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Tom Scourfield

Tom Scourfield

Partner
Co-Head of the international IP Group and UK Chair of the Consumer Products Sector Group

CMS Cameron McKenna Nabarro Olswang LLP
Cannon Place
78 Cannon Street
London
EC4N 6AF
United Kingdom
CMS Cameron McKenna Nabarro Olswang Pośniak i Sawicki sp.k.
Warsaw Financial Centre
ul. Emilii Plater 53
00-113 Warsaw
Poland
Languages English

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.

Post-Brexit, Tom will continue to hold representation and audience rights before the EUIPO and the Court of Justice of the European Union. Tom is English and Irish qualified, and he will operate his EU trade mark and design practice from our Polish office.

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"He is one of the most formidable lawyers I have ever come across. His expertise is incredible, and he manages his team extremely well, so there is always prompt comeback with the requisite level of detail."

Chambers, 2018

“The London-based team also includes co-head of the firm's international IP group, Tom Scourfield, who is highlighted as being “thorough and practical, with a great sense of humour”

Legal 500, 2018

"Scourfield is a renowned enforcement and litigation maestro who moves into the WTR 1000 gold tier this year”

World Trademark Review, 2019

"great leadership of matters, fantastic availability and very good understanding of the client's business culture and how that drives decisions."

Chambers

"CMS’ team is ‘managed very well’ by the ‘personable, practical and hands-on’ Tom Scourfield"

Legal 500

"pragmatic and business-minded, a preferred choice for many of the world’s biggest brand owners"

WTR 1000

Relevant experience

  • 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.
  • Intel on the INTELMARK case, the leading European case on trade mark dilution.
  • 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.
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Education

  • 2005 – Solicitor Higher Rights of Audience, The College of Law, London
  • 2003 - Intellectual Property Diploma, University of Bristol
  • 1998 - LLB Hons law with American law, University of Nottingham/University of Texas at Austin
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Memberships

  • Associate Member: Institute of Trade Mark Attorneys
  • British Brands Group
  • Marques: Famous and Well Known Marks Committee
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Publications

  • Commentary on Community Trade Mark Regulation: A Commentary (Kooperationswerke Beck - Hart - Nomos) published 2015
  • Commentary on Community Design Regulation: Kooperationswerke Beck - Hart - Nomos) published 2015
  • Trade Marks Handbook (Sweet & Maxwell)
  • European Patents Handbook (Sweet & Maxwell)
  • Lexis PSL – various practice notes on IP
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Feed

Show only
18/06/2019
An­nu­al Re­view 2018 – 2019
31/07/2018
A tale of two Lon­don­ers – cloth­ing brand LNDR suc­cess­fully takes on...
In­tro­duc­tion In the re­cent case of Frank In­dus­tries v Nike Re­tail, the In­tel­lec­tu­al Prop­erty En­ter­prise Court (IPEC) ruled that Nike’s use of the sign "LD­NR" in its “NOTH­ING BEATS A LON­DON­ER” ad­vert­ising cam­paign in­fringed the trade mark “LNDR” used in re­la­tion.
August 2018
Sum­mer of sports 2018
28/11/2017
New Year, New Nov­el Foods Re­gime
The fu­ture is bright for en­tre­pren­eurs and small busi­nesses but se­cur­ing reg­u­lat­ory ap­prov­al can cast a shad­ow. If you are de­vel­op­ing a new product and it’s go­ing well, when should you seek ap­prov­al? Do you in­vest be­fore you know you have a suc­cess­ful product.
19/06/2018
Im­age rights and the Mo­hamed Sa­lah dis­pute
31/08/2017
ASA Ad­ju­dic­a­tions Snap­shot – Ju­ly 2017
This sum­mary provides a se­lec­tion of Ju­ly’s most in­ter­est­ing ASA ad­ju­dic­a­tions and high­lights the key is­sues con­sidered in those rul­ings. This edi­tion fea­tures two dif­fer­ent com­plaints re­lat­ing to No. 1 claims, each with dif­fer­ing out­comes, as well as a num­ber.
01/09/2015
Second ses­sion on “Coty Ger­many” of our CJEU-we­bin­ar-series...
18 May 19
IN­TA An­nu­al Meet­ing 2019
26/07/2017
ASA Ad­ju­dic­a­tions Snap­shot – May & June 2017
This sum­mary provides a se­lec­tion of May and June’s most in­ter­est­ing ASA ad­ju­dic­a­tions and high­lights the key is­sues con­sidered in those rul­ings. This edi­tion fea­tures an­oth­er ad­ju­dic­a­tion con­cern­ing an ad­vert by Pro­tein World Ltd that at­trac­ted a lot of me­dia.