Fiona Timms

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Fiona is an Associate in the Intellectual Property department, within the Brands Group.

Fiona specialises in the protection and enforcement of intellectual property rights, advising clients on both contentious and non-contentious matters, with a particular emphasis on trade marks, copyright and related rights, confidential information and passing off.

She also has expertise in strategic advice in relation to trade marks and copyright and designs, as well as advising on brand protection strategies including clearance, monitoring, enforcement and portfolio management. Fiona has particular experience in both online and offline brand enforcement for clients in the retail sector, as well as various companies in the gaming industry.

Additionally, Fiona has experience in obtaining and securing domain name take down requests and offering IP support on corporate transactions.

Fiona acts for a broad range of clients, from individuals to multinational companies, across a wide range of sectors, including retail and e-commerce, fashion and luxury goods, technology and gaming.

Fiona represents clients in proceedings before the High Court, The Intellectual Property Enterprise Court, and in trade mark registry and opposition proceedings before the UKIPO.

Fiona is a non-executive committee member of the Society for Junior Intellectual Property Practitioners as well as member of The British Literary and Artistic Copyright Association.

Key Experience

Advised an internationally acclaimed fashion designer in a copyright and passing off dispute concerning its renowned pleating technique.
Defended a global footwear and accessories retailer concerning an iconic shoe design.
Advised a Scandinavian based company in relation to its eco-friendly maternity products and designs including preparing and filing various design invalidation actions against a UK third party.
Acted for a supplier of emergency break glass devices concerning a breach of settlement agreement and false allegations of safety issues and incorrect certification.
Advised various companies in the retail and gaming sectors on the online and offline protection and enforcement of their trade mark and design right portfolios.
Experience in advising and drafting a brand licensing agreement for a client in relation to a largescale UK music festival.
Worked alongside US lawyers in defending a client in the United States in the gaming industry in a trade mark dispute concerning a music game app and a prior use claim.
Advised a leading women’s activewear and clothing company in respect of domain take down requests, enforcing its intellectual property rights and targeting counterfeit goods.
Acted for a leading social networking and dating app concerning its global trade mark portfolio in enforcing its intellectual property rights against potential infringers.
Advised a trustee in the bankruptcy of a former musician concerning neighbouring rights and the sale of royalties due from collecting societies.
Advised a UK governmental body in relation to allegations of infringement and misuse of confidential information in respect of a 5G digital music festival.
Acted for a leading electronic cigarette company in a trade mark dispute and brand enforcement concerning the sale of counterfeit vaping products.
Advised a UK-based technology start-up on copyright and database rights issues concerning a data transfer platform.
Acted for a leading international generics company in reviewing parallel import requests from importers located across the EEA.

Career History

Associate, Gunnercooke LLP
Solicitor, Pinsent Masons LLP
Trainee Solicitor, Pinsent Masons LLP
University of Oxford, PGDip in Intellectual Property Law and Practice
University of Law, Legal Practice Course
University of Birmingham, Law LLB

Articles and Publications

Timms F., ‘The Art of EU Trademark Registrations: Is Intention to Use Now Required?’, International Trademark Association, 20 January 2021
Dennis G. and Timms F., ‘Puma’s quest to block Nike’s FOOTWARE mark is de-feeted’, World Trademark Review, 23 September 2020