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Freeths - Law firm
Jonathan Mayner, Senior Associate

Jonathan Mayner

Senior Associate

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Jonathan specialises in intellectual property and advertising law and regulation, providing pragmatic, commercially-focussed advice and solutions. His practice encompasses contentious work in the English Courts, at the UK and EU Intellectual Property Offices, Company Names Tribunals and various forums dealing with domain name disputes. He also assists clients with complaints and investigations at the Advertising Standards Authority.

Jonathan has particular expertise in trade mark enforcement in online contexts and in the interface between trade mark law and advertising regulation. He also has in-house experience, having spent 6 months on secondment to a telecommunications business. Before becoming a lawyer, Jonathan worked variously in online marketing, retail and the construction industries.

Legal Services

Intellectual Property & Media

Working closely with marketing teams, advertising agencies and other stakeholders, Jonathan advises clients on regulatory and legal issues arising in advertising content. He provides clearance advice ahead of publication, advises on and assists with potential complaints about competitor advertising and assists in responding to investigations being carried out by the Advertising Standards Authority.

Where comparative advertising also activates trade mark issues, Jonathan also advises on the merits and risks of legal challenges.

Trade Marks

Jonathan’s trade mark experience encompasses portfolio management, applications, oppositions and cancellation actions at the UK and EU Intellectual Property Offices and infringement disputes in the High Court and Court of Appeal.

He has particular interest in trade mark issues as they play out in online and digital contexts. He has considerable experience of using takedown and dispute resolution policies and procedures; provided by social media and app ecosystem providers and domain name registrars.

Advertising

Working closely with marketing teams, advertising agencies and other stakeholders, Jonathan advises clients on regulatory and legal issues arising in advertising content. He provides clearance advice ahead of publication, advises on and assists with potential complaints about competitor advertising and assists in responding to investigations being carried out by the Advertising Standards Authority.

Where comparative advertising also activates trade mark issues, Jonathan also advises on the merits and risks of legal challenges.

Cases

  • Jonathan recently brought a successful revocation action against a UK trade mark registration that was identical to a client’s own brand and which was registered in relation to identical goods and services. While the client’s own trade mark had been on the market (and register) for several years, the brand had become so important to the business that it became important to neutralise any threats from earlier registrations for the same mark.
  • Issuing trade mark infringement proceedings against a client’s competitor on the basis that the competitor’s comparative advertising was not compliant with the Comparative Advertising Directive and related laws and regulations. The matter was satisfactorily settled before substantive proceedings commenced.
  • Successful defence of complaints filed at the Advertising Standards Authority that images in a client’s television advert misleadingly implied that the produce was sourced in the wild as opposed to farm-reared.
  • Successful informal resolution of complaints filed at the Advertising Standards Authority against a client’s price comparison advertising.
  • Procuring the cessation of non-compliant comparative advertising by a client’s competitor by issuing trade mark proceedings in the High Court.
  • Advising an e-liquids business accused of infringing rights owned by the estate of a deceased Hollywood star. Successful pre-action resolution.
  • Providing product design and trade mark clearance advice to a retailer in relation to own-brand products.
  • Assisting the estate of a published author with an investigation into levels of sales, royalties paid and unauthorised publications.
  • Acting for a client in the automotive sector accused of breach of confidence, trade mark, copyright and design right infringement. Defence and settlement of proceedings in the High Court.
  • Assisting a well-known fashion brand with a multi-jurisdictional project on promotional pricing and related marketing claims.

 

Sectors

Retail

Jonathan has acted for a number of high street retailers in actions before the High Court, Court of Appeal, trade mark offices, the Company Names Tribunal and in domain name dispute forums. He has particular expertise in assisting multi-channel retailers with IP infringement and enforcement actions in digital contexts including paid search, social media, affiliate marketing, app ecosystems and third party e-commerce platforms.

He also has considerable experience of clearing and advising on IP issues in relation to new products, their packaging and the development of own-brand products. Jonathan also assists retailers on advertising regulatory issues and provides advertising and promotional clearance advice in relation to comparative and other advertising.

Cases

  • Taking down dozens of misleading and infringing social media accounts purporting to offer vouchers to spend at a client’s stores.
  • Procuring the transfer of dozens of domain names from cyber-squatters, typo-squatters and affiliate marketers for a high street retailer.
  • Prior to joining Freeths, Jonathan was involved in the long-running Interflora v Marks and Spencer Google Adwords dispute at the High Court and Court of Appeal.

 

Latest

To contact Jonathan or for more information…

Call: 0845 634 1735
Or email: Send an email

 

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.

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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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