Dispute Resolution


Dehns Dispute Resolution Group provides a fully integrated and strategic approach to IP dispute resolution in Europe, as we are able to bring together experienced solicitors and patent/trade mark attorneys (both UK and German) in a single legal team. We have and can, conduct litigation at all levels of the UK courts (Intellectual Property Enterprise Court, High Court, Patents Court, Court of Appeal and Supreme Court), the Court of Justice of the European Union (including the General Court) the UK Intellectual Property Office, together with the German Federal Court (for nullity proceedings), the European Patent Office as well as the EU Intellectual Property Office (dealing with trade mark and design oppositions cancellation actions and invalidity actions ).

Our team boasts the largest European Patent Office opposition and appeals practice in the UK, with more than 400 live cases at any one time. Our litigation team is headed by Paul Harris (a solicitor with more than 35 years’ experience of all types of IP disputes), and includes seasoned, qualified Patent Attorney Litigators. The Group has the backing of the technical and legal expertise of over 70 patent and trade mark attorneys.

This large and diverse team means that we understand the different approaches taken by these tribunals, both legally and procedurally, and accordingly, how best to co-ordinate related litigation and opposition proceedings.

Our goal is to provide clients with, strategic and pragmatic advice, in order to identify the most optimal, cost-effective approach to resolve any type of IP dispute. Having offices in several European countries, we are able to identify which jurisdiction would be appropriate in specific circumstances, and to handle cross-border disputes, as well as assisting international associates with coordinating multi-jurisdiction disputes.


What we do

In addition to disputes relating purely to patents, trade marks/passing off, copyright and designs (registered and unregistered), the team also deals with trade secrets/breach of confidentiality, licensing/IP agreement disputes, ownership/inventorship entitlement disputes, complaints before the Company Names Tribunal, as well as other facets of IP which are an adjunct to many disputes (including jurisdiction challenges and the like).

 

Our experience

Our team have been entrusted with the IP litigation for major clients such as Stanley, Black & Decker, Baker Hughes, and Freyssinet. Most recently, Paul acted in the patent case  Icescape Ltd v Ice-World International BV and ors ([2017] EWHC 42 (Pat) and [2018] EWCA Civ 2219), the first case to apply the newly-introduced doctrine of equivalents, as well as The Black & Decker Corporation v Dvize BV ([2017] EWHC 3387 (Ch)), a trade mark infringement action with a jurisdiction challenge.

In addition, to acting for large, multi-national organisations, we are able to conduct cases cost-effectively for smaller clients. Uniquely, we are experienced in doing so via third-party funding, which enables suitable cases to be brought against well-resourced defendants.

We feel we must be doing something right as our clients have given us praise for the work we have done for them: 

“Solicitor Paul Harris is a senior member of the litigation team, with the skill to take over and turn around cases in which adverse decisions have been handed down for other firms.” World Trademark Review 1000, 2021

‘All-sector solicitor Paul Harris is a “thoroughly straightforward person who manages to get right into the issues that need to be addressed – he responds quickly, works within budgets and is always easy to understand”.’ Client Testimonial, IAM Patent 1000 (Bronze) for Patent Litigation – 2020

“Dehns is particularly recommended for providing litigation support for worldwide infringement conflicts through its well-regarded litigation practice”. Legal 500, 2018


EPO Oppositions and Appeals

Over recent years, Dehns has consistently been the highest ranked firm in the UK in terms of number of EPO oppositions; it is involved in over 3% of the total number each year. This level of experience means that Dehns is highly regarded for its Oppositions work, as is highlighted by the numerous accolades in recent years by the leading IP and legal directories, for example:

"Dehns is particularly recommended for handling European patent opposition and appeals" - Legal 500

"Chris Davies is an excellent attorney for contentious issues," says a client. Adrian Samuels is "pragmatic and skilled at oppositions" - IP Stars

Trade Marks

Our Trade Mark team has significant experience in handling and managing Trade Mark disputes and in the conduct of Trade Mark oppositions and cancellation actions around the world. Our UK/Germany Trade Mark team has handled numerous oppositions and cancellation actions before the UKIPO and EUIPO, and our German office continues to conduct EUIPO proceedings after Brexit. Our UK team also continues to handle EUIPO proceedings that were on-going at the time of Brexit.

The majority of Trade Mark disputes are settled by negotiation between the parties and our Trade Mark team has extensive experience in negotiating pragmatic settlements.

 

 

The Team

Paul Harris
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Rob Jackson
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Chris Davies
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Jennifer Waters
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Laura Ramsay
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Adam Taylor
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Alex Gittins
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Tim Wilson
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Annabel Beacham
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James Hull
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Adrian Samuels
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Andrew Chiva
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Katherine Mabey
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Neil Campbell
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Thomas Kudlek
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Roberto Calamita
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