About Nathan Smith

With more than 20 years of experience, Nathan Smith's practice focuses on all aspects of soft intellectual property and the protection, exploitation, monetization and enforcement of his clients' rights worldwide. His diverse client base covers a range of industries, including technology, financial services, telecommunications, fashion, entertainment, retail and life sciences.

On the noncontentious side, Nathan advises public and private companies on global trademark clearance and provides trademark, copyright and design right counseling. He conducts multinational searches to advise on the availability of proposed brand names and works to secure necessary rights around the world

Nathan also has a wealth of experience advising on the acquisition, sale and licensing of intellectual property and technology assets, including the structuring, drafting and negotiating of international and domestic strategic licenses, joint ventures, franchise agreements, supply and distribution and sponsorship agreements. Additionally, Nathan advises clients on the IP and technology aspects of corporate transactions. He also represents clients in the life sciences industry in complex collaborations and licensing transactions.

In his contentious practice, Nathan is a tenacious advocate for his client's global IP rights. He has extensive experience in domestic and international IP and commercial litigation and arbitration, including numerous high-profile cases before the UK Supreme Court and the Court of Justice of the European Union. He also has a long history of success in contentious actions before the UK Intellectual Property Office, the European Union Intellectual Property Office and in many domain name disputes before Nominet, Internet Corporation for Assigned Names and Numbers (ICANN) and other domain name bodies.

Commercially sophisticated counsel with a personable touch

Prior to joining Katten, Nathan worked at another global law firm. His proven track record, combined with his highly responsive and personable approach to client service, has earned him recognition as a leading practitioner in World IP Review's UK Trade Mark Rankings and Managing Intellectual Property's list of IP Stars. He provides innovative solutions to help his clients achieve their objectives through a combination of legal knowledge and commercial insight. With his comprehensive skill set, Nathan is a long-term trusted adviser to his clients.

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Representative Experience

  • Representative Contentious Experience
  • Represented the corporate owner of one of the world's leading fashion brands in a trademark ownership and infringement dispute between its shareholders. *
  • Represented a well-known British retailer in successful trademark infringement and passing off proceedings in the Intellectual Property Enterprise Court. *
  • Represented a leading regulatory software platform in connection with a trademark infringement and passing off dispute. *
  • Represented an international telecommunications company in its trademark infringement and passing off the case against another major media company, in the first passing-off case to be heard by the UK Supreme Court in 30 years. *
  • Represented an international business in respect of a dispute with the heirs to the estate of a late-world chef and restauranteur regarding trademark ownership and use. *
  • Represented one of the world's leading online fashion retailers, in its successful defense, before both the High Court and the Court of Appeal, of trademark infringement cases brought against it by a Swiss cycling company. The dispute lasted five years and involved satellite litigation and trademark oppositions globally, including in France, Hong Kong, the US and Germany. *
  • Represented a well-known kitchen appliance brand in successfully defending against a rival’s allegations of passing off and trademark infringement relating to a new food mixer. *
  • Represented a fashion brand in a successful claim against a multinational retail chain in the ground-breaking trial in the Irish Commercial Court concerning design infringement of fashion designs. This was the first time the EU Community Design Regulation has been litigated in Ireland. *
  • Represented a foreign exchange company in their successful trademark infringement and passing off claim against a competitor. *
  • Represented a Singapore-based beauty and lifestyle company in defense of a trademark and passing off case brought against it by a leading UK waxing salon. *
  • Representative Noncontentious Experience
  • Represented a leading technology firm in its acquisition of an AI-powered supply chain intelligence platform. *
  • Represented a global packaging company in a €2.25 billion transaction involving the sale of its European tinplate manufacturing business to an affiliate of a leading private equity firm. *
  • Represented a premier brand management company on the sale of a well-known apparel brand. *
  • Represented a sports company in a strategic merger with an AI sports technology company in an all-share merger valued at approximately US$100 million. *
  • Represented a prominent telecommunications organization in the sale of its stake in a European fixed telecommunications operator to another major telecommunications company. The transaction valued the target company at approximately €497 million. *
  • Represented a leading international vodka brand in connection with its distribution arrangements in the UK. *
  • Represented a global biopharmaceutical company in respect of its exclusive in-license, distribution and supply agreements with another pharmaceutical company for a suite of oncology-related products. *
  • Represented a digital intelligence company on its cross-border acquisition of a software company that provides a process intelligence platform empowering users to understand, optimize and monitor business processes. *
  • Represented a software development firm in connection with a definitive agreement for its acquisition by a private equity firm. The transaction had an enterprise value of approximately $2 billion. *
  • Represented a financial institution on the spin-out and sale of its electronic payments and card services business for US$185 million. *
* Experience prior to Katten

News

Publications

Practices
Industries
Education
  • University of Sheffield, LLB, Law
  • University of Bristol, PGDip
Bar Admissions
  • England and Wales
Community Involvements
  • International Trademark Association
  • Pharmaceutical Trade Marks Group
Recognitions
Recognized or listed in the following:
  • Managing Intellectual Property
    Notable Practitioner, 2024
  • World Intellectual Property Review
    Notable Individual, 2024
  • World Trademark Review 1000
    United Kingdom: England and Wales, 2023–2024
Award Methodologies