Trade Marks and Designs
Pinsent Masons can offer a service beyond that of the traditional Trade Mark Attorney and designs practice.
Our trade marks and designs team, which includes qualified Trade Mark Attorneys, provides a comprehensive trade mark and design application filing service, including UK, Community Trade Mark, Madrid Protocol and national trade mark filings across the globe.
We conduct trade mark searches; advising on what should be registered; how to protect a brand, design or get-up after registration; how to maintain it and how to exploit it. We can provide advice on licensing and assignment issues and implement trade mark, company name, competitor and domain name watches.
We advise on and prosecute trade mark opposition, invalidity, revocation and rectification actions, including appeals of such actions to the 'Appointed Person', Boards of Appeal and through the Courts. We can advise on enforcing your trade mark rights via local trading standards authorities. We also provide comprehensive advice on passing off and design issues and we file and prosecute UK and Community Design applications.
We also advise on the protection and enforcement of trade mark rights on the internet having expertise in relation to the use of trade marks in adwords and the like. We also have extensive experience and file complaints under the Dispute Resolution Service (DRS) of Nominet and Uniform Dispute Resolution Policy (UDRP) of ICANN, in particular utilising such procedures via the World Intellectual Property Organisation (WIPO).
However, in addition to the services you would expect from a leading Trade Mark Attorney practice, we can also provide as part of a 'One Stop Shop' all services in relation to trade mark and design protection and enforcement in conjunction with our Intellectual Property team, as part of one seamless service.
With the benefit of an integrated trade mark and design portfolio management service, we offer a complete service to clients, not only in the UK, but across the globe with associates in every country of the world. With our experience of advising all forms and sizes of client from the individual to the multinational to the foreign law associate, we can tailor our service to meet your needs through commercial, quick, value for money and clear advice.
Recent Experience:
- Assumption of responsibility of the entire IP portfolio of Halfords Limited on a worldwide basis and provision of trade mark attorney services to the group.
- Acting on behalf of the Royal Bank of Scotland Group plc in the filing and defence of a number of trade mark opposition and invalidity actions across the globe, including Community Trade Mark Oppositions on behalf of Direct Line Insurance plc, Coutts Bank plc and other companies within the RBS group. Filing trade mark applications on behalf of National Westminster Bank plc, Privilege Insurance and providing advice in relation to the protection of the well known Churchill brand and various advertising campaigns.
- Management of Adams Childrenswear Limited's worldwide trade mark portfolio including providing full trade mark attorney services and advice on a worldwide rebranding exercise.
- Provision of trade mark attorney services on a worldwide basis to Nanjing Automotive (Group) Corporation in relation to the MG brand, including the recordal of the global assignment of this brand, amongst others.
- Administration of the trade mark portfolio of Switch Card Services Limited on a worldwide basis, including the maintenance and enforcement of the Switch and Solo brands in relation to financial and debit card services.
- Filing trade mark and design applications in the European Union and across the globe for The Denby Pottery Company Limited.
- Provision of advice and protecting trade marks connected to the London Fashion Week on behalf of the British Fashion Council.
- Provision of trade mark attorney services to charitable organisations such as the PDSA, Epilepsy Action, Crisis and government departments such as the Department for the Environment, Food and Rural Affairs, the Department Children, Schools and Families and the Department for Work and Pensions.
- Provision of trade mark attorney services and management of Trade Mark Portfolios of Enterprise Inns plc, ScS Upholstery plc, 3663, Kall Kwik Printing (UK) Limited and Wing Yip plc.
- Provision of trade mark attorney services to sporting organisations and football clubs such as Sunderland Association Football Club Limited and West Bromwich Albion Football Club Limited and filing trade mark applications on a UK, European and worldwide basis (including certification and collective trade mark applications) for local government organisations and councils, universities, including the London School of Economics, University spin-off companies and regional development organisations.
- Filing trade mark applications on behalf of clients and clients of Trade Mark Attorney practices from across the globe and in particular from such practices based in the Australia, Canada, China, France, Hong Kong, Israel, New Zealand, Peru, Sweden, Saudi Arabia, South Africa, Singapore, Turkey and United States.
- Filing and prosecuting Community, UK and International Trade Mark applications, opposition, invalidity and revocation actions (some of the first filed) and management of opposition and invalidity actions in the United States, China, Denmark, France, Germany, Greece, Hungary, India, Latvia, Pakistan, Portugal, Spain, Slovakia, Switzerland, Taiwan and Turkey, including a successful appeal of an opposition to the German Patent Court on behalf of numerous clients.
