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Leveraging Trademark Rights Across Borders: How to Shore Up Your Portfolio

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Our panelists from our global trademark team will discuss strategic issues in cross-border trademark disputes, prosecution, enforcement, and portfolio management, including:

Our panelists from our global trademark team will discuss strategic issues in cross-border trademark disputes, prosecution, enforcement, and portfolio management, including:<ul><li>Territorial limitations on trademark rights, including the impact of the U.S. Supreme Court’s decision in Abitron v. Hetronic on extraterritorial applications of U.S. trademark law</li></ul><ul dir="ltr"><li>The approach of the UK and EU courts to the issue of jurisdiction in relation to online trademark infringement  </li><li dir="ltr">How to design a cohesive global strategy considering: <ul dir="ltr"><li>Opposition and cancellation proceedings in jurisdictions around the world</li><li>Global portfolio management best practices </li></ul></li></ul><a href="/resources/events/230912-mofo-fall-ip-insights-series" target="_self" dir="ltr">View all sessions in the series</a>.<hr>

MoFo Fall 2023 IP Insights

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Joyce Liou co-chairs the Trademark Group and is a partner in the firm’s Intellectual Property Group. She engages in a broad intellectual property practice, with an emphasis on both IP counseling and litigation for a diverse roster of clients. Joyce has litigated numerous district court disputes involving trademark, copyright, false advertising, right of publicity, and unfair competition claims, and has secured preliminary injunctions, summary judgment rulings, and trial verdicts for her clients. In addition to federal litigation, she routinely handles proceedings before the Trademark Trial and Appeal Board, and has extensive experience with trademark clearance, prosecution, licensing, and due diligence. Joyce manages IP portfolios and provides global strategies for industry giants and startups alike, from a broad spectrum of fields, including technology, consumer goods, entertainment, pharmaceuticals, food, and agriculture.Joyce’s successes have built her reputation as a recognized leader in trademark law. In 2022 and 2023, she was shortlisted for Trademark Lawyer of the Year by Euromoney Legal Media. Joyce serves on the Legislation and Regulation Committee for the International Trademark Association. Outside of her practice, Joyce is a passionate advocate for diversity and inclusion in the greater community. She serves on the Development Committee for the National Center for Lesbian Rights, and participates in clinics to help individuals seeking U.S. naturalization or asylum on the basis of their sexual orientation or gender identity.Joyce received her J.D. cum laude from the University of Michigan Law School in 2010. While attending law school, she externed for the Honorable William H. Alsup of the U.S. District Court for the Northern District of California. She received her B.A. in economics and political science with distinction from the University of California, Berkeley in 2007.

Joyce Liou

Partner

Steven James is a Partner based in the London office of Morrison Foerster. He specialises in intellectual property disputes, and advises on the protection and exploitation of intellectual property, as well as a wide range of commercial matters.Steven practices in intellectual property, technology, and commercial law, with a focus on new technologies and innovation. His experience includes advising clients on both contentious and transactional intellectual property and commercial matters, predominantly in the tech, financial services, life sciences, retail and luxury goods, food & beverage, and media sectors. He advises on the full spectrum of IP rights, including trade marks, passing off, copyright, designs, patents and confidential information. Steven counsels clients on the development of IP and branding strategies and formulates strategic approaches for the licensing and enforcement of intellectual property rights. He also has experience of advising on commercial disputes, defamation and data protection matters.Steven has been recommended for Intellectual Property law and Technology, Media & Telecommunications Law multiple times over many years in the Legal 500 UK. He is described by clients as “an efficient, effective and an excellent, timely communicator … always on hand to provide confident and practical advice. His deep and technical knowledge of IP is unparalleled”. Steven has also been named a Trade Mark Star by Managing Intellectual Property and as a recommended individual by IAM Patent 1000.He has been awarded a Distinction in Intellectual Property Law from the University of Oxford. Steven has conducted matters before the U.K. Intellectual Property Office, the EU Intellectual Property Office, the Intellectual Property Enterprise Court, the High Court and Court of Appeal, and the Court of Justice of the European Union. Steven is a Solicitor-Advocate with rights of audience in all civil proceedings in the higher courts of England and Wales.<h4>Representative Experience</h4><ul><li>Representing Wirex Limited, one of the world’s leading cryptocurrency platforms, in its successful trade mark infringement claim and damages inquiry against Cryptocarbon Global Ltd & Others (Wirex Limited v. Cryptocarbon Global Ltd & Others ([2021] EWHC 617 (IPEC) and [2022] EWHC 1161).</li><li>Novaerus Patents Limited v Quest International (UK) Limited [2016] EWHC 95 (Ch): Represented medical technology provider Novaerus in a summary judgment claim in a complex contractual dispute about the sale of various patents and subsequent cross-licensing.</li><li>Advising World-Leading COVID Rapid Test Provider Excalibur Healthcare Services on a ground-breaking Licence and Development Agreement with Sensyne Health in respect of the use of Excalibur’s lateral flow diagnostic tests with Sensyne Health’s clinical AI software, ‘MagnifEye’.</li><li>Acting for an electrical wholesaler in relation to a passing off claim against a nationwide chain. </li><li>Acting for a software development company on a High Court Technology & Construction Court dispute with a global retail bank.</li><li>Acting for the acquirers of the iconic Crombie coat brand, and advising on its global IP portfolio.</li><li>Acting for an electrical wholesaler on a passing off action against a listed building merchants’ business.</li><li>Acting for an online fashion retail platform in respect of parallel trade mark infringement proceedings in the U.K. and United States.</li><li>Interflora Inc v Marks & Spencer plc (Case C-323/09): Acting for Interflora on a high profile trade mark infringement case relating to the use of keywords on Google’s AdWords program, which was referred to the Court of Justice of the European Union.</li><li>Orion Publishing Group Ltd v Novel Entertainment Ltd [2012] EWHC 1951 (Ch): Acting for a major commercial publisher in relation to a dispute over a royalty verification clause in a publishing agreement.</li></ul>

