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Trade marks go through various stages in their lifecycle. New marks must be cleared for use; then protected by means of registration; then enforced against infringing uses by others. The legal framework can be complex to navigate, and we are here to assist at each stage.
Clearing new marks for use and registration can be a challenge for clients, given the sheer number of existing registered and unregistered marks. It is important to have the right searching strategies in place and to take a pragmatic approach where possible to try to find a way forwards.
Securing registered protection can be a relatively simple process for a “clear” mark, but even in those circumstances it is important we fully understand our clients’ business to ensure strong and enforceable protection, particularly for innovative products. We are seeing an increasing number of oppositions interrupting the registration process, with robust advice necessary to either settle or win a dispute.
Even once a trade mark is registered, that is not the end of the story; after time, the trade mark might be challenged on non-use grounds, new marks might be launched in respect of new products, and/or in new territories, others may seek to enter the market with a conflicting trade mark. Policing the marketplace to deal with infringements at an early stage is increasingly critical.
The trade mark team
Our firm has market-leading experience before the UK Intellectual Property Office (UKIPO), the European Union Intellectual Property Office (EUIPO), the World Intellectual Property Office (WIPO) and foreign registries, in overcoming objections, successfully prosecuting and defending oppositions and appeals, and in revocation and invalidity work. Members of the team can also litigate at the General Court, CJEU.
A large part of our work is in the field of dispute avoidance and dispute resolution. Our team members are highly skilled and experienced negotiators in trade mark law and trade mark registration, and we obtain excellent outcomes for our clients. We have expertise in the management of large portfolios, searching and watching, domain name recovery, and trading standards and customs seizures.
Our experience covers a huge range of industries, and the vast variety of marks and domain names required by our clients within them. We are equipped to support clients on everything from large-scale portfolios of traditional marks in sectors such as retail and manufacturing, to the most complex of products in the digital and technology space where trade mark precedent may not even yet exist. We work for household names and thought leaders, and we have been involved with ground breaking trade mark cases for protection of non-traditional trade marks.
We understand that a client’s business strategy may include expanding into new territories overseas and a client might require a local representative. In addition to our offices in the UK, Germany as well as Boult Wade, S.L. in Spain, we have developed strong relationships with local IP firms throughout the world.
“We like understanding our clients’ products so that we can describe them to the IPOs clearly and simply, and so that we can piece together a strong network of rights without it costing the earth.”
SPEL provides quality products and systems for the storage, attenuation, monitoring, treatment and utilisation of surface water. The company is known for its high performance SPEL fuel/oil separators that meet the stringent European standard BS EN 858. These separators are exported worldwide.
SPEL is famed for its specific, blue-coloured water tanks, which are synonymous with its brand – being present on its products and across its website and physical branding. In recent times, its brand reputation was at risk from others’ use of similar blue colours. SPEL needed to be in a position to enforce its market position.
Boult worked with SPEL to file a trade mark for its specific shade of blue, the Pantone 320c. Obtaining a colour mark is a difficult and challenging process. The filing proved that SPEL’s brand was linked with its choice of colour for its product and secures the brand from infringement.
Trade marks go through various stages in their lifecycle. New marks must be cleared for use; then protected by means of registration; then enforced against infringing uses by others. The legal framework can be complex to navigate, and we are here to assist at each stage.
Clearing new marks for use and registration can be a challenge for clients, given the sheer number of existing registered and unregistered marks. It is important to have the right searching strategies in place and to take a pragmatic approach where possible to try to find a way forwards.
Securing registered protection can be a relatively simple process for a “clear” mark, but even in those circumstances it is important we fully understand our clients’ business to ensure strong and enforceable protection, particularly for innovative products. We are seeing an increasing number of oppositions interrupting the registration process, with robust advice necessary to either settle or win a dispute.
Even once a trade mark is registered, that is not the end of the story; after time, the trade mark might be challenged on non-use grounds, new marks might be launched in respect of new products, and/or in new territories, others may seek to enter the market with a conflicting trade mark. Policing the marketplace to deal with infringements at an early stage is increasingly critical.
The trade mark team
Our firm has market-leading experience before the UK Intellectual Property Office (UKIPO), the European Union Intellectual Property Office (EUIPO), the World Intellectual Property Office (WIPO) and foreign registries, in overcoming objections, successfully prosecuting and defending oppositions and appeals, and in revocation and invalidity work. Members of the team can also litigate at the General Court, CJEU.
A large part of our work is in the field of dispute avoidance and dispute resolution. Our team members are highly skilled and experienced negotiators in trade mark law and trade mark registration, and we obtain excellent outcomes for our clients. We have expertise in the management of large portfolios, searching and watching, domain name recovery, and trading standards and customs seizures.
Our experience covers a huge range of industries, and the vast variety of marks and domain names required by our clients within them. We are equipped to support clients on everything from large-scale portfolios of traditional marks in sectors such as retail and manufacturing, to the most complex of products in the digital and technology space where trade mark precedent may not even yet exist. We work for household names and thought leaders, and we have been involved with ground breaking trade mark cases for protection of non-traditional trade marks.
We understand that a client’s business strategy may include expanding into new territories overseas and a client might require a local representative. In addition to our offices in the UK, Germany as well as Boult Wade, S.L. in Spain, we have developed strong relationships with local IP firms throughout the world.
What sets us apart
Our very highly regarded team includes leading specialists in their fields, with in-depth experience in a wide range of sectors and industries. Whatever sphere they operate in, our specialist advisors in the UK and in Frankfurt, Munich and Madrid offer our clients insight and added value. We pride ourselves on being ahead of the game.
Our team are adept at supporting clients in securing trade marks for products where trade mark precedent may not yet exist – such as for NFTs, the Metaverse, and AI-led products. We work closely with our clients to understand, interpret and describe the novelty of even the most complex and cutting-edge digital products. We can then find the language to secure them protection within existing trade mark registry frameworks. We have also achieved marks for some of the most interesting, unconventional trade marks in recent times, from colours to sounds, to water-based art.
Above all, we pride ourselves on delivering consistent, informed and concise advice through down-to-earth and approachable legal experts. We ensure that all levels of our team are invested in a client’s brand and business, and bring an enthusiasm to all areas of our work to suggest novel solutions to trade mark queries.
We are thought leaders, being active and vocal members of a variety of national and international industry bodies, such as the International Trade Mark Association (INTA), the American Bar Association (ABA), the Chartered Institute of Trade Mark Attorneys (CITMA), the European Communities Trade Mark Association (ECTA), Marques, the German Chamber of Patent Attorneys, the German Association for the Protection of Intellectual Property (GRUR) and the Madrid Bar Association.
