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Freeths - Law firm

Intellectual Property Disputes

Better, quicker and more cost-effective solutions

What is involved?

Businesses deliver products, processes and brands to increase sales and grow market share. Intellectual Property rights are valuable in that endeavour because they can be used to prevent competitors from copying products, processes or branding. That may be the design of a new light fitting, a patent for a new machine, an haute-couture fashion brand or copyright in music or a piece of art.

However, the scope of intellectual property rights are balanced against fair competition and so the line in between is not always black and white. That’s where disputes arise.

A successful rights holder will be able to prevent an infringer from using its rights by injunction, by delivery up of goods, and by claiming compensation, but an unsuccessful one may find its rights invalidated and be liable for costs.

Therefore the value of intellectual property rights is in their creation, in understanding how to enforce them and how they can be challenged.

Why choose Freeths?

We have a strong dedicated IP team that specialises in all aspects of IP, including protection, maintenance and enforcement of intellectual property, including defending claims of infringement as well.

This means we have the resources and skills to employ a broad range of expertise and deliver strategies that are focussed on your objectives and preferred outcomes, rather than engage in mechanised litigation alone. It means we can deliver a better, quicker and more cost effective resolutions.

Call our experienced Intellectual Property team to find out more.

Meet the team

Intellectual Property Disputes Lawyers


Simon Barker, Partner & Head of Intellectual Property

Simon Barker
Partner & Head of Intellectual Property

0845 634 2583

Joanna Kawalec, Solicitor

Joanna Kawalec
Solicitor

0845 166 6251

Lloyd Lane, Solicitor

Lloyd Lane
Solicitor

0845 404 1730

Stuart Lester, Associate

Stuart Lester
Associate

0845 077 9652

Jonathan Mayner, Senior Associate

Jonathan Mayner
Senior Associate

0845 634 1735

Kishan Pattni, Senior Associate

Kishan Pattni
Senior Associate

0845 070 3811

Testimonials

"Simon Barker's IP practice includes dispute resolution, portfolio management and transactional services. Clients describe him as a "really helpful and attentive" lawyer."

(Chambers & Partners, 2018)

"Barker (with the support of associate and litigation specialist Jonathan Mayner) recently acted for a leading European e-liquid producer in a trade mark and passing-off claim brought by the estate of a deceased high-profile personality."

(The Legal 500, 2017)

"One of the most effective and reactive firms in the UK."

(The Legal 500, 2017)

Notable Work

Trade marks

  • Defending and resolving a claim for infringement of a shape trade mark for a chocolate bar and counterclaiming for cancellation of the mark.
  • Claiming immediate injunctive relief for the use of a trade mark in advertising.
  • Claiming injunctive relief in relation to the use of a well-known trade mark for different services.
  • Defensive cancellation and revocation of competitor trade marks.
  • Cancellation of a shape trade mark for kitchen equipment.
  • Bringing cancellation and rectification proceedings relating to a brand of protein ice cream.
  • Acting for OEM of cars in a case of trade mark infringement relating to imported replica vehicles.

Passing off

  • Defending, prosecuting and settling claims in passing off relating to product packaging.

Patents

  • Defending and resolving a claim for patent infringement relating to the design of an agricultural machine.
  • Defending and resolving a claim for patent infringement concerning modifications to a product and whether that amounted to infringement.

Copyright

  • Defending a claim for infringement of copyright in a children’s story book.
  • Resolving claims by collecting societies such as CLA and PRS/ PPL.
  • Defending a claim for copyright infringement and breach of a licence to distribute teaching materials.
  • Defending a claim for breach of copyright and licence relating to the rental of musical scores.

Designs

  • Bringing a claim for infringement of UK and Community unregistered design rights in relation to designer shoe.
  • Defending and resolving a claim of registered and unregistered design infringement in respect of furniture designs.
  • Invalidation of a registered design for a cup holder.

Confidential information

  • Bringing proceedings in court for breach of confidence and at the Patent office for a declaration of entitlement to foreign patent rights over automotive machinery.
  • Defending claim by automotive manufacturer over allegations of a breach of confidence in CAD designs for cars (along with other various other causes of action).

Domain names

  • Claiming immediate injunctive relief for recovery of a domain name and reinstatement of email traffic without notice to the holder who had misappropriated the domain for himself.
  • Making UDRP and Nominet complaints in cases of typo-squatting and cyber-squatting.

Reported judgments and decisions

  • Birlea Furniture Ltd v Platinum Enterprise (UK) Ltd & Anor [2018] EWHC 26 (IPEC)
  • Decision of Fourth Board of Appeal of 20 November 2017 in case R 2240/2016-4
  • Coral Group Trading Limited v Gruner + Jahr GmbH & Co KG
  • Judgment of the General Court (Second Chamber) of 16 May 2017
  • Airhole Facemasks, Inc. v European Union Intellectual Property Office
  • EU trade mark Case T-107/16
  • Decision of Cancellation Division of 5 July 2016 in case ICD9923
  • Creative Products Ltd v Gimex melamine plus GmbH
  • Moroccanoil Israel Ltd v Aldi Stores Ltd [2014] EWHC 1686 (IPEC)

Client service

‘Doing the right thing’ is at the heart of Freeths. Find out more about our excellent client service and the strong set of values that guide the way we work.

Our service

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Talk to us

Freeths are a leading national law firm with 12 offices across the UK. If you have a query about our services or just want to find out more, why not give us a call?

Contact: 03301 001 014

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