IP disputes

“They're very professional, the work is of a high quality and they are very straightforward to deal with: everything you want! I have received excellent, clear and concise advice on IP matters - including early indicators of costs associated with the work required to manage our IP. They have all been excellent and have always responded on a timely basis and kept me informed of progress. ”

Chambers UK, A Client's Guide to the Legal Profession 2014

Blake Morgan's team are experts in enforcing, protecting and defending intellectual property rights, both nationally and internationally.

We act for both claimants and defendants, providing commercially astute advice to achieve the best possible result in the most time and cost efficient manner. 

Main areas of practice:

Trade Marks disputes and Brand Protection

  • Bringing and defending trade mark infringement and passing off proceedings before the  Intellectual Property Enterprise Court ("IPEC") and the High Court
  • Conducting opposition, revocation and invalidity proceedings before the UK Intellectual Property Office ("IPO") and Office for Harmonization in the Internal Market ("OHIM")
  • Co-ordinating and supervising trade mark litigation and Registry proceedings internationally through our extensive network of agents
  • Drafting and negotiating co-existence agreements between brand owners
  • Clearance searching and risk management advice
  • Advising on world-wide trade mark protection and portfolio management to include the direct filing and prosecution of UK, EU and International trade mark applications
  • Conducting domain name disputes through WIPO and Nominet

Copyright, Design and Patent Disputes

  • Bringing and defending copyright, design and patent infringement proceedings before the  IPEC and the High Court
  • Advising on potential copyright, design and patent infringement disputes

Confidential Information and Database Disputes

  • Bringing and defending breach of confidence and infringement of database rights proceedings before the  IPEC and the High Court
  • Advising on breach of confidence and infringement of database rights disputes with particular experience dealing with issues involving the misuse of confidential information and breach of restrictive covenants by ex-employees

Significant experience:

Examples of IP disputes the team have dealt with include:

  • Acting for a well-known publisher in defending a multi-million pound copyright infringement claim in the High Court.
  • Acting for a well-known greetings card manufacturer against a direct competitor in a claim for copyright infringement of various designs for greeting cards and wrapping paper and which also involved action against a large greetings cards/wrapping paper retailer for the distribution of the infringing products.
  • Advising various clients in relation to trade mark prosecutions, oppositions and cancellation proceedings at the UK IPO, OHIM and, through a network of international agents, throughout the world. Recent published Registry decisions include:
  •           Harlequin v Harlequine (acting for the Opponent): Case No. 002453960
  •           Mcfit v Mefit (acting for the Applicant)O/601/15
  •           PIP/PIP Studio v My Cat Pip (acting for the Opponent): O/109/14
  • Advising a UK based charity regarding an impersonation Twitter account that was posting malicious Tweets seemingly on behalf of the charity. The Twitter account was suspended, and then deleted, within 24 hours of our first instruction.
  • Advising a market leading leisure operator on the suspension of a rival Facebook account that was making unauthorised use of the client's copyright materials.
  • Dealing with numerous trade mark infringement/passing off matters involving Google Adwords and keywords in general on behalf of a leading consumer insurance broker.
  • Advising a UK based brokerage website on a domain dispute regarding a domain registered in Australia. Filing a WIPO complain in respect of the disputed domains and liaising with local agents in order to intimate a claim in respect of copyright infringement, trade mark infringement and passing off. Resulting in the recovery of the disputed domain.
  • Advising various clients (particular in the recruitment industry) on breach of confidence, infringement of database rights and breach of restrictive covenant issues relating to ex-employees.

Related expertise

Main contacts

Related Knowledge & Resources

Blake Morgan strengthens Commercial Litigation team

Press Release

Blake Morgan has made two key appointments to build on the success of its London-based commercial litigation practice.

Great Scott! – Ben Evans published in the CITMA Review

News

Associate and Trade Mark Attorney Ben Evans has been published in the October/November 2016 edition of the CITMA Review.

Sports Direct triumphs over cybersquatter

News

A recent case demonstrates that a speedy and economic resolution can be achieved through domain name complaints, and that jurisdictional issues can be overcome, says Jill Bainbridge of Blake Morgan.

The dangers of using false accreditations

The recent case of National Guild of Removers and Storers Ltd v Bee Moved Ltd demonstrates the dangers of falsely claiming accreditation with an association.

Night club owner faces prison sentence due to ongoing Copyright Infringement

A night club owner has been sentenced to three months imprisonment on a suspended sentence, in addition to payment of £5,177 damages to the claimant and £17,000 in costs, for playing sound recordings in public without a licence in contempt of court.

copyright infringement - music played at nightclub
High Court's decision on nightclub manager's personal liability for copyright infringement

In October this year the High Court found the designated premises supervisor of a nightclub in Essex personally liable for authorising and procuring acts infringing copyright as a result of the unlicensed playing of sound recordings.

BREXIT – The EU Trade Mark System

Now that the United Kingdom has voted to leave the EU there will be many aspects of business life that will be affected.

Brexit and technology transfer: The view from Blake Morgan

Now that the dust is settling on the UK's decision to leave the EU, our clients are asking what this means for them. Technology transfer will be affected by Brexit as the legal regime underpinning the protection and..

It's nothing personal – Ben Evans published in June's ITMA Review

Associate and Trade Mark Attorney Ben Evans has been published in the June 2016 edition of the ITMA Review.

Eos

We advised the music collecting rights society Eos in their Copyright Tribunal case against the BBC.