Intellectual Property

Our intellectual property experts handle all elements of IP including trade marks, passing off, copyright, designs (both registered and unregistered), confidential information and patents. The team deals with both IP disputes and commercial IP.

On the dispute side, our main objective is to try and resolve intellectual property claims early given that costs can soon become disproportionate to the amount in issue, which in many cases may be limited to a reasonable licence fee, as opposed to substantial damages.  This involves our litigation lawyers identifying at the earliest stage whether any infringement has in fact taken place and/or the risk that the court could come to that conclusion, so as to advise clients from the earliest possible moment whether the case is one that is worth pursuing or defending.

We also have related expertise in IT disputes involving computer software systems which, besides raising intellectual property issues, can also raise contractual issues such as whether the software is fit for purpose and/or of satisfactory quality.

On the commercial side, we help clients identify their IP through an IP audit, help them align their IP protection and enforcement strategies with their financial and commercial forecasts, exploit their IP commercially (either through licensing, franchising, joint collaboration) and then enforce it when necessary.

We also have an in-house trade mark filing and portfolio management service through which clients can instruct us to file national and international trade marks and let us deal with ongoing renewal, prosecution and management of their valuable brands.

Work highlights include:

  • Acting in a substantial technology and construction court litigation between our client Kingsway Hall Hotel Limited v RedSky IT (Hounslow) Limited, an 11-day case which involved complicated issues of a software’s suitability for use in a busy London hotel. The case concluded with a successful finding in our client’s favour. This case has subsequently been reported because it raised a number of important legal issues, such as the applicability in these situations of exclusion and limitation of liability clauses.
  • Acting for a leading West End hotel in a claim about their use of a particular name for a new restaurant connected with the hotel.
  • Winning an appeal for a trade mark client seeking to overturn opposition proceedings which threatened to stop its business and require them to rebrand.  By identifying key areas of the original judgment which were legally flawed with regard to the interpretation of ‘similarity’ and ‘customer perception’,  we were ultimately successful with the appeal and our client’s business remained intact.
  • Acting for a leading furniture designer in claims bought by him against a business who infringed his design rights in various furniture ranges.
  • Acting for a computer manufacturer in a claim by Microsoft over infringement of copyright through the alleged non-licencing of products.
  • Promptly taking down false websites in the USA which copied our national-brand crafting client’s website and which were being for fraudulent purposes.  Despite our client having no trade mark protection in the USA, we could successfully enforce our client’s copyright under international treaties.

Why choose Trethowans?

We aim to provide a quality legal service working in partnership with you to help achieve your commercial aims. We provide regular reports on progress and costs to help ensure that your matter progresses in accordance with the expected timescale and remains within budget.

Laura Trapnell is a highly experienced Intellectual Property and Information Technology lawyer.  She has worked in specialist law firms in this sector for over 25 years and has been leading commercial IP and technology teams locally for the last ten years.  She brings a particular expertise in trade mark law and leads our in-house trade mark filing practice. Laura’s clients say she is “very commercially minded and is very practical, which is refreshing.” And has “excellent knowledge allied to first -class commercial insight”.

Richard Cook has over 25 years’ experience of dealing with claims of this nature and the team is recommended in Chambers, with clients saying we are “… exactly the kind of firm that I like working for. They are a good, solid and dependable firm with a strong client focus.” Another adds: “They are competent, knowledgeable, realistic and reliable.”

Richard Cook also receives a special mention in Chambers for his “excellent offering; a good mix of technical knowledge and practicality.” 

To find out more, contact our Intellectual Property team today on 0800 2800 421.

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