Rob Jacob
Partner
Rob is a leading contentious IP Partner, known for guiding clients through complex trade mark and copyright disputes, and safeguarding non-traditional brand assets.
Awards and Recognition
Biography
Language - English
Jurisdiction - England & Wales
Rob works with a diverse range of clients, from life sciences innovators and offshore construction specialists to luxury brands and consumer goods companies. He is often called upon by businesses seeking to protect, commercialise, and enforce their intellectual property in the UK and across borders, particularly where the stakes are high and the issues are novel.
He provides strategic advice on registering, defending, and enforcing trade marks - including non-traditional marks - and supports clients through every stage of litigation, from initial strategy to hearings before the UK High Court, Intellectual Property Enterprise Court, and UKIPO. Rob is adept at coordinating multi-jurisdictional disputes, having led global litigation strategies involving up to 30 countries, and works closely with local counsel to ensure a seamless approach for clients with international portfolios.
Clients value Rob’s ability to anticipate challenges and deliver clear, commercially focused solutions, whether navigating a cross-border dispute or protecting a new brand. His experience includes acting for GSK, GAP, Swatch, Marks & Spencer, and easyGroup. His reputation as a strategic thinker and problem solver makes him a sought-after adviser for high-stakes IP disputes.
Experience
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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.
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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).
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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).
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GlaxoSmithKline
Advised on a multi-jurisdictional claim running in over 30 countries worldwide against multiple defendants in relation to the enforcement of GSK’s rights regarding the use of non-traditional trade marks, and in particular the colour and shape of an asthma inhaler.
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A selection of Rob's UK cases include:
- DataCard Corporation v Eagle Technologies Limited ([2011)] EWHC 244 (Pat)
- NICHOLSON gin brand: Opp 0520-14
- Glaxo Wellcome UK Limited v Sandoz Ltd [2017] EWHC 3196 (Ch)
- Parainen Pearl Shipping Ltd v Kristian Gerhard Skipsrederi AS [2018] EWHC 2628 (Pat)
- Pathway IP Sarl v easyGroup Ltd [2018] EWHC 3608 (Ch)
- Jezaya UK Limited v SRK Traders London & others IP-2018-00106
- Smart Reamer Drilling Systems v NOV Downhole Eurasia [2018] 1265 (IPEC)
- Turbo-K Limited v Turbo-K International Limited [2020] EWHC 2078 (Ch)
- easyGroup Ltd v easyWay-SBH [2021] EWHC 2007 (IPEC)
- easyGroup Ltd v Beauty Perfectionists Limited [2021] EWHC 3385 (Ch)
- Athleta (ITM) Inc. - Sports Group Denmark A/S and others IL-2022-000060
- GlaxoSmithKline Consumer Healthcare Holdings Limited v. Teva UK Limited IL-2022-000124
- Marks & Spencer plc and others v Swizzels Matlow Limited - IL-2022-000111
- easyGroup Ltd v Nuclei Ltd and others [2023] EWCA Civ 1247
新闻与见解
Balancing innovation and IP protection in offshore energy testing
Success for Stephenson Harwood’s IP team
Stephenson Harwood supports Jan De Nul Group on long-term partnership agreement with RWE
Stephenson Harwood lawyers named in Thomson Reuters Stand-out Lawyers list
Art law - recent developments February 2023