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Brands & Designs

We are one of the few leading City law firms which has the commitment and ability to provide a holistic approach to meet the intellectual property needs of clients in the protection of their brands, including trade marks, designs copyright and related issues such as rights in trading names, advertising, and marketing compliance issues.

We offer a complete ‘one stop shop’ in relation to trade marks and designs with our dedicated filing and prosecution team, led by Kate O’Rourke, a dual qualified Solicitor and Registered Trade Mark Attorney. With three Registered Trade Mark Attorneys we have one of the largest qualified trade mark and design teams of all City law firms.

We act for clients in a broad range of areas including the sports, retail, charities, technology and communications sectors. Our clients include some of the largest brand owners in the world and their needs extend not just to the United Kingdom but worldwide. Accordingly when dealing with their needs, we often work with leading intellectual property specialists around the world and, in what we believe to be a recognition of our standing, many of these specialists ask us to act for them and their clients.

We provide innovative, commercially focussed and cost effective advice in relation to the creation, protection, maintenance, enforcement and exploitation of all aspects of brands and designs including: 

  • brand clearance and searching
  • trade mark and design filing and prosecution
  • trade mark Watching Services
  • company registration
  • management of global portfolios
  • product clearance and risk assessments
  • trade mark oppositions, cancellations, and revocations in the UKIPO and EUIPO
  • prosecuting and defending trade mark, design and copyright infringement proceedings and passing off actions in the High Court and Intellectual Property and Enterprise Court
  • appeals in the UK Courts, EUIPO and CJEU
  • anti-counterfeiting strategies and implementation
  • brand audits
  • corporate support on acquisitions and disposals
  • licensing, franchising, merchandising and sponsorship agreements
  • advertising, labelling and marketing compliance
  • brand reputation management and protection
  • confidentiality
  • privacy
  • domain name and company name advice and recovery, including gTLD issues
  • internet and e-commerce issues.

We have particular expertise in the protection of non-traditional trade marks, notably colour and trade dress, and have acted in leading and high profile cases on the protection and enforcement of colour marks in the UK. We are also very well-known for our expertise in media and reputation management issues, including such issues when they affect brands.

However the expertise of the firm does not simply extend to designs in the context of brands; it relates to all aspects of the protection and commercialisation of designs generally, including product design. The design of many products (especially high tech and innovative products) is key to the success of that product and indeed the business. Thus, much design work is closely allied to the work we do in the area of patents and technology, where our top-ranked patent team is recognised as being expert in complex patent disputes and other technology related issues.

Our ‘one stop shop’ approach to meet the intellectual property needs includes a leading practice in the field of transactions involving intellectual property transactions, ranging from acquisitions and disposals, through to licensing and joint collaboration agreements. For more information see commercialisation of intellectual property.


Trade Mark Clearance and Searching

We conducted and advised an urgent clearance of a new brand and logo for a celebrity on the launch of her own fashion brand which also included specific advice on the protection of single colour marks.

Registered protection

We advised The HMS Victory Preservation Company regarding registered protection for the HMS VICTORY brand, including advising the designers of the new logo and liaison with the Trustees concerning licensing and agreements with long term suppliers of branded merchandise, as well as with relevant Government departments.

Protection of non-traditional trade marks

We represent Cadbury in relation to the protection of its well known Cadbury Purple colour trade mark including in opposition proceedings brought by Nestlé and the subsequent appeals to the High Court, Court of Appeal and Supreme Court.

International portfolio management

We advise wagamama on all aspects of their trade mark portfolio nationally and internationally, and our proactive approach of filing, watching and defending the key brand has successfully ensured the elimination of conflicting uses and applications internationally. 

Brand Enforcement

Acting for a well known retailer in hard fought trade mark infringement and breach of contract proceedings, achieving a satisfactory settlement before trial. We acted for Sealed Air (the global packaging business) in its successful design infringement action against competitor Sharp Interpak in relation to the designs of plastic fruit (strawberry) punnets. We were brought in to advise on and implement a rearguard strategy for a well known retail fashion brand client in relation to previously uncontrolled misuse of the house brand by the on-line sale not only of counterfeits, but also genuine goods through unauthorised distribution channels. 

Advertising & marketing

We advised a global sports brand on a variety of advertising and marketing matters including social media campaigns and on-line competitions (including in relation to the ASA’s ground breaking stance on the regulatory position of Tweets by celebrities, advising on their challenges to the ASA’s ruling, and an appeal to the Independent Reviewer). 

High street brand audits

We have undertaken a complete brand, design, and domain name audit for a well known High Street fashion brand and completed a trade mark and domain name audit for an iconic British department store.