Overview
Brands and designs are key assets for any business. Developing a strategy, clearing use, obtaining registration, and ensuring effective protection and exploitation of these assets are essential components to your success.
Gowling WLG's internationally renowned, award-winning team of trademark professionals has a long-standing reputation as the go-to firm for organisations seeking trademark, branding and design advice.
Our expertise, experience and the trust our clients have in us allows the firm to deliver the highest level of practical, effective advice. We understand the challenges and opportunities of brand management, and apply legal expertise and commercial insight to your advantage.
Brands
A strong brand is a key asset in any successful business. Developing a brand strategy, ensuring it is effectively protected and exploited, and knowing when and how to protect the brand from attack allow the brand and its value to thrive.
Our 12-strong specialist UK team combines a commercial and tactical approach to help our clients' brands work harder. Whether in the initial stages of conception and development or in enforcement of a mature and established brand, we enable clients to reduce risk and maximise brand potential.
Led by John Coldham, our team delivers a comprehensive brands service, with expertise in trademarks, designs, copyright, domain names, confidential information, trade secrets and licensing.
We understand the challenges and opportunities of brand management and apply legal expertise and commercial insight to our clients' advantage.
Experience
- Our work has covered an extensive range of products and services - innovative software solutions, high end lighting and furniture, children's dinosaur sets, carpets, steel panels, ice cream, aircraft seats and false moustaches to name but a few. Getting to know our clients inside out is a priority for the team to ensure client portfolios are commercially relevant, appropriately protected and effectively exploited;
- Helping our clients get the most from their brands by advising on brand clearance from an early stage, in order to minimise the risk of future exposure and to maximise the potential strength of the brand;
- Advising global businesses with global brands. Our team can be found helping North American companies adopt and exploit their brands in Europe, guiding the development of Europe-wide brand portfolios, advising the UK's top businesses on rebranding strategies and confidentiality policies or managing global enforcement programmes, and developing effective international approaches to common IP issues in conjunction with our offices in important IP jurisdictions such as China, Singapore and Dubai.
- Working on high-profile trademark infringement cases, using expertise to handle complex trademark cases with a record of success in the High Court. We acted for Comic Enterprises, the owner of the Glee Club comedy and music group, in its battle with 20th Century Fox and succeeded in a claim for trademark infringement. We have secured significant, successful judgments for household names such as Hasbro, Unilever and Kingspan;
- Offering clients a brands audit service to help them get their houses in order and offer in-house training to support client's brand strategies and ensure that the business is consistent in its approach. A key limb of our service it to ensure that the business is not spending more on its IP than it needs to, whilst ensuring it is doing enough to be effective;
- Acting on domain name disputes through World Intellectual Property Organisation or Nominet, enforcing in the Intellectual Property Enterprise Court and developing cost-effective, repeat enforcement strategies for clients, to ensure that responses are proportionate and commercial; and
- Secondments to companies such as Aston Martin, Marks & Spencer and Hasbro; working closely with in-house design teams such as Mothercare; and undertaking holiday cover for Iglo Foods Group and others; the team understands the issues clients face on a day-to-day basis and has significant experience of the importance of making a clear and sensible recommendation that works commercially.
With team members in Paris and Munich, we are able to advise clients not only on their UK brand strategy and management but on Europe wide issues. With teams across Canada, and in the UAE, China and Singapore that we work with day in, day out, we understand the global issues raised by manufacturing, import and export and brand exploitation across the world.
In partnership with our own offices and those of our wider network we conduct successful international enforcement addressing infringements in over 50 countries worldwide for numerous clients.
We are members of, and in many cases on policy committees of, the British Brands Group, the International Trade Mark Association, the Chartered Institute of Trade Mark Attorneys, Marques and the Pharmaceutical Trade Marks Group which ensures we are up to date on the latest issues.
We produce and distribute regular alerts and hold an annual seminar addressing the latest issues affecting brands owners.
Designs
Designs are becoming an increasingly popular way to stop infringers. However, while registered designs can be cheap and quick to acquire, the choices available and the protection they offer can be confusing.
Our design law experts, led by John Coldham, help clients understand the differences between the various rights and the advantages and disadvantages of each. We work with our clients to secure the best portfolio for their needs and ensure that it is exploited effectively.
If clients then experience infringement of their rights, our team has significant experience of enforcing designs at every level, from informal resolution through correspondence to major litigation in the Intellectual Property Enterprise Court (IPEC), the High Court or the Court of Appeal.