Steven James

Muzamil Huq represents clients in the protection and enforcement of U.S. and non-U.S. trademark matters and other IP transactions. He has significant experience counseling clients in the technology, healthcare, consumer products, entertainment, and fashion industries in connection with the clearance and registration of trademarks, management of trademark portfolios of all sizes, enforcement of valuable trademark rights, and defense of trademarks and branding.Muzamil negotiates and drafts trademark and copyright license agreements and other general commercial contracts, and advises on intellectual property aspects of corporate transactions, including due diligence. He also provides advice to clients regarding competitor false advertising issues. Muzamil counsels clients in the fields of software and technology, healthcare, consumer products, advertising, entertainment, fashion, apparel and related accessories.Muzamil is a member of INTA’s Unreal Campaign Committee. The Unreal Campaign Committee advances INTA’s consumer awareness initiative designed to educate young consumers about the importance of trademarks and brands and the dangers of counterfeit products.Muzamil earned his B.A. in media studies and studio art from Pomona College and his J.D. from Columbia University School of Law, where he was a Harlan Fiske Stone Scholar and a member of The Columbia Journal of Law & the Arts.Muzamil is admitted to practice in California and New York.<h4>Representative Experience</h4>Muzamil is trademark counsel to a number of companies representing a wide range of industries. A selection of representative clients include:<ul><li>CareDx, a leading precision medicine solutions company focused on high-value healthcare solutions for transplant patients and caregivers, relies on Muzamil to manage its international trademark portfolio, as well as enforcement efforts at the Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office and analogous foreign proceedings.</li><li>Splunk, a leader in data software, looks to Muzamil to oversee its worldwide trademark portfolio for its SPLUNK house mark and other trademarks.</li><li>Ignite, which provides an innovative platform for blockchain developers, called on Muzamil for trademark clearance and filing strategy as part of the company’s rebranding. He continues to handle the company’s international trademark portfolio and advise on adverse trademark matters.</li><li>Some of Muzamil’s additional representative clients include Cruise Automation, Origin Materials, Evo Payments International, Open Society Foundations, Sight Sciences, Health[At]Scale, Common Sense Media, and Starlight Foundation.</li></ul>

Muzamil Huq

Of Counsel

Hattie Winfield is an associate based in the London office of Morrison Foerster and is a member of the Litigation Group.Hattie advises clients on intellectual property matters and has a particular interest in all aspects of brand management. She has significant experience advising organisations in relation to trade mark infringement matters, trade mark filing and portfolio management, oppositions and cancellation actions before the UK IPO, domain name disputes, disputes relating to passing off and copyright infringement, and general commercial disputes. Hattie has a Distinction in Intellectual Property Law and Practice from the University of Oxford. She was named as a “Rising Star” by IP Stars in 2022, and was recognised as “One to Watch” in the 2023 Edition of the Best Lawyers in the United Kingdom.Hattie is qualified as a solicitor in England and Wales.<h4>Representative Experience</h4><ul><li>Representing Wirex Limited, one of the world’s leading cryptocurrency platforms, in its successful trade mark infringement claim and damages inquiry against Cryptocarbon Global Ltd & Others (Wirex Limited v. Cryptocarbon Global Ltd & Others ([2021] EWHC 617 (IPEC) and [2022] EWHC 1161).</li><li>Acting for a global fashion brand in relation to its UK intellectual property enforcement matters. </li><li>Acting for an electrical wholesaler in relation to a passing off claim against a nationwide chain. </li><li>Acting for an online fashion retail platform in respect of its trade mark filing and opposition matters. </li><li>Acting for the Defendant in Alfrank Designs Limited and Exclusive (UK) Limited [2015] EWHC 1372 (IPEC), an Inquiry as to Damages in the IPEC in respect of alleged infringement of EU and UK unregistered design rights, in which the Claimant’s claim for lost sales was partially rejected.</li><li>Advising a globally renowned high street fashion retailer in relation to an alleged campaign of copying by an online fashion retailer.</li></ul>

Leveraging Trademark Rights Across Borders: How to Shore Up Your Portfolio

12 Sep 2023