Company: EU-based company manufacturing and distributing a range of innovative exercise and fitness products worldwide
Industry: Exercise, Health, & Fitness
From trade marks, designs, and patents, to enforcement, contracts, and supporting the business within foreign jurisdictions…
This EU-based company operates within the exercise, health and fitness sector, manufacturing and distributing products in various parts of the world including throughout the EMEA, AMER, and APAC. The client was initially referred by another professional firm which did not have experience with intellectual property rights and in particular with trade marks. Over the course of 10 years the client received comprehensive, relevant and tactical advice to help support its existing business; develop new markets; protect and expand its global trade mark and design portfolio throughout numerous territories; enforce its rights against infringers; negotiate and conclude multiple business contracts and deals; protect the company against unfair competition and aggressors within the marketplace.
The (Pain Point)
The client had a variety of intellectual property challenges, including with numerous infringers and unfair competition operating within the marketplace. It was a growing and ambitious business that needed to continue to drive innovation and expand its market into new overseas markets. The client needed to trust a professional to take a pragmatic approach to help support the business in a way that also allowed it to continue to expand with minimal disruption. The client wanted a lawyer that had a variety of business and legal skills, including international experience, along with a comprehensive understanding of intellectual property and commercial matters. The preferred lawyer needed to have the flexibility of being available (sometimes at short notice), and responsive to the client’s needs and its evolving landscape.
The Challenge Faced
- monitoring the trade mark registers across the world to identify potentially conflicting applications at the earliest opportunity
- challenge conflicting trade mark applications before these reached the registration stage
- identify and acquire pre-existing trade mark applications/registrations in various territories to enhance client’s own growth ambitions
- monitor extent of potentially infringing activity within the client’s relevant markets
- to prepare and file client’s own new trade marks and designs throughout relevant markets globally
- to prepare, negotiate, and conclude a variety of commercial deals for the client throughout its relevant markets globally
- protect and enforce the client’s global IP portfolio, which included trade marks, design rights, and patent rights
I have worked with many businesses in connection with IP and those related issues faced by organisations based in the UK and overseas. In particular I have helped companies with trade mark matters (filing/opposition/revocation) via most of the various intellectual property offices around the world due to extensive experience and knowledge in this field.
The client contacted its current advisor who was unable to undertake the nature and scope of work required. The advisor recommended me due to the number of successful matters that I had previously completed for its other clients.
It was important to listen to and understand the client’s concerns and preferred outcome(s) taking account of the numerous deadlines arising in connection with multiple legal matters including: trade mark applications/oppositions/revocation; trade mark and/or design and/or copyright infringement; passing off claims; attacks upon and protection of its own digital and online assets; and a variety of commercial matters.
It was essential to undertake a timely review of the client’s various matters as each arose. To be able to work closely with the client’s owner and founder, and where relevant to adopt the client’s ethos for a particular matter.
- developed an extensive IP portfolio with registered rights in a variety of relevant markets across the world
- removed counterfeit products from the marketplace
- stopped numerous unauthorised agents and sellers of copycat and infringing products
- dealt with numerous trade mark infringement and passing off claims
- developed and concluded successful business arrangements, licences, and various commercial contracts throughout its relevant marketplaces
- protected its online assets, including against spurious attacks and an attempt to undermine and acquire its domain name rights
- continued its business expansion and enhanced its global market share
- Use an experienced and qualified lawyer to advise you in connection with trade marks and branding, trade mark applications, oppositions, and revocations (including non-use) as early as possible
- Use an experienced and qualified lawyer to advise you in connection with Passing Off
- Use an experienced and qualified lawyer to advise you n connection with copyright, database rights, and other online/digital assets
- Use an experienced and qualified lawyer to support you in connection with IP rights in foreign jurisdictions
- Use an experienced and qualified lawyer to support your business in connection with its various commercial contract and business deals
- Consider risks to your business and not only appreciate what could go wrong, but how to avoid or mitigate against possible situations
- Poor and ineffective commercial contracts will adversely affect your business, its investments, and its assets, which will have far wider implications and detrimental consequences to your business than perhaps initially appreciated
- Suitable and comprehensive IP and contract advice will enable you to quickly and effectively manage potential disputes and enhance your profitability with less distraction to your business, as well helping you to reduce future costs and risk