Trade Marks & Brand Protection
  1. Trade Marks & Brand Protection

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

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

    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.

    Whether you are setting up a new business; launching a new product; or consolidating, extending and protecting an established reputation, our brand protection team has a wealth of experience in these matters and can:

    • Advise on brand strategy, and review your existing IP portfolio to identify any weaknesses or opportunities for expansion
    • Undertake national and international clearance searches to identify potential conflicts before launching new brands or taking established brands into new markets
    • Advise on trade mark filing and opposition proceedings
    • Help you extend your brand through licensing, franchising and joint ventures
    • Help to enforce your IP rights against third parties, either in response to a one-off infringement or as part of a wider enforcement programme
    • Advise on counterfeiting, online marketplaces and parallel imports
    • Advise on ASA complaints and other marketing and regulatory issues
    • Help protect your brand against adverse publicity and damaging social media content

    Brand protection

    As well as advising on one-off IP disputes, we also offer our clients individually tailored, fixed-price brand protection programmes.

    We are individually recognised in the London legal directories for our brand protection work, and our team helps both national and international clients to consolidate, extend and protect their brands and reputation.

    This includes:

    • Policing online use through a specialist IT platform and, where appropriate, working with investigators.
    • “One-click” notice and takedown procedures for online platforms and website hosts.
    • Sending electronic and physical letters before action to infringers.
    • Enforcing IP rights against third parties, either in response to a one-off infringement or as part of a wider enforcement programme.
    • Infringement actions before the UK courts.
    • Negotiating settlements and monitoring compliance.
    • Domain name complaints.
    • Protecting brands against adverse publicity and damaging social media content.

    We often work with our brand protection clients on the basis of a fixed monthly retainer, which includes an agreed volume of takedown notices/letters of claim and monthly reporting of progress.

    Examples of the clients for whom we work in this way include:

    • A Premier League football club.
    • A global pharmaceutical company.
    • A large London-headquartered venture capital company.

     

  2. Our experience

    • Representing a household-name global electronics company in three trade mark infringement disputes concerning the legality of modified parallel imports and the application of the “BMS conditions” in circumstances where branded electronic goods put on the market in the EEA have been repackaged and modified for onward resale to consumers in the UK.
    • Acting for a large Italian chocolate manufacturer in successfully obtaining a pan-European injunction, based on several EU Trade Marks, against a company headquartered in Switzerland.
    • Obtaining an interim injunction on behalf of a global tobacco company against a UK company that was offering counterfeit vape products for sale before their official launch in the UK. Tom Lingard appeared as solicitor advocate on behalf of the client.
    • Acting for a Premiership football club in all brand protection matters, including: an ongoing, online monitoring and takedown programme; several claims for trade mark infringement and passing off; and numerous domain name complaints.
    • Acting for UK/US media company Future Publishing in its long-running trade mark infringement dispute with Edge Interactive and Edge Games, concerning use of the trade mark “Edge”. The dispute has been ongoing since 2004 and has involved several sets of proceedings before the High Court, as well as hearings before the Court of Appeal, Supreme Courts Costs Office, UKIPO and USPTO.
    • Representing the operator of one of the UK’s leading airline booking platforms in proceedings for trade mark infringement brought by Easygroup Ltd – the group controlled by Sir Stelios Haji-Ioannou and licensor of the “easy” group of brands, including EasyJet.
    • Acting for Casino de Monte Carlo in Monaco in relation to trade mark infringement and passing off proceedings against MonteCarlo Limited, an online gambling business based in Alderney in the Channel Islands.
        • Defamation and Reputation Management
        • Entrepreneurs
        • Intellectual Property
        • IT
        • Life Sciences
        • Sport
        • Technology and Media
        • +44 (0)1483 406988
        • Guildford
        • View profile
        • Intellectual Property
        • IT
        • Life Sciences
        • Technology and Media
        • +44 (0)1483 406956
        • Guildford
        • View profile
        • Hospitality
        • Intellectual Property
        • Retail
        • +44 (0)1483 401263
        • Guildford
        • View profile
        • Intellectual Property
        • +44 (0)1483 734233
        • Guildford
        • View profile
        • Intellectual Property
        • Life Sciences
        • +44 (0)1483 406961
        • Guildford
        • View profile
        • Intellectual Property
        • Life Sciences
        • Sport
        • +44 (0)1483 401256
        • Guildford
        • View profile
        • Intellectual Property
        • Life Sciences
        • +44 (0)1483 406453
        • View profile
  3. News

    Articles

    NIP Problems in the bud

    Copyright in designs

    Music venues beware

    Trade marks - the colour purple

    Publications

    The In-House Track - first issue!

Search our site