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We handle everything from focussed technical disputes to multi-party, multi - jurisdictional litigation. We never lose sight that oppositions and other contentious proceedings are always part of a broader commercial context.
If someone has tried to register your trade mark or is infringing your brand, or if you need to defend against allegations, we can help. We deal holistically with brand disputes and use our experience and pragmatism to develop and deliver a range of different options and strategies to get the best results.
Our focus is always on achieving a long-term sustainable solution that protects our clients’ businesses. What that means will depend on the specific challenges that a client faces. We are equally comfortable advancing complex arguments before a trade mark office, exploring novel and creative solutions to the legal and commercial situation, negotiating a settlement that provides a commercial resolution, or all three.
We work across all types of IP, clients, and industry sectors. Our dispute services cover court proceedings in the UK and Germany, oppositions and cancellation actions at the UK, EU, and German trade mark offices, domain name disputes, and alternative dispute resolution (ADR) such as mediation and international arbitration. We often collaborate with other professional advisors in complex multijurisdictional or parallel litigation cases.
A practical approach, coupled with commercial awareness is what we do best and is highly valued by our clients. It’s these qualities, combined with our deep legal and technical expertise, that allows us to provide focused, useful, and competitively priced support.
1 Case Study: Interpretation of specifications
We helped Alliance Pharmaceuticals with a successful appeal to the EU General Court.
The Court found that the EUIPO and the Board of Appeal incorrectly interpreted the specification of the client’s EUTM registrations. It held that interpretation of specifications should take into account, not only the literal meaning of the words, but also “other factors that are essential for the purpose of understanding the scope of that specification, namely the actual intention of the proprietor of the marks concerned and the need to give an appropriate scope to that wording, one that precludes a reading leading to an absurd result for the proprietor”. As a consequence, the Court annulled the decision of the Board of Appeal.
We were very pleased to have been able to represent Alliance Pharmaceuticals in this important case, which offers helpful clarification on the correct interpretation and construction of specifications.
2 Case Study: Licensing rights
Our client is a charity. It has a famous and beloved mark which it licenses to third parties. It is an important way of generating revenue for the charity. However, as the mark is so well-known, many third parties adopt and adapt it for their businesses. It is important to take action against such use as it can damage the distinctiveness of the mark and the reputation of our client, which can in turn affect the value of the brand and therefore the revenue it generates and public donations.
A leading UK supermarket chain adopted our client’s mark without consent. After sending a cease and desist letter, we entered into negotiations. This resulted in undertakings from the other side regarding use and licensing fees. This deterred the other side from future infringements, as well as bringing in extra revenue and brand promotion for our client.
3 Case Study: Worldwide negotiations
Our client had applied to register its mark in nearly 200 countries. The UK and EU applications were opposed by a company with a famous mark which went on to oppose many of the client’s applications in different territories.
We were asked to liaise with the other side and negotiate a worldwide settlement agreement. The agreement was complex: we had to explain intricate details of UK/ EU law and practice to the client and their position, understand the parties’ concerns and commercial interests and carve them out in the agreement, and take into account the fact that nearly 200 applications were involved which were subject to different laws and practices and there were ongoing proceedings around the world with upcoming deadlines.
We were able to conclude a settlement which provided certainty for both parties and allowed them to operate in their respective areas. Importantly, the oppositions were withdrawn so our client was able to register its mark and received guarantees about its future use and registration of its mark.
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