Spencers Solicitors Intellectual Property (‘IP’) lawyers provide specialist legal advice and practical assistance to individuals and businesses of all sizes, to help them obtain, protect, exploit, and manage their brands, designs and artistic creations, to the maximum.
Our intellectual property solicitors will act to enforce clients’ intellectual property rights, using appropriate forms of dispute resolution solutions, including advising and assisting clients on prosecuting and defending contentious trade mark proceedings at the UK Intellectual Property Office (‘UKIPO’) and in the Intellectual Property Enterprise Court (IPEC).
Intellectual property issues can be complicated matters. A complaint often levelled against some IP lawyers, is that they tend to add to the inherent complexities of IP law by over elaborating.
Spencers Solicitors intellectual property lawyers will not blind you with academic science. We will provide you with clear and to the point advice. You want to know what needs doing, how much it will cost to do and that we will do it promptly and effectively. No fuss, no unnecessary jargon. Most importantly, you want results. We will provide them.
IP is more than an idea. It is an idea that has been taken that one step further to become a creation, and it is unique. Your intellectual property may be your most valuable asset. Not only does it need protecting from those who would seek to profit from your asset, but you will want to promote and exploit your IP to its fullest potential.
There is no set form of IP. It is an umbrella term which includes brand names, images, literary works, artistic works, musical works, designs, symbols, and logos – all are types of intellectual property. In an era of increasing technological advancement, the importance of IP increases on a daily basis. With advancement comes an ever-greater risk of IP infringement but equally opportunities to enhance and exploit opportunities, abound.
Advice on trademark and design filing strategies
Your filing strategy for your trademark will be dictated by many factors, including the intended geographical location (s) you intend to do business in. Spencers IP lawyers will devise the most suitable filing strategy for your trademark after discussing your business plans with you.
Trade mark clearance searches and assessing trade mark watches
Before a new product, service or creation is launched bearing a new trade mark it is vital to ensure that no existing business is using the same name, logo or design. This is why a thorough trade mark search is strongly recommended in advance of using a new name, logo or design. Trade mark searches are all about managing risk. Spencers solicitors have extensive experience of carrying out clearance searches on behalf of their clients and also on advising on the strength and registrability of a new trade mark in relation to the proposed goods and services.
Equally, monitoring the trademark database for new applications from other businesses which may be similar to and possibly conflict with your own trademark and which are not flagged up by the trademark examiner, is another vital aspect of risk management. We may set up a watch of the trademark database and flag up possible conflicts on your behalf. We can then apply to oppose a potentially conflicting trade mark application to block its registration, thus protecting your own IP asset.
Trade mark Infringement advice on product packaging against competitors
Product packaging can make all the difference in making one brand stand out from another. If you have designed clever packaging that enhances your brand, you want to ensure competitors do not copy it, or if they do, that you have the necessary resources available, to enable you to take enforcement action. Our IP solicitors can provide you with the right advice on the steps to take to help you to protect your investment in your product’s packaging.
Filing, prosecuting, and registering UK, IR trademarks and designs
There is more to the process of registering a trade mark than the simple filing of forms. We advise clients and guide them through the complete process of filing a trademark application and then prosecuting it all the way to registration. For designs, we advise clients on how to ensure that the design drawings to represent the essential elements of the design to give maximum legal protection.
Advising on and defending UKIPO Trade mark Registry objections and third-party conflicts
After a trademark application has passed through the UK Intellectual Property Office (UKIPO) it is formally announced by publication in the Trade Marks Journal. At that point it is open to challenges from third parties who wish to oppose its registration. A trade mark can be opposed on either absolute grounds e.g., because the trademark is not distinctive enough or on relative grounds e.g., it is identical to another existing trade mark.
We regularly advise clients on the merits of both making applications to oppose registration, and of defending oppositions.
Prosecuting/defending Trade mark Oppositions, Revocations, Invalidity proceedings at UKIPO & EUIPO
Our intellectual property attorneys have considerable experience of representing clients in both the UKIPO and European Intellectual Property Office (EUIPO) Tribunal at opposition proceedings. Although direct representation before the EUIPO for trade mark and designs ceased after Brexit, we have built up a thorough knowledge of the EU trade mark rules and prosecution procedures so that we have a clear understanding of how to overcome problems when advising clients before instructing associates to file responses to objections raised by the EUIPO.
