John has two significant roles in the firm. He is the firm’s current Managing Partner and Head of the firm’s highly regarded and growing Trade Mark and Domain Names Group. He is a Chartered Trade Mark Attorney and a European Trade Mark Attorney.
John is an acknowledged prosecution expert. He has substantial expertise in relation to Trade Mark portfolio reviews, rebranding programmes and advice on global protection and enforcement strategies. He specialises in providing global strategy advice. John acts for many household names, from major UK retailers to food manufacturers.
John also has particular experience in Trade Marks Registry hearings and regularly takes hearings in the prosecution stages of proceedings for clients of the firm. He has an extensive background of contentious proceedings before the UKIPO, the EUIPO and before Registries internationally and is a particular specialist in Community Trade Mark procedure and opposition proceedings. Recently he has provided litigation support to clients in appeals to the Higher Courts of the EU, including the ECJ.
John frequently acts in counterfeit cases with trading standards and also supports clients in cases involving HM Revenue and Customs.
John acts on a pro bono basis for the charity that provides emotional support, filing UK and Madrid applications on its behalf. He also drafted an agreement between the charity and a subsidiary charity.
- Assisted a manufacturer of specialised machines used in road building in its application for a 3D device mark, successfully overcoming objections by filing evidence of acquired distinctiveness, evidence form the marketplace and testimonials from experts.
- Advised a tyre manufacturing client on a domain name dispute, successfully securing a commercially vital domain name for the client.
- Big portfolio work for the major retail clients of the firm.
INTA’s 40th Annual Meeting, Seattle, US, May 2018
INTA 140th Annual Meeting
INTA Annual Conference, Barcelona, Spain, May 2017
INTA 138th Annual Meeting, Florida, May 2016
INTA annual conference, San Diego, May 2015
INTA annual conference, Hong Kong, May 2014
INTA annual conference, Dallas, May 2013
INTA annual conference, Washington DC, May 2012
Trade Mark and Domain Names
70 Gray's Inn Road
Sectors and practice areas
- Financial services
- Food and drink
- Major UK retailers
- Brand selection and clearance
- Enforcement and advisory work
- International trade mark strategy
- Litigation support
- Portfolio management
- Trade Mark hearings
- Chartered Trade Mark Attorney
- European Trade Mark Attorney
- BSc (Hons) Chemistry, University of Southampton
'An abundant source of insight on registry hearings and a rare trademark attorney with anti-counterfeiting expertise, he is a versatile operator who can be counted on in contentious circumstances.' WTR 1000 Leading Trademark Professionals, 2018
Recommended in WTR 1000 Leading Trademark Professionals, 2017
Recognised as a leading practioner in Euromoney's Expert Guide, Trade Marks, 2016
Recommended in Managing Intellectual Property IP Stars Handbook, 2016
‘Managing partner and head of trademark and domains John Wallace is someone you can turn to when you need to draw a line in the sand.’ WTR 1000, 2016 (Silver, Individuals: prosecution and strategy)
Recommended in Managing Intellectual Property IP Stars Handbook, 2015
‘Leading the group is John Wallace, who consistently delivers “clear and informative analysis.”' WTR 1000, 2015 (Silver, Individuals: prosecution and strategy)
Recommended in Managing Intellectual Property IP Stars Handbook, 2014
Legal 500, 2014 (Recommended, Trade Mark Attorneys)
“Leading the charge is trademark head John Wallace, a foremost authority on prosecution.” WTR 1000, 2014
‘Emma Pitcher, Tony Pluckrose and John Wallace are singled out as “excellent practitioners to recommend.”’ WTR 1000, 2013
‘John Wallace is “very knowledgeable, explains things clearly, and is always prepared to go the extra mile.”’ Legal 500, 2011 (Recommended, Trade Mark Attorneys)
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