Kirsten Gilbert
Partner and Head of Brand Exploitation, Protection and TM Litigation UK
Europe
London
Kirsten is a Partner and Head of Brand Exploitation, Protection and TM Litigation UK at Marks & Clerk Law. Kirsten advises in a broad range of sectors including food & drink, financial services, pharmaceuticals, fashion and creative industries.
Kirsten “Gilbert creatively uses all available tools to score client-defined wins and is a master pragmatist who helps brand owners to avoid costly litigation.”
(World Trademark Review)
With over 20 years’ experience, Kirsten “brilliantly” leads the legal Brand Protection and Trade Mark team, finding efficient and pragmatic ways to overcome her clients’ challenges. Kirsten is drawn to the forever-evolving nature of both trade mark law and her (sometimes off form but always classy) team, Liverpool Football Club.
Whilst Kirsten has been recognised for her sound approach to pre-litigation strategies, trade mark litigation and brand portfolio management, she also has significant experience in advising clients on registration strategies, and licensing of all types of IP rights. Kirsten is an active member of the Marks & Clerk Food & Drink Team
Connect with Kirsten via Linkedin or get in touch!
Key cases
- Budejovicky Budvar v Anheuser-Busch (Court of Appeal, ECJ, High Court)
- GO Outdoors Limited v Design Go Limited (High Court Trade Mark)
- DNOW UK Limited v Distribution NOW UK Limited (High Court Chancery Interim Injunction)
- BlackRock Inc v Blackrock International Land (High Court Trade Mark)
- Silver Cross v Mamas & Papas (High Court Designs)
- SA Spadel v Harrogate Spa Water (High Court Trade Mark)
Experience
- Represents clients in disputes in the High Court, Intellectual Property Enterprise Court and Court of Appeal.
- Represents trade mark clients in proceedings before the Court of Justice and the General Court of the European Union and has assisted in trade mark oppositions and invalidity actions in the EU IPO and the UK IPO.
- Represented clients in many domain name disputes.
- Advises clients on licencing agreements for wide ranging licensing activities in various sectors.
- Dealt with the Treasury Solicitors Office regarding the acquisition of bona vacantia IPRs and obtaining vesting orders for intellectual property rights held by the Attorney General on trust.
- Acted for clients in relation to applications for preliminary injunctions and full-scale trials.
Professional Highlights
Kirsten is named an ‘IP Trade Mark Star’ by Managing Intellectual Property and has also been recommended by Legal 500 and World Trademark Review.
Kirsten co-authored the UK Chapter of Pharmaceutical Trademarks: A Global Guide 2020/2021.
Languages
- English
Specialist in
Qualifications
Diploma in Intellectual Property Law, Bristol University (1999)
Qualified as a Solicitor in England & Wales (1998)
Law LLB, Sheffield University (1993)
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Latest articles by Kirsten Gilbert
Kirsten Gilbert discusses her upcoming trip to INTA
Our Head of Brand Exploitation, Protection and TM Litigation in the UK, Kirsten Gilbert, is gearing up for her (lucky!) 13th trip to the International Trademark Association (INTA) 2024 Annual Meeting. We caught up with Kirsten to hear some of her favourite INTA memories, before she heads out in just a few days.
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Lidl V Tesco – Fight of the Supermarket Giants
Lidl, a discount supermarket with a presence in the UK since 1994, has been successful in an infringement and passing off claim against Tesco, the largest supermarket chain in the UK.
The dispute came before the High Court in 2023 and Lidl was overall successful. Tesco appealed that decision and the Court of Appeal has largely confirmed the lower court’s decision. Tesco will have to cease use of its Clubcard Prices logo (as shown below) which has been used to promote its discounted ‘Clubcard Prices’ scheme since 2020.
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The dispute came before the High Court in 2023 and Lidl was overall successful. Tesco appealed that decision and the Court of Appeal has largely confirmed the lower court’s decision. Tesco will have to cease use of its Clubcard Prices logo (as shown below) which has been used to promote its discounted ‘Clubcard Prices’ scheme since 2020.
Marks & Clerk anti-counterfeiting expertise featured on BBC morning radio
Counterfeit goods have become a pervasive problem with the potential to affect every part of our lives. From luxury items to everyday objects, fake products can be found everywhere. However, the production and distribution of these goods is illegal and can have serious consequences for everyone involved. This morning, Marks & Clerk took to the airwaves on BBC Breakfast radio to explain the impact of this growing issue.
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