Advice on 'passing off'
Passing off occurs when a business passes off their goods or services as those belonging to a third party. Passing off can be either unintentional or intentional. The party that intentionally passes off their goods as someone else’s, usually does so to take advantage of the other party’s greater brand reputation attaching to the goods and/or services.
When this happens, the aggrieved party is likely to want to sue for compensation. These types of action can be difficult to prove and costly to pursue. Contact our IP lawyers for experienced advice before you become embroiled in proceedings.
Negotiating settlements and drafting co-existence agreements
Trade mark co-existence agreements are used by the owners of trademarks that are similar or even identical to each other, but who wish to enter into an agreement to define the terms under which each may use their trade mark, without incurring the wrath of the other. This could be termed as being a means of co-existing peacefully instead of entering into costly IP litigation proceedings.
These types of agreement require careful negotiation to broker the terms of an agreement and accurate drafting to ensure that there is no room for ambiguity. Contact our intellectual property team on 08000 93 00 94 for an initial discussion about negotiating settlements and drafting co-existence agreements.
Drafting Assignments + licences
Our IP lawyers regularly handle issues for clients relating to the transfer of marks either by assignment or authorising third parties to use a trade mark by licensing. We can advise on the best method and facilitate your chosen option of transfer.
Due diligence in IP portfolios
This is in effect an audit of a business’s IP portfolio and is one of the most popular services sought by our IP clients. We will undertake a complete review of your IP portfolio. We will assess the type of business that your portfolio may be capable of generating. We will look at the protection your brands have, undertake a review of your contracts, help to identify new opportunities and work with you to develop your strategy going forwards.
Trade mark portfolio maintenance – renewals + recording transactions
Portfolio maintenance can overlap with the work done during portfolio due diligence management or it can be undertaken as a separate task in its own right.
Either way it is important that renewal of registrations and recording of transactions such as assignments, licences and charges are tasks that are not overlooked. You may wish to hand the burden of ensuring these important matters so that the Register is kept up to date, over to our IP team at Spencers solicitors. Why not call us now on 08000 93 00 94 to see how we can make your life easier?
Liaising with overseas Attorneys
Intellectual Property is a global business, making interaction with the laws relating to IP, in other jurisdictions, a regular occurrence. We liaise with overseas attorneys on a regular basis, in relation to our clients trade mark matters abroad.
IPEC (pre-action correspondence) and trade mark infringement claims as far as CMC
The Intellectual Property Enterprise Court (the IPEC) was set up to provide a less costly alternative to the High Court, as a forum for litigating trade mark infringement, copyright disputes and passing off claims. We offer a pre-action correspondence service for IPEC litigation and can act for clients up to the case management conference (CMC) stage in trade mark infringement claims.
Nominet domain name dispute resolution procedure legal advice
Where there is a dispute over a .uk domain name registration, usually as a result of an alleged ‘abusive registration’ by the Registrant, Nominet, the company that acts as the registrar for all .UK domain names, offers the parties to the dispute the facilities of its own Dispute Resolution Service (DRS). The DRS is a fast and cost-effective method of dealing with domain name disputes.
The DRS procedure follows a five-stage path. After a complaint has been received and a response submitted, it moves on to a mediation stage. If mediation does not settle the parties dispute, the Complainant can, upon payment of a fee, appoint an independent adjudicator, who has been approved by Nominet. The expert considers the evidence previously submitted and after doing so, will make a binding decision on whether to transfer the domain to the Complainant or dismiss the complaint.
Spencers Solicitors offer a complete legal advice and assistance package to individuals or companies who wish to make a complaint about a .uk registration, using the DRS service.
Company Names Tribunals legal advice
The tribunal was set up in 2008 to allow challenges to company name registrations that are similar to existing registered names, where the new registration appears to have been made with the intention of taking advantage of the goodwill of the existing brand., i.e., the new registration appears to have been made in bad faith.
Spencers Solicitors offer an advice and assistance services package to companies who wish to pursue a complaint using the Company Names Tribunal service.
Our highly experienced intellectual property lawyers offer a range of competitively priced IP solutions.
Spencers Solicitors head office is based in Chesterfield, Derbyshire, but we work with a wide-ranging portfolio of clients from all over the country.
Our IP lawyers keep themselves fully abreast with changes in trade mark and design law and practice. They regularly provide in-house training and seminars to a diverse range of businesses on IP law and brand protection.
We offer potential clients a free initial consultation with one of our IP attorneys. If you have a query or would like to book a consultation, call Spencers Solicitors now on 08000 93 00 94 or contact us online.