Home / People / Joel Vertes
Joel Vertes

Joel Vertes

Partner

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

Joel is a trusted IP advisor to market-leading businesses, including in the Technology, Hotels & Leisure, Retail, Media, Franchising, Energy, Manufacturing and Construction sectors. He is equally comfortable enforcing IP rights in litigation, and advising on deals commercialising those IP rights internationally.

He is a highly experienced litigator, with particular expertise in copyright, anti-piracy, anti-counterfeiting, trade mark and other brand enforcement and franchising disputes. He has led many profile litigation matters before the UKIPO, the High Court and the CJEU.  He is also a technical specialist, with expertise in artificial intelligence, open source software, domain names and other IT-related issues.

His non-contentious and advisory practice involves leading the firm-wide, full-service Franchising Group, as well as complex brand and technology licensing. He has acted for many clients, including software giants, oil & gas conglomerates, fashion houses, restaurants, hotels and fintech and automotive businesses, exploiting their technologies and brands on a cross-border basis. He is also a technical specialist, with expertise in open source software, domain names and other internet related issues.

Joel also advises clients on the management of global trade mark portfolios, working alongside CMS's significant in-house trade mark and patent attorney practice.

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

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Clients have described him as “an experienced, robust advocate with a first class legal mind, a sharp tactical nous and unrivalled attention to detail” and say that "Joel is a very good technical lawyer and strategist, and is extremely good with clients. He can break down complicated issues into straightforward and easy chunks, without losing any of their subtlety." (Chambers & Partners 2018)

Chambers, 2018

"Joel Vertes "leads the franchising work" and has "a strong knowledge of trademark law’."

Legal 500, 2015/16

"Joel Vertes is an "'excellent' IP specialist"."

Legal 500, 2015

Joel was also selected as a “Super Lawyer for Intellectual Property” and one of the “Rising Stars” in the Intellectual Property legal world.

Super Lawyers 2013-15

Relevant experience

  • ITV, Channel 4 and Channel 5 on copyright infringement proceedings before the High Court, Court of Appeal and CJEU (twice) against pirate television streaming website TVCatchup.com.
  • Microsoft in dozens of copyright, trade mark, anti-piracy, anti-counterfeiting, phishing, cybersquatting and licensing cases; including successful landmark proceedings in respect of "spam email" brought under Privacy & Electronic Communications (EC Directive) Regulations 2003 (reported at 2006 All ER (D) 153).
  • FIFA in passing off proceedings, and subsequently committal proceedings, against a UK company and various individuals.
  • Barbour on its first launch into China, as well as in trade mark and brand disputes.
  • A major high street retail British fashion brand on its international franchise work, including a major dispute in China and renegotiation with a new pan-China franchisee.
  • Absolute Radio on trade mark and passing off proceedings brought by the owners of the Absolut Vodka brand.
  • A homecare business on High Court proceedings arising out of a franchise agreement dispute.
  • Hakkasan Group on multiple licensing, franchising and management deals across the globe, from Marrakesh to Bahrain to Greece.
  • Hard Rock Hotel Group on the franchise deal enabling its flagship hotel launch in central London.
  • A major global television network on the franchised launch of merchandise stores worldwide.
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Education

  • 2001 – MA (Law), Emmanuel College, Cambridge
  • 2002 - Legal Practice Course, Commendation, College of Law
  • 2006 - Postgraduate Diploma in Commercial IP (Distinction), Nottingham Law School, Nottingham
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Memberships

  • British Franchise Association - Accredited Professional Advisor since 2014
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Publications

  • UK chapter of the World Trademark Review Anti-Counterfeiting Guide 2016 - Author
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Lectures list

  • Sports Law lecturer at De Montfort University on behalf of British Association of Sports Law 
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Feed

