Ranked in 2 Practice Areas
2

Band 2

Intellectual Property

London (Firms)

15 Years Ranked

Ranked in Guides

About

Provided by Tom Scourfield

UK

Practice Areas

Tom Scourfield is Co-Head of the international IP Group at CMS and UK Chair of the Consumer Products Sector Group. He is a Solicitor Advocate (England and Wales), with an Irish solicitors qualification.

Tom advises businesses on their commercial IP assets. This includes helping find the best strategy for the creation, identification, registration and capture of those assets, to their realisation through commercial agreements and licensing, and their protection and enforcement through litigation and other dispute resolution. He also advises on related fields to IP, including advertising and marketing, consumer law, media, data protection, cyber breaches and IT issues.

As a Solicitor Advocate, Tom is particularly well known for his IP enforcement work and has helped clients achieve their strategic goals in all forms of IP dispute resolution. He has led cases at all levels of UK courts (civil and criminal) as well as OHIM, the CJEU and beyond in multi-jurisdictional disputes. His practice focuses on those industry sectors where IP assets are most critical to commercial success, including Consumer Products, TMC, Life Sciences & Healthcare and Energy, among others.

Professional Memberships

Associate Member: Institute of Trade Mark Attorneys

British Brands Group

Marques: Famous and Well Known Marks Committee

Work Highlights

A major broadcaster on enforcement strategy for its exclusive content.

The manufacturer and license holder of a celebrity fragrance brand.

Pharmaceutical patent infringement in relation to SEROXAT, CITALOPRAM and other compounds.

A multi-jurisdictional patent infringement dispute in the oil and gas sector.

Datacard v Eagle Technologies (patent and trade mark infringement and invalidity).

Blackberry on its European anti-counterfeiting program.

United Airlines on its successful trade mark infringement against United Airways.

Nestlé in relation to the Kit Kat shape trade mark, the leading case on acquired distinctiveness.

A leading insurer on its cyber breach insurance product and support to all of its insured clients.

Education

The College of Law, London

Solicitor Higher Rights of Audience

2005

University of Bristol

Intellectual Property Diploma

2003

University of Nottingham/University of Texas at Austin

LLB Hons law with American law

1998

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