John Coldham Associé(e) UK Head of Brands and Designs
Co-Head of the Retail Sector (UK)


Parle :  Anglais

Téléphone principal : +44 (0)20 3636 7892

Fax : +44 (0)370 904 1099

Courriel : john.coldham@gowlingwlg.com

Télécharger vCard


Bureau principal :  London




John Coldham

John Coldham is UK Head of Brands and Designs, and co-heads the global practice. John also jointly heads the firm's Retail and Leisure Sector.

Our team is MIP Designs Firm of the Year 2022, having also won the award in 2019, 2020 and 2021. It is the only firm ever to win the award four years in a row.

John is a recognised expert in all types of intellectual property (IP) strategy and litigation. He won the Client Choice Award for Designs in both 2019 and 2021, and has been recognised as a 'star lawyer' by the Acritas Stars (now Thomson Reuters Stand Out Lawyers) database each year since 2017. John also has MIP's 'IP Star' status in both trademarks and designs (one of only two lawyers in the UK to hold the latter title).

Clients and industry colleagues alike speak highly of John's experience and expertise, with WTR1000 describing John as "astute, commercial and knowledgeable". Legal 500 describes John as "highly praised for his excellent track record in design cases" and being "well versed in balancing legal questions against business needs and PR aspects". The directory says that John attracts "praise for his 'practical, commercial perspective, innovative solutions to problems, and straightforward advice'", as well as being a "great negotiator" and an "expert in the design field and a go-to person for design disputes". Ranked in the silver tier of the prestigious WTR1000 listing, it says that "John's in-depth knowledge in trademarks, designs and copyright is near-unrivalled, and results in clear advice which takes all factors into account. On a personal level, he is approachable, responsive and can explain complex legal concepts in a simple way.". WTR1000 has also described John as achieving "excellent outcomes around trademark and design infringement issues and does so in a way that minimises the costs involved. He is highly practical and does not sit on the fence - he gives you a good steer".

John's priority is to help clients to maximise the return on their investment in their IP, through strengthening their portfolio and strategically enforcing it against infringers. IP arises through investment in business, whether it is in development of new products or services, new packaging or new marketing approaches and branding. As a result, IP is often what distinguishes one business from another and makes it a success. John advises clients on how this investment can be protected through registered and unregistered rights, and works with them to ensure that infringement of their IP is managed in the most commercially appropriate manner.

John works closely with clients to ensure that they are getting the most out of their investment in their business - be that in the brand, the R&D or the design elements. By taking time to ensure he really understands the commercial importance of different aspects of the business, he helps clients ensure that budgets are used in the most cost-effective way, with a constant eye on the commercial objectives.

Whether the budget is big or small, every client has the same wish - that it is spent effectively and responsibly while obtaining the best possible result. Our team has spent a lot of time considering costs of litigation and we pride ourselves on our accurate and competitive estimates.

John's experience covers cases big and small, from running multi-jurisdiction litigation across multiple rights, to smaller cases in the Intellectual Property Enterprise Court. Clients from around the world trust John's sensible, considered advice, and praise his commercial nous.

John is also very involved with IP policy, particularly in the area of designs, where he has particular experience. He chairs the Design and Copyright Committee of the Chartered Institute of Trademark Attorneys (CITMA), as well as being an active member of similar committees at MARQUES, IP Federation, and the Chartered Institute of Patent Attorneys (CIPA). John's expertise led to him being invited to become a Fellow of the RSA.

"John Coldham is a very passionate lawyer with an extraordinary sense of urgency and availability. He is well versed in balancing legal questions against business needs and PR aspects. Strategically adaptable to clients' needs and image. In other words, a really good adviser."
Legal 500

"John Coldham is always responsive and helpful."
Legal 500

"John Coldham was quick to pick up my case, understood the personal distress the case was causing me and as such took a very considerate, compassionate and personable approach. His explanation of the situation and my options was delivered in plain English without legal jargon, which I appreciated. His advice and dealings with the other party was reassuring to me and he was quick to nip the problem in the bud. Couldn't fault anything and wouldn't hesitate to recommend John."
Legal 500

"John is available any time you need him. He is good with people – including both clients and counsel – takes a sensible objective view of cases and provides practical advice"
WTR1000

"John's extreme efficiency and litigation prowess is well recognised … [he] is rapidly cultivating his reputation as one of the leading design rights experts in Europe"
WTR1000

