Trademarks

Trademarks are important not just to businesses, which need to protect their brands, but to consumers, who need to trust 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 protection of many thousands of trademarks that help to avoid consumer confusion or 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 range of services from the creation of a mark through to brand growth. Our experience enables us to advise not just on the registration process and available options, such as trademarks, service marks and trade dress, but also on protecting and strengthening the mark.

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
  • Prosecuting trademark applications and maintaining registrations
  • 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

We will keep you updated at every stage, from conducting clearance searches to prosecuting your application and liaising with trademark agencies on your behalf until the application is approved. After your trademark is registered, we will calendar any renewal deadlines to ensure that your registration is timely maintained.

“Clearing your marks early is essential,” advises Deborah Greaves in our Los Angeles office. Business owners invest substantially in their branding, including marking the packaging and products, along with advertising. It is difficult, both financially and emotionally, to later learn that the brand name is not available, or even worse, that another party already owns a registration for the mark in which the new business has heavily invested.

Thinking globally

We advise our clients to think globally by conducting searches in different markets before applying to register a trademark for the first time. If you wish to file applications in several countries simultaneously, your Withers lawyer is well-positioned to ensure your international applications are timely filed by leveraging the advantages of international trademark treaties, through our international firm offices, or through our network of highly skilled international f trademark attorneys.

Enforcement of our clients’ trademark rights is taken seriously. We help our clients with civil enforcement by obtaining injunctive relief and/or litigating against infringers to recover civil damages. We also help our clients with criminal enforcement against counterfeiters by developing brand enforcement training materials for law enforcement use, partnering with private investigators and law enforcement agencies to execute criminal seizures and prosecuting counterfeiters, assisting with on-line take downs, and structuring internal brand enforcement programs for our clients with prolific infringement and counterfeiting issues.

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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

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.

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.

LG Electronics Inc

Our Singapore team successfully acted for LG Electronics Inc. in a trade mark opposition filed by headphones manufacturer Beats Electronics, LLC against the registration of the mark 'QuadBeat' before the Intellectual Property Office of Singapore, securing a favourable decision.

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.

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