Intellectual Property

Global

Every step on the path to market presents different challenges. Gowling WLG works with you to overcome those challenges by protecting and enforcing your Intellectual Property (IP) assets and helping you maximise their value.

With unmatched expertise in patents, trademarks, brands and designs, copyright, advertising, IP litigation and more, we've been winning IP cases for clients around the world for over 125 years, and offer you exceptional representation in a dynamic and competitive market.

Clients choose Gowling WLG for IP because we have the same commitment to protecting, managing and applying their IP as they do in creating and using it. They also appreciate the value of our international, full-service platform and use our legal professionals to obtain advice on matters that go well beyond traditional intellectual property issues.

With one of the largest and most highly regarded IP practices in Canada, leading practices in the UK and Russia, expert teams in Germany, China and Dubai and a global network of IP associates, Gowling WLG's international IP practice can support its clients in jurisdictions across every continent.

From multi-million dollar disputes and billion-pound deals to cost-capped litigation in the IP courts, we apply our innovative thinking and collaborative approach to your IP issues. We create practical, effective solutions that meet and exceed your business needs.

Many of our professionals are specialists in science, engineering and technology. This unique combination of legal talent and in-depth industry knowledge enables us to better understand your business and help you realise the full value of your IP.

Sectors we cover include:

Key contacts

Canada

For over 125 years, Gowling WLG has been helping the world's top organizations maximize their intellectual property and protect what makes them unique. We can help you overcome every challenge on the way to market by strategically defending and enforcing your intangible - and invaluable - assets.

With one of the largest and most highly regarded IP practices in Canada and a global network of IP associates, Gowling WLG embraces a culture of innovation. We like to think differently about your IP issues, and are committed to finding efficient solutions that meet the specific needs of your business.

Industry-specific experience

Gowling WLG has extensive experience in managing global IP portfolios across a range of industries, and many of our professionals hold specialized expertise in science, engineering and technology. This unique combination of unparalleled legal talent and in-depth industry knowledge enables us to better understand your business and help you realize the full value of your IP - from patents and trademarks to brands and industrial designs.

Leaders in our field

Our intellectual property professionals have been shaping IP law for decades. Not only does Gowling WLG file more trademarks and patents than any other law firm in Canada, but we're also counsel of record for more litigation cases than any other firm. We manage tens of thousands of files and protect and enhance our clients' IP assets all over the world. Gowling WLG is also home to Canada's leading advertising and product regulatory law practices.

Global reach

To maximize our global reach, we've built an extensive network of local counsel in jurisdictions across every continent. We manage our clients' global IP portfolios with direct involvement on substantive issues, while delegating and overseeing the handling of jurisdiction-specific matters to experienced local counsel. This approach ensures that we deliver the highest quality service while remaining cost-efficient.

Full-service support

Our international, full-service platform gives you access to the experience and expertise of over 1,400 professionals who can advise on any legal issue that may arise in the context of your business.

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You can depend on Gowling WLG to deliver practical, effective legal advice to help you grow your business and advance your vision. To learn more, please contact any member of our team.

China

Registering, managing, licensing and enforcing your intellectual property (IP) assets in China is a strategic imperative. To succeed in China, you need a team that combines in-depth skill and insight, extensive local knowledge and sophisticated experience - all with an underlying goal of providing clients with commercial, strategic and prompt assistance in a cost-effective, easy-to-understand way.

Gowling WLG is the firm you're looking for. Our professionals in China provide rapid, strategic advice for IP filing and prosecution work at a competitive price. We complement this with formidable expertise in IP licensing, enforcement and litigation, so you can ensure your intangible assets remain fully protected.

With offices in Beijing and Guangzhou, along with a far-reaching network of local counsel and private investigators, we offer our international clients quality on-the-ground service every day.

