We have a highly regarded trade mark practice, with offices in both London and Paris. Our individuals are recognised as experts in various leading legal and trade mark specific directories.
example, we are the only firm in the United Kingdom to have three individuals listed gold in the ‘trade mark: enforcement & litigation’ category of WTR1000, which identifies the leading professionals that are deemed outstanding at obtaining, protecting, managing, enforcing and monetising trademarks.
We work with our clients to find practical solutions, regardless of the complexity of the legal issues that they face. We act for many multi-national / household name clients, representing them in their most sensitive and commercially important work.
Stepheson Harwood is a top-tier firm with dedicated and client focused IP litigators and transaction specialists’
World Trademark Review 1000
Our clients come to us for:
- advice in all areas of trade mark and brand protection;
- our expertise in registering and protecting non traditional trade marks, including colour and shape marks;
- disputes, oppositions, and invalidity actions before the UKIPO, EUIPO,
- UK High Court (including Court of Appeal), IPEC and French national courts;
- international cross-border litigation;
- complex licensing arrangements and other IP-related transactions; and disputes arising from licensing or other IP transactions.
Recent experience includes:
- Sole UK IP counsel for Gap (and its affiliate brands) representing them in a number of IP claims, including on our representation of Athleta (Gap's premium fitness and lifestyle brand) in live UK High Court proceedings issued by Athleta against Sports Group Denmark.
- Advised Marks & Spencer and Katjes Fassin on a 3D shape trade mark claim against UK confectionery company Swizzels in relation to the protection of the well-known confectionery product Percy Pig.
- Acted for Haleon in trade mark infringement proceedings against Teva UK Limited to enforce Haleon's rights in trade marks for the appearance of the packaging of its famous pain relief products.
- We successfully registered the colour orange for airline services at the UKIPO on behalf of easyGroup, the owner of the easyJet brand.
- We successfully registered the shape of GSK’s Diskus inhalation device for asthma and COPD at various trade mark offices including at the UKIPO and EUIPO.
Our Services
Brand protection is critical as businesses expand into new markets and face increasing threats to their trade marks.
Our trade marks prosecution team has extensive experience guiding clients through the registration, management, and defence of trade marks worldwide.
Recent experience includes:
- We successfully registered the colour orange for airline services at the UKIPO on behalf of easyGroup, the owner of the easyJet brand.
- We successfully registered the shape of GSK’s Diskus inhalation device for asthma and COPD at various trade mark offices including at the UKIPO and EUIPO.
- We successfully registered the shape of the famous Percy Pig confectionery product (as sold by M&S) on behalf of Katjes.
- We successfully registered the shape of the Alpecin shampoo bottle as a 3D trade mark on behalf of Dr Kurt Wolff.
- Successfully opposed TFL’s application for MIND THE GAP for clothing accessories before the EUIPO on behalf of Gap, Inc. A similar result was obtained at the UKIPO where the registry concluded that TFL acted in breach of a previous coexistence agreement.
Please contact Rob Jacob (London) and Boriana Guimberteau (Paris) for more information on how we can support you.
Growing brand value and global reach bring new challenges in protecting trade marks against infringement and misuse.
Our trade marks litigation and enforcement team has extensive experience supporting clients to safeguard, enforce, and defend their brands in complex disputes.
Recent experience includes:
- Sole UK IP counsel for Gap (and its affiliate brands) representing them in a number of IP claims including on our representation of Athleta (Gap's premium fitness and lifestyle brand) in UK High Court proceedings issued by Athleta against Sports Group Denmark.
- Advised Marks & Spencer and Katjes Fassin on a 3D shape trade mark claim against UK confectionery company Swizzels in relation to the protection of the well-known confectionery product Percy Pig.
- Acted for Haleon in trade mark infringement proceedings against Teva UK Limited to enforce Haleon's rights in trade marks for the appearance of the packaging of its famous pain relief products.
- Acted for easyGroup in a number of court claims including a High Court (IPEC) claim for trade mark infringement and passing off against easyWay-SBH, where the court found that easyGroup owned a family of ‘easy’ trade marks that had been infringed by the Defendant.
- We coordinated a cross-border dispute for GSK that spanned 30 different countries. We worked with local counsel throughout the globe to protect the colour and shape of GSK’s Seretide Diskus inhaler.
Please contact Rob Jacob (London) and Boriana Guimberteau (Paris) for more information on how we can support you.
