Gowling WLG
Firm overview:
With vast global connections to assist its trademark clients, 125-year old Gowling WLG is a large, international, full-service firm. The go-to firm for referral work, both from international firms seeking a UK partner and from trademark attorney firms seeking a top litigation offering, Gowling handles all forms of brand protection. An impressive list of businesses, including multinational technology company Dyson, American toy manufacturer Hasbro, and consumer goods giant Unilever, trust the firm with their trademarks.
The team is equipped with the expertise to handle big-ticket litigation and find a favourable settlement depending on the client’s needs, often with highly regarded opponents in the other corner. With IP teams situated across the globe, including China, France and Germany, Gowling assists with enforcement issues in other jurisdictions, expanding international portfolios and strengthening a client’s global brand strategy. Its international relationships extend to customs authorities to combat the threat of counterfeit goods.
Team overview:
The international firm has a 12-person UK team that works with team members across Europe, North America, East Asia and the United Arab Emirates on clients’ brands. In particular, Gowling works closely with its Canadian office for its non-contentious matters.
Leading the team is John Coldham, head of brands and design. “A class act,” say peers, Coldham is “very switched on” when it comes to trademarks. His legal experience spans small disputes and settlements to multi-jurisdictional litigation and obtaining an emergency injunction for a widely recognised brand.
There were some notable departures from the Gowling team over the past year, with former head of IP Gordon Harris starting a new role at Trevisan & Cuonzo, and Jasmine Lalli and Mathilda Davidson both joining Osborne Clarke.
Key matters:
Non-Contentious
- Trademark portfolio work for Baylis & Harding
Gowling WLG advises Baylis & Harding on its global trademark portfolio, clearance for new products and campaigns and developing an international protection strategy for its brand. Recently the team has handled matters concerning multiple jurisdictions, working across its foreign offices, including customs actions in China and opposition matters in France.
Contentious
- International Air Transport Association (IATA) v easyGroup
Gowling represented the IATA, an airline trade association representing more than 300 airlines in 120 countries, in a matter brought by multinational conglomerate easyGroup, known primarily for its airline, easyJet.
The IATA was challenged by easyGroup for the use of ‘EasyPay’ for its billing and settlement plans, alleging trademark infringement and passing off in relation to its own trademarks which included ‘easyMoney’ and a figurative sign for ‘easy pay’. Proceedings were issued in the full High Court, but the claim was settled prior to the Case Management Conference.
- Trademark appeal to the Court of Appeal for Oatly
The team represents Swedish oat drink brand Oatly, which applied to the UK Intellectual Property Office (UKIPO) to register ‘Post Milk Generation’ as a trademark, but was unsuccessful following an opposition by Dairy UK. Oatly appealed that decision to the High Court, and a hearing took place in October 2023. Oatly was successful in its appeal, with the High Court finding that the UKIPO had misinterpreted the Regulation, and that Oatly had not used its mark to advertise milk products. This decision is currently under appeal to the Court of Appeal by Dairy UK.
- Litigation work for We Love Holidays
We Love Holidays sells package holidays online through its website and app. It recently underwent a re-brand, and Skyscanner considered that this re-brand was too close to its branding. It issued proceedings against We Love Holidays in the Intellectual Property Enterprise Court. With Gowling representing, the client vigorously defended the allegations and counterclaimed for invalidity of Skyscanner’s marks on the basis of prior rights. We Love Holidays applied to move the claim into the High Court. The matter was settled on favourable terms prior to the Case Management Conference.
Clients:
Dyson, Hasbro, International Air Transport Association, Oatly, Unilever, We Love Holidays