Our team is proud to manage the trademark, patent and design portfolios of numerous companies, from Small and medium-sized enterprises (SMEs) to world-famous global brands. We've also helped a large number of IP firms worldwide with the filing and management of their clients' patent and trademark portfolios in China. In addition, our team has assisted global household names as well as SMEs enforce their valuable IP in courts and with administrative authorities across China with very high levels of success. The team has been recognised by the World Trademark Review, IAM Patent and Managing IP.

Our IP team in China can assist with the following.

IP portfolio strategies

  • Registrability strategies
  • Clearance and prior art searches
  • IP due diligence
  • IP evaluation
  • IP monitoring
  • IP licensing, assignment and other commercial transaction services
  • Ownership, infringement and validity opinions
  • Freedom to operation opinions
  • IP portfolio planning and management
  • Domain name disputes

Filing and prosecution

  • Filing patent applications
  • Filing PCT international patent applications
  • Filing requests for patent re-examination
  • Patent invalidation and appeal proceedings
  • Trademark registration, review and appeals
  • Trademark opposition and cancellations
  • Recordal of copyright works
  • Recordal of IP rights with Customs
  • Dealing with office actions
  • Annuity payments

Licensing

  • Licensing (including standard essential patent issues)
  • Regulatory
  • Anti-trust

Enforcement

  • Trademark, copyright and unfair competition enforcement and litigation
  • Anti-piracy and anti-counterfeiting strategies and enforcement (civil and criminal)
  • Invention patent, utility model patent and design patent enforcement and litigation
  • Off-line enforcement strategies and take-downs
  • Customs recordal and enforcement
  • Entitlement proceedings

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You can rely on our award-winning China team with extensive experience and commercial expertise in IP portfolio management. Let's make the most of your IP together.

France

Protecting and enforcing your intellectual property (IP) assets is a key step towards business success. You need lawyers who have the same commitment to protecting, managing and applying IP as you do in creating and using it. An international, full-service platform is also crucial in a globalised world.

Our Paris IP team offers advice on litigation as well as a holistic service with pragmatic solutions for every sector. We can handle questions relating to competition and tax, and our advice often goes well beyond traditional IP issues.

With decades of experience behind us, all of our lawyers are members of recognised professional associations in the field (AIPPI, INTA, LES, EPLAW, APRAM, APEB).

Areas we cover include:

  • Trademarks
  • Patents
  • Copyright and designs
  • Information technology
  • Personal data
  • Tax
  • Unfair competition

You'll benefit from our deep understanding of French litigation procedures and ability to handle complex, pan-European litigation and disputes. Our team works closely alongside professionals in other Gowling WLG offices all over the world, which allows us to offer you fully integrated teams to assist with your IP files.

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Your IP is crucial, so let's work together to protect and enhance its value. We look forward to hearing from you.

Germany

Your intellectual property (IP) is a key asset of your business. You need to protect it, and often that means acting fast when it comes to IP infringements before the damage is done. But you're also concerned about maximising your revenue, which requires effective IP portfolio strategies and longer-term thinking.

By working with Gowling WLG, you can be sure that your patents, trademarks, brands, copyrights and other intangible assets are both secure and delivering on their potential. We'll make sure that you use your IP rights in a way that adds value to your business. That means seeing your challenges from both a legal and economic perspective.

We're home to one of the strongest and most focused IP practice groups worldwide, with offices on the ground in Germany and in many other major jurisdictions. We have offices in every major jurisdiction with a future division of the UPC (Paris, Munich and London) and we are deeply familiar with many of the judges who will be active in the Unified Patent Court (UPC). Equally, we are aware of the subtle cultural differences across all jurisdictions.

Areas we cover include:

  • Contentious and contractual IP matters
  • Copyrights
  • Counterfeit
  • Database rights
  • Dispute resolution
  • Fraud
  • IP audits
  • Licensing
  • Patent litigation
  • Portfolio advice
  • Preliminary injunctions
  • Product piracy
  • Trademarks
  • Unfair competition
  • Unitary patents

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Combining in-depth technical expertise with broad sector experience, we're passionate about securing you intellectual property rights. Talk to us now to start protecting your assets.

