Lucia Caporuscio

Expertise

Lucia is a trade mark attorney and is a member of the Chartered Institute of Trade Mark Attorneys (CITMA).

Lucia obtained a Law degree from the University of Rome in 1995 and obtained a Postgraduate Diploma in Intellectual Property Law from Queen Mary and Westfield College London (1998). She has worked in the intellectual property field since then and qualified as a UK Chartered Trade Mark Attorney in 2013.

Lucia has gained diverse experience by working with several respected patent and trade mark attorney law firms as well as in-house corporate positions throughout her career.

She has often delivered trade mark law related training, workshops and presentations. Lucia particularly enjoys working with overseas clients and counsel, which allows her to utilise and practice her multilingual skills: Italian (native), English, French and basic Spanish.

What problems do you help clients with?

In the course of my career I have advised businesses on all aspects of trade mark protection and branding, worldwide. My client base has ranged from start-ups to large corporations, which allows me to experience the difference in each company’s considerations, perspectives, needs and attitudes when protecting their brands domestically or overseas. 

I advise in relation to re-branding, trade mark availability searching, trade mark filing strategy programmes, correct trade mark usage, trade mark and company name watching, oppositions, revocations, cancellations, and other disputes. I handle multi-jurisdictional trade mark registration programmes and dispute matters, policing of client’s trade marks through trade mark watching as well as assignment recordal projects.

My approach is pragmatic, determined and informed by commercial awareness. 

Experience

1. Acting in a dispute for a biotech/ pharma industry client aimed at protecting their registered trade marks’ scope of protection against a major pharma manufacturer who adopted a very similar trade mark, securing a satisfactory outcome with a low-cost settlement.
2. Advising a UK-based global food manufacturer in their review and expansion of their trade mark portfolio as well as routine maintenance of their existing trade mark portfolio.  
3. Advising a UK-founded iconic pram and pushchair brand championed by royalty in the maintenance, review, policing and expansion of their trade mark portfolio domestically and worldwide.  
4. Supporting a large Japanese IP attorney firm representing many major Japanese global brands in the maintenance, review, policing and expansion of their trade mark portfolio in Europe.
5. Assisting a major global pharmaceutical company to set up their offshore based IP paralegal team for the purpose of performing all administrative-based activities linked to TM filing, TM renewal and general TM portfolio management, IP database updates and maintenance and included the creation of a centralised accounting point for all overseas invoicing. This project also involved intense training of 20+ law graduates on all aspects of trade mark filing and prosecution.