Mathew Healey

Partner & Head of Trade Marks

Recommendations

  • Recognised as a Key Lawyer in charity law

    Legal 500 2020

  • Recognised as a Next Generation Partner for Brand Management

    Legal 500 2020

  • [Mathew is a] valued advisor as well as being practical, responsive and commercially minded'

    Legal 500 2020

  • Recommended - Brand Management

    Legal 500

  • Provides balanced and accurate advice

    Legal 500

Experience

I head up Bates Wells’ in-house team of specialist trade mark lawyers.

Brand is key for non-profits and responsible businesses alike.  My team and I aim to help you look after these precious assets in the best way that you can.

My work encompasses checking new names and brands are available to use, and protecting new brands via trade mark registration.  We also specialise in dispute resolution – if someone treads on your toes, we’ll do all we can to fix things without incurring the cost, and possible adverse publicity, of formal legal action.

I help businesses and charities of all kinds, from start-ups to world-famous institutions.  We’ve a super-specialisation in working with INGOs to secure control of their brand in their ‘field’ territories, and work with networks of local contacts throughout Africa, China and the Indian sub-continent.  I’ve been at Bates Wells for over a decade and know the non-profit world – and the challenges you face – inside-out.

I also handle other IP-related legal work including licensing and copyright matters, and frequently advise on charity name registration matters before the Charity Commission.

My current and past clients include organizations as diverse as the organizing committees of various Olympic and Paralympic Games, Unilever, Sightsavers, Nokia, Shelter, Adidas, GlaxoSmithKline, Samaritans, the Children’s Society, the charitable organizations of members of the Royal Family, and many others.

I love talking about my work (and I am nothing like as scary as I look in my profile picture!) and am always happy to have free initial conversation with new people.

Highlights

  • We helped a famous animal welfare charity with its high-profile launch in China.

    This involved complex trade mark clearance work looking at different prospective brands in multiple languages. Working with our local contacts, we also helped with trade mark registration and copyright before the Chinese IP office. We advised on legal and commercial risk and also helped draft the charity’s key agreement with its local partner.

  • We helped a major ‘responsible business’ in the construction sector secure rights in its name and logo.

    We also provide it with brand monitoring (trade mark watching) services, so that it can nip potential conflicts in the bud, before they become serious legal and reputational issues.

  • We helped a well-known trade association overcome a challenge to adoption of its new branding.

    This meant looking at the legal details of the other party’s claim, but also considering the options for settling things amicably, including whether there was any common ground between the parties. We negotiated on behalf of our client and were able to secure a compromise solution that allayed both sides’ concerns, and allowed our client to continue using its brand.

  • I advise on all aspects of trade mark registration including advice on protection strategies, and handling trade mark applications in the UK, Europe and around the world
  • I advise on the clearance of new names and brands for use, on a UK and worldwide level.
  • My work includes offering dispute resolution services – dealing with contentious cases such as trade mark oppositions and infringements including conducting settlement negotiations
  • I offer advice in respect of intellectual property and trade mark licensing, and drafting of licences.
  • I give advice and provide registration services in relation to registered designs and domain names.

Qualifications and career

  • University of Oxford, BA (Hons) in Philosophy, Politics and Economics
  • Qualified as a UK and European registered trade mark attorney in 2004
  • Joined Bates Wells in 2009

Pro bono, memberships, and appointments

  • I regularly provide various small charities with pro bono and ‘low bono’ assistance with trade mark clearance and registration matters, and am an advisor at the Institute of Trade Mark Attorneys pro bono clinic. In my spare time, I help run an amateur football club.