Intellectual property

“The lawyers care about our company as much as we do.” Chambers & Partners

Experience

Non-contentious IP:

• Advising research councils, universities and public sector research institutes on the protection and exploitation of their intellectual property, in particular patents, know how and database rights, ensuring that their interests are properly protected across all areas of their activities from research collaborations and consultancy to licensing and spin-outs.
• Acting for a large number of research and science-based companies, many spun out from leading UK universities, advising them on the licensing-in of their founding technology and on the IP aspects of their ongoing research, development and commercial activities, including on investment rounds, IPOs, joint ventures and M&A transactions.
• Advising publishers and rights owners on complex copyright, database right and trade mark issues; including clearance advice, advice on ownership and licensing, dispute resolution and acquisition and disposal of titles and rights. We have particular expertise in the application of IP laws to digital and on-line publishing, ecommerce and Web 2.0 services.
• Advising leading fashion houses and retailers on design right and branding issues, providing urgent clearance advice and dealing with counterfeiting and parallel import problems.
• Advising on the intellectual property aspects of corporate transactions of all types, including mergers and acquisitions, funding rounds, IPOs and joint ventures; and are frequently engaged to conduct IP due diligence investigations on target or investee companies.
• Providing IP audits for clients, and advise clients on their IP strategy in preparation for a trade sale, IPO or investment round.
• We do not apply for patents (but can refer you to the right patent attorney), but we do advise on the patentability of new inventions and on patent ownership, licensing, infringement and validity, and are able to provide freedom-to-operate advice in all sectors.
• Our trade mark work includes registration work, where we handle a number of small and large portfolios internationally, including registration, oppositions, consents, coexistence agreements, etc; brand licensing and merchandising for well-known trade marks; and trade mark, domain name and passing off litigation.

Contentious IP:

• Acting for The JRR Tolkien Estate against New Line Cinema in the long running $150 million claim regarding unpaid royalties due in relation to the Lord of the Rings films as well advice on a variety of trade mark infringement issues.
• Representing the rights owner of "Lassie" in a cross-border copyright infringement claim.
• Worked with Oakley to prevent unauthorised use of their logo, including having a website closed down permanently.
• Acting for Jimmy Choo in a number of Community Unregistered Design Right cases, which included the infringers paying significant damages and legal costs.
• Advising Chloé in relation to a number of Community Registered Design Right matters, all of which settled without the need to issue proceedings.
• Working with Jonathan Kelsey in preventing two High Street retailers from copying his designs, which resulted in them paying damages and legal costs.
• Advising Alexander McQueen (part of Gucci Group) on IP litigation issues against high street retailers, which resulted in the products being removed from sale and damages and costs paid.
• Creating and implemented a design right protection and enforcement strategy for Georgina Goodman, which resulted in preventing a number of high street retailers from profiting from her designs.
• Negotiating a settlement for IKEA regarding a third party infringing their trade marks, including their CTM registration for the colours blue and yellow and advised them in relation to an application to the Company Names Adjudicator for unauthorised use of IKEA in a company name.
• Acting for Marvel Comics regarding a trade mark and copyright infringement claim concerning character representation.