Boult Wade Tennant
Service » Trade marks

The Boult trade mark team has market-leading experience before the UK Intellectual Property Office, the European Union Intellectual Property Office (EUIPO), the World Intellectual Property Organisation (WIPO), and foreign registries, in overcoming objections, successfully prosecuting and defending oppositions and appeals, and in revocation and invalidity work. The team has years of experience acting before the German Patent and Trade Mark Office (DPMA), the German courts, the Spanish Patent and Trademark Office (SPTO), the Spanish Civil and Commercial Courts, and similarly at the General Court, CJEU. We help in securing registrations for our clients, sometimes for difficult or unusual marks.

Given that it is better not to have a costly dispute when it can be avoided, a large part of the team’s work is in the field of dispute avoidance and dispute resolution. We are highly skilled and experienced negotiators in trade mark law and trade mark registration, understanding the likely endgame and using that knowledge to leverage good outcomes for our clients. We have particular expertise in the creation and management of large portfolios, searching and watching, domain name recovery, and trading standards and customs work. We understand that a business strategy may include expanding into new territories overseas and a client may require a local representative. In addition to our offices in the UK, Germany and Spain, we have developed strong relationships with local IP firms throughout the world.

 

What we do

Identify, clear and protect
  • We help our clients identify which trade marks to file, what their key goods and services are, and the countries to file them in, before agreeing a filing strategy to protect their brands.
  • We are equipped to act ourselves in the UK and Germany, as well as before the EUIPO. Outside of these territories we instruct local attorneys on our clients’ behalf using our strong relationships with firms around the world to secure professional, high quality representation at cost-effective price points.
  • New marks must be clear for use ahead of launch: our trade mark team is highly experienced in clearance searching, advising on any risks clients may face from third parties in their use and registration of a trade mark, and if possible how to mitigate those risks.
  • We are adept at drafting specifications of goods and services that cover core business interests and which also give the best future-proofing we can to these registrations.
  • We provide specialised advice on unconventional trade marks such as colour marks, shapes, moving images and sounds.
Secure, assert and preserve
  • Once an application is filed, we work to secure its registration and overcome any objections that are raised at the examination stage or by third parties in oppositions.
  • We are trusted to maintain trade mark portfolios for our clients, attending to the renewal of registrations on their behalf. Our skilled records team maintains the portfolio and access to it for clients is provided via the BoultView platform.
  • We cover day-to-day portfolio maintenance, including the drafting and recording of assignments, changes of name and address, and licences.
  • We can also conduct a thorough audit of a client’s portfolio, informing them of any gaps in their protection and possible renewals savings.
Market, investigation and intelligence
  • We facilitate investigations into third parties, e.g. to establish whether they are using a registered mark or the extent of any infringing activities. We also assist with due diligence requests during mergers and acquisitions.
Enforce and defend
  • We set up trade mark watching services and online brand monitoring to alert clients at an early stage to similar trade mark applications and infringing activity, and we’re involved in triaging and advising on the results as much or as little as our clients want.
  • At an IPO level, we prepare and file oppositions, invalidity actions, and revocation actions, to enforce our clients’ trade marks against third parties. We also defend them from the same actions when they are taken by third parties.
  • When needed, we send cease and desist letters to third parties that are found to be infringing our clients’ trade marks. Should court proceedings be required, we make use of our extensive relationships with solicitors and barristers to ensure excellent representation for our clients.
  • We also assist with customs detentions, domain name disputes, and company name disputes.
Dispute resolution
  • We try to put our clients in a strong enough position to be able to achieve a good early-stage outcome without the need for a long dispute. We discuss desired outcomes with clients extensively, roadmap how this can be done, and identify the merits of their position.
  • We draft and negotiate the contents of letters of consent and undertakings, as well as coexistence agreements, so that our clients have an enforceable agreement with third parties when a dispute is settled.

 

 

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