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Joel Smith

Joel Smith

Partner

London

Joel is an intellectual property litigator and commercial IP specialist.

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Experience

Based in London, Joel has over 20 years' experience in practice and has international experience, having previously worked in Hong Kong, Milan and Sydney. He is the head of trade marks and also leads the transactional IP practice, working with clients on some of the UK’s most complex IP cases.

Joel is focused on delivering strong commercial outcomes and has developed close relationships with many of the firm’s key clients across a number of sectors including FMCG, media, technology, energy and agribusiness. He has unique expertise in plant breeders’ rights, patents, royalty collection schemes and GMOs.

Joel helps clients strategically with IP disputes, to achieve a satisfactory commercial resolution, whether through litigation or otherwise, and is one of the few IP specialists in the market with major deal experience, as well as heavyweight litigation expertise, with reported cases in the IPEC, High Court, Court of Appeal and Privy Council. He works with clients on cross-border IP disputes, where coordinating action in a number of different jurisdictions is critical to a successful outcome. Joel also helps businesses put in place brand and other IP licensing arrangements, including technology transfer, and is also called on by clients for brand crisis management advice in the face of urgent or unexpected events.

Joel's experience includes advising:  

  • Frazer-Nash on the defence of a significant trade mark infringement and passing off claim brought by the London Taxi Company in relation to the shape of its taxi vehicles
  • Sky in taking urgent legal action over the theft and use of customer data to recover the confidential data, including obtaining search orders, interim and final injunctions and freezing orders
  • Zeebox in resolving its global dispute with Zee TV over the name of its app business through trade mark proceedings in the UK, US, Australia and 15 other jurisdictions
  • Daily Mail Group in proceedings brought by Hometrack over the alleged misuse of confidential information in mortgage valuation software
  • Telefonica on the proposed sale of the UK O2 business to Hutchinson Whampoa for £9.25 billion and complex IP restructuring and brand licensing arrangements

Background

Joel is admitted to practise in England and Wales, Ireland and New South Wales, Australia.

Chambers 2016 describes Joel as “exceptionally talented and commercial”. His expertise in IP litigation is highlighted by listings in 2016 in Chambers, Legal 500, Managing Intellectual Property IP Stars and World Trademark Review 1000.

Joel is a member of a number of specialist groups, such as City of London Law Society, INTA, ITMA and AIPPI. He writes widely on IP topics in PLC and specialist journals and is often quoted in the press. 

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