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About
Provided by Tom Scourfield
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
Chambers Review
UK
Tom Scourfield is well respected for his practice representing corporate clients in trade mark and copyright disputes before the courts and UK and EU registries. He counts leading brands in myriad sectors among his clients, including cosmetics companies, broadcasters and sporting bodies.
Tom Scourfield is a solicitor-advocate and is the UK chair of the consumer products sector group at CMS. He has notable expertise in intellectual property and provides advice to clients in advertising disputes as well as on matters relating to regulatory compliance and greenwashing.
Strengths
Provided by Chambers
"Tom has been outstanding in resolving complex trademark enforcement situations quickly and efficiently."
"Tom is outstanding. He is highly commercial, clear and responsive."
"Tom has been outstanding in resolving complex trademark enforcement situations quickly and efficiently."
"Tom is outstanding. He is highly commercial, clear and responsive."
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