Our INTELLECTUAL PROPERTY team is independently recognised as a 'National Leader outside London'

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Trade Marks

A strong brand is one of the most valuable assets any business can have.

Trade marks may take various forms, including words, logos, names, colours, sounds, slogans and domain names, and the effective protection and licensing of trade marks is the basis of a strong brand.

However, there are many reasons why a particular trade mark may not be capable of registration; or why a company might be prevented from using the name of its choice – perhaps because the name is considered descriptive of the goods or services to be offered under it, or because a competitor is using the same or a similar name already. Where a company does have a strong brand, it may find that competitors seek to ‘free-ride’ by using identical or similar marks, slogans or other marketing techniques.


We regularly advise on all aspects of trade mark law, including:

  • The registration and protection of trade marks, including advising on whether a particular name is likely to be capable of registration and registration strategy both in the UK and abroad
  • Trade mark clearance (i.e. assessing the risk that a proposed mark will infringe the rights of a third party)
  • Comparative advertising
  • Trade mark licensing, including in the context of joint ventures, intra-group licensing and franchising agreements
  • Trade mark opposition and revocation proceedings before both the UK Intellectual Property Office and OHIM
  • Trade mark and passing off actions before the Intellectual Property Enterprise Court, High Court and Court of Appeal

Recent examples of our work include advising:

  • Brighton & Hove Albion FC in relation to a dispute with Whitehawk FC, over the latter’s plans to change its name to Brighton City FC
  • International fashion and fragrance company Antonio Puig S.A in relation to the high value acquisition of trade marks and licensing arrangements with Roja Dove 
  • Vulpine, a high-end cycling brand, in a range of trade mark and brand protection issues, including disputes with sportswear and fashion companies
  • Global fashion brand Tommy Hilfiger in relation to several trade mark issues, including a dispute with a luxury swimwear manufacturer and trade mark opposition proceedings
  • Rackspace, one of the world’s leading managed hosting companies, in trade mark infringement proceedings in the High Court concerning comparative advertising and in related proceedings seeking declaratory relief

 

Our experience

  • International fashion and fragrance company Antonio Puig S.A in relation to the high value acquisition of trade marks and licensing arrangements with Roja Dove

  • Vulpine, a high-end cycling brand, in a range of trade mark and brand protection issues, including disputes with sportswear and fashion companies

  • Representing Rackspace, one of the world’s leading managed hosting companies, in trade mark infringement proceedings in the High Court concerning comparative advertising and in related proceedings seeking declaratory relief

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