Intellectual Property

Our experts have the specialist knowledge required to advise clients on the transfer of intellectual property rights. We have vast experience in advising clients from all sectors involved in standalone assignments as well as clients whose assignments form part of a larger corporate deal. We are regularly called upon to guide clients of all sizes through the transfer of registered and unregistered intellectual property rights through the drafting and negotiating of assignments and associated due diligence. 

• Advised a hospitality business on the retrospective assignment of all intellectual property rights in a mobile app created for it by a third-party software developer.  
• Advises clients of trade mark and patent attorneys on discrete IP issues including assignment and confidentiality agreement issues for university spin-offs, pharmaceutical and engineering companies: drafting and negotiating assignments and dealing with chain of title issues to secure enforceable rights for their clients.  
• Prepared IP assignments in connection with the sale of a client’s brand.   
• Advised on the acquisition of patent and IP portfolios.    
• Advised on the sale of an IP portfolio, and transfer of employees under TUPE, from a company planning to go into administration.   
• Advised on IP ownership including assignment, coownership and the structuring of rights in joint development projects.

Our experts have the specialist knowledge required to advise clients on the transfer of intellectual property rights. We have vast experience in advising clients from all sectors involved in standalone assignments as well as clients whose assignments form part of a larger corporate deal. We are regularly called upon to guide clients of all sizes through the transfer of registered and unregistered intellectual property rights through the drafting and negotiating of assignments and associated due diligence. 

• Acted for a global consultancy business in connection with its IP maximiser programme, including identification of background and newly created intellectual property and devising and implementing strategy for its protection.   
• Carried out an international portfolio audit project for a luxury shoe manufacturer, identifying gaps in their protection and developing a filing strategy to plug these gaps.   
• Acted for CFS Aeroproducts on the identification and management of intellectual property rights in the delivery of new development services to the MOD.  

Advising on branding issues required sector specific knowledge. Our experts have a deep understand of the sector and are able to successfully advise clients of their branding rights, on licensing issues, contracts, and assignments. Our lawyers are also experienced in successfully representing clients in order to resolve disputes in relation to the branding field. 

• Advised a UK energy advisory firm on brand protection online, and enforcement and litigation strategy in other jurisdictions   

• Acted for an emobility client in a trade mark infringement dispute with a global auto manufacturer.   

• Acted for Geneva Laboratories in respect of its skincare brand Bio-Oil on anti-counterfeiting trade mark disputes including a High Court action against Groupon (2017/18) and multiple IPEC actions against various defendants (2018 onwards).  

• Advised a national rugby team on protection of its trade marks, including filing the same and negotiating threatened oppositions.

Our experts are on hand to guide clients through the labyrinth of copyright and database rights that affect businesses in all sectors and of all sizes. Regularly drafting contracts and negotiating licences and assignments, we are perfectly placed to advise our clients on all manner of contentious and non-contentious copyright and database rights issues. 

• Acted for Tangle Inc in an IPEC copyright dispute over its best-selling Tangle product.  
• Advised the Berne Schwartz Foundation on their gifts and copyright licences to various UK and US museums and universities.  
• Advised the Chartered Institute of Procurement and Supply (CIPS) on various projects including joint ventures, copyright infringement claims and international franchise arrangements.  
• Advised the British Association of Urological Surgeons (BAUS) on copyright, contract and charity governance issues.  
• Advises global toy manufacturer Zuru Inc on various IP issues in relation to their toys, from personality rights to the copyright and design rights of their products and third party products as well as managing their Amazon UK online enforcement.  

Advising on designs requires sector–specific knowledge. Our intellectual property experts have a deep understand of Community and UK design law and are able to successfully advise clients of registered and unregistered designs on licensing issues, contracts, and assignments. Our lawyers are also experienced in successfully representing clients in order to resolve disputes in relation to the design field. 

