Menu Search through site content What are you looking for?
Menu

Intellectual Property

Intellectual property can be the most important asset owned by a business, so we work hard to protect its value and explore the opportunities provided by licensing and commercialisation.

Advice throughout the intellectual property lifecycle

Our intellectual property function is truly international, and we work with clients wherever they seek to do business. We have leading teams based in the UK, Middle East and Asia-Pacific, and coordinate with external firms in other jurisdictions to ensure seamless coverage.

We advise on global brand protection strategies and assist with the enforcement of trademarks, preferably without resort to court proceedings but through litigation if required.

Our commercial acumen enables us to advise on the commercialisation of intellectual property through licensing and franchising, royalty agreements, white-labelling, and research and development. We also provide guidance on personality rights and on content creation, distribution and acquisition.

We advise on issues relating to the ownership, exploitation and infringement of copyright and designs, with awareness of cross-jurisdictional issues. Our team has expertise in helping clients apply for and implement patents and protect their trade secrets.

Our Intellectual Property Work

  • All
  • Africa
  • Asia Pacific
  • Middle East
  • UK & Europe
  • Advising entrepreneur on various agreements in the veterinary sector

    Advising the client on non-disclosure agreements, collaboration agreements and licensing and distribution agreements for the commercialisation of his “brand extension” concepts for established veterinary products.  Also advising on freedom to operate around patents protecting those established products.

    United Kingdom

    Appeal from Patent Office’s refusal of a business method patent

    Conducting an appeal to the Patents Court from the UK Patent Office’s decision to refuse a patent application for placing trades at multiple stock exchanges simultaneously as being a method of doing business and/or being for a computer programme as such and so excluded from patent protection.

    United Kingdom

    Collaboration and services agreements for a biotech

    Advising our UK client on various agreements for the development and commercialisation of its technology through master services agreements with multi-national pharmaceutical companies and collaboration agreements with clinical companies outside the UK.  We also advised on and drafted agreements for the settlement of disputes arising from the collaboration agreements.

    United Kingdom

    Conducting series of patent actions relating to prenatal genetic tests

    Representing our clients in a long running patent infringement dispute, with revocation counterclaims, in the Patents Court relating to prenatal tests for foetal abnormalities such Downs syndrome.  Also advising on a related procurement dispute and judicial review.

    United Kingdom

    Copyright in boat fenders

    Defending an Australian client against an allegation by a UK company of infringement of copyright in the design of fenders for pilot boats. 

    United Kingdom

    Copyright in integrated chips for vocoders

    Acting for a US-based client in asserting copyright, trade mark and patent rights in plug-and-play devices (with integrated chips) for voice recording and synthesis against counterfeit devices being distributed in the UK and elsewhere in Europe.

    United Kingdom

    Copyright issues arising from the monitoring of television viewing

    Advising our client on potential issues of copyright infringement arising from its software for analysing the viewing habits of tv and video-on-demand customers.

    United Kingdom

    Defending validity of patent relating to nappy manufacture

    Defending the validity of a patent relating to ultrasonic bonding in the manufacture of nappies and other disposable absorbent garments in the Intellectual Property Enterprise Court and Court of Appeal.

    United Kingdom

    Design dispute concerning jewellery

    Defending our client from allegations of infringement of two EU registered designs for jewellery, as well as passing off, brought by a well-known US fashion house by demonstrating that the designs were invalid as giving the same overall impression as articles that were well-known at their filing date.

    United Kingdom

    Design dispute concerning plastic containers

    We defended a leading UK manufacturer and supplier to supermarkets of containers for ready-meals against allegations of infringement of multiple unregistered design rights and countered explaining the independent derivation of the designs from commonplace household articles. 

    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

    Trademark applications for a multinational automotive corporation

    Managing various trademark applications for a German multinational automotive corporation.

    Tanzania
  • China IP advice - roads and maintenance firm

    Advising global market-leading road construction and maintenance machinery provider on patent infringement litigation against a Chinese company and secured a first instance judgment of RMB500,000 in compensation and succeeded in defending the client's patents from the Chinese company's invalidation attempts.

    China

    China IP - water filtration patent protection

    Advising leading manufacturer of water filtration equipment on patent infringement by a Chinese national. The Chinese national copied a patented cartridge and filed a utility model patent application for the copy-design. As China does not conduct a prior art search for utility model applications, the China Patent Office (SIPO) issued the utility model patent to the individual despite the lack of novelty and inventiveness. The individual then initiated a patent infringement litigation against...

    China
  • 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

    Copyright ownership for a leading non-profit organisation

    Advising a leading non-profit organisation on the ownership of copyright and other IP in works generated by employees, consultants, and contractors, in addition to counseling clients on joint copyright ownership and commercialisation issues and preparing related contractual agreements.

    United Arab Emirates

    Multi-jurisdictional copyright advice for a web services provider

    Counselling a leading web services provider on local copyright right law and practice in relation to the introduction of novel web-based services and content in multiple jurisdictions in the MENA region.

    United Arab Emirates

    National content digitisation project advice

    Counselling a Gulf Co-operation Council (GCC) entity on a national content digitisation project and implications under local and international copyright law.

    United Arab Emirates

    Advising a global food manufacturer on copyright issues

    Advising a global manufacturer of food products on copyright, trade mark, registered design issues both globally and across the region.

    United Arab Emirates

    Regional broadcaster copyright exception advice

    Advising a major GCC broadcaster in relation to its ability to rely on the copyright exceptions under UAE law and across the region in order to use third party content and broadcasts in its programmes, in particular in relation to showing sports highlights.

    United Arab Emirates

    Filing strategy advice for a government funded research centre

    Providing a leading computing research centre funded by the government of a GCC state (one of the largest producers of patentable technology in the region) with strategic advice on filing strategy and working with the client and its team of researchers and inventors to file over 50 PCT applications.

    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

    Copyright in boat fenders

    Defending an Australian client against an allegation by a UK company of infringement of copyright in the design of fenders for pilot boats. 

    United Kingdom

    Copyright issues arising from the monitoring of television viewing

    Advising our client on potential issues of copyright infringement arising from its software for analysing the viewing habits of tv and video-on-demand customers.

    United Kingdom

    Copyright in integrated chips for vocoders

    Acting for a US-based client in asserting copyright, trade mark and patent rights in plug-and-play devices (with integrated chips) for voice recording and synthesis against counterfeit devices being distributed in the UK and elsewhere in Europe.

    United Kingdom

    Design dispute concerning jewellery

    Defending our client from allegations of infringement of two EU registered designs for jewellery, as well as passing off, brought by a well-known US fashion house by demonstrating that the designs were invalid as giving the same overall impression as articles that were well-known at their filing date.

    United Kingdom

    Design dispute concerning plastic containers

    We defended a leading UK manufacturer and supplier to supermarkets of containers for ready-meals against allegations of infringement of multiple unregistered design rights and countered explaining the independent derivation of the designs from commonplace household articles. 

    United Kingdom

Our Intellectual Property team

Richard Berkahn
Richard Berkahn

Partner

Scott Bertschi
Scott Bertschi

Partner

Chris Burdett
Chris Burdett

Partner

Alec Christie
Alec Christie

Partner

Reece Corbett-Wilkins
Reece Corbett-Wilkins

Partner

Ralph Cox
Ralph Cox

Partner

Mark Devaney
Mark Devaney

Partner

James Holmes
James Holmes

Partner

John Moran
John Moran

Partner

Tenda Msinjili
Tenda Msinjili

Partner

Chris Williams
Chris Williams

Partner

Show more
View all Intellectual Property partners

Show more