Portrait ofTom 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
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.
  • 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

06/05/2024
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...
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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...
15/12/2023
No small beer: Court of Appeal examines rationale for departure from Retained...
In­tro­duc­tion Stat­utory acquiescence is a defence against trade mark invalidity and infringement proceedings where the owner of an earlier trade mark had (actual or deemed) knowledge of the later trade...
12/12/2023
Environmental claims continue to be a key focus area for the ASA after...
Last week, the Advertising Standards Authority upheld three complaints about environmental claims in advertisements published by three different airlines, finding all three misleading. The ASA identified...
07/07/2023
Transparency in “green” claims: updated ASA Guidance on misleading environmental...
The Advertising Standards Authority (“ASA”) has published an updated version of its guidance on misleading environmental claims and social responsibility. This update follows a flurry of recent steps...
17/05/2023
A Diamond Anniversary: The ASA 2022 Annual Report outlines key priorities...
The Advertising Standards Authority has published its 2022 annual report celebrating 60 years of ASA ad regulation. The report sets out the ways in which the ASA system has changed and evolved over time...
24/04/2023
Giving your adverts the royal treatment: Part 2
Around this time in 2022, we were preparing for the Queen’s Platinum Jubilee and we provided some ‘dos’ and ‘don’ts’ for any royal-themed advertising. A year on, we look forward to a new royal...
21/02/2023
CMS Expert Guide on Trade Secrets Case Law
As a business, your most valued assets can be the things you can’t touch or see. Intangible assets such as patents, formulas, software, designs and data are now driving corporate performance. And in...
Comparable
16/12/2022
European Super League suffers damaging blow in latest round of legal challenge
The proposed European Super League (ESL) needs little introduction – when announced in April 2021, the plans to launch a breakaway league involving some of Europe’s biggest clubs received a severe...
14/10/2022
The Retained EU Legislation Bill: Part 1: What does this mean for Copyright...
In late September, the Retained EU Law (Revocation and Reform) Bill 2022-2023 (“the Bill”) was introduced to the House of Commons. The Bill is the latest Brexit statement piece from the Government...
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.
13/06/2022
Updated CMS Expert Guide to Trade Secrets
From patents to programmes, designs to data, your most valuable business assets can be the things you can’t put under lock and key. But what legal recourse do you have to protect these intangible assets...