Intellectual property

We sometimes hear it said that it’s not possible to protect intellectual property in a fast- changing industry like fashion. To put the record straight: it is.

There are two issues that need to be considered – protection and exploitation. We advise on all forms of protecting trade marks, design rights, copyright, database rights, and know-how.

Our expertise

• Brand Protection, Management and Enforcement
• UK, European Union trade mark (CTM), and international trade mark filings
• UK and EU registered design (RCD) filings
• Brand clearance – from “identical-hit” screening searches to co-ordination of larger clearance projects
• UK and EU trade mark office opposition, invalidity and revocation actions and assistance with the preparation of tailored, pertinent evidence
• Trade mark, design, and copyright infringement matters
• Intellectual property licensing, including complex co-partnering issues and franchising
• Advertising, marketing/promotions and sponsorship (on and off-line)
• Product endorsement and merchandising
• Data protection and privacy issues
• Brand co-existence, delimitation and brand-sharing agreements
• Intellectual property assignment, audit and acquisition projects
• General terms of trade, distribution and services agreement
• Handling of large, complex and high profile intellectual property disputes that cross borders
• Intellectual property infringement on the Internet including domain name arbitrations
• Domain name policy and the protection of rights mechanisms on the Internet
• Anti-counterfeiting activities, enforcement and the seizure of unauthorised goods, including liaising across the EU with customs and other relevant authorities in order to register clients’ intellectual property rights
• Breach of confidence actions
• Search and Seizure Orders

Our experience

When our clients’ intellectual property rights are breached, we act – and we get results. Here are a few of our recent successfully concluded cases.

• Superdry – obtaining a Court Order against Voi Jeans requiring that Voi cease to sell a style of lumberjack hooded shirt and destroy all unsold stock, with potential criminal sanctions if Voi’s directors failed to comply
• Action against Arcadia – reaching a settlement for Arcadia’s infringement of a fashion client’s designs resulting in a royalty being paid for each item sold
• Action against Primark in relation to the sale of a jacket which reproduced a fashion client’s design. An out of Court settlement was achieved which included an ongoing agreement to cease production of the jacket and a payment of costs and damages
• Obtaining withdrawal and damages against a leading supermarket retailer for infringement of a fashion client’s style of tshirts
• Successfully defending a well known casual women’s wear retailer for alleged infringement of design rights. The litigation that had been threatened was abandoned
• Protecting a renowned Italian fashion shoe brand from the placing of copycat products on the market. A full withdrawal across the UK has been achieved
• Cross-border licence agreements for a Savile Row menswear label
• Merchandising agreement for well-known menswear brand

“The ‘highly responsive and very dependable’ team at Fox Williams LLP, led by the ‘attentive and deeply knowledgeable’ Simon Bennett, successfully represented DKH Retail as a claimant in a design rights infringement case in the IPEC.” Legal 500

“IP mastermind.” Legal 500