In addition to the comprehensive trade marks services we offer, our attorneys are also experienced in resolving disputes via litigation.
Our litigation team has a wealth of experience in dealing with a broad range of trade mark cases before the UK (in the High Court, the Intellectual Property Enterprise Court (IPEC) and the Court of Appeal) and European courts (the General Court and the Court of Justice of the European Union), sometimes whilst managing parallel proceedings. Our trade mark litigation work covers a breadth of industries. Most recently we have conducted litigation in the UK courts in matters encompassing sports branding and electronic goods.
We have an envious track-record of negotiating amicable settlements, often at an early stage, or during the course of proceedings. Our trade mark attorneys are experts at preparing coexistence agreements to formalise settlement terms.
Our alternative dispute resolution (ADR) team has the experience, skills and resources to handle all elements of litigation, from pre-action procedure before the initiation of proceedings to conduct of the case at trial. Our team has a background in contentious matters and significant experience of litigation proceedings, and regularly advise on pre-litigation strategy and all aspects of litigation and dispute resolution concerning trade marks, copyrights and designs.
In addition to advising on UK matters, our team has a proven track-record of co-ordinating and conducting multinational disputes across the globe, and will employ the assistance of carefully selected local attorneys where necessary.
We also assist our clients in confronting the ever increasing threat posed by counterfeit goods and we are experienced in taking legal action to remove such goods from the market. Â
Our litigation team provides strategic and commercially-aware advice that recognises the commercial implications of litigation for our clients. We understand that, ultimately, clients want the infringement to stop and that this can frequently be achieved without the need for protracted litigation. We have an excellent track-record for achieving favourable results for our clients and pride ourselves on our focus on reaching the best outcome, whether at the negotiating table or at trial.
We also understand that litigation isÂ a useful commercial tool. We are prepared to fight for our clients, in the most cost-effective way possible. We do not shy away from providing honest, innovative and commercially-minded advice.
We have considerable experience of alternative dispute resolution (ADR), in particular, mediation and arbitration, and we will always consider adopting these measures where they are likely to provide a better solution to our clientsâ challenges. We are committed to achieving a commercial result for our clients and we do not view litigation as an academic exercise. Our attorneys provide strategic advice that recognises the commercial implications of litigation for our clients.Â
Maintaining communication with and providing jargon-free advice to our clients during litigation is of the utmost importance to us, and we adopt transparent, objective-driven strategies throughout the process.
Our experience includes:
Chelsea F.C. v Benetton Holdings Limited
In April 2016, our litigation team settled a complex case between Chelsea Football Club (âChelsea F.C.â) and Benetton Holdings Limited (no relation to the well-known clothing company). Benetton own a registered trade mark for âChelsea Manâ. They used their mark to try and prevent our client from registering multiple trade marks, and to attack some of our clientâs current trade marks. We brought legal proceedings in the High Court on behalf of our client in 2014. The team constructed arguments based on the strength of the Chelsea brand, a global brandÂ recognised by millions of consumers, and the importance to Chelsea F.C. of being able to protect their brand by targeting counterfeiters, which can only be done through registering trade marks. As a result of the strength of the arguments constructed by our team, as well as our mediation skills, we were able to settle the High Court case, as well as concurrent proceedings in the UKIPO and EUIPO. This result had an enormous impact upon our clientâs business, as they were then able to obtain a trade mark registration for âCHELSEAâ in relation to clothing, allowing them to pursue counterfeiters and protect their brand reputation.
Sony v PatelÂ
Our team defended our client in relation to an interim injunction application made by Sony in the High Court. The case concerned accusations by Sony that our client had copied their design for PlayStation controllers. Through hard-fought negotiations, our team managed to settle the dispute and achieve a positive result for our client, including avoiding an interim injunction. This case is a further example of our teamâs expertise in settlement negotiations, and demonstrates our focus on vehemently defending our clients and seeking, above all, to achieve commercial results.
Bitrez v Huntsman Advanced MaterialsÂ
Our litigation team defended Bitrez, a chemical resin manufacturer, against an action brought by Huntsman Advanced Materials (âHuntsmanâ). The case concerned our clientâs use in their trade marks of the prefix âARAâ. Huntsman, who produce household glues and resins and own trade marks including âAraâ, âAradurâ, âAralditeâ, âArathaneâ, and âAroCyâ, attacked several of our clientâs registered trade marks, including âAradrideâ. The case involved cross-proceedings in both the EUIPO and UKIPO, as well as trade mark infringement proceedings in the High Court. Our team demonstrated their tenacity at the negotiating table, and they were successful in securing a favourable settlement agreement.
K2 Advisors v K2 IntelligenceÂ
We represented a U.S.- based hedge fund company, K2 Advisors, in bringing an action against K2 Intelligence, a U.S. risk analysis and hedge fund investment analysis company offering their services in Europe. In addition to the proceedings we brought in the High Court, we worked alongside U.S. lawyers in parallel proceedings in the U.S., to construct a strategy to attack K2 Intelligenceâs use of their trading name globally. Ultimately, this forced K2 Intelligence to enter into settlement negotiations. This case serves as one of the many examples of our litigation teamâs strategic skill to avoid protracted litigation. Â
Harley-Davidson v Garry Stephen White
We successfully negotiated favourable settlement terms on behalf of our client, Harley-Davidson, in trade mark infringement proceedings in the High Court. Our litigation team were tenacious in their efforts to achieve a positive result for our client, and were successful in reaching a settlement two weeks before the commencement of trial, helping save our client the costs of protracted litigation.
We strategically managed ten separate proceedings on behalf of Horwood Homewares Ltd (âHorwoodâ) against Rousselon Freresâ, including a trade mark infringement claim in the High Court. The cases all concerned the trade mark âSabatierâ. Our litigation team managed to negotiate a settlement agreement between the parties, which resulted in our client continuing to use the trade mark subject to the settlement terms. This was a highly significant case, and was reported on several occasions in case law reports for legal practitioners.Â