Russia

Managing and defending your intellectual property (IP) rights in Russia can be a daunting prospect. For many, it's an unknown market with complicated laws and a high degree of government protectionism.

You need common sense legal advice that makes a difference. And that's where Gowling WLG can help.

We're one of the world's most respected, experienced and trusted law firms when it comes to protecting and enforcing intellectual property rights. Through our Moscow office, our award-winning team of IP practitioners has worked seamlessly with a global clientele for more than two decades to deliver strategic advice on all aspects of IP law throughout Russia and the CIS (all former USSR countries).

Areas we cover include:

  • Advertising, marketing and regulatory affairs
  • Copyrights
  • Designs
  • Domain names
  • IP litigation and dispute resolution
  • IP portfolio and asset management
  • Licensing and technology transfers
  • Media and entertainment
  • Patent and trademark prosecution
  • Strategic IP/market entry
  • Trade secrets
  • Trademark and brand enforcement

Local and international

This is a one-stop shop. We advise across the entire CIS region by either filing directly via our own Eurasian attorneys or through our network of carefully selected foreign associate firms.

Deeply familiar with the local market, all of our IP attorneys are Russian-qualified - and we've been working in the country for almost 30 years. With 28 IP professionals, we're the largest foreign IP law firm in Russia.

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Whether it's protecting your IP rights in Russia or outside of the country, get in touch for a service that covers inception to commercialisation.

UAE

Intellectual property (IP) protection in the Middle East can be costly, but not having the protection in place can cost you your business. You need lawyers who know how to maximise your assets, prioritise your profitability and take a shoulder-to-shoulder approach to your business.

Gowling WLG should be your first choice. With an office in Dubai, we have the expert local knowledge and international experience to provide solutions throughout the Middle East and the global reach to position and maximise your IP assets around the world. You'll be working with lawyers who are immersed in your world, providing advice that is completely commercial and always attuned to your needs.

But your IP needs do not stop at border - and neither do we. As part of Gowling WLG's international IP platform, we have the breadth and depth of knowledge to support your business and protect your IP wherever your commercial interests may lead.

Areas of intellectual property and the commercialisation of such rights we cover include:

  • Advertising and marketing
  • Anti-counterfeiting and preventing the trade of illicit goods
  • Arabic branding and local deployment of brands and marketing collateral
  • Commercialisation of IP rights
  • Copyright protection, enforcement and commercialisation
  • Enforcing IP rights throughout the MENA region
  • Franchising and distribution advice, both setting up and bringing to a close
  • IP rights litigation throughout the MENA region
  • IP transfers, co-existence, joint ownership, licensing and other contractual aspects
  • Management of IP portfolios (patents, trademarks, designs, copyright) throughout the MENA region and further afield

Find out more

Get in touch with a team that includes some of the most prominent IP specialists operating in the Middle East today. We're here to help.

UK

If you want an intellectual property (IP) law team that knows how to win anywhere in the world, puts your profitability at the top of its priorities and takes a shoulder-to-shoulder approach to client relationships, then Gowling WLG should be your first choice. Chambers refers to the team as "a quality operation ... there is no doubt that they are leading the field."

From multi-million pound disputes and billion pound deals to cost-capped litigation for SMEs in the IP courts, our starting point is looking at what you want to achieve and then setting out a strategy to find the best solution. A large experienced team taking a holistic, commercial approach guarantees a perfectly tailored solution for every client.

Sometimes a settlement will secure what you want. But, if necessary, this team will go all the way to achieve the right result. Our team has won cases in the ECJ (02 v 3G), Supreme Court (Zodiac v Virgin), the High Court (British Telecommunications plc (BT) for Californian client ASSIA,) and IPEC (Cobra UK in a dispute with BOS GmbH & Co. KG.)