• Successfully settled a design law dispute between a high-street brand and a highend shoe retailer.   
• Dealt with a specialist jewellery design company on its contributor and manufacturing agreements, including all necessary IP transfers and moral rights waivers   
• Carried out an extensive trade mark and design clearance project for a UKbased insurance company in advance of the Christmas Day launch of a highprofile advertising campaign featuring a new range of characters.   
• Advised Wallbed Systems on the management of its intellectual property in bespoke wallbed designs.  
• Advises US design company, Tangle Inc, on various IP protection and enforcement issues from copyright to designs, trade marks and ‘passing off’.  
• Developed and implemented a multijurisdictional design protection strategy for the protection of an airline seating configuration for a major international airline.   
• Advised the fashion designer Alessandra Rich on contract and IP issues.  
• Successfully defended an invalidity action brought against an EU design for a fence post that was at the centre of a dispute relating to a major contract for security fencing.   
• Advised on highvalue, crossborder proceedings relating to EU and UK design rights and patents in an innovative commercial barrier system widely used in international airports, factories and warehouses.   
• Advised on a design rights dispute relating to contemporary office furniture products.   

Intellectual property is one of the key assets to any organisation, and the theft or misuse of such can have devastating consequences. We have a team of contentious IP experts who regularly advise clients who are facing the prospect of such a dispute against either a competitor, an employee, or other third party. Our expertise include dispute correspondence, internet take–down procedures, settlement agreements, and international litigation proceedings. 

• Acted as counsel and supervising lawyer for an information technology company threatened by a large multinational corporation with intellectual property infringement. The case ended with a substantive settlement for the information technology company.   
• Advised a technology company in respect of its alleged failure to deliver a technology project. The case culminated in a successful mediation.   
• Acted for a global mining company in relation to worldwide patent litigation against a leading Belgian competitor, including five-week High Court trial, £34m account of profits, two-week appeal to Court of Appeal and Petition to House of Lords.   
• Advised Synergy Retal Support on logistics contracts and related disputes.  
• Advised global retailer WH Smith on IP disputes.  
• Advised Italian shoe company Geox SpA on IP disputes.  
• Advised Thane Direct (TV shopping channel) for over 20 years in relation to IP protection and litigation against retailers of infringing products.  
• Advised luxury brand Jimmy Choo on IP disputes.  

With deep industry knowledge in various sectors including biotech, our intellectual property lawyers work with clients to fully understand their industry needs and regularly draft and negotiate complex exploitation arrangements and licences for the full range of their intellectual property rights. 

• Advised a BAFTA-award winning screenwriter on his development and exploitation agreements for an illustrated children’s book.  
• Advised on the protection and exploitation of a global business’ intellectual property in the context of its complex intellectual property ownership structure, its future growth plans globally and its key supplier contracts.   
• Advised a charity on a proposed spinout of IP in therapeutic technique for PTSD.   
• Advised Ellipsis Brands on the acquisition, creation and exploitation of celebrity-related beauty product brands.  
• Negotiated an IP spinout of brand, software, and themes to an ecommerce service provider and associated crosslicence arrangements.   
• Worked in-house at Film4 to advise on all aspects of the development and exploitation of two Oscar-winning feature films.  
• Providing advice on the creation, execution and implementation of intellectual property strategies, with a view to protecting intellectual property assets and maximising their value. 

Advising clients in relation to patents can be complex and depends on the complexity of the patent at hand. Our experts are experienced in dealing with patents across a series of industry sectors and have significant expertise advising on patent licensing, assignments and dispute resolution. They are also accustomed to advising clients on the implications of the new European Unified Patent System. 

• Advised a leading London patent attorney firm on a patent licence involving a complex party history.  
• Advised iRuiz Technology on software, algorithm and patent licensing issues.  
• Advising Dr Thaler against the UK Patent Comptroller concerning AI patenting questions. Claim № Ch2024000239 – Part of the global DABUS litigation considering whether an AI system can be an inventor and obtain a patent.   
• Advised on the creation of a patent portfolio for a new injectable device including assisting with the business model, structure of patent portfolio and licensing strategy from conception to sale (3 years).   
• Advising a cancer diagnostics business on its commercial agreements relating to the research, development and licensing of its proprietary assays.   
• Advised on highvalue, crossborder proceedings relating to EU and UK design rights and patents in an innovative commercial barrier system widely used in international airports, factories and warehouses.   
• Provided strategic intellectual property advice to an Indiabased manufacturer of smart phones regarding Standard Essential Patents (SEPs) for smart phone technology.   
• Acted for a global mining company in relation to worldwide patent litigation against a leading Belgian competitor, including fiveweek High Court trial, £34m account of profits, twoweek appeal to Court of Appeal and Petition to House of Lords.   
• Advising a biotechnology company on the licensing of its patentprotected technology in Japan   
• Represented the system on a chip provider and advised on their inclusion of standard essential patents (SEPs) in their technology and working with related industry standards.   
• Acting for an inventor client in an international crossborder dispute over patent ownership of a cardoor hemming machine.   
• Advised on the protection of knowhow used in the development of manufacturing processes. 

