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From iconic consumer brands and universities to small businesses and start-ups, we can help you to achieve your trade mark goals and help you protect, manage and maximise your brand portfolio as a strategic asset. We will work with you to build a robust trade mark portfolio or to make sure your existing portfolio is effectively managed and exploited to the full, as well as importantly ensuring that future activity is aligned with your commercial objectives and market conditions.
Mewburn Ellis are the European trade mark attorneys of choice for a wide range of clients, from sole traders to well-known corporate clients as well as many high-ranking UK and foreign law firms. Our well-established team of experts advise clients across the globe on all aspects of trade mark law and practice at every stage of the brand lifecycle.
In addition to our trade marks experts we also have design experts in house when you need to protect the aesthetics of a product, as well as an in house legal team to handle any disputes that may arise and provide commercial support as needed. We can also provide patent expertise across all technical areas. These specialists work together as a fully integrated team to provide you with the best possible team.
Portfolio Creation & Strategic Management
We work with our clients as part of their in house team in relation to all of your IP rights. We learn about your business and share your passion. This approach and our experience helps us bring you advice and feedback at a strategic level. This is much more than simply searching or registering a trade mark or managing your renewals (all of which we can of course do), this is working with you at a more sophisticated level than simple day-to-day case management, as a strategic partner and advisor to your business.
Enforcement & Dispute Resolution
We always try where possible to resolve disputes in a constructive manner but this is not always possible. We can handle any dispute situation that arises from oppositions, cancellations and infringement actions though to litigation if necessary. We have an excellent reputation for handling contentious proceedings on behalf of clients at the UKIPO and the EUIPO. We represent clients at oral hearings and appeals at the UKIPO and have also been involved in appeal procedures before both English Courts and the Courts of the European Union, in particular the General Court.
We can help with all aspects of IP litigation in the UK, whether in the Intellectual Property Enterprise Court or the High Court, from filing the claim to trial at first instance and beyond. We also have experience of managing international disputes in key jurisdictions, through a network of trusted IP firms to provide critical local legal advice and support. We can also advise on all aspects of settlements, from tactics to drafting and negotiation, including providing an international dimension when needed.
Commercial Transactions, Licensing & Exploitation
Trade marks are an asset and we can work with you to help you exploit them and gain greater commercial value. The routes you take will depend on your business goals, but we can work with you in all areas where you might need commerical advice. We can look at contracts involving IP and their interaction with European competition law and due diligence on IP assets. We can assist with a wide range of transactions involving IP, from one-off licence deals and multi-institution research collaborations to IP elements of mergers and acquisitions, private equity investments and stock market flotations. We have worked with many clients on funding rounds, mergers and acquisitions and IPOs supporting them in all aspects of their IP.
We look at the big picture and take a strategic approach
There are many companies in the trade mark space that will cost effectively register a trade mark for you and provide a very basic service. We are different, we take a strategic approach to brand management, looking at the bigger picture to ensure the right commercial IP decisions are made for your business. Whether you need a domestic approach or a larger more international strategy we have the knowledge, experience and international network to support you - complex, strategic advice is what we do best.
Our attorneys are IP specialists 'trained for excellence’
If you want more strategic trade mark advice, you could also be looking at full service law firms with trade mark departments. At Mewburn Ellis we only do IP. We live and breathe it and it's the focus of every single individual in the firm. We are excellent at what we do and part of this is because we take training very seriously and are known for our high standards. You can be confident you are dealing with some of the best trade mark attorneys in the business. Choose Mewburn Ellis for breadth and depth of experience and commercial insight and a service that is personalised to your business.
We have our own in-house legal and designs teams
Trade mark work is commercial work and often legal advice is needed too. We have this in house and at your disposal. Our trade mark attorneys work hand in hand with our solicitors to provide expert and combined advice. Brands also often need design protection too, we can also provide this service in house. We also have a large and very well respected patent team covering all technical areas so should you need patent advice too we have you covered. Our integrated team approach is quicker and more effective than having to use multiple firms and can create real commercial advantage for you.
