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Trademark lawyers
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, has 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 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 clients 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 properly 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 filed in a timely manner by leveraging the advantages of international trademark treaties, through our international offices, or through our network of highly skilled international 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.
Track record
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 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 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.
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.
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.
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.
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.
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.
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 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 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.
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.
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.
International beer manufacturer
Advised an international beer manufacturer on trademark infringement in Singapore.
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.
Italian wine manufacturer
Managed the trademark portfolio of a leading Italian wine manufacturer.
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.
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.
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.
Our team
Kenneth Mullen
Partner | London
Sarah Barker
Partner | Head of art law | London
Jacopo Liguori
Partner | Milan
Richard Penfold
Partner | London
Gina Bibby
Partner | Los Angeles
Jonathan Kok
Partner | Singapore
Mabel Lui
Head of Greater China Commercial | Hong Kong
Kirsten Doherty
Consultant | London
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