International Intellectual Property

Guide Locations


International Intellectual Property

Published August 2019

Author

Hiroshi Sheraton

Firm: Baker & McKenzie LLP
Country: United Kingdom - England

Practice Area: Trademark

  • 100 New Bridge Street
    London
    EC4V 6JA

Market disruption is an accepted reality for business, as new competition and technologies drive the pace of change faster than ever before. Our clients want lawyers who are prepared to lead, differentiate and adapt in a constantly changing world. They want advisers who are curious about the world, and embrace collaboration and candour.

As the original global law firm, we bring the right talent to every client issue, regardless of where the client is. We partner with our clients to deliver solutions in the world's largest economies as well as newly opening markets.

We are global citizens, industry savvy, diverse and have a thirst for innovation. Our strength is our ability to adopt a new type of thinking and use cutting-edge legal technologies to help clients overcome the challenges of competing in today's new world economic order.

Managing and protecting intellectual property has become increasingly complex for global companies, which often have huge IP portfolios and operations in multiple jurisdictions with varied IP laws and levels of enforcement. Rapid technological advancements have enabled infringers to become more sophisticated, and the rise of intellectual property as a main driver of mergers and acquisitions has made developing strategies to protect these assets even more important.

Since 1962, we have helped the world's leading multinational companies in all aspects of the acquisition, protection, enforcement and exploitation of their IP rights. With nearly 400 intellectual property lawyers in 40 countries, we cover the full scope of IP services in more jurisdictions than any other firm. Our global coverage, high-quality work and commitment to client service are reflected in the recognition we receive within the legal industry. Since 2009, our practice has been ranked Band 1 by Chambers Global.

With expertise in the automotive, luxury and fashion, fast-moving consumer goods, financial services, technology, media and entertainment, manufacturing, and pharmaceuticals, life sciences and healthcare industries, we advise clients on brand management, brand enforcement, patent litigation, patent prosecution, copyright, IP litigation, trade secrets, IP transactions, tax and IP advisory, and marketing, advertising and promotions. Based on our long experience in the field, we approach IP management as a strategic issue and have developed the people, processes and technologies to serve as a one-stop shop for protecting the IP assets of global businesses.

Hiroshi Sheraton's practice covers all aspects of intellectual property law with a particular emphasis on contentious patent and trade mark matters and life sciences. Much of his work is cross-border in nature. He regularly co-ordinates pan-European and global IP litigation and advises clients on international IP strategies for patent litigation and brand protection. He represents clients in the UKIPO, EPO, OHIM, the English Courts and the CJEU. He has experience of IP matters across Europe and has litigated IP cases in Germany, France, Spain, Italy, the Netherlands, Belgium, Austria, Ireland, Northern Ireland and Luxembourg, the USA and Asia Pacific.

Although he has a first degree in biochemistry and molecular biology, he covers all areas of technology from pharmaceuticals/biotech products and agrochemicals to electronics and software.

Practice Focus

Hiroshi is particularly involved at the interface between IP law and other legal disciplines such as EU competition law. He is currently involved in one of the first "reverse payment" patent settlement cases pending before the European Commission, and has been involved in some of the leading cases concerning "Euro-defences" to IP infringement and abusive assertion of IP rights. He also has experience advising on pharmaceutical regulatory issues where they interact with traditional IP rights such as matters concerning Supplementary Protection Certificates, data exclusivity and clinical trials. In the brand protection arena, Hiroshi assists several household name brands on enforcement and portfolio management issues especially in highly regulated industries such as alcohol beverages and online gaming.

Representative Legal Matters

             Represented the CibaVision division of Novartis in global patent litigation against Johnson & Johnson concerning extended-wear contact lenses.

             Acted for Novartis Vaccines in multijurisdictional patent litigation against GSK Biologicals.

             Advised a market leading manufacturer in patent litigation concerning gel-foam polymer technology in several jurisdictions.

             Representing The Absolut Company in brand enforcement matters, including in English High Court proceedings.

             Representing a pharmaceutical company in defence of an allegation of breach of competition law in connection with a patent settlement agreement.

             Acting for Document Security Systems in its patent case brought against the European Central Bank in proceedings across Europe relating to anti-counterfeiting technology.

