Liz M.

Senior Trademark Counsel – Global, at 3M, Transportation and Electronics Business Group (TEBG), and various divisions of the Safety and Industrial Business Group (SIBG)

Birmingham, England, United Kingdom

About

Global Trademark Counsel to the Transportation and Electronics Business Group, and various divisions of the Safety and Industrial Business Group, at global innovation company, 3M. Based in the UK, I advise the global TEBG and SIBG businesses on a range of issues, from trademark enforcement (such as dealing with suspected counterfeit products and misuse of our trademarks by third parties) to managing the TEBG and SIBG trademark portfolios and other advisory work (such as clearance of new product names). Previously EMEA Trademark Counsel with primary responsibility for 3M’s Consumer Business Group in EMEA, policing a number of 3M's power brands: Post-it®, Scotch™, Command™ and Scotch-Brite™, amongst others. 3 years inhouse experience as an Office of General Counsel business lawyer to 3M's UK and Ireland Electronics and Energy Business Group, Abrasives Systems Division, Separation and Purification Sciences Division, Sourcing function and Digital Resource Centre, dealing with all matters, from drafting 3M's first UK Modern Slavery Act statement, to general advisory work, stakeholder management on key strategic projects and negotiating and drafting business-critical Framework Agreements, Supply Agreements, NDAs and other tender documentation for key accounts. Private practice experience of dealing with all aspects of IP litigation, including high value patent disputes and trade mark infringement cases, together with providing advice to businesses on their corporate IP strategy including pursuing third party infringers of iconic brands for trade mark infringement, passing off and copyright infringement both online and in retail outlets.

Experience

  • 3M (10 yrs 6 mos)
    • 3M - Global Senior Trademark Counsel - Solicitor, England & Wales
      May 2022 - Present · 4 yrs 2 mos

    • 3M - Global Trademark Counsel - Solicitor, England & Wales
      Sep 2019 - Apr 2022 · 2 yrs 8 mos

    • 3M - EMEA Trademark Counsel - Solicitor, England and Wales
      Nov 2018 - Sep 2019 · 11 mos

      Trademark manager for the Europe Middle East and Africa area; managing a small team in EMEA and working closely with the 3M global trademark team. Responsible for Consumer Business Group trademark enforcement matters across EMEA; policing 3M's iconic consumer brands, including POST-IT, COMMAND and SCOTCH-BRITE, and advising the business on a range of issues, from suspected counterfeit products, to misuse of 3M trademarks by third parties.

  • Solicitor, Intellectual Property Litigation at DWF
    Feb 2013 - Dec 2015 · 2 yrs 11 mos

    I have experience of dealing with all aspects of IP litigation, including high value patent disputes and trade mark infringement cases, together with providing advice to businesses on their corporate IP strategy including pursuing third party infringers of iconic brands for trade mark infringement, passing off and copyright infringement both online and in retail outlets. Experience includes: • acting in relation to a patent infringement claim brought by a US designer and the exclusive distributor in respect of a lightweight garden hose launched in the UK, culminating in a successful outcome at trial. • dealing with all aspects of a theft of confidential information case, following an ex-parte injunction to prevent unauthorised use of the client’s specialist radar technology and diversion of business to a competing company. • assisting on a multi-million pound dispute acting on behalf of Europe’s leading manufacturer of compatible ink cartridges in respect of a multiple patent infringement claim made by a worldwide printer manufacturer culminating in the successful settlement of the dispute shortly before trial. • advising the largest dairy farming co-operative in the UK in relation to the exploitation of its own IP, purchase of third party IP and IP infringement issues surrounding the development of new products.

  • Solicitor, Intellectual Property and Commercial Litigation at Cobbetts LLP (acquired by DWF in February 2013)
    Jul 2012 - Feb 2013 · 8 mos

  • Cobbetts LLP (2 yrs)
    • Trainee Solicitor, Corporate
      Mar 2012 - Jul 2012 · 5 mos

    • Trainee Solicitor, Employment
      Oct 2011 - Mar 2012 · 6 mos

    • Trainee Solicitor, Commercial Litigation
      Jun 2011 - Oct 2011 · 5 mos