Practice Areas | Intellectual Property

SJ Berwin’s Intellectual Property Group has played a key role in some of the most important IP cases and transactions of recent years. The Group is a full service practice with expertise across the spectrum of intellectual property law and procedure, allowing us to advise clients on the development, exploitation and enforcement of their IPRs both in the UK and internationally.

The Intellectual Property Group’s expertise spans patent clearance and enforcement, brand and design protection (including trade mark prosecution internationally), trade mark, passing off, copyright and designs advice and enforcement, anti-counterfeiting programmes and advice and the protection of confidential information. The Group has particular expertise in the field of interim remedies including interim injunctions, pre-action disclosure and search and seizure orders.

The Group's lead partners are recognised by all the principal legal directories as leaders in the field with a reputation for a proactive, assertive and commercial approach to rights protection, management and enforcement.

We have a diverse client base in numerous fields including: pharmaceuticals and medical devices;  luxury goods; electronic products; telecommunications; merchandising and licensing; film and television;  software and computing; toys; hotel, leisure and sport. 

The Intellectual Property Group is involved in all aspects of drafting and negotiating commercial agreements to identify, exploit and protect intellectual property rights in the UK and internationally, working closely with the firm's EU & Competition Department. We also advise and negotiate on specific areas of corporate transactions where intellectual property rights are concerned, including appropriate due diligence investigations for both buyers and sellers as appropriate.

We advise on numerous matters including:

Trade marks, brands and designs:

• name protection including the registration of trade marks and related designs; 
• trade mark watching and international trade mark and design clearance programmes; 
• issues relating to the enforceability of registered and unregistered trade marks (under both domestic and EU legislation), including passing off and unfair competition whether for straight forward infringement claims or for less directly obvious claims including for example parallel import cases;
  

Patents

• the validity and infringement of patents, including jurisdictional issues affecting their enforcement;
• advising on freedom to operate issues including related patent clearance advice revocation actions;
• Advising and acting in EPO opposition proceedings
• Entitlement actions

Copyright, Database Rights and Designs

• copyright counselling including chain of title enquiries;
• advising and acting in database claims under the EU-wide Database Directive
• the registration and enforceability of designs capable of protection under the Registered Designs Acts, UK copyright legislation and EU design law;

Domain Names

• Advising on domain name acquisitions
• Instituting domain name dispute resolution claims under the UDRP and Nominet’s DRS

Intellectual Property Enforcement and Interim Remedies

• Advising and acting in dispute resolution processes and procedures affecting the enforcement and validity of all intellectual property rights, notably infringement, validity, opposition and revocation actions before the High Court, the Patents Court, the UK Trade Marks Registry and the EU Trade Marks Registry (OHIM); 
• securing relief through interim remedies including interim injunctions, search and seizure orders, Norwich Pharmacal actions
• the implementation of anti-counterfeiting programmes both domestically and internationally;

Intellectual Property Licensing and exploitation

• Drafting and negotiating IP licensing agreements and related commercial agreements including technology transfer and franchise agreements and manufacture, distribution and supply agreements.

Cases of interest:

• Advising William Hill in relation to its high-profile (and successful) action against the British Horseracing Board over alleged infringement of the BHB's database rights. 
• Acting successfully in many of the major pharmaceutical patent actions of recent years including cases related to the drugs omeprazole, alendronate, paroxetine, and lipitor. Notably in:
      o Cairnstores v. Hassle (omeprazole)
      o Arrow Generics v. Merck (alendronate)
      o Generics UK v. SKB (paroxetine)
      o Abbott v. Ranbaxy (clarithromycin)
      o Ranbaxy v. Warner- Lambert (lipitor)
• Acting for three of the six Claimants in the groundbreaking One in a Million litigation in which the English Court of Appeal confirmed that the owners of well-known trade marks can rely upon the law of passing off and trade mark infringement to recover confusingly similar domain names registered by unconnected third parties. The case subsequently became the guiding authority for courts in other common law jurisdictions. 
• Acting for Sony Computer Entertainment in relation to a series of grey market claims against parallel importers culminating in the High Court judgments in actions against Electricbirdland, Nuplayer and Lik-Sang
• Representing a leading international brand owner as lead counsel in an international domain name recovery programme, taking action in over 40 jurisdictions and recovering names through agreement, the UDRP and the local courts. 
• Acting for a leading Japanese electronics manufacturer whose product designs define many of its market-leading products, we have helped it to secure a broad portfolio of registered designs in the UK and throughout the EU.