Trade Marks

We advise on all aspects of trade marks and brand protection. We regularly advise household-name brands, providing strategic trade mark advice, enabling them to generate, preserve, exploit and expand value in their brands.

Our work includes:

  • IP audits and due diligence
  • Brand clearances and freedom to operate advice
  • Portfolio management
  • Trade mark and passing off litigation
  • Contentious Registry proceedings
  • Anti-counterfeiting
  • Parallel imports and repackaging
  • Trade libel and malicious falsehood
  • Comparative advertising and advertising complaints
  • Competition and restraint of trade
  • Domain name recovery and company name disputes
  • Enforcement programmes
  • Licensing
  • Franchising
  • Distribution and agency arrangements
  • Co-existence agreements

We have extensive experience in coordinating and handling local and multi-jurisdictional disputes, including through Registry proceedings such as oppositions and cancellations, and in resolving such disputes out of court where appropriate. We act directly before the UK Intellectual Property Office (UKIPO), European Union Intellectual Property Office (EUIPO) and the World Intellectual Property Organisation (WIPO). Regarding overseas matters, we work with a range of independent firms who are experts in local trade mark laws.

Our trade mark experience also includes dispute resolution and litigation. We have an in-depth understanding of the UK and European court and appellate court procedures. Notwithstanding our expertise in litigation, we recognise our client’s commercial concerns and understand the importance of pursuing mediation and alternative dispute resolution procedures where appropriate. We have advised a number of international brands in relation to trade mark disputes, the majority of which are resolved outside court.

We have notable expertise in the protection of trade marks online, particularly in relation to anti-counterfeiting, and have been at the forefront of the development of the case law under which internet service providers can be required to block access to websites selling counterfeit goods.

We work closely together with our sister business INCOPRO, whose Talisman system provides a trade mark monitoring and enforcement service. Together we provide clients with a unique, one-stop online brand protection and anti-counterfeiting service.

Our lawyers also have experience of dealing with customs officials and preventing the cross-border trade of counterfeit goods.

Our trade mark team has been awarded UK Trade Mark Team of the Year 2019 in the Global IP Awards of IAM and WTR.