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21 September 2020
MESSI vs. MASSI – Li­onel takes three points be­fore the CJEU
On Thursday 17 Septem­ber 2020 the Court of Justice of the European Uni­on handed down its judg­ment in a trade mark dis­pute dat­ing back to 2011 in­volving Li­onel Messi, the icon­ic FC Bar­celona foot­baller...
07 July 2020
US Su­preme Court finds Book­ing.com mark is cap­able of re­gis­tra­tion
The US Su­preme Court has held that the mark BOOK­ING.COM should not be barred from pro­tec­tion merely be­cause it com­prises a “gen­er­ic word plus .com”. It found the mark in­her­ently cap­able of re­gis­tra­tion...
25 March 2020
Risk Es­sen­tials We­bin­ar: Trade secrets and con­fid­en­tial in­form­a­tion: the...
The re­gime for pro­tec­tion of con­fid­en­ti­al­ity and trade secrets changed in the sum­mer of 2018. The le­gis­lat­ive im­pact was min­im­al, but the sub­tlety of change be­lies the sig­ni­fic­ant shift in both ex­pos­ure...
Spring/Summer 2019
Hos­pit­al­ity Mat­ters - Spring/Sum­mer 2019
CMS is de­lighted to provide you with the latest edi­tion of Hos­pit­al­ity Mat­ters, our bul­let­in for the ho­tels and leis­ure in­dustry. This pub­lic­a­tion ex­plores re­cent de­vel­op­ments in the ho­tels and leis­ure...
18 May 2019
IN­TA An­nu­al Meet­ing 2019
Sev­er­al of our part­ners com­ing from over 15 dif­fer­ent coun­tries, will be at IN­TA's 2019 An­nu­al Meet­ing in Bo­ston, USA. To ar­range a meet­ing dur­ing IN­TA, please con­tact any of our del­eg­ates pro­filed be­low.To...
3 August 2018
CMS ad­vises lead­ing In­ter­net-of-Things pro­vider Arkessa in deal with ECI...
In­ter­na­tion­al law firm CMS has ad­vised on the man­age­ment buy­out of Arkessa, the lead­ing In­ter­net-of-Things (“IoT”) man­aged ser­vices pro­vider, to private equity firm ECI Part­ners. Arkessa en­ables en­ter­prises...
16 July 2018
CMS ad­vises lead­ing IoT pro­vider, Telit Com­mu­nic­a­tions PLC, on its USD$105m...
In­ter­na­tion­al law firm CMS has ad­vised Telit (“Telit”) Com­mu­nic­a­tions PLC on the USD$105m sale of its auto­mot­ive di­vi­sion to Hong Kong Stock Ex­change lis­ted com­pany, TUS In­ter­na­tion­al Lim­ited (“TUS”)...
15 June 2018
Su­preme Court shifts the cost bur­den for block­ing or­ders
On 13 June 2018, the Su­preme Court handed down its judg­ment on the is­sue of the costs of im­ple­ment­ing a block­ing or­der made against the UK’s ma­jor in­ter­net ser­vices pro­viders (“ISPs”) in Carti­er...
05 April 2018
Brexit: European Com­mis­sion warns of can­cel­la­tion of .eu do­mains
Last week, the European Com­mis­sion pub­lished a No­tice to Stake­hold­ers warn­ing of the con­sequences of the UK leav­ing the EU to the over 300.000 .eu do­main names cur­rently re­gistered in the UK. Once the...
10 August 2016
Olswang ad­vises on Min­istry of Sound Re­cord­ing­s' ac­quis­i­tion by Sony Mu­sic...
This art­icle was pro­duced by Olswang LLP, which joined with CMS on 1 May 2017.In­ter­na­tion­al TMT law firm Olswang has ad­vised the Min­istry of Sound Group on the sale of its icon­ic la­bel Min­istry of Sound...
1 July 2016
Olswang ad­vises loc­a­tion ref­er­ence plat­form what3words on US$8.5m Series...
This art­icle was pro­duced by Olswang LLP, which joined with CMS on 1 May 2017.In­ter­na­tion­al tech­no­logy, me­dia and tele­coms law firm Olswang has ad­vised what3words, the loc­a­tion ref­er­ence plat­form, in...
17 June 2016
Olswang ad­vises Hard Rock In­ter­na­tion­al on its plans for in­aug­ur­al Hard...
This art­icle was pro­duced by Olswang LLP, which joined with CMS on 1 May 2017.In­ter­na­tion­al law firm Olswang has ad­vised icon­ic brand Hard Rock In­ter­na­tion­al on its col­lab­or­a­tion with Lon­don's largest...