We are at the cutting edge of the trade mark market
We make it our business to be ahead of the game. Constantly looking at how to improve and develop not only our services but the market as a whole. Our Head of Trade Marks was the President of the Chartered Institute of Trade Marks (CITMA) from 2016 – 2018 and continues to play a key role in the Institute as Chair of the Brexit taskforce. She leads on negotiations for CITMA with the UKIPO, the EUIPO and the UK government in relation to the legislative changes in relation to trade marks, which will be implemented when the UK leaves the European Union. We are also actively involved in various committees/working groups of CITMA, INTA (International Trademark Association) and AIPPI (Association Internationale pour la Protection de la Propriété Intellectuelle).
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Whatever your location or size or sector we have someone who can work with you to achieve your IP goals.
Flexible in the way we work, we listen and adapt to your commercial objectives so that we can be an effective and efficient partner for you. We will deliver a practical solution for whatever opportunity or challenge you face, building customised teams designed to meet your specific needs.
Not sure who to talk to? Please get in touch and I'll be happy to help.
Kate O'Rourke, Head of Trade Marks
kate.o'rourke@mewburn.com
International Pharmaceutical Company - We helped this client with a successful appeal to the General Court of the EU. It held that interpretation of specifications should take into account, not only the literal meaning of the words, but also “other factors that are essential for the purpose of understanding the scope of that specification, namely the actual intention of the proprietor of the marks concerned and the need to give an appropriate scope to that wording, one that precludes a reading leading to an absurd result for the proprietor”. This case was of course important to our client but also a offers helpful clarification on the correct interpretation and construction of specifications.
Animal Charity - A new client, having recently transferred their work to the firm, we've provided this charity with advice on their IP assets and recordal of those assets following a re-organisation. The charity was also seeking to improve the protection of their IP assets, following their success in registering a well-known strapline. Our advice is now ongoing in relation to the expansion of trade mark registrations for sub brands for additional goods and services. Advice has also focussed on the relationship with an equivalent charity in the US.
Drinks Start-up – We love working with start up companies and joining them on their journey. For this client we’ve provided strategic advice for their trade mark strategy and helped them with trade mark protection across multiple jurisdictions. They were subsequently bought by a well-known international drinks company in 2019.
International Sports Manufacturer - The client received a number of EU TM oppositions over the course of 2013-2015 in response to applications to register a sub-brand. Initial settlement negotiations were unsuccessful and were rejected by the other party. As a result, we advised the client to protect their position in their main EU markets via national filings, and to apply to cancel the other party's earlier rights. The client successfully cancelled the other side's UK and Irish registrations during the course of 2018-2019, and following which the other party agreed to resume settlement discussions. The settlement discussions were extremely complex and protracted, and meant that the client also had to defend the original EU IPO oppositions, and then deal with multiple EU IPO appeals. However, in March 2020 a written agreement was reached which resulted in settlement on favourable terms, and which were on terms better than offered to the other side in the initial discussions at the early stage of proceedings.
Pharmaceutical Manufacturer - We took over responsibility for this client's trade mark portfolio in 2019. We have assisted with developing an international filing strategy to protect their trade marks in many countries around the world, filing at least 50 new trade mark applications with extensive use of the "international" Madrid Protocol system. We have also assisted them with the enforcement of their global trade mark portfolio, filing and prosecuting trade mark oppositions and cancellations in many countries around the world, particularly within the Middle East.
Clothes & Fabric Wholesaler - We have worked with this client for over 20 years assisting them with enforcement of their trade marks. In numerous cases, including in the UK, Italy, France, Germany and South Africa and at the EUIPO, we have been able to resolve oppositions before they reach a decision, or even avoid contentious proceedings altogether. Our work includes advising on and conducting complex negotiations with third parties and preparing and concluding letters of undertaking, co-existence agreements and assignments.
What BREXIT means for trade marks
We are here to navigate the Brexit landscape with you and make sure you’re prepared.
The UK’s Brexit future may be complex, but with Mewburn Ellis, protecting your IP need not be.
The UK left the EU at 11pm UK time on 31 January 2020. Businesses are still grappling with the complexities and remaining uncertainties around Brexit but Mewburn Ellis is taking bold but simple steps to help you manage your intellectual property with confidence.
