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Joel Vertes

Partner

CMS Cameron McKenna Nabarro Olswang LLP
Cannon Place
78 Cannon Street
London
EC4N 6AF
United Kingdom
Languages English

Joel Vertes is a Partner in CMS’s “Band-One” ranked IP team – one of the largest dedicated IP teams of any law firm. Joel has spent 20 years acting as IP “consiglieri” to his clients, and working on the full life-cycle of clients' IP rights. He is equally comfortable filing and protecting IP rights, enforcing those rights in litigation, and advising on deals ensuring clients commercialising their innovations.

Joel is a highly experienced litigator, with particular expertise in trade mark, copyright, database right, confidentiality, anti-piracy and other IP disputes. He has led many high-profile litigation matters before the UKIPO, EUIPO, the High Court and the CJEU.  He manages the IP portfolios of some of the world’s largest brands, working alongside CMS's significant in-house trade mark and patent attorney practice. 

Joel also has a significant non-contentious and advisory practice. He has extensive experience of complex technology, copyright, trade mark and software licensing, joint ventures, collaboration agreements and similar deals. 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 regularly advises businesses on the IP aspects of M&A transactions. Finally, he also heads the firm-wide, full-service franchising practice.

Finally, Joel is jointly responsible for CMS Umbra – our transformative AI-driven patent monetisation product.

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"Joel Vertes is a powerhouse of skill and focus”. “Joel Vertes works incredibly hard and is willing to drop everything in service of his clients. […] an "'excellent' IP specialist" with “a robust and decisive approach to franchising, breach of confidence and technology cases”; and a “strong knowledge of trademark law". “Sectors of focus for CMS’ IP department include... particularly energy, for which Joel Vertes is a sector leader"."

Legal 500, 2024

"Joel is a dominant force within his team and he leads with complete understanding of what the client wants and needs”. “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, 2024

"Working across prosecution, litigation and transactions with equal finesse is Joel Vertes […] Versatile and commercially savvy, he has built up abundant client goodwill during his 20 years at CMS. […] Joel adopts a reasoned, commercial and well-thought-out approach. His responsiveness is stellar and the team around him are great. Joel is also well connected with lawyers in other disciplines and jurisdictions."

World Trademark Review 2022-23

"Joel Vertes is a powerhouse of skill and focus”. “Joel Vertes works incredibly hard and is willing to drop everything in service of his clients. […] an "'excellent' IP specialist" with “a robust and decisive approach to franchising, breach of confidence and technology cases”; and a “strong knowledge of trademark law". “Sectors of focus for CMS’ IP department include... particularly energy, for which Joel Vertes is a sector leader“.

Legal 500

"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

Relevant experience

  • Microsoft, for whom Joel advises in respect of all of its UK anti-piracy, counterfeit software, phishing, cyber attacks, and licensing disputes. Joel is also part of a team managing Microsoft’s European trade mark portfolio.
  • A major international airline in High Court copyright proceedings relating to music rights.
  • A betting & gaming company in database right proceedings before the High Court.
  • Equinor on its US$1.1bn joint venture arrangement with BP, relating to windfarm technology and knowhow.
  • A global social network on pursuing individuals responsible for a cyber-attack against its services.
  • FIFA in passing off proceedings, and subsequently committal proceedings, against a UK company and various individuals.
  • PKN Orlen, one of Poland’s largest oil refiners and petrol retailers, on a range of complex deals including in relation to chemical manufacturing plants, IP collaborations and other major projects.
  • Absolute Radio on trade mark and passing off proceedings brought by the owners of the Absolut Vodka brand.
  • Hard Rock Hotel Group on the franchise deal enabling its flagship hotel launch in central London.
  • 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.
  • 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.
  • Hakkasan Group on multiple licensing, franchising and management deals across the globe, from Marrakesh to Bahrain to Greece.
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Memberships & Roles

  • 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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Education

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

12/01/2024
A new tool in the fight against online infringement
Online infringements and domain squatting are challenges often faced by businesses and tackling such issues has been made all the more difficult in a post-GDPR world where most publicly available domain...
21/11/2023
CMS advises Iconix International on Hoodrich acquisition
International law firm CMS has advised premier global brand management company Iconix International (“Iconix”) on its majority acquisition of leading British streetwear brand Hoodrich. Iconix owns...
15/03/2023
Introduction to Trade Secrets
This course is designed to raise your employees' understanding of the importance and value of maintaining confidentiality over trade secrets.
07/03/2023
Delta Hotel Victor
Trade marks can be invalidated where they are found to be identical to an earlier mark registered for similar services and where this gives rise to a likelihood of confusion. However, applying this test...
28/09/2022
A new Standard for use evidence?
The General Court decision in Case No. T-768/20 (Standard International Management LLC v EUIPO) addresses the important issue of the use of hotel and leisure brands in the EU, where the corresponding...
13/09/2022
Open secrets? Guarding value in the intangible economy
Some leaks can’t be fixed “Confidential information is like an ice cube... give it to the party who has no refrigerator or will not agree to keep it in one, and by the time of the trial you have just a pool of water.” This, from the so-called Spycatcher case (1987), applies well to corporate assets: fail to store them correctly and all you might have left is an expensive mess. The consequences of even a minor exposure of a trade secret can be huge. As this report reveals, the protection of trade secrets is rightly recognised by most senior executives as a priority issue. But the research also reveals gaps that leave companies unnecessarily exposed to risks. The top named threats – cybersecurity attacks and employee leaks – resonate with what we see impacting our clients. Increased home and remote working is straining security measures and employee loyalty. Added to this, an ‘innovate or die’ attitude in highly-com­pet­it­ive sectors can motivate new joiners to arrive with questionable material from their previous employer, or worse: outright theft between competitors. But while it is easy to focus on the lurking threats from weakened cyber security and disgruntled employees – and they are important – there are more routine actions a company can take to safeguard its secrets than just updating its IT systems or the employee handbook. Commonly, those who most need our help already have a trade secrets policy but have not properly implemented it in relation to the secret in question. Or the policy has not been updated to reflect the intangible assets the business now owns. Or protection was taken for granted. With trade secrets – which for many businesses are strategically more important than a public patent portfolio – it is always costlier and messier to find solutions after a theft or a leak. Identifying the trade secrets and the threats posed to them, combined with rigorous internal processes and well-drafted contracts, can help prevent such problems from happening. Harder, but just as necessary, is engaging hearts and minds in corporate culture, to know why trade secrets are important, why we are all are responsible for protecting them, and what may happen if we do not (to both the company and the individual). In our experience, the businesses with the strongest defences have not only thought strategically about their intangible assets and how best to protect them but are also prepared for the worst. The trick to avoiding an asset becoming a crisis is to be wise before the event.
07/06/2022
Trade secret laws and regulations in the UK
General 1. Has the Directive (EU) 2016/943 of the European Parliament and of the Council of 8 June 2016 on the protection of undisclosed know-how and business information (trade secrets) against their...
Comparable
09/06/2021
Open Secrets? Guarding value in the intangible economy
Across multiple industries, businesses are deriving an ever greater proportion of their value from assets protected not by patent or copyright – but by secrecy. And from customer data to software algorithms...
09/06/2021
Open secrets? Guarding value in the intangible economy
We are delighted to share with you the report commissioned by CMS and written by The Economist Intelligence Unit. It explores the extent to which firms identify intangible assets as trade secrets and...
01/06/2021
Some leaks can't be fixed
“Confidential information is like an ice cube... give it to the party who has no refrigerator or will not agree to keep it in one, and by the time of the trial you have just a pool of water.” This...
21/09/2020
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...
07/07/2020
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...