Are you battling over your trademark or other intellectual property rights? We can help with oppositions, cancellation applications, trademark infringement, passing off, counterfeit goods, domain name disputes and other proceedings.
We have a wealth of experience in filing and defending oppositions before the UK Intellectual Property Office and the European Union Intellectual Property Office (EUIPO) as well as with appeals to the High Court and Appointed Persons in the UK and Boards of Appeal at EUIPO. We also assist businesses with oppositions in other countries. We have an impressive success rate in such proceedings.
In many cases a negotiated settlement provides an appropriate resolution to an opposition. We have settled many oppositions on behalf of opponents and defendants.
We can provide watching services for new trademark applications which may conflict with your own trademark and assist with identifying applications which should be opposed.
You may require assistance with an application for cancellation of a trademark for a number of reasons. It may be that there is an existing trademark registration preventing you from using or registering your trademark. Alternatively, it may be that someone else has applied or is threatening to cancel your registered trademark for similar reasons.
Under certain circumstances such as non-use for a number of years, because the mark has become generic or descriptive or because a mark has been registered notwithstanding an earlier legal right a trademark registration can be revoked or invalidated. We can assist you with such proceedings, advising on options and negotiating settlements when appropriate.
We can also assist with applications to cancel registered designs.
Trademark infringement and Passing off
If you have discovered that someone is using your trademark or a similar trademark to your own they may be infringing your trademark registration. If you have not registered your trademark you may have rights derived from its use and be able, for example, in the UK be able to bring proceedings for passing off. Alternatively, you may have received a letter before action alleging that you are using a trademark which infringes someone elses rights in a trademark.
We have many years of experience in advising on trademark infringement and passing off proceedings and can assist in advising on your legal position, preparing and responding to pre-action correspondence and pursuing and defending claims in the courts.
We can also assist and take action on your behalf in relation to infringement of registered designs, unregistered design rights and copyright.
Counterfeiting is one of the most rapidly expanding economic crimes and be a serious financial threat to a business. It can erode consumer confidence in your products and perhaps be a serious health and safety risk to consumers.
We can, for example, assist with the new measures under Customs Regulation (EU) No. 608/2013 which came into effect on 1 January 2014, register your trademarks with UK Customs so as to empower Customs authorities throughout the EU to detain suspected counterfeit goods, work with Trading Standards and the Police to target counterfeit goods and assist the authorities in relation to specific investigations, assist with criminal prosecutions and advise and act on obtaining interim relief, including search and seizure orders.
Domain name disputes
If you find a domain name in use which includes your trademark, or which is similar to your trademark, it may be possible to take action to have the domain name transferred to you particularly if its owner does not have a legitimate business interest in the name being used and it has been registered in bad faith.
We can assist with bringing and defending complaints under the Uniform Domain-Name Dispute-Resolution Policy (often referred to as the UDRP) although there often other ways of addressing such disputes.
Click here to ask us for expert advice on brand disputes.