Protecting the exclusivity of your product, service or brand can be integral to preserving commercial value and strategy. That’s why some of the most preeminent and sophisticated businesses – as well as pioneering entrepreneurial organisations – have called upon us as leading UK trade mark lawyers to advise on major UK trade mark related issues.
Our experience in this area includes working with an internationally renowned university, a world-famous fashion house, a well-known alcoholic drinks company and a multinational consumer goods company that boasts a portfolio of the world’s best known household brands, as well as a range of other brand-owners across various industries in both the FMCG and luxury goods sectors. We have advised on the enforcement of trade marks for goods and services ranging from sports drinks to perfumes, nappies, soap products, fireproof garments and financial services. In addition, we continue to play a central role in shaping key legislation affecting designers in the enforcement of their trade marks.
In addition, we have extensive experience advising in respect of trade mark oppositions and cancellation actions before the UK Intellectual Property and European Intellectual Property Offices, including, for example, for a multinational consumer goods company, a range of clients in the fashion sector and a philanthropic institute.
Standard Essential Patent (SEP) litigation requires a deep understanding of standardised technologies, patent litigation strategies and competition law / FRAND licensing. We are at the forefront of this developing area of law, having advised and represented clients in many of the most prominent and influential cases in the sector. With our deep knowledge of the global litigation landscape, we can assist both patentees and implementers in navigating the various national litigation and ADR venues to develop and action successful strategies to achieve their commercial goals.
We are extremely familiar with the standardisation landscape and process, the court rules and expectations as to how FRAND licenses should be negotiated and how such negotiations take place in practice, as well as the complex arguments raised in court and ADR proceedings, such as hold up, hold out, royalty stacking, comparable licences, “top down” and “bottom up” valuation exercises..
In addition to deep litigation expertise in the sector, many of our lawyers are physicists, computer scientists and engineers, which assists them in getting straight to the key technical issues in SEP infringement and validity disputes.
International Arbitration
Our arbitration team represents clients in high value international technology and patent license disputes. We are able to draw on our unparalleled team of technically qualified lawyers as well as our deep understanding of key industry sectors in handling complex international arbitrations. We have a wealth of experience of handling cases under the rules of leading arbitral bodies including ICC, LCIA and WIPO. IP disputes do have certain unique aspects which mean that standard arbitral rules are not always suitable, but we have considerable experience of guiding our clients in designing more bespoke mechanisms for resolving patent and other IP disputes. Where cases require expertise on procedure or law in other jurisdictions, our international reach allows us to tap into market-leading advisers around the globe.
We are also able to provide experienced lawyers to act as arbitrators or to provide neutral opinions for the purpose of assisting dispute resolution.
Our arbitration experience includes:
Mediation
Litigation alone rarely resolves a multi-national IP dispute. We therefore assist our clients at every stage to consider alternatives to litigation, whether a mediation or a negotiated settlement. We believe that many disputes can be settled by ADR, even where there is no pre-existing agreement in place and can lead to outcomes which court proceedings cannot deliver.
We have two qualified mediators among our ranks who, in addition to acting as mediators, regularly assist clients in mediations.
Examples of our other ADR experience include:
Advising on contractual IP disputes – which often have significant sums at stake – requires a unique combination of contractual law knowledge and a deep understanding of IP rights and IP disputes. In particular, litigation often arises over the obligation to pay royalties under the licensed patents, which therefore engages questions of infringement and, potentially, validity, necessitating review of the underlying technical issues.
Frequently, extensive jurisdictional wrangling is also involved, with parties keen to have disputes (or aspects of them) heard in a forum of their choice. Our lawyers are perfectly placed to assist clients with such disputes and have many years of experience in this area, including acting in arbitrations relating to disputes over patent licences and settlement agreements.
Plant variety rights (or plant breeders’ rights) are a form of IP designed specifically to protect new varieties of plants and are rarely litigated. We have experts with knowledge of the underlying technologies and direct experience of advising on plant variety right disputes.
Trade secrets play a key role in protecting secret processes, product ingredients, know how and other proprietary information that gives businesses a competitive edge over their competitors. We have advised clients extensively as to common law and contractual claims concerning the misuse of confidential information in a range of different spheres of technology.
Passing off is a valuable right for clients seeking to protect the goodwill in their businesses. Powell Gilbert has brought and defended passing off actions on behalf of clients in the UK, often in conjunction with trade mark infringement proceedings, in fields as diverse as construction, media and luxury goods.
Whether film and television, graphics, furniture design, or even software, our experienced team of copyright lawyers are well equipped to handle the breadth of challenges and complexities faced when enforcing and protecting copyright exclusivity. We have acted for leading global names across the consumer goods, telecommunications, food & drink, media, entertainment and publishing industries.
We are particularly well known for our work for the owners of copyright in mid-century furniture designs. As well as successfully lobbying for a change of UK copyright law for those clients, we have been heavily involved in enforcing their rights. In addition, we have advised our clients in relation to copyright disputes arising out of print and television advertising, as well as product packaging and store designs.
Securing and defending the design rights that protect the visual attributes of a product, not just its functionality, can be at the heart of an overarching protection strategy for a range of products. This has become even more complex due to developments in IP law, requiring legal advisers with the necessary insight and experience to help.
We have worked on the full spectrum of design right issues for clients ranging from global high-end brands to smaller designers and manufacturers. This has included disputes involving products such as toothbrushes, perfume, bottles, air fresheners, fashion goods, mobile telephones and robotics.
We are also involved in cases where the infringement of patent and design rights may be in issue. Recent examples have included advice on issues around wind turbines and on wearable heath tech.
