Rob Lucas

Expertise

Rob specialises in intellectual property law and is a member of the  Sport Resolutions’ Panel of Arbitrators and Mediators. He provides advice across the full range of IP rights, whether in relation to their identification, protection or enforcement. Rob also assists businesses develop overseas markets for their products and services, managing international brands and working with tried and trusted associates to enforce rights and resolve disputes around the world.

Rob is well known for supporting manufacturing, packaging, cosmetic and retail businesses. He advises cosmetic manufacturers and suppliers in respect of their activities in the UK and around the world and is active within Yorkshire’s Cosmetics Cluster. This work includes licensing rights from household name celebrities and sports stars and advising on licensing deals with well-known brands.

Rob’s work in the sports and media and entertainment sectors includes advising sports governing bodies and clubs, advising management agencies, undertaking work for an international darts tournament, advising on the sponsorship of professional sportsmen and women and in the production and licensing of music, animation and film.

Rob has rare expertise in respect of the social gaming and the gambling of virtual items and skins and eSports. He is the author of ‘A Practical Guide to the Law of Esports’.

How do you help clients?

I enjoy helping clients identify, protect and exploit their intellectual property rights.

I help clients develop their IP right exploitation strategy, to maximise exploitation revenue but within their risk profile.

I enjoy working to set up and manage clients’ international operations which are IP right based.

Experience

1. Acting for a household name franchisor to shut down the activities of a company which was associated with a former franchisee. The company was claiming it was related to the client and promoting itself via Google (and other search engines). The matter involved an in-depth investigation to identify the company infringing our client’s rights, before taking action to stop the unlawful use of the client’s name. This action was taken swiftly and the infringement quickly ended to the great satisfaction of the client.
2. Advising a technology owner in respect of a joint venture to develop its railway carriage monitoring system by achieving interoperability with a third party’s management system for train SMART coaches. This included advising on the commercial arrangements to be put in place to manage risk, future supplies and to include licensing the technology and data flows. As the SMART coaches were to be supplied to a national railway company, care was also taken around the provision of software and the real time communication and monitoring of the data transmissions.
3. Acting for a food manufacturer in respect of the termination of a licence to use a household celebrity chef's name, brand and image on a variety of ready meals and foods. It was important to end the contract due to the royalty payments involved, but to do it in a way to avoid litigation and secure the ability to sell off manufactured product and use up materials (such as packaging).
4. Advising on a large, high value IP purchase. This involved terminating the existing licence and supply contracts as well as the client entering into a new IP licence for the limited retained IP and a raw material supply agreement.
5. Acting for a Premier League football club in respect of the acquisition, development and commercial exploitation of intellectual property rights in respect of its state of the art stadium and other facilities.