Client Services / Intellectual Property, Media & Technology / IP, Media & Tech - London

IP, Media & Tech - London

With organisations' operations becoming increasingly global, there is a greater need for protection of intellectual property on the world stage, encompassing inventions, brands, designs and trade secrets. We advise on all aspects of our clients' IP rights covering recognition, exploitation and enforcement in the UK, Europe and internationally.

The breadth of our practice covers all key areas including:

Litigation - patents, trademarks, copyright and design, and confidential information

Our experience spans all forms of UK and pan-European litigation including:

  • patents, trademark copyright and trade secrets litigation and arbitration
  • oppositions in the European Patent Office (EPO) and the Community Trademark Office (OHIM)
  • tactical and evidentiary requirements for litigation and oppositions
  • regulatory and antitrust matters

Our team acted in the UK's first trademark case under the 1994 Trademarks Act to go to the House of Lords (UK Supreme Court), and in major patent litigation in the High Court and Court of Appeal.

Patent and trademark prosecution

We work closely with the litigation group as part of a unified technical and legal team to provide our broad range of clients with high calibre advice on:

  • patent and trademark filing strategies
  • global and UK portfolio management
  • global trademark watching services
  • structuring of patent portfolios
  • know-how and trade secret protection
  • patent and trademark applications, from drafting and filing through to prosecution and oppositions in the EPO and CTM

Transactional

We handle all aspects of:

  • licensing
  • joint ventures
  • technology transfer, distribution and agency arrangements
  • non-contentious IP/transactional work
  • technology licensing
  • consortium arrangements
  • outsourcing
  • M&A due diligence

e-Business

We advise on all aspects of:

  • significant cross border commercial work
  • new "e-law" and internet issues
  • database/data protection issues
  • applications software provider structuring
  • e-enablement projects
  • web business set up and operation
  • B2C and B2B ventures
  • web hosting/e-partnering arrangements

We have particular skills in cross border electronic contracting and trading, website review and "e-auditing" corporates and advising on all forms of marketing, sponsorship and traditional and online promotion.

Marketing and advertising

From the most novel, cutting edge campaigns to the largest promotions, through traditional or the latest digital/interactive media, our marketing, advertising and media practice assists clients in a fast, knowledgeable and commercial manner. Members of the team have advised 15 of the top 20 advertising agencies as well as some of the world's biggest brands. We have advised on every aspect of advertising, marketing and sponsorship including:

  • above to below-the-line issues
  • internet promotions
  • digital TV and interactive commercials
  • promotions/mailshots/database use
  • lotteries and competitions
  • implications of new Distance Selling Rules (e.g., mail order and web sales)
  • UK and international comparative advertising and sponsorship campaigns
  • New brand/product launches
  • Rules on alcohol

Antitrust and competition

We advise clients on structuring their IP portfolios to best achieve their business objectives without offending competition and antitrust regulations, particularly in respect of compliance programmes, licensing strategies, selective distribution arrangements and similar legal issues.

We have particular experience in numerous industry sectors including:

  • pharmaceutical
  • medical
  • manufacturing
  • utilities
  • government
  • biotech
  • chemical
  • retail
  • information technology
  • electronics
  • telecoms
  • financial services
  • media and communication

Recent matters on which we have advised include:

  • Advising BAE SYSTEMS on the intellectual property structuring in connection with its global outsourcing joint venture for HR services.
  • Advising BT and MMO2 on the defence of the O2 trademarks in litigation brought by Old Burford.
  • Advising Document Security Systems Inc, on the surrender and assignment of a complex and intricate network of various interests in intellectual property rights relating to anti counterfeiting technology and bringing an action at the European Court of First Instance against European Union institutions. 
  • Advising Fintage Artists BV on various agreements and arrangements including in respect of the use of music rights in connection with a musical.
  • Advising on the defence of all of Formula One's trademark portfolio outside the Americas, including the role of co-counsel in the Formula1.com litigation in California.
  • Advising Hitachi in an action brought by Storage Computers against our client, regarding patent infringement concerning computer storage systems.
  • Advising Inter Lotto in a High Court trademark infringement and passing off action which settled immediately prior to trial.
  • Advising Jonathan Ball on a claim against the trustees of The Eden Project, probably the most successful of the Millennium projects. The dispute relates to "The Eden Project" and a co-founder of The Eden Project. In December 2001, Druces and Attlee, solicitors to The Eden Project, were disqualified for acting against him.
  • Advising Lloyds TSB on customised documentation for CREST facilities and also documentation of SETS Central Counterparty arrangements entered into in association with the London Clearing House.
  • Advising Paul Capital Partners a US-Swiss royalty acquisition fund manager, on a $40m capital injection in exchange for percentage of future royalties, concerning ML Laboratory's kidney division.
  • Advising Pechiney Plastics on the consolidation of their European trade mark portfolio.  This advice includes obtaining renewal instructions and the transfer of responsibility to McDermott Will & Emery's London office from third party agents.
    Advising a leading manufacturer of speciality chemicals on a patent licence and antitrust matters in which a licence was held void (at our instigation) for antitrust breaches.
  • Advising SanDisk in respect of issuing 2 sets of patent proceedings against a patent pool headed by Philips as part of the MP3 wars.  Advising on multi-jurisdictional infringement and validity of a suite of patents, as well as the relationship between the patent's and the standard and a number of antitrust issues.
  • Advising Scandecor Development on the Scandecor litigation, which was the first trademark case to reach the House of Lords under the Trademarks Act 1994.
  • Advising Schmalbach-Lubeca, one of Europe's largest packaging companies, on the IP aspects of the €1.7bn sale of its packaging and bottling businesses to Amcor. The combined Amcor-Schmalbach business will operate 51 plants in 20 countries, making it one of the top five packaging groups in the world.
  • Advising Stonestyle Limited on a case concerning branded designer clothing which involved the link between a claim for trademark infringement and related breaches of European competition law (Article 81 of the EC Treaty).

We add value to our clients by not just providing one-off legal advice, but by keeping them informed of legal developments - as they arise - which may affect their business.

Contacts

Intellectual Property, Media & Technology Client Services

McDermott Will & Emery

McDermott Will and Emery