IP litigation can be both technically and legally complex, and involve some of the most valuable assets of a business. It is often multi-jurisdictional, which brings additional challenges.
As a firm of specialist solicitors and intellectual property attorneys, we are able to combine the complementary skills of both professions to provide clients with a first-class and cost-effective service to resolve their patent, design, trade mark, copyright, unfair competition and other IP-related disputes (such as those involving confidential information). We are accustomed to acting for rights holders as well as alleged infringers, in relation to infringement and invalidity actions, as well as actions for declaratory relief.
European litigation expertise
Our solicitors, rechtsanwälte, patent attorneys and trade mark attorneys have extensive expertise in acting in disputes and litigation in relation to the full range of IP rights (be it patents, supplementary protection certificates, trade marks, designs, copyright or confidential information).
We handle UK cases cases in the High Court (Chancery Division), the Intellectual Property Enterprise Court (IPEC) and UK Intellectual Property Office.
In Germany we are experienced in representing clients in the German infringement courts in first instance and appellate proceedings, the German Federal Patent Court (Bundespatentgericht) and the German Patent and Trade Mark Office (Deutsches Patent- und Markenamt).
Multi-jurisdictional litigation management
We are experienced in advising clients in, and co-ordinating, multi-jurisdictional disputes involving courts in Europe, Asia and the United States. We work with and manage local advisers in the context of IP matters and have good relationships with a number of excellent firms around the world. We are also experienced in handling IP issues in an international arbitration context.
Our technical expertise spans all industry sectors including biotechnology, chemistry, pharmaceuticals, business and finance, creative, entertainment, hospitality and media, consumer, luxury and fashion goods, electronic and electrical engineering, mechanical engineering, computer technology and physics.
World Trademark Review Trademark Litigation 2022: A Global Guide
The D Young & Co litigation team have written the UK chapter of the World Trademark Review "Trademark Litigation: A Global Guide 2022". The guide is a simple, easy-to-use digest of the fundamentals of litigation practice in key jurisdictions. The guide can be viewed in full using the link below.TM litigation guide
Cases we have been involved in include
Biotechnology, chemistry & pharmaceuticals
- Allied Colloids v American Cyanamid(polymer chemistry)
- Arrow v Akzo Nobel/Organon (polymorphism)
- GlaxoSmithKline Biologicals v Novartis(meningococcal vaccines)
- Intervet v Merial (porcine circovirus 2 vaccine)
- Lubrizol v Esso Petroleum (lubricant additives)
- Mylan and Glenmark v The WellcomeFoundation (malaria combination therapy)
- Omnipharm v Merial (spot-onflea treatment formulation)
- The Procter & Gamble Companyv Lever Brothers (detergents)
- Tercica and Genentech v Insmed(insulin-like growth factor binding protein)
Consumer, luxury & fashion goods
- 3M v International Applications (counterfeit goods)
- Aston Martin Lagonda v Envisage Group (breach of confidence)
- Birds Eye v Green Isle & Northern Foods (comparative advertising)
- GO Outdoors v Skechers (trade mark registrability)
- McNeil v EUIPO (trade mark registrability)
- O2 v Hutchinson 3G UK (trade mark infringement)
- Pentland Brands v Skechers (designs, copyright and trade mark infringement)
- Rolex v Zaffar (counterfeits)
- Skechers v Tesco (designs and copyright infringement)
- Unilever v Morris & Son (parallel imports)
- WIPO Arbitration (trade mark coexistence agreement)
Creative, entertainment, hospitality & media
- Turner Broadcasting v Boomerang TV (threats; trade mark infringement)
- Marriott v EUIPO (trade mark registrability)
- The Cartoon Network v EUIPO (trade mark registrability)
Electronics, engineering & IT
- HTC v Access (Android operating system)
- ICC Arbitration (nanotechnology licence)
- Intel v UMC (microprocessors)
- InterDigital v Nokia (2G & 3G)
- Kimberly-Clark v The Procter & Gamble Company (disposable diapers)
- LG Electronics v Access (Android operating system)
- Philips v LG (digital image encoding)
- Seoul Semiconductor v Everlight (light emitting diodes)
- Sony v SSH (network address translators)
- Tangle Teezer v GB Kent & Sons (hair brushes)
- The Procter & Gamble Company v Peaudouce (disposable diapers)
- Triumph Actuation Systems v Aeroquip Vickers (aircraft power transfer units)
- Tyco v Tomy (magnetic image displays)
- Virgin Atlantic Airways v Zodiac (aircraft seats)
- VPG v Airweigh (vehicle weighing system)
- Windsurfing v Tabur Marine (windsurfers)
Unified Patent Court
We have been closely involved in the development of the Unified Patent Court (UPC) such that we are intimately familiar with its framework, procedures and jurisdictional arrangements. When it comes into being, patent litigation in the Unified Patent Court will place a strong emphasis on written technical statements of case along with important evidential requirements and procedures.
We will be able to offer a broad choice and availability of representation in all divisions of the UPC and our solicitors and patent attorneys are particularly well placed to assist clients in this new European patent litigation forum.Read more
Multi-jurisdiction litigation & EPO opposition proceedings
Members of our team acted in complex "clear the path” revocation proceedings in the pharmaceutical and biologicals field, including co-ordinating multi-jurisdiction litigation and EPO opposition proceedings. Technologies involved included formulation, process chemistry, crystal forms, viral characterisation, vaccines and combination therapy.
Overturning 100 years of patent law before the UK Supreme Court
Our team regularly advises on patent litigation in the electronics and mechanical engineering sector. A member of our team advised one such client, an aerospace manufacturer, in the defence of a claim for patent infringement. The case culminated before the Supreme Court, where the manufacturer was successful in overturning 100 years of patent law.
Representing clients at the UK Intellectual Property Enterprise Court
Members of our team have represented many claimants and defendants before the IPEC. Examples of clients members of our team have advised before the court are: an SME in firefighting technology seeking a declaration of non-infringement and invalidity in relation to a patent for water abrasive cutting tools; an SME in relation to its defence of a claim for design right infringement in relation to furniture; an SME defending a claim for passing off in relation to a website; a manufacturer and designer of on-board payload control and overload protection systems for commercial vehicles and aircraft in relation to a patent infringement and revocation action; issuing proceedings against defendants who had imported counterfeit watches into the UK; and defending a Swiss conglomerate in relation to an allegation of patent infringement for a plastic enclosure.
Patent litigation at the German Federal Patent Court & German Federal Supreme Court
We successfully defended a patentee and medical device maker against a revocation action at the Bundespatentgericht (German Federal Patent Court) and the Bundesgerichsthof (German Federal Supreme Court), leading to a decision further developing the law with respect to added matter regarding German patents.