Paul Kavanagh

paul-kavanagh

Paul Kavanagh

Partner

London | 160 Queen Victoria Street, London EC4V 4QQ
+44 20 7184 7510 | +44 20 7184 7001

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Paul Kavanagh focuses on all matters relating to intellectual property. Mr. Kavanagh regularly speaks at conferences and seminars and has contributed to various intellectual property related journals, periodicals and books.

Mr. Kavanagh is recommended for intellectual property in the leading independent legal directories. He is ranked in Chambers UK, 2018, 2017 and 2016 where he is noted for being "very proactive and hardworking." Clients commend him for his team management skills and describe him as "commercially astute as well as technically able."The Legal 500 UK, 2016 it is noted that he "understands the client's needs" and "keeps entirely focused on them to ensure the best result." He is also ranked in Managing Intellectual Property in 2016 as an “IP Star” for the UK. He is ranked in Chambers UK, 2015 "as 'an impressive authority' on trade marks." The Legal 500 UK, 2015 describes him as "personable and able" and leads the "excellent" team. He is recommended in The Legal 500 UK, 2014 and in Chambers UK, 2014 where it is noted that he "earns praise from clients for his 'commercial instincts'."  Chambers UK, 2013 describes him as “well networked, commercially astute and pragmatic.” In The Legal 500 UK, 2012 he is recommended for being “commercially astute.” Chambers UK, 2012 states that he “brings a vast amount of experience and a good commercial brain to bear in his work in trade marks, design rights and copyrights.” The Legal 500 UK, 2011 praises him for his “commercial acumen” and in The Legal 500 UK, 2010 he is noted as being “technically very able, commercial, pragmatic and personable.” Mr. Kavanagh is recommended for trade marks in the Who’s Who Legal, 2011.

Significant Representations

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.
Education
  • Cardiff Law School, LL.B.
Admissions
  • England and Wales
Memberships

Law Society
International Trade Mark Association