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Nellie Jackson

Partner - Brands, designs & copyright

Nellie is co-head of the brands, designs & copyright team. Nellie has specialised in intellectual property since 2000. Her experience covers all aspects of trade marks and designs (both contentious and non-contentious), with particular expertise in:

  • brand clearance, protection and maintenance
  •  global brand launches and re-structuring
  • trade mark and design portfolio management
  • IP enforcement
  • advertising and marketing regulation and clearance

Nellie also has experience in dealing with anti-counterfeiting actions and preparing commercial agreements relating to the development and exploitation of IP.

Nellie acts for a broad client base including small and medium-sized enterprises (SMEs) and major brand owners in the consumer products, hospitality and leisure, food and drink, technology and media sectors. Some of her work highlights include:

  • Acting for a multinational advertising, communications, PR and media technology company and providing the full spectrum of trade mark portfolio services on a worldwide basis. · Advising on the global re-brand, from both a protection and enforcement perspective, following the merger of two creative agencies to form the world’s largest creative company.
  • Negotiations on behalf of a UK tech company to reach a settlement in connection with the registration and use of an integral brand opposed by a rival tech company, concerning issues of enforceability and validity.
  • Negotiations on behalf of a high street fashion retailer to agree co-existence with a DJ-duo around the use of specific letter combinations as a brand.
  • Advising a telecommunications company in response to the enforcement of a colour mark registration by a competitor in a few jurisdictions and filing counter actions based on invalidity and revocation for non-use.
  • Acting for an American doughnut company in connection with the protection and enforcement of its house and sub-brands in the UK, including the compilation of extensive evidence of use in support on an enhanced distinctiveness claim.
  • Acting for a multinational alcoholic beverage company to evaluate new brands, sub-brands and re-brands, and assist with the more complicated Intellectual Property Office disputes in collaboration with the in-house trade mark team.
  • Advising a leading manufacturer of chocolate and bakery ingredients in relation to a bad faith claim in the context of the acquisition of trade marks to frustrate a non-use cancellation action.
  • Co-ordinating a worldwide trade mark availability and filing program for a hospitality management group specialising in luxury hotel and retreat accommodation.

She has also gained valuable industry experience through in-house secondments to Diageo plc, Sara Lee and McDonald’s Europe as IP Counsel, primarily assisting with and managing the respective global and/or European trade mark portfolios. Nellie was also seconded to the Institute of Practitioners in Advertising to assist with advertising and marketing campaign clearance for member agencies.

Nellie is dual qualified in England, Wales and New Zealand. She is an associate member of the Chartered Institute of Trade Mark Attorneys, a member of the International Trademark Association (INTA), and sits on the INTA Unreal Campaign Committee.

Credentials

· BA (English Literature), Victoria University of Wellington, New Zealand

· LLB, Victoria University of Wellington, New Zealand

· Qualified as a Barrister and Solicitor (New Zealand) 2002

· Qualified as a Trade Mark & Patent Attorney (New Zealand & Australia) 2005

· Qualified as a Solicitor (England & Wales) 2008

· Partner 2021

Publications

Review of UK & European Trade Mark Cases

Read here

What others say

“Nellie Jackson has an excellent reputation for securing watertight trademark protection. She is appreciated for her ‘responsiveness, pragmatic approach and ability to navigate very difficult negotiations in opposition proceedings’.” WTR 1000 2024
“Nellie Jackson is a strong and pragmatic lawyer.” Legal 500 2024
“Nellie is a superstar. She is pragmatic, solutions focused and gives clear and concise advice in a timely fashion. Nellie has an impressive knowledge of the law in both the UK and EU.” WTR 1000 2023
"Responsive, commercial and excellent value for money. Nellie Jackson is extremely helpful." Legal 500 2021
Nellie Jackson provides "a clear and comprehensive service with efficient and valued liaison within other jurisdictions." Legal 500 2021

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