We have the know-how and creativity to ensure that your valuable brand assets are looked after and commercialised to their fullest degree. We can offer trade mark advice and expertise as well as act for you wherever you are based, deploying our extensive international experience and trusted global connections.
We have market-leading experience before the UK Registry, the European Union Intellectual Property Office (EUIPO) and foreign registries, in overcoming objections, successfully prosecuting and defending oppositions, and appeals, and in revocation and invalidity work. A large part of our work is in the field of dispute avoidance and dispute resolution. We are highly skilled and experienced negotiators in trade mark law, obtaining excellent outcomes for our clients. We have particular expertise in the management of large portfolios; searching and watching; domain name recovery; and trading standards and customs work.
We understand that your business strategy may include expanding into new overseas territories. We have developed strong relationships with local firms in Europe, China, the Far East, India, South America and many more, giving you peace of mind that your international patents will only be handled by the highest-quality foreign attorneys, hand-selected by us for their values and reputation.
Much of our work for clients is in helping them avoid disputes via intelligent brand selection and in our practical approach to conflict and potential conflict.
We believe that the early identification and resolution of potential disputes is better for clients in the long run than litigating later, whether before the UKIPO, the EUIPO, international registries or the courts. When we have notice of a conflict, we work hard to resolve it before formal proceedings are commenced. We do our utmost to deliver favourable outcomes for our clients. We are highly experienced, astute negotiators. We frequently draft settlement agreements and undertakings at short notice, which is critical when time is of the essence.
We regularly work before the UK Registry and before the EUIPO, successfully prosecuting and defending oppositions and appeals. We have some of the UK`s leading practitioners who have been – and continue to be – engaged in high-profile cases involving well-known brands such as Lambretta, TDK, Harman and The Royal Shakespeare Company. The group is also highly experienced in providing litigation support to clients including before the UK High Court; the England and Wales Intellectual Property Enterprise Court; appeals to the highest level at the Court of Justice of the European Union where several matters are pending for our clients; and before foreign courts.
Group members are also highly experienced in defending and prosecuting revocation actions, invalidity actions and rectification and restitution actions at the UKIPO and before the EUIPO and internationally. The preparation of evidence in inter partes proceedings is particularly important for clients and our group has unrivalled experience in this and in achieving favourable results for clients in difficult cases.
Our attorneys are highly experienced in the field of creating trade marks for domain names, and are engaged in many ongoing cases. We frequently achieve excellent results for our clients, and recognise the need for discretion, which can be important when unwanted publicity would be damaging. Sometimes we need to begin formal proceedings via one of the dispute resolution procedures and we are highly experienced in ICANN’s Uniform Dispute Resolution Policy (UDRP) and Nominet’s Dispute Resolution Service Policy (DRS) as well as various national naming authorities’ dispute resolution procedures.
The effective enforcement of intellectual property rights is crucial to protecting a business and reputation. The Trade Mark Group is regularly instructed in a number of high value, potentially high profile and ground-breaking cases relating to trade mark infringement. In our opinion, counterfeiting is one of the most rapidly expanding economic crimes and is an issue for trade mark owners and their ability to capitalise on their investment. Aside from lost revenue, counterfeiting can erode consumer confidence and, in the worst cases, can pose risks to the health and safety of consumers. We have extensive experience of handling anti-counterfeiting matters and can devise cost-effective strategies, tailored to your requirements, which are designed to catch counterfeits at the EU border and combat perpetrators within the market. Together with a network of trusted associates, we can support you in a strategy to combat counterfeiting across the whole of the EU and worldwide.
We work with Trading Standards and the Police across the UK to target internally-traded counterfeit goods and assist the authorities in relation to specific investigations. We act as part of a team of advisers to obtain interim relief, including search and seizure orders. We also issue witness statements for use as evidence in criminal prosecutions. In conjunction with overseas associates, we also coordinate similar actions involving enforcement agencies in other EU countries and internationally.
