industries
    • Durham University, B.A., Modern Languages, 2011, 2:1
    • The University of Law, Graduate Diploma in Law, 2012, with distinction
    • The University of Law, Legal Practice Course, 2013, with distinction (first class LLB)
    • University of Oxford, Postgraduate Diploma in Intellectual Property Law and Practice, 2017
    • England and Wales
    • French
    • German
    • Russian
    • English