Intellectual Property: protecting the parts that other laws can’t reach

Invention, quality and reliability, creative skill and labour, aesthetic form, secrets and even reputation – there are a range of intangible assets which society protects as intellectual property. Such a wide spectrum requires an approach to the law which is at once nimble and detailed. It also requires us to have a deep understanding of the business sectors and technologies in which our clients work. But given how central intangible assets are to the modern economy, it is an investment that we are always willing to make.

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"Strengths include extent of knowledge and most notably the passion of individuals to get the deal done."

Chambers UK - 2016

In detail

We have assembled a team of specialists with a strong reputation in IP and the areas of law which are most relevant to IP-rich businesses.

  • Protection – We advise on the protection of the various forms of IP and also the clearance of new names and products for use in business.
  • Exploitation – We have advised leading brands and technology providers on IP licensing including copyright, trade marks, know-how and patents; as well as the exploitation of IP rights under a wide range of structures including franchise agreements, commissioning contracts, R&D agreements, sponsorship, merchandising, image rights and advertising.
  • Enforcement – We have a strong specialism in IP litigation, including not only infringement proceedings before the English High Court and Court of Appeal, but also opposition and cancellation proceedings before the UK IPO and European authorities. Our lawyers have handled some of the largest and most complex IP disputes ever litigated, and often with an international aspect.
  • Counselling – We advise on the commercial arrangements, regulatory matters, data protection, privacy, consumer protection, financial services and a host of other fields which form the legal context to your IP issues.

Recent matters

Advising Telegraph Media Group on a number of IP matters including on use of the Telegraph name as part of brand sharing arrangements with Capital One and exclusive partnerships with Coral, live events for the promotion of Fantasy Football and TM partnerships with third party providers of financial services.

Partner Jonathan Riley has advised Waters Corporation on its collaboration with Imperial College of Science, Technology and Medicine for the development and commercialisation of an intelligent surgical device capable of instantaneous tissue analysis in-vivo at the surgery site.

Advising Carabao in relation with advertising claims which mention other energy drinks using bottle shape and colour scheme, as well as nutritional claims and other labelling and packaging matters.

Partner Jonathan Riley acted as special counsel to the British Olympics Association (‘BOA’) to review the Joint Marketing Agreement between the BOA and the London Organising Committee (‘LOCOG’) relating to the exploitation of the BOA’s intellectual property and related rights and assets under a marketing programme organised and implemented by LOCOG as part of a joint fundraising initiative towards the 2012 Olympic Games.

Instructed in a significant passing off, copyright and unregistered design matter relating to industrial designs for public open spaces.

Partner Jonathan Riley has advised Entertainment Rights Plc on its acquisition of the principal IP rights in ‘Rupert Bear’, the property held by Express Newspapers since 1923. The acquisition meant not only a significant rebranding and commercial reinvigoration for the character, but also a new ongoing brand strategy between Entertainment Rights and Express Newspapers. Work included both the acquisition and ongoing production and distribution contracts, as well as IP due diligence on a property with an 80 year history.

Advising a global language-training provider in relation to a licence to use trademark goods in connection with digital learning tools and other published products and specifically on enforcement of the licence terms.

Dealing with a dispute over architectural copyright and artistic copyright in sculptures.

Partner Jonathan Riley has advised Antonio Banderas Limited in relation to its product endorsement agreements relating to Nexus SmartPay, a biocryptology payments system including the related IP rights licensing, promotional activities, investment terms, and the multi-jurisdictional structuring of the relevant arrangements.

Our lawyers have dealt with some of the leading cases in IP infringement including Cantor Fitzgerald v Tradition and Os [2000] RPC 95 (copyright in computer software); Rockwater v Technip [2004] RPC 46 (patents, oil and gas technology) and Enterprise v Europcar [2015] EWCH 17 (trade marks).

Advised on intellectual property matters in respect of a promotional campaign involving a major bank’s sponsorship of a national venue.

Partner Jonathan Riley has advised ‘Est Cola’ on its 2 year sponsorship agreement with Manchester City FC. The agreement marked a major thrust into the Thai market for Manchester City whilst providing Est Cola with the anchoring sports association for its ‘Cool-est’ soccer-based marketing campaign. The deal included a range of partnership activation events including a launch event in Bangkok, and an Est Cola TV advert with Manchester City players.

Advised a wearable technology business in respect of its commercial licensing and product development, including a venture with a major international consumer brand.

Advised on intellectual property matters in respect of the listing of several companies (predominantly in the technology sector) on AIM.

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