Transformative forces highlight the importance of intellectual property
Whether it is having the freedoms or permissions to do what you want to do, protect what you have created or monetise the assets you own, intellectual property (IP), like brands, inventions, business secrets and other know-how, has never been more important.
While IP rights are on the whole national rights, the ability to see the bigger, often global, picture is vital for IP clearance, protection, enforcement and exploitation.
Osborne Clarke, with over 100 experts in all areas of IP across Europe and Asia, provides both national and international solutions to a wide array of clients across many sectors globally.
The challenge of technological change
As technology moves forward at pace, recognising the IP challenges and opportunities is essential. Technological progress can allow what was used for one purpose today to be applied to multiple applications tomorrow – which requires the know-how to see opportunities.
Proper protection, defence and, if necessary, enforcement of a companies' core IP assets has become more crucial than ever in this rapidly changing technological environment.
Brexit has brought change for the IP landscape in Europe, but the creation, demand for protection and enforcement of IP remains at full tilt both in the EU and the UK. In Asia, China's economic progress poses a significant challenge both for their and other's IP.
Decarbonisation and "green" IP is fast growing, as is IP for digitalisation and the new urban dynamics of our living and working environment. The push for patents in new green technology is huge, as is its encouragement and, in some countries, subsidisation.
International and national markets
With markets increasingly international, businesses want to achieve more. But, along with this opportunity, there will be budget pressures. That requires expertise to recognise what budget there is to spend and how to achieve international success in the most economic and efficient way.
The breadth of IP amid these advances can place huge demands on businesses of all sizes. Osborne Clarke's understanding of national and international IP landscapes, as well as the commercial backdrops, allows our clients to keep up with change.
The push for patents in new green technology is huge, as is its encouragement and, in some countries, subsidisation."
Acted in Unwired Planet v Huawei, the leading case worldwide on the infringement of Standard Essential Patents (SEPs) for telecoms standards, and FRAND (fair, reasonable and non-discriminatory) licensing.
Acted for patent owner in a jurisdictional challenge brought by Apple seeking to exclude a series of patent infringement cases against Apple from being heard in the UK.
Represented PopSockets in UK patent infringement litigation relating to their hugely popular mobile phone accessory product. This case also involved issues of joint tortfeasors and indirect infringement.
Managed a global trademark portfolio on behalf of Eurostar UK Limited, SNCF and SNCB.
Marks & Spencer
Acted in High Court trade mark infringement proceedings brought by Interflora arising out of Marks & Spencer's purchase of the Interflora Google Adword, and the subsequent referral to the European Court of Justice.
Wirecard Solutions Limited
We acted for Wirecard in trademark infringement litigation initiated by the GIE "Groupement des cartes bancaires”. The case is pending before the appeals court of Paris.
We reviewed all AUDIBLE’s template agreements related to the development and the distribution of e-books to make them compliant with French law, in particular, with the requirements of the French Intellectual Property Code related to authors.
Successfully acted in Frank Industries v Nike, a UK trade mark infringement and passing off case. We obtained an EU-wide interim injunction, subsequently upheld by the UK Court of Appeal. We then won an expedited trial before IPEC within 5 months of commencing litigation.
CITTI vs. CITI
Acting for the German gross market group CITTI against the international bank CITI in trademark disputes.
Acted for Harley-Davidson, one of the world's leading motorcycle companies, in trade mark infringement proceedings relating to unauthorised merchandise.
Acting for US craft beer company Stone Brewing in an international trademark dispute against Molson Coors about the beer brands STONE and STONES with actions and counteractions in Germany, UK and other EU countries.
Represented the Limoges, France, high-end porcelain factory Etablissements Coquet in the Paris Court of Appeal against the company NESS in relation to copyright infringement of Coquet's best-selling collection “Hémisphère” The court recognised that the decoration was copyrightable and ordered NESS to pay €1m in damages.
Gruner + Jahr
Advised market leading magazine publisher Gruner + Jahr in setting up framework agreements with their freelance authors and photographers in order to secure standardized and future-proof copyrights for an international media company and establishing an internal process to cover every assignment from the editorial offices.
Advised on the complex negotiations on technology licensing and IP ownership issues for this US company entering the European market arising from a collaboration to establish a waste gasification plant.
PDU Music & Productions
Assisted in the drafting and negotiation of a contract concerning the use of the voice, profile, signature and digitalized graphic representation of the image of the famous Italian artist ‘Mina’, for the realization of promotional initiatives by the TIM telephone operator.
Assisted in the negotiation of the agreement with an influencer (to act as the programme host) concerning the creation of a TV format and its production as a TV programme for broadcasting in Italy.
Sony Music Entertainment
Advised in proceedings started by a famous Italian publishing company (Feltrinelli), concerning the alleged counterfeiting of its trademarks resulting from the use of a logo formed of two capital letter “F”s on the cover of the album 'Concrete and Gold' by the international group “Foo Fighters”.
Intellectual Property Insights
The UK High Court denies the eCommerce Directive 'safe harbour' defence in decision on infringing third-party apps
IP basics: what to think about when entering the UK and EU markets (trade marks, copyright, designs)
The Genetic Technology (Precision Breeding) Bill seeks to simplify the regulatory regime for precision-bred plants and animals