Rachel Wilkinson

Rachel Wilkinson-Duffy

Partner
Baker & McKenzie LLP
Chartered Trade Mark and Design Attorney

Biography

Rachel is a partner in the Intellectual Property department of the London office of Baker McKenzie.

Practice Focus

Rachel advises on all aspects of trade mark and design protection and enforcement, including global filing strategies, clearance searching and transactions involving intellectual property for the UK, EU, Madrid Protocol and overseas. She specialises in trade mark contentious work, including infringements, oppositions, cancellation actions, company and domain name disputes and dispute resolution.  Rachel has worked with clients in a broad range of different fields, including pharmaceuticals, finance and luxury and fashion, as well as assisting NGOs in a various sectors on a pro bono basis.

Rachel also has considerable experience in advising on IP and regulatory issues involving parallel trade in the EU, particularly in the context of the life sciences sector, and the interplay between trade mark and regulatory naming clearance.

Rachel is a past president of the Chartered Institute of Trade Mark Attorneys (CITMA), was the chair of the Law & Practice Committee for many years and continues to be an active Executive Committee member and the head of CITMA’s Litigation Club and the EUIPO Liaison Working Group. Through her continued active involvement with CITMA and other bodies such as INTA, she has regular interaction with officials at the UK IPO, EUIPO and WIPO, amongst others.

Representative Legal Matters

  • Co-ordinating a global trade mark dispute for a leading cosmetics and skin care company involving over 90 separate actions in 62 countries.

  • Advising L'Oréal and The Body Shop on brand protection and enforcement matters in relation to their well-known brands.

  • Successfully acting as advocate for clients, including British American Tobacco, in various disputes before the High Court, the Appointed Persons and the UK IPO involving trade mark matters and advising in relation to corresponding enforcement.

  • Managing global IP matters on behalf of a well known UK-based global fashion retailer, including design and trade mark registration and enforcement. 

  • Advising a number of international companies in relation to parallel import issues.

Professional Honors

  • Listed as a 'Rising Star' in Managing Intellectual Property's IP Stars (2018)
  • Listed as a 'Star lawyer' in the Acritas Stars report. (2018)

Professional Associations and Memberships

  • Past President and Member
  • Member of CITMA Law & Practice Committee
  • Member of Parallel Imports Committee
  • Founder and member of CITMA Litigators Club
  • Head of CITMA EUIPO Liaison Working Group

Admissions

  • England & Wales~United Kingdom (2010)