Trademarks

Trademarks are important not just to businesses, which need to protect their brands, but to consumers, who need to understand the origin of the goods and services they buy.

Our global trademarks team, with lawyers in the US, Europe, and Asia, have assisted in the registration of many thousands of trademarks that help to avoid any confusion or brand infringement. We work on behalf of a wide range of organizations, from commercial brands to public institutions. Withers’ global reach enables us to help wherever you are – or would like to be.

We provide a full service from trademark creation through to portfolio renewal. Our experience enables us to advise not just on the process and options such as trademarks, service marks and registered trademarks, but on strengthening the brand itself. We will keep you updated at every stage, from conducting clearance searches to prosecuting your application, liaising with trademark agencies on your behalf until the application is approved.

We regularly assist clients with:

• Strategic advice regarding name selection, clearance and registrability in both domestic and international markets

• Prioritizing registration strategies and budgeting for trademark portfolio development and growth

• Filing trademark applications and managing registration renewals

• Managing contested proceedings before trademark offices, such as office actions, trademark oppositions, and invalidation proceedings

• Representing clients in trademark infringement litigation matters

• Structuring and negotiating commercial agreements involving trademarks, such as license agreements, distribution agreements and collaboration agreements

• Developing and delivering training programs for clients’ employees regarding trademarks and other intellectual property matters

• Assisting client’s in brand enforcement efforts, such as creating programs to address issues with counterfeit goods and rogue websites

Thinking globally

It’s also wise to think globally – conducting searches in different markets before applying for your first trademark. If you wish to file applications in several countries simultaneously, your Withers lawyer will create and lead an international team of attorneys who know how things work on the ground. This made for a smooth process for a client that recently applied for trademarks in seven countries.

Trademark infringements are a big concern, and we have acted many times to enforce a client’s rights – for example stopping an unlicensed business selling hats bearing the name of a major New York museum. If necessary we will obtain injunctions and/or bring litigation to protect your brand.

Finally, dates are important in trademark protection. You can rely on our team to stay on top of your portfolio, renewing and expanding your protections whenever required.

For further help or information

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07 January 2021 - Article

The US Trademark Modernization Act becomes law


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We needed a legal advisor that could go beyond sound legal knowledge to understand our brand culture and the way in which we engage with our customers. The team took the time to get to know us and this has informed their advice on protecting our trademarks, website and mobile app.

David McQuillen - The Sufferfest
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The team at Withers has been a great support to the creative development of our brand over the years, providing legal advice that has given us stability, and that is always informed by the firm’s deep understanding of the fashion industry.

Preen

Meet the team

How we can help

Track record

South East Asia's leading manufacturer and marketers of personal care products

Acting for one of South East Asia's leading manufacturer and marketers of personal care products in the worldwide protection of their trade marks and on over 50 contentious trade mark proceedings across Asia Pacific and the Middle East.

Owner and operator of the prestigious educational institution

Acting for the owner and operator of the prestigious educational institution with campuses in Singapore, India, Japan, Malaysia and the United Arab Emirates, in the worldwide protection of their trade marks and in various trade mark enforcement proceedings in India.

Leading bakery chain in Singapore

Acting for a leading bakery chain in Singapore, in the protection of their trade marks and management of their trade mark portfolio in the Asia Pacific region. We are also advising the client on issues arising from trade mark squatting by third parties in Indonesia.

A cult skincare company based in Singapore

Acting for a cult skincare company based in Singapore in the protection of their trade marks and the management of their trade mark portfolio worldwide.

A leading US-headquartered company

Acting for a leading US-headquartered company that manufactures electronic measurement equipment and software in defending a trade mark opposition in Singapore.

A Japanese conglomerate in the food industry

Acted for a Japanese conglomerate in the food industry and successfully seized over a thousand counterfeit items in a collaborative raid with the Singapore Police Force.

A household name with over a hundred years history in Singapore

Acted for a household name with over a hundred years history in Singapore in a High Court suit for passing off and breach of contract, as well as trade mark invalidation and opposition proceedings at the Intellectual Property Office of Singapore. We successfully secured an interim injunction at the High Court restraining their former business partner and affiliated entities from using our client's Chinese name on similar services.

A leading consumer internet company in Southeast Asia

Acting for a leading consumer internet company in Southeast Asia in the protection of their trade marks and the management of their trade mark portfolio worldwide.

US technology company

Advised in the acquisition by a US technology company of software and intellectual property assets from an embedded software company in Moscow and related technology service agreements with an affiliated entity in British Virgin Islands.

International beer manufacturer

Advised an international beer manufacturer on trademark infringement in Singapore.

Italian wine manufacturer

Managed the trademark portfolio of a leading Italian wine manufacturer.

Trademark injunction

Obtaining a unique form of injunction in relation to a claim for passing off, whereby the defendant was forbidden from using their own trade name because it had been coupled with our client's well-known brand.

LG Electronics Inc.

Successfully acted for LG Electronics Inc. in an opposition by Beats Electronics, LLC against an application to register the trade mark ‘QuadBeat’ in Singapore.

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