In addition to the comprehensive trade mark 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 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 is 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 clients’ 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.
Maintaining communication with and providing jargon-free advice to our clients during litigation is of the utmost importance, and we adopt transparent, objective-driven strategies throughout the process.
Our 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.
Our litigation team settled a complex case between Chelsea Football Club (Chelsea F.C.) and Benetton Holdings Limited (no relation to the well-known clothing company). Benetton owns a registered trade mark for ‘Chelsea Man’. They used their mark to try and prevent our client from registering multiple trade marks, and to attack some of our client’s 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 brand 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 client’s business, as they were then able to obtain a trade mark registration for ‘CHELSEA’ in relation to clothing, allowing them to pursue counterfeiters and protect their brand reputation.
Read more
Our litigation team defended Bitrez, a chemical resin manufacturer, against an action brought by Huntsman Advanced Materials (Huntsman). The case concerned our client’s use in their trade marks of the prefix ‘ARA’. Huntsman, which produces household glues and resins and owns trade marks including ‘Ara’, ‘Aradur’, ‘Araldite’, ‘Arathane’, and ‘AroCy’, attacked several of our client’s registered trade marks, including ‘Aradride’. 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.
We represented a US-based hedge fund company, K2 Advisors, in bringing an action against K2 Intelligence, a US 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 US lawyers in parallel proceedings in the US to construct a strategy to attack K2 Intelligence’s 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 team’s strategic skill to avoid protracted litigation.
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 was 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 10 separate proceedings on behalf of Horwood Homewares Ltd (Horwood) against Rousselon Freres, including a trade mark infringement claim in the High Court. The cases all concerned the trade mark ‘Sabatier’. 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.
Mathys & Squire uses cookies
We use cookies to ensure you get the best experience on our website. More details are available via our Cookie Policy.