Expertise/Intellectual Property

Practice

Intellectual Property

The intellectual property practice specializes in the legal protection, commercial use and defence of brands, technologies, software, creative works and know-how.

We advise rights holders and companies that use intellectual property in their business.

The main areas of work are trademark registration and patenting, transactions involving exclusive rights, licensing, franchising and infringement disputes. Advice covers the acquisition and transfer of intellectual property assets, the structuring of relationships between rights holders and users, and the establishment of trade secret regimes. Clients are represented in disputes concerning the use of protected subject matter.

The choice of legal model takes into account the commercial value of the intellectual property, how the rights arose and were transferred, the territories of use and the business's development plans. The risk of disputes, the terms on which the rights may be disposed of and the cost of their legal protection are assessed.

Selected Experience
01 / 04

Acting for the buyer

Intellectual property rights in the acquisition of an equipment and digital solutions manufacturer

Challenge

The buyer was acquiring shares in a foreign company that owned a Russian manufacturer of industrial equipment and digital solutions for equipment management and monitoring, as well as shares in a Russian legal entity. The acquisition of the foreign company was governed by English law.

What was done

The comprehensive legal due diligence of the Russian business covered intellectual property rights, as well as the corporate history, business operations, contractual relationships and other matters material to the transaction. The foreign ownership structure, title to the shares being acquired and the legal aspects of the buyer's entry into the existing corporate structure were analysed separately.

The structure and documents of the transaction were agreed. The findings on the Russian and foreign parts of the structure were reflected in the terms of the transaction and the arrangements for its closing.

Preparing for franchising

Consolidation of rights to a group's accounts, websites and materials before franchising

Challenge

A group of companies was engaged in extensive marketing, but its accounts, websites and rights to the materials created were registered in the names of different entities within the group. To set up franchises later, the rights had to be brought together in the group's management company.

What was done

It was established which group entity held each asset, and the transfer of rights to the management company was documented. The rights to the group's marketing assets were put in order and consolidated in the hands of a single entity.

Trademark dispute

Non-use dispute over a trademark that blocked registration of the client's mark

Challenge

The client needed to register a trademark to brand the services of a travel agency. Registration was blocked by another company's mark: that company used it for a cosmetics brand, but the protection of the mark also extended to a number of Nice classes the client needed.

What was done

Claims for early termination of the legal protection of the mark for non-use were prepared in respect of those classes. The claims were put to the rights holder at the pre-trial stage, and the dispute was settled without going to court.

Purchase of an interest

Review of an app developer's intellectual property rights

Challenge

The buyer was acquiring an interest in a company developing a healthy lifestyle app with a weekly audience of more than 1.5 million users worldwide. Comprehensive legal due diligence of the business being acquired was a key part of the engagement.

What was done

The company's intellectual property rights were analysed, as well as its corporate history, business operations and employment relationships. The due diligence findings were taken into account in structuring the transaction and preparing the contractual documentation.

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