Simon Chalkley | Intellectual Property Lawyers: commercial contracts and dispute resolution

Simon Chalkley - Partner

 

T: +44 (0)20 7776 4760
E: simon@redd.eu


Simon specialises in intellectual property law and commercial transactions concerning intellectual property and technology. He advises clients on all aspects of intellectual property protection, enforcement and infringement issues. He has particular experience in advising on transactions relating to the commercial exploitation of intellectual property assets. He has advised extensively on intellectual property matters in the context of intellectual property investments including venture capital, M&A and corporate finance deals.

He is recognised as a "leading individual" in the intellectual property field by Chambers & Partners Guide to the Legal Profession (2009 Edition) and is also listed as an expert in intellectual property in Legal Business' Legal Experts.

Admitted as a solicitor in 1991, Simon was a partner in the Intellectual Property Group of City of London law firm Gouldens before becoming a Partner in the IP group of the international law firm, Jones Day, in 2003 following the merger of Jones Day and Gouldens in February of that year. He is a founding partner of Redd.

His clients and experience cover a wide spectrum of brand and innovation-led businesses. He also has over 12 years legal experience in the computer games field having acted on literally hundreds of game development, licensing and distribution agreements as well as advising on numerous infringement and other IP specific issues concerning game content and other issues of importance in computer games development.

Simon is regarded for his highly commercial, down to earth approach. Chambers & Partners Guide to the Legal Profession has commented that "clients singled out the "knowledgeable and extremely commercial" Simon Chalkley underlining his ability to "cut through the legal side of things and get straight to the heart of the matter".

In the brands field, Simon has been involved in many licensing and character merchandising transactions both in the UK and internationally across a wide variety of product categories including, for example: clothing, footwear, toys, lingerie, satellite television channels, books, games, home ware, eyewear, sports goods, cosmetics and perfumes, as well as international retail franchising agreements. He also advises clients on brand protection strategies and other brand-related issues including: comparative advertising, product and event sponsorship and personality rights. He also advises on trade mark infringement and passing-off matters (including issues with parodies, "look-alikes" and well known marks).

Simon also does a lot of patent, technology and software licensing work. Recent experience includes advising clients on licensing issues and transactions in industries as diverse as computer game technology, contact lenses, life sciences, cosmetics and oil extraction technology.

Competition law is increasingly relevant to intellectual property practice and Simon regularly advises on UK and EC Competition law issues as they affect intellectual property licensing and other transactions.

Simon is a sub-committee member of the International Trade Marks Association (INTA) as well as a member of the International Association for the Protection of Industrial Property (AIPPI), Licensing Executives Society (LES) and associate member of the Institute of Trade Mark attorneys (ITMA). He is a visiting lecturer and examiner on the Oxford University Post-Graduate Diploma in Intellectual Property and Practice.

Simon is married with three children, lives in rural Bedfordshire and when he is not working likes to spend as much time as he can in the Alps "in the white stuff".

Recent talks

  • February 09 and November 08
    Institute of Trade Mark Attorneys evening lectures: brand licensing: practical tips and pitfalls.
  • September 08
    lecture on the Oxford University Post Graduate Diploma in Intellectual Property Law and Practice: IP licensing.
  • May 08
    Berlin - INTA Annual Meeting - Chair, table topic forum, brand licensing: restrictions and competition issues.
  • May 08
    London - Accelerator London Metropolitan University: IP Basics and business Dealings in IP.
  • April 08
    Chicago - Practising Law Institute: Advanced Licensing Agreements conference - IP Licensing in Europe.
  • March 08
    London ITMA - Foundation level Workshop on Designs.
  • February 08
    San Francisco - Advanced Licensing Agreements Conference (Practising Law Institute) - IP licensing in Europe.
  • February 08
    London - Bristol University Post Graduate Diploma in IP: Designs Workshop.
  • December 07
    Boston USA - INTA Trade Mark Administrators' Conference: The business of IP.
  • September 07
    London - Institute of Trade Mark Attorneys - Foundation course - interaction of designs and copyright.