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Thursday, 3 February 2011

More trade mark practice laid bare

This Kat has been reviewing Amanda Michaels' (and Andrew Norris') book "A practical approach to Trade Mark Law". Already in its fourth edition the book offers 417 pages of UK trade mark law for the reader's delectation. In earlier editions called "A Practical Guide" the book is now part of OUP's 'A Practical Approach' series, which explains the change of title. The book's author Amanda Michaels is a barrister, who is, inter alia, known for her trade mark expertise. She is also an Appointed Person hearing appeals from the UKIPO. Contributing author Andrew Norris is also a barrister as well as an IP tutor - and all this knowledge and practical experience is reflected in the clear layout of the book and its non-fussy writing style.

In its 9 chapters the book covers the major trade mark law issues in a logical order: information about the trade mark system and the functions of trade marks in Chapter 1 is followed by a discussion of registrability in Chapter 2 and relative grounds of refusal in Chapter 3. Chapter 4 covers the procedure before the UKIPO in some detail as well as the procedure before OHIM and it also includes a brief overview of the Paris Convention, TRIPS and the Madrid Protocol. The book does not however discuss the Madrid System in detail. Chapter 5 sets out revocation and invalidity procedures before the UK IPO and OHIM, Chapter 6 informs the reader about the assignment and licensing of trade marks. Chapter 7 explains the UK provisions relating to trade mark infringement and the relevant defences. Chapter 8 is a definite highlight of the book with its precise and logical explanation of passing off, covering everything from the "classic form of passing off" as defined in Jif Lemon to Spalding v Gamage, as well as perennial issues such as "foreign","residual" and "shared" goodwill, celebrity endorsement and providing an understandable(!) explanation of "reverse passing off" on just half a page. Equally succinct is the discussion of "innocence, fraud or a decision to live dangerously" - again set out on just about one page of the book but feeding the reader all the relevant "sound bites". The last chapter (Chapter 9) then turns to "remedies and procedures for trade mark infringement and passing off", including the criminal provision of the Trade Marks Act and the related court procedures: this chapter provides a good overview of the main issues without going into too much detail. The information on the Company Names Tribunal is equally short but alerts you to the main points.


This being a book for practitioners, the authors have intentionally kept the book compact and digestible. Case law is included until early 2010 (including Comparative Advertising/L'Oreal Bellure and everyone's favourite: "AdWords"- albeit not the very latest cases for obvious reasons); and while the book reports about the relevant case law handed down by the ECJ, GC and the UK courts and distills the most important points, it rarely (and I would assume intentionally) discusses or criticises these decisions in much detail. And of course, there are other books readers can revert to for a more in-depth discussion and review of the case law. The book also incorporates the latest round of renumbering of Articles, such as those of the CTMR.

So what is missing or could be bettered? Given its practical approach the authors could consider including "checklists" concerning matters such as trade mark strategies, the question of likelihood of confusion, what to include in an assignment or licence document, etc. Perhaps some more information could be provided on co-existence agreements (what should be covered, is it always a good idea to have one) and the related issue of granting consent. The book also includes rather extensive appendices: the Trade Marks Act 1991, Directive 2008/95/EC, Council Regulation (EC) 207/2009, and the Trade Mark Rules 2008 are all printed in their entirety. This Kat is not quite certain that these texts add much value to the book, in particular since she herself likes to have the law text next to the reference book rather than having to thumb back and forth. Others, however, may be delighted to have all relevant information in one handy book: a matter of personal taste.

Now, is it the book for you? This book works on several levels and for readers with different backgrounds: whether you are trainee trade mark attorney who is trying to find his/her way, a part-qualified trade mark attorney or a qualified trade mark practitioner - you will find the book useful. As one of this Kat's friends has put it, the book has an understandable "non-pompous" writing style so that you can pick it up at different points in your career and be comfortable with it. