Contact details

Rob Jacob

T: +44 20 7809 2072 M: +44 7825 601 925 Email Rob | Vcard Office: London

Rob Jacob Partner

Contact details

Rob Jacob

Rob Jacob
Partner

T: +44 20 7809 2072 M: +44 7825 601 925 Email Rob | Vcard Office: London

Rob is a ​partner specialising in both contentious and non-contentious IP issues with a particular focus on trade mark and copyright matters. He has particular expertise in the life sciences, offshore construction and luxury brands sectors.

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Rob has a masters degree in Chemistry from Imperial College, London and a post-graduate diploma in IP law and practice. He trained and qualified into the IP team at Clifford Chance before joining Stephenson Harwood in 2009. 

On the contentious side, Rob acted on DataCard Corporation v Eagle Technologies Limited ([2011] EWHC 244 (Pat)), where the firm successfully argued for the extension of trade mark protection to prevent actions of an infringer which would lead to post-sale confusion. This year, Rob has also successfully convinced OHIM's Board of Appeal that the shape of GSK's DISKUS inhalers was distinctive (R2074/2013-2) and also successfully argued that residual goodwill still subsists in the NICHOLSON gin brand resulting in the UK IPO invalidating third party marks for the same on grounds of passing off and bad faith (UK Decision: Opp 0520-14).  

On the non-contentious side, Rob's highlights include working on the public takeover of Biocompatibles plc by BTG plc, the US$3.8 billion sale of Piramal Enterprises' domestic formulations division to US pharmaceuticals giant Abbott, the acquisition of the worldwide rights to Florbetaben (a pioneering molecular imaging product for the diagnosis of early Alzheimer's disease) from Bayer Pharma AG and the US$220 million acquisition of EKOS corporation. 

Rob wrote the intellectual property chapter of the book Offshore Construction Law and Practice published by Informa Law from Routledge.
 
  • Intellectual property

Extension of trade mark law

Acted on DataCard Corporation v Eagle Technologies Limited ([2011] EWHC 244 (Pat)), where the firm successfully argued for the extension of trade mark protection to prevent actions of an infringer which would lead to post-sale confusion.

Residual goodwill

Successfully arguing that residual goodwill still subsists in the NICHOLSON gin brand resulting in the UK IPO invalidating third party marks for the same on grounds of passing off and bad faith (Decision: Opp 0520-14). 

Non-traditional trade marks

Successfully convincing OHIM's Board of Appeal (R2074/2013-2) and the UK IPO that the shape of both GlaxoSmithKline's DISKUS and ELLIPTA inhalers were distinctive as well as successfully arguing before OHIM Board of Appeal in relation to a formalities objection (R0580/2013-2).

More: Intellectual property

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