Our Service

Our highly experienced trade mark attorneys deal with UK and international trade mark oppositions, cancellation actions and settlements as part of their daily work. As such, our attorneys are well-accustomed to ensuring that the trade mark rights of our clients are protected. We have an excellent reputation for handling opposition and cancellation actions on behalf of our clients at the UK Intellectual Property Office (“UKIPO”), as well as the European Union Intellectual Property Office (“EUIPO”) in cases where clients have European Union Trade Marks.

We have a strong track-record of negotiating amicable settlements, often at an early stage (avoiding the need for filing an opposition or cancellation action entirely), or during the course of proceedings. However sometimes parties are unable to reach a resolution. If matters escalate, our dispute resolution team steps in. Our dispute resolution team has the experience, skills and resources to handle all elements of litigation, from pre-action procedure before the initiation of proceedings to the court proceedings themselves. Our team has a background in contentious matters and significant experience of litigation proceedings.

Where a dispute progresses to more formal litigation (such as in the IPEC, the High Court, the Court of Appeal, and the Supreme Court, as well as in Europe in The General Court of the European Union and The European Court of Justice) our dispute resolution team possesses the expertise and experience to help our clients achieve their objectives. 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 have a strong record of taking legal action in the courts to remove such goods from the market. For example, we recently negotiated a settlement of High Court proceedings for a high-profile client with an extensive merchandising business, enabling our client to expand its trade mark portfolio with additional trade mark registrations. This provided our client with greater control over its brand and bolstered its armoury against counterfeit goods.

Our Focus

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 the threat of or use of litigation is a useful commercial tool that should, where appropriate, be used to its full potential. We are prepared to fight for our clients no matter the odds, and will use every means at our disposal to further the objectives of 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 clients’ problems. 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. 

Our Experience

We have represented, and continue to represent, a diverse range of clients, many of whom are industry leaders and have entrusted us with protecting their IP for many years. Some examples of recent trade mark litigation we have conducted include:

  • Securing a favourable result on behalf of a leading Premier League football club via a hard-fought mediation in a trade mark dispute spanning proceedings in the High Court, UKIPO and EUIPO. The dispute concerned a third party seller of merchandise with no relation to the club brand who attempted to exploit his mark by blocking any attempts by the club to register further marks relating to its merchandising business. The case is particularly noteworthy as we demonstrated our flexibility and multi-jurisdictional competence through seeking unusual relief and dealing with complex issues relating to service on several of the Defendants out of the jurisdiction in Hong Kong and St Lucia. 
  • Representing a market-leading producer of commercially distributed resins and adhesives in a multitude of opposition and cancellation actions in tandem with infringement proceedings in the IPEC. We successfully defended the interests of our client in over 13 individual actions occurring simultaneously. Ultimately, as a result of the steadfast negotiations of our litigation team, we managed to achieve a commercial and positive result for our client via settlement negotiations.   

Why Choose Us

  • The combined expertise of our highly experience trade mark attorneys alongside our solicitors team ensures that our clients are provided with the best possible team. 
  • Our Litigation team provides has the breadth and depth of knowledge to provide clients with an edge over their opponents during proceedings, from persuasive drafting to the strategic input our team provides in conducting the litigation.  
  • We provide a tailored service which focuses on the needs of each individual client, particularly when it comes to billing – we provide excellent value to our clients, minimising costs wherever possible.
  • Our attorneys have significant experience of complex and high-value disputes and have worked for some of the most well-known household names across a variety of industries.
  • We work closely with our clients to resolve issues and achieve their aims without the need for litigation - our attorneys are experts at the negotiating table and we frequently secure favourable outcomes for our clients through ADR.
  • Our ability to conduct litigation for our clients means that we provide a one-stop-shop for all of our clients’ IP needs – we are accustomed to working with clients on a range of issues simultaneously, and our attorneys work closely to ensure that every angle is covered.

For further information, please contact Margaret Arnott.