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Marques de commerce et marques

We work with clients to develop brand protection strategies that complement their business and support their commercial success

Our trademarks and brands team advises clients on global brand protection strategies, including undertaking clearance searches, the launch of new brands, the appropriate corporate structures for holding intellectual property rights, the review of partner and franchising agreements, the use of the International Trademark System, and the enforcement of trademarks and rights in goodwill. In addition, our team are well-versed in trademark and branding disputes, and where possible, we will always seek to resolve disputes without the expense of court or tribunal proceedings. However, when an impasse is reached, our team has extensive experience in trademark, passing off and licence proceedings before national courts, regional intellectual property registries and arbitral forums.

In the Middle East, our substantial trademark team combines the experience of specialist practitioners with local practitioners who have truly in-depth knowledge of the region. We ensure that trademark applications are prepared with due consideration to the practices of regional trademark offices and the practical realities of enforcement, which can often result in small, but important changes being made to an application to meet local standards. The same principles hold true on more substantive matters such as oppositions and cancellation actions.

Our Trade Marks & Brands Work

  • Tout
  • Afrique
  • Moyen-Orient
  • Royaume-Uni et Europe
  • Assisting Arby’s with the expansion of its franchised concept

    Assisting Arby’s, a well-known US casual dining concept with the expansion of its franchised concept in the UAE, KSA, Bahrain, Kuwait, Oman and Egypt, through a master developer relationship based in the UAE. Providing local law support on the transaction documents as well as related regulatory advice on corporate, franchising and trade mark issues.

    Égypte

    Trade mark protection for global tech company

    Advising a global tech company on protection and potential infringement of its trade mark in Kenya.

    Kenya

    Dispute concerning trade mark for warehousing systems

    Advising an architectural firm on allegations that its project name for vertical transportation systems infringed a trade mark owned by a provider of robotic warehousing systems, including negotiating coexistence terms and clearance searches for an alternative project name.

    United Kingdom

    Infringement and passing off action relating to hilal foods

    Representing an Indian company in proceedings in the Intellectual Property Enterprise Court for trade mark infringement and passing of by a UK-based manufacturer and distributor, and directors, of hilal foods.

    United Kingdom

    Purchase of company name

    Our client bought a building in the City historically associated with a Victorian company and its insignia.  We advised on the purchase of the company name, rights to use the insignia and trade mark applications relating to them.

    United Kingdom

    Recovery of trade marks from insolvent distributor

    Acting for a Middle Eastern broadcasting company in a dispute with the liquidator for its former UK and EU distributor over ownership of various trade marks. Working with our Dubai office, the matter involved drafting a settlement agreement and an assignment of the disputed marks to our client.

    United Kingdom

    Trade mark strategy and oppositions relating to in-car telecoms

    Advising the client on its trade mark portfolio and a series of related oppositions and coexistence negotiations, including with companies originating from the US whose expansion into the EU has led to conflict with our own client’s expansion into new technological areas.

    United Kingdom

    Local trademark law advice in Tanzania and Zanzibar

    Counselling a multinational company specialising in aerospace, defence and security on local trademark laws in mainland Tanzania and Zanzibar.

    Tanzania

    Advising a multinational health technology conglomerate on trademark renewals

    Advising a multinational health technology conglomerate on various trademark renewals and applications.

    Tanzania

    Advising a leading global manufacturer on trademark mergers

    Advising one of the world's largest manufacturers of bearings on trademark mergers.

    Tanzania
  • Assisting Arby’s with the expansion of its franchised concept

    Assisting Arby’s, a well-known US casual dining concept with the expansion of its franchised concept in the UAE, KSA, Bahrain, Kuwait, Oman and Egypt, through a master developer relationship based in the UAE. Providing local law support on the transaction documents as well as related regulatory advice on corporate, franchising and trade mark issues.

    Égypte

    Trade mark protection for global tech company

    Advising a global tech company on protection and potential infringement of its trade mark in Kenya.

    Kenya

    Local trademark law advice in Tanzania and Zanzibar

    Counselling a multinational company specialising in aerospace, defence and security on local trademark laws in mainland Tanzania and Zanzibar.

