Guinness World Records is one of the planet’s most recognizable brands, and protecting that brand is one of the reasons Paul Nightingale’s role as Legal Counsel for the company’s China business is so important.

“Handling trademark infringements is a big part of my job,” explains Paul. “It’s a constant battle to protect our brand, particularly in China, where intellectual property (IP) violations are more commonplace.

“But my role is much broader than that and also includes looking after the company’s other legal needs, such as working on commercial contracts, compliance and trademark strategy.”

Paul joined Guinness World Records in 2017 having been headhunted while working in the Firm’s Capital Markets team in London.

He says: “I really enjoyed my time at White & Case, but the chance to move to Beijing and use my language skills (I speak Mandarin) really appealed, as did the challenge and variety of working in-house.

“I’m hugely grateful to the Firm for the opportunities it opened up to me, many of which continue to be priceless in my current role.”

According to Paul, these opportunities started even before he officially joined White & Case. After finishing university, he spent two years in Japan, before returning to the UK. He was accepted onto the Firm’s trainee solicitor scheme in 2011 and spent the following two years at law school.

He explains: “During a break in my studies, I decided I wanted to use the time to improve my Chinese, so I asked if the Firm would sponsor me.

“They offered me an interest free loan, which enabled me to spend six months in Taiwan learning Mandarin, something that has been instrumental in my career since, helping me get my current job.

“I think it’s great how White & Case takes an active interest in the personal development of its people, which is something that attracted me to the Firm in the first place.”

Having completed his legal studies in 2013, Paul was due to join White & Case’s London office as a trainee in early 2014, but again benefited from the opportunities available at an international firm.

He says: “I had a few months off before I started, so asked if there was any chance of a placement in Asia in the meantime.

“There was, and I spent three months in the Beijing office as an intern before starting in London in the new year.

“That showed the benefits of working for an international firm. Many law firms claim to be international, but White & Case is one of the few to walk the talk.”

Highlights of his time at the Firm included working on a landmark intellectual property case where pharma company GlaxoSmithKline (GSK) was claiming trademark infringement of two purple pantone colours used on its inhalers.

The Firm represented Sandoz (a subsidiary of Novartis) in the case, defending the company’s right to produce a generic inhaler with a purple colour scheme that GSK alleged was confusingly similar to that of its own inhalers.

Paul says: “It was an interesting trademark case and increased my experience on IP matters, which has proved really helpful given my current role.”

Another standout matter Paul worked on for the Firm during his time in Capital Markets was a bond issuance by the Ministry of Finance in Ukraine, which happened during a particularly sensitive period of the ongoing unrest regarding disputed territories.

He says: “Given the sensitivity of the situation, the wording of the offering documents had to be very carefully considered to ensure we chose language that was acceptable to our client, but also to the underwriters.

“In fact, one of the things working for White & Case taught me was the importance of attention to detail and the need to explain complex legal issues in a way that non-lawyers can understand.

“That’s been very handy in-house, because I’m often working with people who don’t come from a legal background.”

Since moving to Guinness World Records, career highlights have included a successful intellectual property case against Chinese partially state-owned car manufacturer, Chery.

Paul explains: “Chery had used our Chinese brand during a roadshow event without authorization. For a non-Chinese company like ours to win a trademark case against a state-owned company in China was a significant achievement, particularly because the Guangdong Higher Court – one of the most influential provincial courts in China – upheld the decision on appeal and awarded us damages.”

Paul still stays in touch with his former colleagues at White & Case and his opinion of the Firm hasn’t changed.

He says: “I’ve always admired the Firm and have fond memories of my time there. I also keep in touch with people from across the network, particularly those I met during my time in the London, Beijing, Tokyo and Singapore offices.

“I’m thankful for the opportunities that were given to me.”