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Intellectual property

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Meet the team

Our global intellectual property team advises on the acquisition, exploitation, use and enforcement of intellectual property rights across the globe. We provide cost effective advice to clients on an international basis, advising on both domestic and cross-border transactions and disputes throughout Europe, the United States, Canada, Latin America, Asia, Australia, Africa and the Middle East.

We have particular experience across our key industry sectors: financial institutions; energy; infrastructure, mining and commodities; transport; technology and innovation; and life sciences and healthcare. Many of our professionals have advanced scientific degrees to complement their practical experience and combine deep industry and technical knowledge with broad legal understanding.

Several of our offices have developed particular capabilities in relation to patent, trademark and design prosecution and, with the assistance of our vast network of associates, can prosecute patents, trademarks and designs worldwide. We also provide strategic advice to established and developing companies. We have substantial experience in litigating all classes of IP in many different courts and tribunals worldwide. We provide strategic, commercial IP advice on mergers and acquisitions, public offerings, restructurings, insolvency proceedings and competition enquiries.

Our areas of work include

  • patents and designs
  • trademarks and brands
  • copyright and database rights
  • trade secrets and confidential information
  • patent and trademark prosecution and portfolio management
  • IP audits and due diligence
  • IP litigation
  • false advertising and unfair competition
  • technology transfer
  • commercialisation of IP including strategic advice
  • license, supply, distribution and related commercial agreements
  • branding, advertising, marketing, packaging and labelling strategies
  • franchising law
  • entertainment law
  • IP support on corporate and financing transactions
  • data protection and data privacy.

Our recent work

  • Representing major consumer services websites in a patent infringement case in which the  patentee actively pursued a patent litigation–and–licensing campaign, asserting that thousands of websites that include parametric searching infringed the asserted patent. Procedurally, we transferred this case from the Western District of Wisconsin to the Northern District of California. We won several significant discovery battles, shaping the development of future cases by excluding claims against several additional websites based upon the patentees failure to properly accuse such websites under the requirements of the Local Patent Rules. Ultimately, the court granted summary judgment of invalidity based upon the motion and Argument presented, and the Federal Circuit affirmed.
  • Representing a large manufacturer of LCD displays in a patent litigation suit filed in the Eastern District of Texas. We led the joint defense group during both claim construction and summary judgment and obtained a summary judgment of non-infringement in which the court entered a take-nothing judgment in favor of our client and  the case later settled while on appeal.
  • Representing the manufacturer of high-quality luggage, handbags and other luxury accessories in its fight against counterfeiters to protect the value of its name and logos. This client pioneered efforts to extend liability for trademark infringement to landlords that condoned ongoing counterfeiting in their markets. The jury returned a verdict against the market, its owner and the on-site manager for contributory trademark infringement, sending a clear message to other landlords to evict known counterfeiters or suffer the consequences.
  • Representing Bell Helicopter Textron in a patent infringement claim brought against it by Eurocopter.  We continue to represent Bell Helicopter on the ongoing appeal in Canada.
  • Representing Bristol-Myers Squibb Canada Co and Merck & Co Inc against Mylan Pharmaceuticals in their successful application under the Patented Medicines (Notice of Compliance) Regulations relating to the drug efavirenz (SUSTIVA), an anti-retroviral drug used to treat HIV infection.  This was a significant victory for the clients since that they were able to keep the efavirenz market in Canada until the expiry of their compound patent, allowing them to maintain millions of dollars of revenue for this drug in Canada.
  • Acting for Royal Bank of Scotland plc in successful defence of UK High Court proceedings brought against it by software/CMS platform provider, 3i Infotech, for copyright and trade secrets infringements arising out of the Bank’s transition to a new platform provider.  After a proceeding lasting 18 months we successfully struck out the claimant’s claim.
  • Advising Iconix Brand Group Inc on the English law aspects of its acquisition from Nike Inc of the UMBRO brand portfolio and associated licensing business.
  • Acting for Kimberly-Clark Australia Pty Ltd in patent infringement proceedings in the Victoria District Registry of the Federal Court, Australia, brought by Deb Worldwide Healthcare Inc (a Canadian company) and its Australian subsidiary.  This is a dispute which arises in a market of increasing importance.  Although at its early stages, it is important as it promises to be a hard fought dispute in relation to a product which is increasingly used in the public health industry.
  • We advise Lonsdale Sports Ltd, the owner of the globally famous “Lonsdale” brand, in relation to complex copyright and trademark matters, including parallel importation, in Australia.  The matter is significant given recent developments in case law in Australia relating to the prevention of parallel importation.

Awards and accolades

  • Tier 1 national rankings for copyright law, intellectual property litigation, patent litigation, patent law and trademark law, US News & World Report and Best Lawyers, 2015
  • National leader in Intellectual Property Law- US, 2013, US News Media Group and Best Lawyers
  • Intellectual Property Deal of the Year, 2013, China Business Law Journal  
  • Canadian Trademark Case of the Year, 2012, Managing Intellectual Property