Confidentiality is a key issue for our clients but there are very few relationships that impose automatic duties to respect it. Our Intellectual Property team advise clients on how best to protect their confidential information and trade secrets. We regularly identify confidential information and trade secrets through an audit process. Our experts are also on hand to enforce these rights where there may have been a breach of confidentiality, and regularly draft confidentiality agreements, assignments and licences, as well as complex technology exploitation of know-how. 

• Advised an advanced paper coating technology client on the protection of trade secrets and confidential information in relation to material transfer arrangements with dozens of counterparties on multiple continents, as well as manufacturing and development agreements and Horizon Project participation.   
• Advised on the protection of knowhow used in the development of manufacturing processes.   
• Advised on data theft claims against exemployees going to a competitor or setting up a competing business   
• Advises clients of trade mark and patent attorneys on discrete IP issues including assignment and confidentiality agreement issues for university spin-offs, pharmaceutical and engineering companies: drafting and negotiating assignments and dealing with chain of title issues to secure enforceable rights for their clients.  
• Creating and keeping updated a suite of template commercial agreements for an epigenetic diagnostic company, including its confidentiality agreement, material transfer agreement, master collaboration agreement and standard terms and conditions for high throughput sales of RUO and diagnostic kits.  

Our trade mark and branding advisors are experts in their field. They have significant experience in guiding clients through, what can be, very complex pan-European trade mark licensing and assignment matters, as well as international dispute resolution. 

• Advised a leading global manufacturer of household and professional appliances on a field team services agreement which included detailed provisions on the use of company trade marks, property and sales and promotional materials.   
• Advising Harrods, Topshop, Topman, Miss Selfridge, and Burton on international wholesale, distribution and online market agreements, trademark protection, enforcement and co-existence agreements.  
• Advised a national wealth management company on trade mark protection including related trade mark oppositions   
• Portfolio management of a national furniture company’s trade marks, including filing new applications, strategic advice, and dealing with trade mark infringement of its key trade marks.   
• Represented Sandoz Limited and related group companies in complex trade mark infringement and passing off litigation.   
• Carried out an extensive trade mark and design clearance project for a UKbased insurance company in advance of the Christmas Day launch of a highprofile advertising campaign featuring a new range of characters.   
• Advised Topshop on multi-year celebrity endorsement agreements, live fashion events, brand and new product launches.  
• Handled trade mark filing work for a major multinational household appliances company.   
• Successfully represented a financial services company at both the UKIPO and the Appointed Person in relation to a number of related trade mark opposition proceedings.   
• Advised on the branding for a number of professional organisations including Monex International, Crispin MoneyCoutts and Axiom Chambers.   
• Advised James Gin on its brand, manufacturing, and supply agreements.   
• Advised Ellipsis Brands on the acquisition, creation and exploitation of celebrity-related beauty product brands.  
• Instructed by drinks manufacturer Frampton’s on brand protection for its drinks and liquid food range, contract manufacturing, and supply chain agreements.   
• Advised on a trade mark and boardlevel dispute for a London fashion label involving a broad range of actions, including breach of fiduciary duty, defamation, passing off, and trade mark infringement.   
• Advising a prominent plc in the energy sector on patent infringement, copyright subsistence, and the filing and management of its trade mark portfolio.   
• Advising the UK’s first digital bank on all intellectual property matters including patent and trade mark advice, trade mark filing and management strategy, and management of its intellectual property portfolio.   
• Advised an Isle of Man-based international consultancy and advisory business on its rebranding and new terms and conditions.