Our market-leading design law specialists have acted on some of the most significant cases in the area. The team does not consider it sufficient simply to know the law inside out; it also focuses on what is important for its clients to achieve their commercial objectives. Every client's needs are different, and so our advice is focused and relevant to meet those needs.
The team's experience has been enhanced by secondments with design-focused clients including Aston Martin, Dyson and Marks and Spencer. This insight allows our experts to provide the very best commercial advice with practical solutions.
Experience
Our expertise includes:
- Experience of conducting and winning design right cases across the different courts, from lower value cases in the IPEC to the more substantial ones in the High Court, as well as significant experience of litigating designs in the Court of Appeal. For example:
- The team led Dyson to a landmark victory at the Court of Appeal against spare parts manufacturer Qualtex in a ground-breaking judgment that is widely considered to be one of the major cases in design right law. The team also acted for Dyson against Vax in another leading Court of Appeal judgment;
- In the High Court, the team has a number of successes to its name. These include John Coldham and Paul Inman's major unregistered design right victory for G-Star Raw, with an award of indemnity costs in G-Star's favour, and Kate Swaine's notable success in the Virgin v Premium (now Zodiac) case, which required an in-depth understanding and analysis of aircraft seat design and the regulatory constraints it operates within; and
- In the IPEC, the team won a design right case for longstanding client Kohler Mira against Bristan, concerning the design of electric showers. The case resulted in one of the highest ever damages awards in the court since it was reformed in 2010.
- Advising on the exploitation of design rights through licensing and assignments, both in the UK and internationally;
- Advising on concept development and running training for designs teams;
- Helping avoid IP infringement, covering in-house holiday leave, and providing clearance hotlines for clients which highlight potential risks, all of which ultimately reduce issues and expenses;
- Operating brand enforcement programmes that often avoid the need for legal proceedings altogether. Our team has a clear track record of achieving strong settlements between design right holders and infringers before any significant legal costs have been incurred; and
- Providing regular updates and seminars to our client base on design law developments and case law, and hosting a major seminar as part of the London Design Festival in London every September.
Copyright
Copyright an essential part of a business' brand protection arsenal. Unlike trademarks and designs, you cannot register copyright in the UK - it arises automatically on creation. Although copyright is often overlooked in favour of registered rights, it can provide brand owners with a free, useful and flexible tool to stop infringers from copying a right owner's original work.
Led by John Coldham, our team has extensive experience of dealing with a wide variety of both contentious and non-contentious copyright matters. This includes dealing with collecting societies, copyright infringement claims, and incorporating copyright as part of client's brand protection strategies.
Experience
- Advising clients on whether their activities require a licence from UK collecting societies, and helping secure the most appropriate and cost-effective licence for the use required. We can help clients to understand whether the scope of their activities falls within the requirements to take a licence and how to ensure that the licence covers all relevant uses.
- Enforcing clients' copyright against infringers (whether on online platforms or in physical materials) and conversely defending clients accused of copyright infringement.
- Advising clients on the use of copyright as part of a broader brand protection strategy.
- Conducting copyright audits for clients to confirm ownership of different copyright protected works. Often clients may have worked with third parties, or logos may have been developed a long time ago and so it is essential to understand who owns what rights before taking any enforcement action.
- Assignments and licences of copyright protected works. We have advised clients on how best to capitalise on their unregistered rights, using assignments and licences.
- Helping clients understand and exploit the law of copyright in the context of databases, and defending clients from claims of database infringement in, for example, data feeds.
- Advising on copyright in software, for example in the context of XML schema.
- Developing strategies for clients to prepare for the impact of new legislation in the UK and EU. The regulatory landscape for copyright is complicated and constantly evolving. We stay on top of developments for clients with operations in the UK and EU, advising them on the necessary steps for compliance with new regulatory environments.
International reach
Clients benefit from the team's international reach, providing advice on rights in the UK and at manufacturing bases across the globe.
With dedicated IP teams across several international offices including China, France, Germany and in the UK, as well as close ties with an established network of trusted firms in other jurisdictions, our team handles strategic and enforcement issues that span the globe.
An example of this international work includes high profile success in protecting Dyson's Air Multiplier™ fan design. A large number of cases have been fought and won in China, as well as in over 50 other jurisdictions around the world, all managed by a single team which has pursued over 1,000 infringers of the rights in the fan to date.
Clients range from the industrial to consumer products, clothing and fashion including Dyson, G-Star Raw, Hasbro, Joseph Joseph, Aston Martin, Kohler Mira, Mothercare and the Early Learning Centre, Kingspan Group, Unilever and ZEO.