Professional Associations and Memberships

             Intellectual Property Association – Member

             Institute of Trade Mark Attorneys (ITMA) – Member

             Law Society of England & Wales – Member

             Chartered Institute of Patent Attorneys – Member

Brand Enforcement

Counterfeiting is a global problem that introduces unsafe and ineffective products into the marketplace while costing governments and businesses lost tax revenues, income and jobs. Counterfeiters are also a major problem for our clients, resulting in lost sales, markets flooded with poor quality imitations, health and safety risks to consumers who purchase counterfeits, and tarnishment of the brand.

We act in first instance an appellate trademark, design, copyright, passing off and unfair competition litigation and ADR procedures.

We manage global, regional and local offline and online brand enforcement programmes and investigations.

We manage global, regional and local trade mark, design and copyright customs recordal programmes.

We also recover domain names in all the major domain name dispute resolution forums.

Brand Management

We are the largest IP brand management practice in the world, overseeing some of the world's biggest portfolios for more than 200 multinational companies in industries including consumer products, retail, pharmaceuticals, food, electronic goods, media, entertainment, information technology and communications.

We prosecute, manage and advise on trademark, design and copyright portfolios.

In addition, we advise and lead brand assignments and licensing, acquisitions and disposals, due diligence, audits and franchising.

We act on trademark and design oppositions and cancellations, and trademark, design, copyright, passing off, domain name and unfair competition litigation and enforcement programmes.

We further advise on complex brand strategy questions.

Copyright & Digital Media

Evolving copyright laws give rise to legal challenges that can carry significant commercial implications. The constant stream of copyright cases highlights the struggle for legislation to keep up with the pace of technological advances — as well as the tension between rights holders and industry players.

We are able to lead content-related deals and licensing transactions in all media and technologies.

We act at first instance and on appeal on copyright and related rights disputes in the courts, rate setting tribunals, levy disputes and other ADR procedures.

We also advise on complex copyright, moral rights and related rights questions associated with product design, content production and distribution, transactions and disputes.

We advise on copyright and related rights legislation and regulatory reform, including legislative drafting.

IP Disputes

With well-regarded intellectual property litigators and dispute resolution professionals in more than 30 countries, we have the global presence and capability to provide you with far-reaching legal support. Our lawyers work collaboratively across jurisdictions, applying proven strategies and know-how as well as providing a single point of contact to help you efficiently resolve the most complex multijurisdictional intellectual property disputes.

We lead strategic copyright, trade mark and passing off, patent, designs, trade secrets / confidence and unfair competition litigation.

We act in trademark, design, copyright, passing off and unfair competition arbitration and other ADR procedures.

We are active in managing global, regional and local offline and online IP enforcement programmes and investigations.

We additionally recover domain names in all the major domain name dispute resolution forums.

We're the world's largest full service IP litigation practice, which means that we bring together in-market IP expertise at the local level, with cross-border experience and perspective; moreover, we are consistently rated as one of the top IP practices globally, with more top-tier IP litigation practices in more places than any other firm. No one has been doing IP litigation globally longer or in more countries than we have. We bring that perspective to every case.

Meanwhile, we have particular expertise on IP litigation in the digital media, computer software, technology, media, pharma and luxury and fashion sectors, and we offer innovative fixed-fee and contingency pricing models. In some jurisdictions, we do all IP litigation on fixed fees. We have:

             Established landlord liability for IP infringement principles in China

             Acted in Landmark L'Oreal V Bellure Trademark Litigation

             Acted in landmark French copyright case related to the seminal children's story, Le Petit Prince

             We run global and regional IP enforcement programmes for major Hollywood studios, luxury and fashion brands, pharma companies and technology leaders

             We acted for a major digital music retailer on a series of over 100 simultaneous moral rights claims brought against it in Brazil

             Top Tier IP Firm APAC, EMEA and LatAm – Chambers

             Recommended Firm – World Trademark Review WTR1000 & IAM Patent 1000

"They do a good job of cultivating some really good people, and we're able to reap the benefits of that. We wouldn't be using them all over the place if that weren't true!" Client quote, Chambers


Share this page


Awards

Since 2010, the Global Law Experts annual awards have been celebrating excellence, innovation and performance across the legal communities from around the world.