K&L Gates

Firm overview:

Full-service firm K&L Gates has a global IP practice, handling matters in the US, Australia, Asia and Europe as well as the UK. Incorporating all areas of intangible assets, the firm manages global trademark, patent and design portfolios for diverse clients. Taking on the international IP management of Europe’s largest roofing manufacturer, K&L Gates handles the clearance and prosecution for the client’s new products, including 250 trademark applications worldwide, and multiple cancellations before the EU and UK Intellectual Property Offices (IPOs). For contentious matters, K&L Gates’ previous experience includes advising a sporting goods brand on trademarks, design and copyright issues, including litigation before the Intellectual Property Enterprise Court (IPEC), UK High Court, and the EU Court of Justice.

Team overview:

Two partners in London have significant global and UK trademarks experience. Arthur Artinian is a member of the global IP procurement, IP litigation, and technology transactions practice groups and advises on complex cross-border intellectual property counselling, prosecution, litigation, enforcement, and transactional matters for household name clients such as the Aman Group, Nike, Coty and Gucci.

Key matters:

• K&L Gates represented Aman Group in an opposition against the mark ‘Atmaspa’ registered in January 2023. The client, a multinational hospitality company, relied on its previously registered trademark ‘Atma’, applied for in September 2022, arguing the marks were similar, and the addition of ‘spa’ was descriptive of the goods relating to spa services. The UKIPO agreed that ‘spa’ was non-distinctive. Aman Group succeeded in its opposition and was awarded costs towards the legal proceedings.
• Arthur Artinian is advising Nike on trademark, design, trade dress, copyright, passing off, unfair competition, and customs enforcement matters in the EU and UK, including acting for the Nike, Converse and Jordan business units in litigation and enforcement at the UK IPEC, the UK High Court, EUIPO Boards of Appeal, EU General Court and Court of Justice.
• K&L Gates advises Coty on its $600m partnership with Kylie Jenner and other celebrity talent deals for the client’s consumer, luxury and professional beauty businesses, including endorsement and licensing deals with Kim Kardashian, Lili Reinhart, Katy Perry, David Beckham and Vera Wang, and complex global branding, collaboration, product launch and licensing projects for the Covergirl, Rimmel, Sally Hansen, Max Factor, Burberry, Prada, Calvin Klein, Hugo Boss, Marc Jacobs, Lancaster, Tiffany & Co and Davidoff brands.
• Arthur Artinian is representing Gucci in global trademark, design, copyright, passing off, unfair competition and enforcement matters, and advising on a range of international clearance, licensing, marketing, digital and collaboration projects, including numerous high-profile partnerships and collaborations with celebrities, musicians, artists, designers, film makers, chefs, influencers, museums, and digital partners. The firm also advises on the brand’s market-leading metaverse and NFT partnerships and initiatives.
• Simon Casinader advises Luxottica on its UK trademark and design matters, including enforcement and opposition matters relating to the iconic Ray Ban, Oakley, Aviator and Persol eyewear brands.

Clients:

Aman Group, Coty, General Mills, Gucci, Luxottica, Nike, Thomas Pink