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Portrait of 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 Bejm 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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Memberships & Roles

  • 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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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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Feed

21/09/2021
“Eco-friendly” claims – fi­nal UK guid­ance launched: com­pli­ance by the New...
This week the UK’s Con­sumer law reg­u­lat­or, the Com­pet­i­tion and Mar­kets Au­thor­ity (the “CMA”), pub­lished its fi­nal guid­ance for busi­nesses on “green claims”, to­geth­er with a Green Claims Code...
06/09/2021
CMS Ex­pert Guide to trans­fer­ring IP rights
In re­cent years, IP rights have be­come an in­creas­ingly im­port­ant as­set not only for R&D and tech­no­logy based com­pan­ies but also for con­sumer product man­u­fac­tur­ers and life sci­ences com­pan­ies, for ex­ample...
Comparable
08/06/2021
Trade secrets in the United King­dom
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
01/06/2021
CMS In­tel­lec­tu­al Prop­erty Glob­al Bro­chure
The pan­dem­ic that will define 2020 has put many types of in­tel­lec­tu­al prop­erty in the spot­light – par­tic­u­larly, of course, in life sci­ences. Who will de­vel­op an ef­fect­ive vac­cine or vac­cines for Cov­id-19...
30/04/2021
“Pro­tect­ing young and vul­ner­able people” - ASA pub­lishes its 2020 An­nu­al...
As the ASA and CAP this week re­leased their An­nu­al Re­port for 2020, we round up the key points from a uniquely chal­len­ging year. Cov­id chal­lenges Un­sur­pris­ingly, and des­pite the fo­cus of the re­port be­ing...
06/04/2021
Court of Ap­peal sticks with CJEU jur­is­pru­dence on com­mu­nic­a­tion to the...
In its re­cent de­cision in Tun­eIn Inc v Warner Mu­sic UK Lim­ited and Sony Mu­sic En­ter­tain­ment UK Lim­ited [2021] EW­CA Civ 441, the Court of Ap­peal has re­jec­ted ar­gu­ments that the UK should de­part from the...
19/03/2021
Los­ing friends while in­flu­en­cing people: ASA warns In­sta in­flu­en­cers over...
Fol­low­ing a series of up­held ad­ju­dic­a­tions in re­cent months in re­la­tion to in­flu­en­cer ad­vert­ising posts that were not ob­vi­ously iden­ti­fi­able as ad­vert­ising, the ASA has pub­lished the res­ults of a three-week...
19/02/2021
ASA re­jects a com­plaint that a John­nie Walk­er ad en­cour­aged im­mod­er­ate...
The ASA has dis­missed a com­plaint made against Diageo Great Bri­tain Ltd t/a John­nie Walk­er, that its whisky ad was ir­re­spons­ible for en­cour­aging im­mod­er­ate drink­ing. The claim A TV ad, seen on 25 Novem­ber...
17/02/2021
CMS Ex­pert Guide to com­puls­ory li­cens­ing
In­tel­lec­tu­al prop­erty rights are crit­ic­al for any eco­nomy that wants to foster a cul­ture of in­nov­a­tion, risk tak­ing, and en­tre­pren­eur­ship. Par­tic­u­larly in a med­ic­al con­text, phar­ma­ceut­ic­al com­pan­ies...
Comparable
10/02/2021
ASA up­holds an­oth­er com­plaint against an in­flu­en­cer so­cial me­dia ad
The ASA has up­held yet an­oth­er com­plaint in re­la­tion to a so­cial me­dia post by an on­line in­flu­en­cer that was not “ob­vi­ously iden­ti­fi­able” as a mar­ket­ing com­mu­nic­a­tion. Luke Mab­bott is a former “Love...
08/02/2021
Con­sumer & Re­tail
The latest CMS Re­bound & Re­mod­el re­port ex­plores some of the last­ing changes af­fect­ing the con­sumer and re­tail sec­tors, in­clud­ing :Brexit and the im­pact on brand­sThe chan­ging risk pro­file of con­sumer...
08/02/2021
ASA finds Ry­anair’s “Jab and Go” ad­vert­ising ir­re­spons­ible and mis­lead­ing
The ASA has up­held thou­sands of com­plaints against Ry­anair’s “Jab and Go” ads, for en­cour­aging con­sumers to book flights fol­low­ing the roll-out of the UK vac­cin­a­tion pro­gramme, la­belling them ir­re­spons­ible...