Intellectual Property
WHY CHOOSE US
HOW WE CAN HELP
Our specialist groups of lawyers provide comprehensive legal solutions and advice. They are amongst the most highly rated in the UK according to Chambers Guide to the Legal Profession and The Legal 500.
Specialist advice on IPR can add significant organisational value.
Our Intellectual Property team advises on all aspects of IPR, and is experienced in a broad range of industry sectors including IT, pharmaceuticals/biotechnology and electronics to consumer goods, fashion, design and television. Our location in the Thames Valley means that many of our clients operate in high-tech industry sectors.
How we can help
We can help you to identify, create and maintain your IPR by securing ownership and registration where appropriate. We can also help you to generate revenue and other benefits from your IPR through licensing, assignment or as part of a wider commercial transaction.
If a dispute arises, we are experienced at taking bold action to enforce client’s rights and also resist unjustified thirdparty claims. Handling complex patent disputes is one of our particular specialisms. Where protecting interests requires firm action through the Courts, we are able to react quickly. However, we are also experienced in mediation, arbitration and other forms of alternative dispute resolution and will always explore with you the best route for resolving your dispute as quickly and cost-effectively as possible.
Services include:
- Brand guardianship
- Business name protection
- Domain name registration and protection
- Design rights protection
Brand guardianship
We provide a comprehensive brand management and protection service.
With the 2007 changes to the trade mark system the Intellectual Property Office no longer automatically refuses a trade mark application on the grounds that it conflicts with an earlier trade mark.
Instead, it is up to the holder of the existing earlier trade mark to oppose the application.
Trade mark service
Our trade mark service comprises:
- Trade mark registrations.
- Monitoring services including:
- Watching services (UK, Europe and worldwide).
- Opt in services to monitor third party registrations.
We also provide a range of other services to help clients protect their brand portfolios.
Company name watch
Changes to the Companies Act now allow brand owners the ability to control whether companies can be incorporated with names which would be confusingly similar to their trade marks.
A company name watch covering the Companies Register of England & Wales watching for recently incorporated companies under the watched name will prevent this.
Domain name watch
Our IPR team provides comprehensive domain name registration and watching services which includes top level domain names (.com; .org; .net; info; .biz) as well as national domain names.
We have a successful track record in recovering domain names from third parties.
Copyright
Copyright protects creative or artistic works. It gives creators of artistic/authored works rights to control ways their material can be used. In the UK and most of the rest of world, copyright is automatic and each copyright owner will decide how to exploit and enforce their copyright work.
We provide copyright legal advice including a copyright escrow service, licensing and commercialisation of copyright materials and copyright enforcement.
Anti-counterfeiting
Developing successful brands is often expensive and businesses invest large sums building a reputation. Counterfeiters produce fake goods and services that can quickly undermine a business’ IP portfolio.
Our IPR team provides specialist anti-counterfeiting support services for clients with intellectual property and/or physical products.
Design Rights
Rights in designs allow businesses to prevent others from copying a design. There are two types of design right:
- Unregistered design rights that protect the shape or configuration of a marketable (or potentially marketable) product. These are used to prevent unauthorised copying of an original design.
- Registered design rights that require a formal application to the Patents Office and grants more extensive protection over and above any design right or copyright protection that may exist in the design.
Our design rights service includes:
- Design right registration.
- Design portfolio registration and management (for UK and Europe registered designs).
- Monitoring services including:
- Oppositions to third party applications to prevent registration of designs.
- An unregistered design recording service enabling the design right holder to prove priority rights and existence of unregistered designs).
- Design right protection service to prevent infringing use of the creator’s designs.
Our Experience
Our commercial IP work includes:
- Brand management, including:
o Brand clearance
o obtaining registered trade mark and domain name protection internationally
o management of trade marks and domain names
o brand licensing and merchandising
- Obtaining registered designs and managing registered design portfolios
- Designs and copyright licensing
- Spin outs, patent and know-how licensing, technology transfer
- R&D collaborations
- Non-Disclosure agreements; confidential information; privacy and data protection
- IT, multimedia and communications agreements
- Advertising copy clearance, trade libel, defamation, comparative advertising
- IPR due diligence on corporate transactions
- IPR warranties and indemnities, commercial risk management
- Clinical Trial agreements; Material Transfer Agreements; Contract Research
- Organisation Agreements
- IPR restructurings
- Auditing your business to identify what IPR are owned or used by the business;
- Music industry agreements
Our IP dispute resolution work includes:
- Patent litigation in the Patents County Court, High Court and Court of Appeal
- Trade mark and passing off cases
- Anti-counterfeiting programmes
- Resolving domain name disputes; recovering domain names from cyber-squatters using the Nominet and ICANN dispute resolution procedures
- Copyright and designs litigation
- Breach of confidence, misuse of trade secrets
- Resolving problems arising from IPR licences and other IPR agreements
We work closely with patent and trade mark attorneys and with our clients’ other advisors.
We are part of the Legal Advisory Group of FAST (the Federation against Software Theft) and are regular contributors to its journal advising on the protection of IPR. Our lawyers are members of various specialist professional organisations, include TIPLO (The Intellectual Property Lawyers Association), AIPPI (The International Association for the Protection of Intellectual Property), and the Law Society’s Intellectual Property Working Party (advising on IP policy and legislative change).
Recent Commercial IPR highlights include:
- Advising on the transfer of a collection of photographs by a leading photographer to a charitable foundation, including detailed negotiations over the scope of the charity’s exploitation rights.
- Assisting a branded goods company on a merchandising and licensing programme relating to sporting equipment, clothing and novelty items.
- Co-ordinating a Europe-wide international trade mark filing programme for a US music and sound equipment supplier.
- Helping a major house builder identify IPRs in construction designs.
- Advising on comparative advertising and gaming law for clients in the automotive, finance and computer peripherals sectors.
Recent patent disputes highlights include:
- Assisting Hewlett-Packard Company on multi-jurisdictional patent infringement and other IP issues relating to its thermal inkjet printing business
- Defending a Japanese optical instruments manufacturer against a claim for patent infringement
- Advising a leading UK domestic appliance manufacturer on allegations of patent infringement relating to oven cooling system; successfully revoking the patent before the Court of Appeal
- Helping a manufacturer of children’s safety products to resist a claim for patent infringement, including negotiating a favourable settlement
- Co-ordinating an opposition in the European Patent Office against a patent relating to record turntable technology
- Advising the owner of a patent for an ear piercing system on an enforcement programme
Other IP dispute highlights include:
- Defending a leading branded goods company against allegations of registered design infringement relating to sunglasses.
- Managing a dynamic international portfolio of trade marks, trade names and domain names for a leading publishing business.
- A government executive agency and other businesses on cyber-squatting and domain name recovery including use of Nominet procedure.
- Successfully winning a .eu domain name dispute before the Czech Commercial Court, as well as regularly acting on a full range of domain name disputes.
- Advising a composer on music copyright dispute with his lyricist, including negotiating a detailed settlement agreement.
