Trademarks Solicitor and brands

In an increasingly crowded and competitive marketplace, clients need to be able to protect, exploit and enforce their brands.

We are market leaders in this area.  Our trade mark solicitors are ranked as leading individuals in the country.

We advise clients across the whole spectrum of trade mark rights and related rights (such as passing off), including: clearance searches, protection and registrability issues, co-ordination of trade mark filings, trade mark licences and franchise agreements, disputes and litigation.

Clearance searches

Before launching a new brand in the marketplace, it is incredibly important to spend some time conducting trade mark clearance searches.  A little effort at this stage can help avoid costly legal battles further down the line and the worst-case scenario of all: a forced rebrand.

Given that many trade mark clearance searches reveal third party marks that have some level of risk, it is important to have experts guide you through the trade mark thicket.  Our trade mark solicitors have the experience and expertise to advise on acceptable levels of risk.   In turn, this enables our clients to make informed and effective commercial decisions relating to their new brands.

Protection and Registrability issues

Trade marks come in many different forms.  Words, logos, shapes, sounds, colours and even smells are all potentially registrable.  The key is whether the trade mark in question is capable of designating trade origin of a particular undertaking.  Sometimes expert advice from our trade mark solicitors can make all the difference between a trade mark application making it past the examination phase and past oppositions from third parties.

Co-ordination of trade mark filings   

While we do not file trade mark applications ourselves, we have a trusted network of trade mark lawyers around the world who we can instruct on your behalf and manage the process efficiently.

Trade mark licences and franchise agreements

Our trade mark solicitors are regularly instructed to draft agreements which deal with trade marks.  Common such agreements are trade mark licences, whether they be on an exclusive or non-exclusive basis.  We also assist clients in assigning (i.e. transferring) their trade mark rights, as well as dealing with the issue of keeping the trade mark register updated with interests which affect registered trade marks (such as licences and charges).  Our commercial contracts team also draft franchise agreements, which have at their core, trade mark licences and related brand guidelines.

Trade mark disputes and litigation

Our expert trade mark solicitors are adept at keeping their clients out of court and generally avoiding expensive litigation wherever possible.  Where a trade mark dispute can be settled without recourse to litigation, our trade mark solicitors will use their many years of experience to leverage an advantageous compromise on behalf of our clients.  Often this involves some careful tactical thinking at the outset of a dispute to manoeuvre our clients into the stronger negotiating position.  All too often, we find ourselves against opponents who are represented by non-expert trade mark solicitors, which is unfortunate for them!

Of course, some disputes are intractable, and, in these situations, litigation is a tool to achieve our client’s commercial goals.  There are specific courts for trade mark claims, as well as specific court procedure rules for trade mark litigation.  Our trade mark solicitors have decades of experiences taking trade mark cases of all sizes through the courts.

Small and medium sized trade mark claims end up in the Intellectual Property Enterprise Court (IPEC).  More complex and substantial claims are heard in the Intellectual Property List in the Chancery Division of the High Court of England and Wales.

In addition to litigation, our trade mark solicitors are adept at all forms of Alternative Dispute Resolution (ADR).  For example, mediation is one effective form of ADR which we use in trade mark disputes.  We know which mediators to appoint and which mediators are most likely to assist bring about a mutually acceptable compromise.  Having conducted many mediations in trade mark disputes, we know what we are doing.

Specialist Intellectual Property Team

Recent Work

  • Acting for Scratch Meals Ltd, Sainsbury’s Supermarkets Limited and Waitrose Limited in a trade mark infringement and passing off claim brought by Fit Kitchen Limited in the Intellectual Property Enterprise Court (IPEC).
  • Acting for a US Defendant in High Court trade mark proceedings, that formed part of trade mark litigation simultaneously taking place in the UK, Canada and the United States.
  • Acting for Smart Garden Limited in a trade mark infringement and passing off claim against Westland Horticulture Limited and related trade mark cancellation / trade mark invalidity proceedings in the UK Intellectual Property Office (UK IPO).
  • Advancing trade mark counterclaims for a gaming equipment business in High Court proceedings relating to activities in the UK, China and the EU.
  • Defending a software business and its directors from trade mark claims brought by Microsoft in the English High Court in relation to alleged activities in India.
  • Acting for a client in the General Court of the European Union with respect to the registrability of an EU trade mark.
  • Acting for a client in nine connected trade mark invalidity actions simultaneously taking place in the UK IPO and EUIPO.
  • A broad range of trade mark work on behalf of CMC Markets UK Plc.
For a free, no obligation conversation with a solicitor contact us.

020 7234 0200

020 7234 0200