Legal Guidance and Research / Experts / Désirée Fields
Désirée Fields#10526

Désirée Fields

Désirée Fields is a Legal Director in the London office of international law firm Pinsent Masons, specialising in intellectual property. Her practice focuses on worldwide trade mark and design portfolio management, international prosecution and clearance, enforcement, exploitation and commercialisation of trade marks and designs. She has been involved in complex multi-jurisdictional trade mark oppositions and litigation and has experience with coordinating trade mark projects on a global basis. Désirée has worked with clients across a diverse range of sectors, including luxury and consumer brands, food and beverages, media, technology and communications, sports, entertainment, hospitality, and leisure. Her particular focus on the tennis industry is a result of her lifelong interest in the sport in which she has become widely regarded for her extensive knowledge and insight. Désirée has authored numerous articles for various intellectual property and other legal publications and has been consistently recognised by leading legal directories and publications. She has been named as a top trade mark professional for trade mark prosecution and strategy by World Trademark Review’s WTR 1000 (2017-2022) and recommended for trade mark and brand protection work in the Legal 500 (2018-2022). Désirée’s outstanding contributions to The Trademark Reporter (TMR) Committee of the International Trade Mark Association (INTA) since 2018 have resulted in her elevation to Senior Editor for 2023.  

Practice Area

Panel

  • Contributing Author

Qualified Year

  • 2004

Experience

  • DLA Piper UK LLP (March 2015 - September 2021)
  • Stobbs (IP) Limited (July 2014 - March 2015)
  • McDermott Will & Emery UK LLP (October 2008 - July 2014)
  • Fasken Martineau LLP (formerly Fasken Martineau Stringer Saul LLP), (February 2008 - April 2008)
  • Lovells LLP (Now Hogan Lovells LLP) (August 2004 - February 2008)

Membership

  • International Trade Mark Association (INTA)
  • CITMA

Qualifications

  • Diploma in Intellectual Property Law and Practice (2007)
  • Post Graduate Diploma in Legal Practice (PGDL) (2004)
  • LLM (2002)
  • LLB (2001)

Education

  • University of Bristol (2006 - 2007)
  • BPP Law School (2003 - 2004)
  • University of Toronto, Faculty of Law (2001 - 2002)
  • Queen Mary University of London (1998 - 2001)

1 Contributions by Désirée Fields

UK Metaverse brand protection and enforcement: trade mark and design strategies, classification of virtual goods and NFTs, licensing, monitoring, jurisdiction and remedies
PRACTICE NOTES
UK Metaverse brand protection and enforcement: trade mark and design strategies, classification of virtual goods and NFTs, licensing, monitoring, jurisdiction and remedies
This Practice Note outlines the key factors right holders should weigh when safeguarding and asserting their brands in the Metaverse. It addresses how to plan and define, from the outset, the ambit of trade mark or design protection, including spotting and closing protection gaps, and highlights matters to weigh up when licensing a brand for use in the Metaverse. On enforcement, the Practice Note addresses, among other matters: Ongoing monitoring of potential infringements; Tracing and identifying infringers; Assessing potential causes of action and navigating jurisdiction issues; Available remedies and common, general enforcement challenges; It finishes with practical pointers to assist right holders when protecting and enforcing their brands. What is the Metaverse? There is no universally agreed definition of the ‘Metaverse’; however, it is widely understood to comprise immersive environments, frequently utilising augmented or virtual reality. The immersive environments forming the Metaverse also possess their own fully operational economy...
IP
Expert page AD
If you expected to see yourself on this page, click here.