IP & Technology | Branding & Trade Marks
Brands and trade marks are valuable assets in their own rights. Product life-cycles of businesses may be shortening with modern, fast-moving technologies, but brand reputation builds on the success of products and marketing activities; over time the brand speaks for itself, imbuing customer confidence and taking on substantial value of its own.
Our expertise
Our depth and breadth of experience enables us to adapt our advice to suit the different needs of our wide range of clients, from international well-known businesses to start-ups. We cover advice from initial feasibility guidance, putting in place protection, brand strategy and setting up and maintaining a global program to helping our clients exploit those rights commercially, for example via IP Licensing. We handle:
- registrability advice
- clearance
- devising registration strategies
- trade mark portfolio management and renewals
- opposition and cancellation actions
- issuing and defending trade mark infringement actions
- watching services
- co-existence and Settlement Agreements
Our experience
Recent work has included the following:
- setting up, growing and managing the global trade mark portfolio of many clients across a diverse range of sectors, including for a prestigious British bicycle manufacturer, a Swiss-based ski resort, an award-winning e-learning provider and a number of software companies; in the natural course of doing so we deal with all types of local issues as they arise
- preparing brand licensing and merchandise agreements relating to well-known Hollywood animated characters and designer eye-wear
- advising a shoe manufacturer in devising its new mark, providing registrability and clearance advice and obtaining trade mark registrations for the new mark
- pursuing an opposition action for an education client against the owner of conflicting mark
- advising a range of clients across diverse fields including in the energy, business consultancy, e-platform and clinical research sectors in defending against third-party threats of opposition/infringement and negotiating settlement agreements that protect their interests
Related Expertise
Our Team
News & Insights
In a developing story, where all the facts are not yet clear, Wembley National Stadium (“WNS”) has successfully applied to invalidate Wembley Football Club (“WFC”)’s 2012 EU registered trade mark.
Toblerone has tempered Poundland’s launch of its rival “Twin Peaks” chocolate bar by threatening infringement action.
Resellers need to tread a careful line when using a brand owner’s marks. Use by an independent garage of BMW’s marks crossed the line between informative use (which is permitted) and misleading use (which is not).
In the latest round of the long running skirmish between confectionary giants Nestlé and Cadbury, Nestlé has lost its appeal to secure trade mark protection for the shape of its four-finger Kit Kat bar.
Aggrieved rights holders' thoughts turn to sharply worded cease and desist notices aimed at stopping infringement or paving the way to court action. Rights holders need to take care before making threats.
As sales are becoming more and more regular throughout the year amidst fierce market competitions, many businesses are turning to comparative advertising to drive up sales.
Nestlé has lost its long running battle with Cadbury to register the shape of its four-finger Kit Kat bar as a trade mark.
Brand owners should ensure new brand names are original and capable of indicating the trade origin of the goods or services they provide, or they may find they have little, if any, protection.
Securing a clear and effective assignment of rights from a designer of a commissioned work, such as a logo, is essential to avoid the uncertainty and expense of claims as the business grows.
In our article: Laytons Artificial Intelligence (AI) Series: Artificial Intelligence (AI) and legal liability — Laytons ETL we looked at how the rapid development of Artificial Intelligence (AI) technology leaves us to question whether the English Civil Liability rules of contractual, and extra-contractual liability for loss and damage caused by AI, are fit for purpose.
It is vital that you review the key terms of your business or organisation’s existing contracts and those which it may be planning to enter into in preparation for Brexit.