Managing Associate - Solicitor and Chartered UK & EU Trade Mark Attorney
Rhian Banks is a highly experienced specialist in strategic brand management, protection, exploitation and enforcement for a varied range of clients from start-ups and entrepreneurs to SMEs and international corporates. Rhian also has the Rising Star Award 2018 for Managing IP.
Rhian’s areas of expertise centres on the provision of strategic advice on domestic and global brand protection, pre-filing searches and analysis for freedom to use and register, global filing and prosecution of trade marks, portfolio management and title maintenance, policing of trade mark rights, dealing with infringement matters and enforcement of trade mark rights on both a domestic and international level.
Rhian also uses her experience gained from her dual qualification to draft IP policies and business documents to help business reduce IP risk. For international matters, Rhian works alongside specially selected attorneys qualified in other jurisdictions to ensure clients receive commercially sound advice.
Intellectual Property Disputes
Rhian’s experience in IP and Trade Marks includes:
- developing filing strategies to enhance wider business growth plans and advising on any trade mark issue that might cause a client to change direction or budget;
- freedom to use and register searches and analysis;
- assessments of inherent registrability of proposed brands from marketing, sales and in house counsel teams;
- portfolio reviews, identifying gaps in protection and advising how to best remedy whilst balancing business interests and budgets;
- handling contentious matters before the UK Intellectual Property Office and the European Trade Mark Office including opposition, invalidation and revocation actions;
- foreign litigation management;
- enforcement of rights including long term enforcement strategies;
- policing of trade mark rights, company name and domain names;
- negotiation and drafting of IP related agreements and documents including assignments, licenses settlement agreements and staff policy documents for the treatment of IP by employees.
Some of Rhian’s previous cases include:
- working as the sole day to day contact as an IP business partner for a large international engineering company who’s trade mark portfolio more than doubled over 3 years as a result of Rhian providing comprehensive strategic advice which included:
- undertaking global filing and prosecution of trade marks including the planning, structuring and implementation of a 3 year filing strategy to obtain trade mark protection in over 40 countries for over 30 new and existing brands;
- supporting marketing teams to approve the availability and registrability of new product names and clearing international promotional campaigns,
- enforcing trade marks on an international level and supporting B2B led negotiations to settle infringement matters;
- supporting board and operational business teams with amendments to business processes and policies to ensure that historic registrations were not lost due to non-use as a result of re-branding and brand refreshes;
- providing corporate support on mergers and acquisitions;
- preparation and calculation of annual IP budgets;
- assisting with the preparation of annual reports submitted to the company’s board;
- continued provision of education to international team members;
- general portfolio maintenance including renewal audits and recordal of title changes within the company.
- development of an enforcement strategy for a well-known automotive manufacturer to identify and take action against UK infringers for a range of brands, including the provision of tailored business support to identify infringers as well supporting in house litigation teams in taking enforcement action;
- creation of a global trade mark filing strategy for a fintech start-up company, advising on the strongest trade mark protection in light of budget limitations;
- drafting of precedent assignment and licence documents and internal IP business policy documents and amendment of employee agreements and agency agreements as to treatment of IP to reduce risk for a provider of student accommodation in the UK
‘Doing the right thing’ is at the heart of Freeths. Find out more about our excellent client service and the strong set of values that guide the way we work.
Talk to us
Freeths are a leading national law firm with 13 offices across the UK. If you have a query about our services or just want to find out more, why not give us a call?
Contact: 03301 001 014