Our cutting-edge work has won awards such as TMT team of the Year for Legal Business Awards and the British Legal Awards and Patent Contentious firm of the Year at the Managing Intellectual Property Awards. We have also won Design Firm of the Year at the Managing Intellectual Property EMEA Awards 2019. We offer:

  • Technical excellence - Academic attainments and earlier careers in biochemistry, physics, engineering, IT and microbiology means this team is more than a match for specialist technicians on the other side. Take Dr Luke Kempton who is commended for his "scientific understanding" in Legal 500. Four of India's fastest growing technology businesses have chosen this team as their lead adviser
  • Global coverage - Multi-jurisdictional coverage, with contacts around the world, means clients can be certain of a speedy and cost-effective approach. Global giants such as Aston Martin, Dyson, Unilever, GlaxoSmithKline, Lundbeck and Hasbro turn to the team for expert advice on clearance, exploitation and enforcement of their IP rights. Members of the team are known for their thought leadership presentations at international conferences
  • A competitive edge - Whatever the challenge or opportunity, they have the experience and resource to offer the very best legal advice. As acknowledged by Legal 500 2014, this team "provides outstanding service at all times". Regular legal updates keep our clients and contacts at the forefront of intellectual property law developments.

Overturning 100 years of patent law

The team saved Zodiac Seats from a very substantial potential pay out in a six-year battle that went all the way to the Supreme Court and overturned 100 years of law in the process.

Michael England, instructing the firm, said: "The team's ingenuity and perseverance was instrumental in handling each legal challenge Virgin threw at us. The outcome speaks volumes about the team's commitment to win which saved us from paying out potentially many millions in damages."

Design infringement in China

Dyson, a client since 2000, was successful in its case against China-based manufacturer Yongkang Yixuan for design infringement relating to its Air Multiplier™ fan.

Gill Smith at Dyson said: "Dyson is a highly innovative company in both design and technology. Its intellectual property rights are key to its success, and Dyson has proven that it will enforce those rights wherever in the world they are infringed.

"China is a difficult jurisdiction, but with help and guidance from Gordon and his team we have had a string of successes, culminating in this first full trial win. We have more cases in hand or under investigation and we will pursue relentlessly those companies which flagrantly steal the fruits of Dyson's highly innovative engineers and scientists."

Business survival in David v Goliath battle

In a classic David v Goliath battle, the team helped Comic Enterprises Ltd, owner of the Glee Club comedy and music group, to secure a high-profile High Court victory against 20th Century Fox. The case concerned whether Fox's hit television series 'glee', a live show based on the series, DVDs and various glee-branded merchandise, infringed our client's UK registered trademark.

In its judgment, the High Court recognised the "likelihood of confusion", and the potential for customers to "believe there is a link" between the Glee Club and the TV show, and be discouraged from attending the Glee Club venues.

Mark Tughan, managing director of Comic Enterprises, said: "We are incredibly relieved and pleased with today's decision. We spent 15 years building up our Glee brand before the TV show was launched in the UK and the show has had a very damaging effect on our business. Potential customers wrongly assumed we were connected, and were being put off."

'Patent Box' tax relief

The UK's 'Patent Box' regime offers companies an attractive lower rate of UK corporation tax on worldwide profits earned from their patents and other qualifying IP rights. The effective rate of tax will gradually be reduced and, by 1 April 2017, will be as low as 10%.

You can benefit from the Patent Box if your company is liable to UK corporation tax and makes a profit from exploiting patented inventions. Our intellectual property and tax experts can assist you and your patent attorneys in making the most of the Patent Box. Please contact Dr Luke Kempton to find out more.

The Unified Patent Court

The Unified Patent Court (UPC) is a brand new court system for owners of European Patents and Unitary Patents (UPs). With a single judgment, the court is able to determine validity and infringement of a patent across nearly all EU member states.

Gowling WLG's award winning patent litigation team draws on its extensive experience patent litigation in the UK, Germany, France and beyond to provide clients with comprehensive guidance as to the opportunities and challenges presented by this new court system.

To find out more, visit our UPC information hub.