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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 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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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
29 August 2019
EU: Trade Secret Law Re­forms
16 June 2020
The ASA and CAP pub­lish 2019 An­nu­al Re­port
On 2 June 2020, the ASA and CAP pub­lished their An­nu­al Re­port for 2019. The Re­port fo­cuses on the ASA’s use of tech­no­logy in new ways to strengthen its on­line reg­u­la­tion. In line with the ASA and CAP’s...
18 June 2019
An­nu­al Re­view 2018 – 2019
Cross­ing bor­ders is both the theme of this year’s CMS An­nu­al Re­view and a guid­ing idea that we had when we es­tab­lished CMS 20 years ago. At that time, we de­cided to cre­ate a high-qual­ity, ex­pert and mul­tijur­is­dic­tion­al law firm. This Re­view shows what we’ve achieved over the last year in pur­suit of this goal.Since 1999, work­ing across bor­ders has be­come a daily task for all our law­yers. We are one of the most in­ter­na­tion­al law firms, with more than 70 of­fices in over 40 coun­tries. Our 4,800 leg­al ex­perts world­wide work as one team across jur­is­dic­tions, prac­tice areas and sec­tors to en­sure that you get clear, ac­tion­able and busi­ness-fo­cused ad­vice. You can read about our mul­tijur­is­dic­tion­al sup­port for cli­ents in the stor­ies through­out this An­nu­al Re­view. For ex­ample: an in­ter­na­tion­al CMS team ad­vised Ad­vance / Ne­w­house Part­ner­ship on its pur­chase of Stage En­ter­tain­ment, one of the world’s largest theatre pro­du­cers and own­ers. Our law­yers spe­cial­ising in cor­por­ate, me­dia, real es­tate, tax, em­ploy­ment, IP, com­pet­i­tion and bank­ing all worked on the trans­ac­tion.Glob­al­isa­tion con­tin­ues to im­pact the busi­ness en­vir­on­ment pro­foundly, as do the key is­sues on the glob­al agenda such as the US trade talks with China, Brexit and the con­sequences of cli­mate change. With our glob­al firm struc­ture and mind­set, we help you an­ti­cip­ate the prob­lems you face in your daily op­er­a­tions. On page 28, you can read what some of our part­ners around the world have told us about the chal­lenges their cli­ents are cur­rently fa­cing.An­oth­er ma­jor factor shap­ing our daily work is the im­pact of tech­no­logy on all busi­nesses. This year, our an­nu­al event in Da­v­os on the oc­ca­sion of the World Eco­nom­ic For­um (see page 18) fo­cused on how in­creased di­git­al­isa­tion is af­fect­ing con­ven­tion­al busi­ness mod­els.Today, in­tro­du­cing more ad­vanced tech­no­lo­gic­al tools in­to leg­al prac­tice is a must in or­der to meet cli­ents’ qual­ity and ef­fi­ciency ex­pect­a­tions. For CMS, it is about more than just us­ing ar­ti­fi­cial in­tel­li­gence soft­ware or di­git­al tools. To us, in­nov­a­tion means de­vel­op­ing tech­no­logy to of­fer our cli­ents new high-qual­ity ser­vices and to provide new ways of de­liv­er­ing all our leg­al of­fer­ings. Our scale and pres­ence across many jur­is­dic­tions, coupled with our deep un­der­stand­ing of cli­ent needs in their loc­a­tions, means that we are very well qual­i­fied to de­vise such solu­tions. On page 16, some of our key in­nov­at­ors de­scribe the ways in which our tech­no­logy is be­ne­fit­ting cli­ents.I hope you find some in­ter­est­ing and thought-pro­vok­ing stor­ies in this year’s An­nu­al Re­view and wish you an en­joy­able read. My col­leagues in the CMS ex­ec­ut­ive team and I are al­ways happy to hear from you if you have any com­ments or ques­tions.Cor­neli­us Brandi, Ex­ec­ut­ive Chair­man
29 August 2019
Su­per­mar­kets still not com­pli­ant with con­sumer pri­cing guidelines, finds...
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,...
August 2018
Sum­mer of sports 2018
31 July 2018
A tale of two Lon­don­ers – cloth­ing brand LNDR suc­cess­fully takes on Nike...
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...
19 June 2018
Im­age rights and the Mo­hamed Sa­lah dis­pute
28 November 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?...
01/09/2015
Second ses­sion on “Coty Ger­many” of our CJEU-we­bin­ar-series took place
31 August 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....
03/03/2015
Present­a­tion on „Art & All­posters“ (CJEU-We­bin­ar on IP/TMC-de­cisions, Ses­sion...
26 July 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...