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Sonia is a Chartered Trade Mark Attorney with significant experience in respect of intellectual property matters.

Sonia regularly advises clients on a wide variety of Trade mark and Design matters, including pre-filing advice incorporating clearance searching and prosecuting UK and International Trade Mark and Design applications. She regularly advises on contentious matters such as oppositions, revocation and invalidity actions, including managing proceedings before the UK Intellectual Property Office and drafting Coexistence Agreements. Sonia contributes to due diligence projects for corporate transactions and also handles the maintenance and management of intellectual property, including assignment, recordal and renewal matters.

Sonia’s work spans a very wide range of sectors and she has extensive experience in brand resurrection and brand refreshing. She frequently assists clients to avoid the pitfalls associated with these processes, thereby maximising the value and strength of their brands. She undertakes trade mark portfolio “health checks” for clients, with a particular focus on post-Brexit complications. She advises multinational companies, individuals and SMEs operating in a very broad range of industries including digital and tech, education, fashion, hospitality, banking and automotive.

Sonia completed her training at a leading international intellectual property firm, qualifying in 2013. She is a member of the Chartered Institute of Trade Mark Attorneys (CITMA) and also holds an IP Litigation Certificate.

Experience

Sonia has a wealth of experience across multiple sectors:

  • Advising a well-known food and drink manufacturer on the high-profile resurrection of a thirty-year-old brand, including conducting clearance searches to advise on the associated risks involved.
  • Advising a fast-growing and well-known UK fashion business in respect of its brand expansion, including handling and ultimately settling a two-year dispute in respect of its UK trade mark. This enabled the business to expand its protection internationally, thereby considerably strengthening its global protection and preventing issues with trade mark “squatters”.
  • Advising a global food services and hospitality client in respect of a passing off dispute with a leading multinational restaurant chain. The matter was settled in favour of the client, thereby avoiding costly and time-consuming legal proceedings in multiple jurisdictions.
  • Managing the trade mark portfolio of a leading luxury car manufacturer including securing global protection for a new vehicle model, handling worldwide disputes and advising regarding counterfeits.
  • Handling the worldwide assignment of trade marks for a well-known music events company.
  • Assisting a large multi-national company to reach amicable settlement following a nine-year dispute with a Portuguese company involving numerous oppositions, cancellations and revocation actions in many countries.

Expertise: Sectors

Businesses

Expertise: Services

Businesses

What people say

  • Sonia Burgess is a stand out lawyer and a key asset to a busy GC. She anticipates moves, offers strategic advice and is economical with your time. I find her advice to be clear, concise and affective. I always know where I stand and I am able to make quick decisions based on her guidance.

    Legal 500, client quote

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