The group often instructs Counsel and solicitors in the UK, EU and worldwide in assisting with contentious matters for clients and has excellent relationships with numerous specialist IP solicitors and Counsel in the UK and overseas.
Filing and prosecution
Our team of trade mark attorneys is highly experienced in the filing and the prosecution of trade mark applications. We are responsible for nearly 30,000 applications and registrations on the UK Register alone. As a result, our attorneys are skilled in overcoming objections and successfully prosecuting applications through to registration before the UK Registry and at the EUIPO.
Our attorneys handle their own hearings at the UK Intellectual Property Office (UKIPO) in prosecution cases where prima facie registrability is the issue. We have a depth of experience which helps us achieve excellent results for our clients.
The group has particular experience of securing, defending and attacking registrations for marks that are considered difficult to register. They handle a high volume of prosecutions, oppositions and other registry actions at all levels within national and international registries and courts. This necessarily means that our attorneys are completely up-to-date with the very latest trade mark law and registry procedures that are evolving almost daily.
We have a tried, tested and trusted network of independent firms which we use for filing and prosecution work around the world. The fact that we are not tied to any of them means that we can always select the best person for the job in any territory and can take an objective view of the advice and work product provided to ensure a quality which meets our own high standards.
Licences and assignments
Details are important, especially when it comes to licensing or assigning trade mark rights. Once a decision is made to choose to license or assign a trade mark, there are many decisions to be made and you will need advisors who can provide the guidance and advice to ensure that your rights remain valid and you have a strategy to enforce these rights. Our Trade Mark Group has a pre-eminent reputation for such work. We help clients through every part of the process, from one initial transaction through to recording your assignment or license against existing trade mark registrations.
Searches are a vital part of a prepared and well-executed brand strategy. They are an effective tool in protecting you from wasted time and expense. We understand that detecting conflicting trade marks before costs are incurred in going to market is not the only benefit. Early searches can save the irretrievable damage done to reputation and brand image when products are subsequently withdrawn or modified. We always make sure that our searching strategies fit with our clients’ needs and budgets.
We believe that the ability to conduct efficient and cost-effective searches for clients is key to their needs. Therefore we have an in-house Search department, staffed by professional searchers who have access to highly specialised commercial databases. The accessibility of our Search department is critical when we are instructed on large re-branding exercises or for pre-launch clearance searches which have tight turnaround times.
Our attorneys are well-placed to carry out due diligence investigations over a wide range of technologies and for all types of businesses. Our attorneys are regularly asked to review portfolios in preparation for acquisitions, mergers, fundings and re-financings.
A specialist activity in which we have become increasingly involved is the provision of IP due diligence reports for inclusion in company prospectus documentation for listings on the London Stock Exchange. We can assist in determining a reasonable scope for the report by indicating the areas which should be investigated and by considering the relevance of different IP rights in relation to the actual commercial activities of the business concerned. We are also experienced at contributing to stock market flotation reports. Characteristic of these exercises is that they need to be done to a budget and generally within very short time frames. Boult Wade Tennant is geared up to meet these requirements.
Our attorneys understand the commercial value of a well-managed IP portfolio. We work with clients to develop patent and trade mark portfolios, advising on filing or prosecution strategies and foreign filing programmes. We pro-actively review existing portfolios to ensure that they are up-to-date and offer the maximum value possible.
While we obviously maintain a comprehensive record of all the patents or trade marks for which we are responsible, we also offer a docketing service of cases handled by third parties, so that clients can be confident of the integrity of the data before them. Flexible reporting allows clients to see their portfolio in a variety of different formats, while BoultView provides secure, searchable online access to your cases within our records.
The reliable maintenance of our clients’ hard-earned patent or trade mark portfolio is crucial. We ensure that annual fee payments are made on time and accurately no matter what the portfolio size. Clients are kept up to date by the sending of payment reminders, while budgetary forecasts are available on request. An AutoPay option is also available. We use our buying power to secure cost reductions wherever possible and where details of the working of a patent or trade mark must be submitted, our dedicated team will also attend to that.