Simon is an intellectual property and commercial lawyer with almost 30 years’ experience advising brand, creative and technology-driven businesses on IP law, strategy, transactions and IP contract disputes. He is a recognised expert in transactions relating to the commercial exploitation of all intellectual property rights including licensing, distribution (including selective distribution), franchising and technology transfer agreements. Simon advises businesses both in the UK and internationally.
Simon’s experience spans a wide range of business sectors, in particular fashion/retail, video games, consumer products, software and engineering.
Expertise
Intellectual Property
- IP licensing and assignments
- Brand extension agreements
- Brand collaboration/co-branding agreements
- Trade marks
- Trade mark co-existence agreements
- Designs
- Copyright
- IP strategy
- IP management
- Patents
- Patent licensing
- Technology transfers and collaborations
- Trade secrets
- IP contract disputes
- Competition law issues related to IP transactions
- IP audits
- IP due diligence
- Commercialisation of IP and technology
- Software development and licensing
- IP arrangements in M&A, investment and other corporate transactions
- IP infringement opinions
- Settlement agreements
Commercial
- Commercial contracts
- Contract reviews
- Franchising
- Merchandising agreements
- Distribution agreements
- Selective distribution
- Confidentiality agreements
- Sponsorship agreements
- Supply and manufacturing agreements
- Development agreements
Experience
Fashion and retail
- Advised a luxury fashion label on brand extension deals across a range of product categories (including fragrance, eyewear and luggage) with leading specialist category partners
- Advised a leading UK fashion group on its international expansion through franchising/territory development agreements
- Advised a well-known luxury womenswear label on brand collaboration partnerships as well as other commercial arrangements including supply and manufacturing
- Advised a leading lingerie brand on a major product range co-branding and endorsement deal with an internationally-renowned film star and model
- Advised a fast-growing sports/apparel brand on international brand protection/enforcement strategies and co-existence issues
- Advised a veteran of the UK fashion industry on various brand licensing/extension deals and co-existence agreements
- Advised a leading fashion brand on various design infringement matters vs third-party retailers
- Advising a multi-award-winning textile/materials company on an international technology collaboration and patent licensing transaction with a major US player
- Advising an award-winning ‘independent’ UK beauty company on various brand licensing and product distribution agreements
Software and technology
- Advised a leading video games company on a myriad of computer game development, licensing and other IP transactions related to its portfolio
- Advised video games developers and film production companies on brand and other IP issues related to ‘real world’ content featured in video games and other media
- Advised a fast-growth AI software company on the development of an IP strategy for the business
- Advised on a procurement contract for the development and supply of technology in relation to cycle share schemes
General
- Advised a leading construction company on the acquisition from a UK university of technology arising out of a collaboration and the licensing of associated patents
- Advised an international building materials company on the renegotiation of international patent cross-licensing arrangements related to one of its product technologies
Please note: The experience list above may include examples of work completed prior to joining Keystone Law.
Recognition
Recognised in Chambers UK 2024 for Intellectual Property
“Simon Chalkley is a sensible and experienced practitioner.” Chambers UK 2024
Recognised in Who’s Who Legal 2023 for Intellectual Property
Recognised by Best Lawyers (UK) in the practice area of Intellectual Property Law (2009-2024)
Recommended by WTR1000 2023 – Individuals: transactions
“Transactional lawyer Simon Chalkley has a wealth of experience in executing commercial deals. Chalkley is a pragmatic operator and a well-known figure on the scene.” WTR1000 2023
Recognised in Chambers UK 2023 for Intellectual Property
“Simon Chalkley is a capable licensing lawyer.” Chambers UK 2023
Recognised by The Legal 500 (2022-2023) for Intellectual Property: Trade Marks, Copyright and Design
Recognised by The Legal 500 (2022-2023) for Intellectual Property: Patents (Contentious and Non-Contentious)
Recognised in Who’s Who Legal 2022 for Patents and Trademarks
Recognised in Chambers UK 2022 for Intellectual Property
Recognised by Managing Intellectual Property (MIP) IP Stars 2020, 2021 and 2022 as a Transactions star
Recognised in The Legal 500 2020 for Intellectual Property
Recognised in Chambers UK 2020 for Intellectual Property
Recognised by IAM (Intellectual Asset Management) Strategy 300 as a World Leading IP Strategist
Recognised by WTR1000, 2020 for brand transactions
Recognised by IAM Patent 1000, 2020 for patent transactions
“A true commercial IP lawyer … when it comes to brands there is no question that he is genuinely superb. He is immensely likeable and has a light touch, but his strongest point is his understanding of business” WTR1000, 2017
“Sources describe him as a ‘wise, clear-thinking negotiator with a huge range of skills” Chambers 2017
“Very practical advisor who gives good advice on possible options and the best ways of managing negotiations” Chambers 2016
“A transactions titan” IAM 1000, 2016
“A go to lawyer for commercial transactions … his service and knowledge are impeccable” Chambers 2015
“True licensing specialist – his advice on trademark policy should be prized because he can really make a mark for a business” WTR1000 2014
“His reports are crystal clear and his commercials advice is bang on. He always knows the best strategy for moving forward” Chambers 2014
“Has an enviable ability to understand clients’ complex business needs and move his service accordingly” WTR1000, 2012
“ … is a leading expert; one patent attorney confided: ‘I referred some of my post demanding clients to Chalkley and they agree that he’s terrific’ IAM Patent 1000, 2012
Membership Positions
Licensing Executives Society (Britain and Ireland) – President (term ending June 2020)
INTA, Commercialisation of Brands Sub-Committee (2020-2021)
Career
Simon qualified as a solicitor in 1991. Prior to joining Keystone Law in 2020, he was a Partner at the following firms:
- Wiggin
- Redd
- Jones Day