"John Coldham takes a realistic approach when providing advice and focuses on the best result for the clients."
Chambers & Partners

"He is particularly savvy on design work, and as a litigator he knows when to be aggressive and when to be measured."
Chambers & Partners

A "practical" lawyer who "seeks optimal solutions to issues".
IP STARS 2018 edition, Managing Intellectual Property

"He just knows everything, he can answer any questions that we have about IP. Always available and happy to just to be that person to pick ones brains and pragmatic, commercial advice."
Acritas Stars

"He understands the market, he's very pragmatic, and he's technically brilliant."
Acritas Stars

Highlights

  • Advising Unilever in relation to its emergency injunction against the British National Party was a day that stands out. John obtained instructions at 11 o'clock that the British National Party had released a party political broadcast online that featured a picture of a jar of Marmite in the corner throughout (without permission), and the party was due to air its broadcast on national television the following day. Within a few hours John was in court, having tried to negotiate with the party but not obtaining the necessary assurances. After a detailed hearing involving analysis of a number of discrete issues, the High Court ordered the injunction, which was served shortly afterwards. Press analysis described the case as an example of "best practice".
  • Advising Dyson in relation to dispute involving its registered design in its original cylinder vacuum cleaner at the High Court and Court of Appeal. The case is often cited as precedent in other design law cases.
  • Acting for Hasbro in a major brands dispute involving the Play-Doh trademark. The case was particularly hard-fought, and this was a highlight not just because it was hugely successful for the client but also because it drew out the best in everyone in the team despite the sometimes extremely long hours!
  • Advising JTI on a major multi-jurisdictional patent dispute about electronic cigarette technology.
  • Securing a major victory for G-Star Raw in a High Court design right case.
  • Advising leading restaurant group Azumi on a trade mark dispute over the Zuma brand, leading to success at trial.
  • Helping a variety of companies on global rebrands and subsequent protection strategies.

Clients

John works with clients across a number of sectors, from tech start-ups to global manufacturers of fast-moving consumer goods. John acts for clients in consumer electronics, food and drink, retail, high end design, fashion, technology, and the services sector to name just a few.

Experience

John advises clients in relation to a variety of areas from building brands and strengthening portfolios to litigation and from small enforcement issues to complex multi-national disputes. John's particular focus is on designs and brands law.

Designs

  • Design law is becoming an increasingly popular way to stop infringers. Registered designs are very cheap to acquire, and even where there is no registration, unregistered rights are often available and can be very successful at court, with our client having significant experience of succeeding in cases at trial.
  • John helps clients understand the choice of rights available, and the advantages and disadvantages of each, and works with them to secure the best portfolio for their needs.
  • If clients then experience infringement of their rights, John has significant experience of enforcing designs at every level, from informal resolution through correspondence through to major litigation through the Intellectual Property Enterprise Court, the High Court and Court of Appeal.
  • John leads the team that has been awarded the Firm of the Year for Designs for 4 consecutive years 2019-2022 inclusive.

Brands

  • Brands are often the core of a business, especially if it is consumer facing. Damage to the brand can affect the entire success or failure of a product or the business itself.
  • John has worked with numerous clients over the years to ensure that their brands are sufficiently protected both in the UK and overseas, and has advised many of them in relation to enforcement of their rights against infringers, from small-scale copycats to major threats to the brand itself. Many disputes are resolved rapidly and commercially, whereas others require full court proceedings in order to obtain the necessary result. John has significant experience of both these extremes (and many in the middle!).
  • John's experience includes working with a number of businesses to build a strong brand portfolio. He has advised LCH and the London Stock Exchange on their brand portfolio, brand enforcement and domain name issues for over 15 years, and acts for FinTech company Klarna on similar issues.
  • John's litigation experience includes acting for Hasbro in relation to a significant (and successful) trademark infringement action over its Play-Doh trademark, and obtaining an emergency injunction for Unilever's Marmite brand against the British National Party.

Patents

  • Patents require an aptitude for the technical detail and an understanding of what is really important in an invention. John acted for Dyson in relation to a major patent dispute with Samsung, concerning dust separation in a vacuum cleaner, resulting in victory at trial.
  • John's other patents cases have covered everything from deep sea drilling equipment to snap-fit flooring to the technology behind ADSL broadband. Clients appreciate John's experience in fighting hard to win a case while always keeping a close eye on the commercial strategy that underpins the issue to ensure the litigation does not does not lose sight of its original objectives.