Joanne’s practice encompasses contentious, commercial and advisory work across all IP rights, with a particular focus on trade marks and passing off, designs and copyright. She has advised clients from a variety of industry sectors, including high-end fashion brands, electronic musical device manufacturers, video game publishers, furniture and homeware designers, software companies, food franchises and movie studios.
Joanne’s contentious experience includes acting for clients in contested registry proceedings before the UK IPO, the Appointed Person and the EU IPO, including appeals to the General Court and the Court of Justice of the European Union. Joanne also has experience acting for clients in litigation before the Intellectual Property Enterprise Court (IPEC) and High Court. In addition, Joanne has experience of alternative dispute resolution, particularly mediation.
Joanne’s commercial and advisory experience includes assisting with international franchise agreements and licensing agreements, advising on brand clearance issues and drafting terms and conditions of use for various online products.
In 2017 Joanne won the AIPPI national award for the best young contribution to a study question for her work in relation to bad faith trade marks. Joanne is a contributor to the INTA Cancellation Guide for the EU and recently co-authored, together with Sara Ashby and Michael Browne, the UK chapter of a book entitled “Design Rights: Functionality and Scope of Protection”.
Prior to joining Wiggin Joanne was at Redd, having previously trained at Simmons & Simmons.
Contentious work includes:
- Acting for Skype in a dispute with Sky concerning the registration of the word mark SKYPE before the EU IPO and General Court.
- Acting for Gucci in revocation proceedings concerning its iconic “GG” logo, on appeal from the UK IPO (Gerry Weber International BV v Guccio Gucci SpA).
- Acting for the publishers of an iconic video game franchise in a dispute in the High Court involving copyright and trade mark infringement, passing off and malicious falsehood.
- Defending trade mark and passing off proceedings for an international food franchise before the IPEC.
- Successfully defending cancellation proceedings against a registered community design before the EU IPO for a musical electronic device manufacturer.
- Advising a manufacturer of mechanical chair mechanisms in a dispute concerning UK unregistered design right.
- Representing a global fashion house in multiple contentious registry proceedings and undertaking brand protection work including advising on and filing oppositions.
- Acting for an overseas restaurant chain in trade mark infringement and passing off proceedings before the IPEC.
- Acting for furniture retailer and interior design company OKA Direct in trade mark infringement proceedings before the IPEC.
- Advising on a copyright enforcement programme for a major computer games publisher to eliminate copyright infringements of computer game content as well as unauthorised merchandising.
- Advising on a High Court case concerning copyright infringement in artistic works and the infringement of moral rights in those works.
Commercial and advisory work includes:
- Advising a fashion retailer on freedom to operate, addressing, in particular, issues of patent infringement and validity.
- Undertaking clearance work on proposed names for new products or projects for a major software company.
- Assisting with the international franchising agreements and strategy for global fashion brands.
- Drafting terms and conditions of use for an online game and a collaborative community platform, both in the computer gaming industry.
- Drafting standard licence and licensing agency agreements for a licensing agency, as well as advising on individual deals with licensees.