Back in June 2022, the Department for Environment, Food and Rural Affairs (DEFRA) awarded ‘Sussex’ wines Protected Designation of Origin (PDO) status. PDO status means that a product has come from (more, specifically been ‘produced,...
Our IP lawyers provide strategic advice on all areas of intellectual property and technology. We understand that businesses and organisations invest heavily in their IP and IT and need to ensure that their intellectual property, as a key asset, is protected.
Our lawyers provide standalone strategic IP and IT advice as well as acting in disputes or as part of a commercial team in a large transaction. Our lawyers work to understand the nature of clients' business and the role of their IP and IT and seek to provide targeted efficient and cost-effective advice to help achieve the clients' objectives.
We regularly deal with trademark applications and disputes, copyright, IT contracts, database rights, negotiate software licences and information, management and protection.
Our clients are across all sectors ranging from public sector organisations, education providers, software developers and entrepreneurs/start-ups in sectors such as insurance, education, charities, wine and spirits and leisure. We have particular expertise and experience in the wine and spirits sector acting for a host of high profile luxury brands whose names and products who have protected geographical indications (PGI) or have protected designated origins (PDO). Out of that expertise comes a strong understanding of bringing passing off claims under common law – see more below.
[rotator]
Commercial IP Contracts
A lot of money rides on ICT commissioning contract and IP acquisitions. Products may not be delivered on time or project creep may occur. Ownership of the resultant IP is often fought over. Apparently strong limitations of liability in a contract may not stand up so specialist knowledge and creativity is needed in every case.
In acquisitions, issues about ownership of software or rights regarding Open Source Software can complicate or frustrate deals and need to be flushed out in due diligence at an early stage by lawyers who are on the ball and asking the right questions. In software licencing issues regarding data protection or the need for export licences for encryption software inside and outside the EU can be pitfalls for the unwary.
Our IP and commercial lawyers draft contracts and advise companies and organisations on all of the issues mentioned above.
Brand Protection
Protection in England of such well known names depends both on the English law of passing off and on the EU and UK regulations regarding Protected Designations of Origin ("PDOs") and Protected Geographical Indications ("PGIs").
Starting in the late 1950s, LBMW and its predecessors have led the way in high profile cases relating to "extended passing off" on behalf of household names. Amarone, Barolo, Basmati, Bordeaux, Calvados, Champagne, Cognac, Comté, Epoisse, Hermitage, Languedoc, Port and Provence are all well-known names for which we have taken steps to protect the name or stop infringers misusing the name in the past few years.
Extended Passing Off
Extended passing off recognises that groups of producers of products, which consumers recognise under the well known name, are entitled to stop competitors, who do not make or grow the product in the establish region, from marketing under their name. The law is flexible and protection is not limited to production from a particular region. An essential part of protection against passing off is showing that the defendant makes a misrepresentation of a connection in the course of trade to the complaining producers' goodwill.
Protected Designations of Origin ("PDOs") and Protected Geographical Indications ("PGIs")
The UK is committed to protecting designations of origin and geographical indications by UK Regulations even though the UK has left the European Union, through regulations which are similar to existing EU law with which we are so familiar and where our expertise is sought by others across the world.
The leading case of Taittinger v Allbev in the Court of Appeal where Monier-Williams represented CIVC, upheld the rights of Champagne producers to stop so-called Elderflower Champagne even though it was non-alcoholic an is an example of how we can bring to bear the law of passing off and Protection of Designations of Origin to beneficial effect. LBMW Is well placed to bring many years of experience in passing off and brand protection to bear to protect producers under the new regulatory regime and advise how to avoid the traps of interfering with others' brands.
IP Disputes
Our IP lawyers have a strong understanding of how different IP rights work and how they interact with different parts of relevant legislation. They are well placed to provide focused and commercial advice aimed at resolving any kind of IP dispute whatever the nature of the client's organisation and sector. We advise in disputes involving all types of IP and related legal issues including trademarks, domain names, data base and design rights, copyright, patents as well as a more traditional contract dispute around the IT or IP provisions. Increasingly, we are advising on IP and privacy issues within social media and work alongside our other teams, notably the employment team where appropriate to tackle issues in a fast moving area where content is rapidly evolving and disappearing and swift advice is necessary.
Whilst our aim on behalf of the client is almost always to prevent a dispute escalating to formal litigation, we are experienced in both the negotiation and handling of disputes in the courts and in particular, the Intellectual Property Enterprise Court (IPEC).
Film and Television
The file and TV industry has its esoteric concepts, essential knowledge and jargon. Our lawyers are well versed and can work the opportunities for you. We have many years' experience of the ins and outs of film and television production and distribution and negotiating the industry deals.
