Amanda McDowall

Senior Associate, Lee & Thompson

Amanda is a Senior Associate in CMS' IP department. She is a dual-qualified (US/England & Wales) lawyer and a Chartered Trade Mark Attorney. She has substantial experience of an extensive range of contentious and non-contentious soft IP-focused matters. Her experience spans varied sectors including technology, media & communication, telecoms, fintech, life sciences, FMCG, fashion and the charitable sector. Client-focused and commercially practical, she enables clients, from fintech start-ups to multinational media corporations, to realise and protect the value of their IP assets.

Her experience includes:

Advising multinational corporations on all aspects of global IP portfolio management, from clearance and protection strategies, through to international opposition, invalidity and revocation matters and multi-jurisdiction litigation.
IP litigation and disputes, with significant experience at the EU and UK trade mark tribunals, courts (including the General Court and CJEU) and managing international litigation; these are frequently at the cutting edge of the legal landscape.
Assisting clients with customs seizures, counterfeiting and parallel import issues.
Negotiating and concluding commercially appropriate international settlement agreements.
Advising on and negotiating international IP-focused agreements and transactions, including complex re-structuring and corporate transfer agreements, brand assignment and licensing agreements; co-branding, joint venture, sponsorship and franchising agreements.
Achieving protection of non-traditional trade marks.
Devising and implementing country entry and brand extension strategies.
Domain management, disputes and strategy (including ICANN and Nominet disputes).
Successfully representing clients at the Company Names Tribunal.
Advising on advertising issues, including pre-clearance advice and ASA complaints.

Contributed to

1

Survey and witness evidence in trade mark and passing off cases

Practice notes

Surveys and related witness evidence are used in trade mark and passing off cases. While often dismissed or criticised by judges, surveys can have a valuable role to play in establishing evidence of consumer confusion between the claimant’s and defendant’s goods and services. This Practice Note covers legal and practical issues associated with the use of survey evidence including advice on when it is appropriate to use a survey and how to formulate a survey.