Nathan Smith

nathan-smith

Nathan Smith

Associate

London | 160 Queen Victoria Street, London, UK EC4V 4QQ
+44 20 7184 7813 | +44 20 7184 7001

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Nathan Smith focuses his practice on all matters relating to intellectual property, particularly intellectual property litigation. Mr. Smith’s practice ranges from brand protection and enforcement to advising on the international expansion and development of intellectual property portfolios with particular emphasis on the fashion, retail, telecoms, leisure and beauty sectors. Mr. Smith also regularly advises on copyright and design infringement with a focus on the fashion industry.

In the 2017 edition of The Legal 500 UK, Mr. Smith is noted for his work in intellectual property, with his practice recognised as going "from strength to strength."

Mr. Smith regularly contributes articles to intellectual property related publications and has recently spoken at seminars on the Protection of Trade Mark Rights within the Financial Services Industry and the Protection and Enforcement of Design Rights in the Fashion Industry.

Experience
  • Representing the Hong Kong telecoms PCCW Group in its trade mark infringement and passing off case against British Sky Broadcasting, regarding the brand NOW TV, before the High Court, the Court of Appeal and the Supreme Court. In March 2015 this case was before the UK Supreme Court for a 2 day hearing to consider changing the UK tort of passing off. 
  • Representing one of the world’s leading online fashion retailers, Asos Plc, in its succesful defence, before both the High Court and the Court of Appeal, of trade mark infringement cases brought against it by a Swiss company and a UK fashion accessories company. 
  • Representing Kenwood in successfully defending against rival Whirlpool’s allegations of passing off and trade mark infringement relating to Kenwood’s new ‘kMix’ food mixer.
  • Representing Karen Millen 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 Community Design Regulation has been litigated in Ireland.
  • Representing 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.
  • Representing the Travelex group in their successful trade mark infringement and passing off claim against International Travelex Limited.
  • Representing Imperial College in its successful trade mark infringement and passing off action against Imperial Academy Limited.
  • Representing the Singaporean body waxing Spa Esprit Group in defence of a trade mark and passing off case brought against it by a leading UK waxing salon.
  • Representing one of the UK’s foremost geotechnical laboratory testing companies in its successful trade mark infringement and passing off claim against a competitor.
  • Representing one of the UK’s leading cosmetics manufacturers in its successful trade mark infringement case against a former business partner.
  • Advising on dozens of fashion design issues for clients including Asos, The White Company and Aurora Fashions (Oasis, Karen Millen, Coast, Warehouse) and jewellery design issues for Asprey.
  • Filing Legal Rights Objections against Generic Top Level Domain strings.
  • Drafting and filing dozens of successful internet domain name complaints.

Non-contentious intellectual property matters.

  • Drafting franchise agreements and advising generally on behalf of both franchisors and franchisees in the retail industry.
  • Part of the team advising Formula 1 Grand Prix driver in negotiations and contractual issues with his managing team and racing team.
  • Drafting sponsorship agreement and advising generally on the sponsor of an FA Premier League football team.
  • Drafting and advising generally on website terms and conditions and privacy policy of one of the UK’s leading online ticket exchanges.
  • Advising on licensing arrangements.
  • Advising on international patent filing strategy.
  • Advising on the creation, clearance, registration and policing of international brands.
Education
  • University of Bristol, Post-graduate Diploma, Intellectual Property Law
  • University of Sheffield, Law
Admissions
  • England and Wales
Memberships
  • International Trade Mark Association