Nathan Smith

Nathan Smith is a highly experienced lawyer with a particular focus on all aspects of intellectual property including the protection, exploitation, monetization and enforcement of intellectual property rights globally. Mr. Smith’s diverse client base spans across a range of sectors, including financial services, technology, telecoms, life sciences, fashion, sports, entertainment and retail.

In his non-contentious practice, Mr. Smith provides invaluable advice to public and private companies on global trademark clearance and trademark, copyright and design right counseling. Mr. Smith conducts multinational searches to advise on the availability of proposed brand names and works to secure necessary rights around the world.

Mr. Smith also advises on the acquisition, sale and licensing of IP and technology assets, including structuring, drafting and negotiating complex international and domestic strategic collaborations, licenses, joint ventures, franchise agreements, R&D, manufacturing, supply distribution and sponsorship agreements. In addition, he represents clients on the IP and technology aspects of corporate transactions. He also advises clients in the life sciences industry in complex collaborations and licensing transactions.

On the contentious side, Mr. Smith is a tenacious advocate for his client’s global IP rights. He has extensive experience in domestic and international IP and commercial litigation and arbitration, including numerous high-profile cases before the UK Supreme Court and the Court of Justice of the European Union. He also has a proven track record in contentious actions before the UKIPO and the EUIPO as well as in many domain name disputes before Nominet, ICANN and other domain name bodies.

Mr. Smith is a member of the International Trademark Association's Commercialization of Brands Committee. In 2024, Mr. Smith 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 in World Trademark Review’s WTR 1000. In the 2017 edition of The Legal 500 UK, Mr. Smith is noted for his work in intellectual property, with his practice recognized as going "from strength to strength." He was an integral member of the Dechert team which was a finalist in Managing IP’s 2016 Global Awards for "UK Trade Mark Contentious Work – Firm of the Year."

With his extensive expertise, Mr. Smith is well-positioned to provide innovative solutions for his clients' intellectual property needs and assist them in achieving their business objectives.

Representative Non-contentious Experience

Kier Group plc, the publicly-listed construction and property group, on its acquisition of Buckingham Group’s rail division out of administration.
Crown Holdings, Inc. in connection with the sale of its European tinplate business to an affiliate of KPS Capital Partners, LP for €2.25 billion.
Iconix Brand Group, one of the world’s premier brand management companies, on the sale of its Lee Cooper brand.
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.
Hellenic Telecommunications Organization S.A (OTE) in connection with the sale of its stake in fixed telecommunications operator, Telekom Romania, to Orange Romania (the deal valued Telekom Romania at an equity valuation of €497 million).
A leading international vodka brand in connection with its distribution arrangements in the UK.
Juniper Biologics in respect of its exclusive in-license, distribution and supply agreements with Helsinn SA for a suite of oncology related products.
Juniper Biologics in respect of its US$600 million in licensing deal with Kolon Life Science.
Leading international identity verification company, Au10Tix Limited, in respect of multiple in license and out license agreements.
A leading index advisory company in the robotics industry in respect of the licensing of its proprietary indices.
SK Siltron on US$450 Million acquisition of DuPont's SiC Wafer Business.
Thrive and its majority owner, private equity firm Court Square Capital, in the acquisition of Edge Technology Group by Thrive.
The leading middle-market private equity firm Centre Partners and its portfolio company Sabrosura Foods in the acquisition of Pancho's Mexican Foods.
ABBYY Plc on its cross-border acquisition of TimelinePI Inc., a software company that provides a process intelligence platform empowering users to understand, optimize and monitor business processes.
Centaur Media plc, a London-listed international provider of business information and specialist consultancy, on a divestment program.
Rocket Software in its signing of a definitive agreement with Bain Capital Private Equity, which saw Bain Capital Private Equity acquire a majority stake in the company. The transaction had an enterprise value of approximately US$2 billion.
Biopharmaceutical company Prexton Therapeutics B.V. (Prexton) and its selling shareholders, including M Ventures, in its sale to global pharmaceutical company H. Lundbeck A/S (Lundbeck) for up to €905 million (US$1.1 billion).
Bank Audi s.a.l on the spin-out and sale of its electronic payments and card services business to Lebanese group M1 for US$185 million.
Biocon Biologics Limited in connection with its exclusive global collaboration with Sandoz on Next-Generation Biosimilars.
Barcelona-based clinical-stage biotechnology company Aelix Therapeutics in respect of its collaboration agreement with Gilead.

Representative Contentious Experience

The corporate owner of one of the world’s leading fashion brands in a trademark ownership and infringement dispute between its shareholders.
A well-known British retailer, The White Company, in successful trademark infringement and passing off proceedings in the Intellectual Property Enterprise Court.
A leading regulatory software platform in connection with a trademark infringement and passing off dispute.
The Hong Kong telecoms PCCW Group in its trademark infringement and passing off case against British Sky Broadcasting, in the first passing off case to be heard by the UK Supreme Court in 30 years.
JR International Sarl in respect of a dispute with the heirs to the estate of the late world chef and restauranteur Joel Robuchon regarding trademark ownership and use.
VIA Art Fund in trademark registration disputes against National Art Collections Fund before the UKIPO and the EUIPO
One of the world’s leading online fashion retailers, Asos Plc, in its successful defense, before both the High Court and the Court of Appeal, of trademark infringement cases brought against it by a Swiss cycling company. The dispute lasted five years and involved satellite litigation and trademark oppositions globally, including in France, Hong Kong, the U.S. and Germany.
Kenwood in successfully defending against rival Whirlpool’s allegations of passing off and trademark infringement relating to Kenwood’s new ‘kMix’ food mixer.
Karen Millen Limited in a successful claim against Dunnes Stores in the ground-breaking trial in the Irish Commercial Court concerning design infringement of fashion designs. This was the first time the EU Community Design Regulation has been litigated in Ireland.
One of the UK’s leading investment management companies in successfully securing an ex parte interim injunction against a former employee who had taken confidential proprietary information valued at several millions of pounds.
The Travelex group in their successful trademark infringement and passing off claim against International Travelex Limited.
Imperial College in its successful trademark infringement and passing off action against Imperial Academy Limited.
The Singaporean body waxing Spa Esprit Group in defense of a trademark and passing off case brought against it by a leading UK waxing salon.
One of the UK’s foremost geotechnical laboratory testing companies in its successful trademark infringement and passing off claim against a competitor.
One of the UK’s leading cosmetics manufacturers in its successful trademark infringement case against a former business partner.