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Stephanie Kay

Stephanie KayManaging Associate

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I am a Managing Associate in the Dispute Resolution team, specialising in Intellectual Property disputes.

My work concerns the protection, exploitation and enforcement of the full range of intellectual property rights; trade marks, patents, copyright, moral rights, design and confidential information.

I advise clients at all stages of the litigation lifecycle on UK and cross-border disputes, from pre-action correspondence rights through to the Intellectual Property Enterprise Court, High Court and Court of Appeal. I assist clients in seeking commercial settlements at all stages of a claim, including through alternative dispute resolution. I have particular expertise advising clients on domain name ownership issues and website issues, which has led to successful complaints to Nominet’s Dispute Resolution Service and UDRP/URS applications to obtain transfer of infringing domain names. Notable disputes that I have been involved in include:

  • Combe International LLC and Combe International Limited v Dr August Wolff GMBH & Co KG Arzneimittel and Acdoco Limited [2021] EWHC 3347 (Ch) and [2022] EWCA Civ 1562 – acting for Dr Wolff and Acdoco in the High Court and Court of Appeal, defending a claim for trade mark infringement and passing off, and a counterclaim for invalidity and declaration of non-infringement. Also advised on simultaneous EUIPO and UKIPO proceedings between the parties.

  • Soluble Technologies Group LLC v Britvic Soft Drinks Ltd (2022) – acting for Britvic in a patent infringement dispute in the IPEC and counterclaim for invalidity, which we successfully settled prior to exchange of expert evidence.

  • Ecotricity Group Limited v Secretary of State for Business, Energy and Industrial Strategy (2020) – acting for Ecotricity in a trade mark infringement and passing off dispute, which we successfully settled immediately prior to trial.

  • Student Union Lettings Limited v Essex Student Lets Limited [2018] EWHC 419 (IPEC) – acting for Essex Student Lets defending proceedings against them for trade mark infringement and passing off in the IPEC.

  • Coreix Limited v Coretx Holdings Plc and others [2017] EWHC 1695 (IPEC) – acting for Coretx defending proceedings against them for trade mark infringement and passing off in the IPEC.

I regularly advise clients on non-contentious IP issues within their business such as advertising campaigns. I work closely with our in-house trade mark attorney team to advise on the registration of trade marks, management of large portfolios and enforcement of rights (oppositions and invalidities) within the UK Intellectual Property Office and EU Intellectual Property Office regimes.

I work closely with many clients within the firm’s Retail, Hospitality and Leisure sector, which is a particular interest. I am also experienced in advising clients within the advertising and marketing, media, entertainment, sport, publishing and energy sectors. Industry specific knowledge allows me to work closely with clients’ legal and business stakeholders to provide tailored, commercial advice.

Other roles and achievements

I sit on Lewis Silkin's Diversity, Equality and Inclusion Board, taking the leading role in focusing on gender diversity. I was a Finalist in the Under-35 Lawyer of the Year category in the First 100 Years Inspirational Women In Law Awards 2019 and shortlisted as a Rising Star (Private Practice) at the Women in Law Awards 2020.

I am a member of the international Licensing Executive Society (LES), its Young Members Committee Member and of IPSoc, the society for junior IP practitioners in the UK. I completed the University of Oxford Diploma in Intellectual Property and Practice in 2019, receiving a Distinction.

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