Home / People / Tom Scourfield

Tom Scourfield

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

Tom Scourfield

Tom Scourfield

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

T +44 20 7367 2707 (UK)
T +48 22 520 5616 (Poland)
F +44 20 7367 2000 (UK)
F +48 22 520 5556 (Poland)
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.

more less

"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

"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.
more less

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
more less

Memberships

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

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
more less

Expertise

Feed

Show only
8 July 2019
Tak­ing Stock 2019
The out­look for Con­sumer & Re­tail
#
Brochure Consumer Products
29 Aug 19
Su­per­mar­kets still not com­pli­ant with con­sumer pri­cing guidelines,...
Four years on from its su­per-com­plaint to the Com­pet­i­tion & Mar­kets Au­thor­ity about su­per­mar­kets’ pri­cing prac­tices (see our Law-Nows here and here), Which? has con­duc­ted a fol­low-up in­vest­ig­a­tion which,...
#
Law-Now Consumer Products
18 Jun 19
An­nu­al Re­view 2018 – 2019
#
Publication
31 Jul 18
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...
#
Law-Now Intellectual Property
04 Jul 18
Tak­ing Stock - the out­look for Con­sumer Re­tail 2018
#
Publication Consumer Products
28 Nov 17
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?...
#
Law-Now Consumer Products
19 Jun 18
Im­age rights and the Mo­hamed Sa­lah dis­pute
#
Publication
31 Aug 17
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....
#
Law-Now Intellectual Property
11 January 2017
Food and bever­age
#
Brochure Consumer Products
26 Jul 17
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...
#
Law-Now Intellectual Property
11 January 2017
Con­sumer products and re­tail dis­putes and in­vest­ig­a­tions
#
Brochure Consumer Products
17 Feb 17
Nov­elty Act – change in nov­el foods re­gime
Lon­don’s first in­sect bar re­cently opened. The bar of­fers products such as bug based ice cream and brownies. To most of us this sounds rather rad­ic­al and new but in­sects ac­tu­ally have a long his­tory...
#
Law-Now Consumer Products
Load more articles