    Tanzania

    Advising a multinational health technology conglomerate on trademark renewals

    Advising a multinational health technology conglomerate on various trademark renewals and applications.

    Tanzania

    Advising a leading global manufacturer on trademark mergers

    Advising one of the world's largest manufacturers of bearings on trademark mergers.

    Tanzania

    Trusted adviser to a global fashion and fragrance brand

    Trusted adviser to a global fashion and fragrance brand with over 1,000 stores worldwide, with the scope of work recently extended to include Egypt and Jordan.

    Égypte

    Trademark applications for a multinational automotive corporation

    Managing various trademark applications for a German multinational automotive corporation.

    Tanzania

    Brand protection and ownership and brand enforcement in Egypt

    Advising regional and global clients on brand protection and ownership and brand enforcement in Egypt.

    Égypte
  • Global hotel group trade mark portfolio

    Managing a global hotel groups trade mark portfolio in 35 countries, and providing related advice to the management teams on brand strategy and implementation.

    United Arab Emirates

    Middle Eastern airline trade mark portfolio

    Handling a Middle Eastern airlines' extensive trade mark portfolio globally, including protecting its core brands in over 60 jurisdictions.

    United Arab Emirates

    Cross-jurisdictional trade mark disputes

    Management of cross-jurisdictional disputes involving opposition/cancellation proceedings for a number of clients, some resolved through co-existence, others through decisions from the TM authorities.

    United Arab Emirates

    Trade mark portfolio management

    Portfolio management of a considerable number of trade mark portfolios on a national, regional and international basis.

    United Arab Emirates
  • Purchase of company name

    Our client bought a building in the City historically associated with a Victorian company and its insignia.  We advised on the purchase of the company name, rights to use the insignia and trade mark applications relating to them.

    United Kingdom

    Trade mark strategy and oppositions relating to in-car telecoms

    Advising the client on its trade mark portfolio and a series of related oppositions and coexistence negotiations, including with companies originating from the US whose expansion into the EU has led to conflict with our own client’s expansion into new technological areas.

    United Kingdom

    Dispute concerning trade mark for warehousing systems

    Advising an architectural firm on allegations that its project name for vertical transportation systems infringed a trade mark owned by a provider of robotic warehousing systems, including negotiating coexistence terms and clearance searches for an alternative project name.

    United Kingdom

    Recovery of trade marks from insolvent distributor

    Acting for a Middle Eastern broadcasting company in a dispute with the liquidator for its former UK and EU distributor over ownership of various trade marks. Working with our Dubai office, the matter involved drafting a settlement agreement and an assignment of the disputed marks to our client.

    United Kingdom

    Infringement and passing off action relating to hilal foods

    Representing an Indian company in proceedings in the Intellectual Property Enterprise Court for trade mark infringement and passing of by a UK-based manufacturer and distributor, and directors, of hilal foods.

    United Kingdom

    Acting for cosmetic medical clinics in Copyright and trademark infringement

    Defending a leading chain of UK cosmetic medical clinics against a claim for copyright infringement, trade mark infringement and passing off

    United Kingdom

    Appeal against invalidity of EU trade mark

    Representing Regent University, a leading US educational institution, on an appeal to the General Court of the European Union from a decision of the OHIM (EU trade mark office) Board of Appeal relating to the validity of a trade mark

    United Kingdom

    Representing Mermeren Kombinant AD in trade mark infringement proceedings

    Bringing trade mark infringement proceedings on behalf of Mermeren Kombinat AD, the global leader in extracting and processing snow-white marble, in the English courts against Fox Marble Limited

    United Kingdom

    Trade mark 'threats' claim before the English High Court

    Representing a Dubai-based investment company in a claim before the English High Court to restrain unjustified threats of trade mark infringement proceedings

    United Kingdom

Our Trade Marks & Brands team

Ralph Cox
Ralph Cox

Partner

James Holmes
James Holmes

Partner

Tenda Msinjili
Tenda Msinjili

Partner

Chris Williams
Chris Williams

Partner

Joycia Young
Joycia Young

Partner

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