Joel Vertes

Practice Areas

Joel Vertes is a Partner in CMS’s “Band-One” ranked IP team – one of the largest dedicated IP teams of any law firm. Joel has spent 20 years acting as IP “consiglieri” to his clients, and working on the full life-cycle of clients' IP rights. He is equally comfortable filing and protecting IP rights, enforcing those rights in litigation, and advising on deals ensuring clients commercialising their innovations.

Joel is a highly experienced litigator, with particular expertise in trade mark, copyright, database right, confidentiality, anti-piracy and other IP disputes. He has led many high-profile litigation matters before the UKIPO, EUIPO, the High Court and the CJEU. He manages the IP portfolios of some of the world’s largest brands, working alongside CMS's significant in-house trade mark and patent attorney practice.

Joel also has a significant non-contentious and advisory practice. He has extensive experience of complex technology, copyright, trade mark and software licensing, joint ventures, collaboration agreements and similar deals. He has acted for many clients, including software giants, oil & gas conglomerates, fashion houses, restaurants, hotels and fintech and automotive businesses, exploiting their technologies and brands on a cross-border basis. He regularly advises businesses on the IP aspects of M&A transactions. Finally, he also heads the firm-wide, full-service franchising practice.

Finally, Joel is jointly responsible for CMS Umbra – our transformative AI-driven patent monetisation product.

Professional Memberships

British Franchise Association - Accredited Professional Advisor since 2014

Work Highlights

Microsoft, for whom Joel advises in respect of all of its UK anti-piracy, counterfeit software, phishing, cyber attacks, and licensing disputes. Joel is also part of a team managing Microsoft’s European trade mark portfolio.

A major international airline in High Court copyright proceedings relating to music rights.

A betting & gaming company in database right proceedings before the High Court.

Equinor on its US$1.1bn joint venture arrangement with BP, relating to windfarm technology and knowhow.

A global social network on pursuing individuals responsible for a cyber-attack against its services.

FIFA in passing off proceedings, and subsequently committal proceedings, against a UK company and various individuals.

PKN Orlen, one of Poland’s largest oil refiners and petrol retailers, on a range of complex deals including in relation to chemical manufacturing plants, IP collaborations and other major projects.

Absolute Radio on trade mark and passing off proceedings brought by the owners of the Absolut Vodka brand.

Hard Rock Hotel Group on the franchise deal enabling its flagship hotel launch in central London.

ITV, Channel 4 and Channel 5 on copyright infringement proceedings before the High Court, Court of Appeal and CJEU (twice) against pirate television streaming website TVCatchup.com.

Barbour on its first launch into China, as well as in trade mark and brand disputes.

A major high street retail British fashion brand on its international franchise work, including a major dispute in China and renegotiation with a new pan-China franchisee.

Hakkasan Group on multiple licensing, franchising and management deals across the globe, from Marrakesh to Bahrain to Greece.

Education