We are excited to introduce London Partner Nathan Smith, who joined Katten's Intellectual Property Department in January. Nathan has more than 20 years of experience representing clients across a broad spectrum of industries, including fashion, retail, entertainment and life sciences, and tenaciously advocating for their intellectual property rights worldwide. With his comprehensive skill set, proven track record and personable approach to client service, Nathan is regarded as a long-term trusted advisor. Learn more about his career trajectory, his experience navigating complex IP transactions and fashion matters, and his approach to client relationships in the interview below.
Please tell us about your career path and how it led you to specialize in intellectual property law.
During my first semester at university, all law students were randomly assigned a research project. Fortuitously, mine happened to be related to intellectual property (IP). I can still vividly remember a late night at the university library studying a case involving the musician Phil Collins and extended copyright that was pivotal at the time! From that moment on, I was hooked. Apart from a brief, misguided spell where I considered becoming an M&A lawyer, all roads led to a career in IP law. I know most lawyers say this about their practice area, but IP is a fascinating field where creativity, innovation, law and business intersect, and I'll always be grateful to the lecturer who introduced me to it. What started as a spark of interest has grown into a career helping clients protect and make the most of their valuable ideas and assets in an ever-changing world.
You have also worked with some of the world's leading fashion brands. Can you describe a notable fashion matter you worked on and the unique IP challenges it presented?
There are two which immediately spring to mind. While I was a junior associate, we acted for the British fashion retailer Karen Millen Limited in its successful unregistered design right infringement case against the Irish retailer Dunnes Stores in the Irish Commercial Court. The case centered around the design of two shirts, which we alleged that Dunnes Stores had copied from Karen Millen. This was the first time the EU Community Design Regulation had been litigated in Ireland, and following a reference to the Court of Justice of the European Union, the Irish Supreme Court upheld the Commercial Court's decision. As I was at the start of my career, this was great exposure to a high-profile international case (and the trips to Dublin were fun too!).
Another case that stands out is our successful defense of leading online retailer ASOS in a trademark infringement claim brought by Swiss high-end cycling brand ASSOS. This was extremely high-stakes litigation, and it was a phenomenal feeling when the English High Court, and subsequently the English Court of Appeal, ruled in the client's favor. We also successfully staved off the other side's attempt to take it to the English Supreme Court. Separately at the time, I was working on two cases where the English Supreme Court was involved, which is incredibly rare for IP practitioners.
How do you manage and maintain strong relationships with such a diverse client base across multiple industries?
At the beginning of my career, a partner shared words of wisdom that have stayed with me: the best lawyers don't view problems purely through a legal lens. Clients expect us to help solve their business challenges by combining legal knowledge with commercial insight. I've always tried to heed that guidance, and will always seek to immerse myself in a client's business so that I can strive to understand both the legal and commercial sphere in which they operate. When you can provide counsel that's both legally sound and commercially strategic, clients start to see you as more than just a lawyer — they value you as a trusted advisor. Of course, it also helps to build genuine connections on a personal level. At the end of the day, people want to work with people they like and trust.
Can you elaborate on your approach to global trademark clearance and the strategies you employ to secure necessary rights for your clients?
Trademark clearance is really a mix of art and science. The science comes from using the best tools and databases to uncover potential conflicts, but it's also about skillfully designing a search strategy tailored to the client's specific needs. The art lies in interpreting those results — deciding what's a real risk (from both a legal and commercial perspective) and what's not, then factoring in market realities, cultural nuances and the client's business priorities. Again, the better you know and understand a client's business (and the role the new mark will play in that business), the better you can advise on clearance strategy and risk.
Since you have a significant background in structuring, drafting and negotiating complex IP transactions, what is an example of a particularly complex transaction you worked on?
The transaction that always comes to mind is one I worked on for a Lebanese client a few years ago. We were involved in week-long negotiations in Beirut, during which the client and the counterparties would negotiate in English, Arabic and French (often switching mid-sentence). It was incredibly impressive to witness, although it made it more difficult for us lawyers who had to prepare the markup of the transaction documents at the end of each day's negotiation. In addition to the linguistic challenges, we had to carefully navigate the difference in IP law, as well as related regulatory considerations across multiple jurisdictions. It was a challenging but incredibly rewarding experience.
You have received several accolades for your work in IP law. How do these recognitions influence your practice, and what do they mean to you personally and professionally?
It's always nice to receive recognitions but it doesn't change how I approach my work. I'm more focused on the next project or next challenge than on past accolades. It's always about what's coming up and how you can do it even better than before!
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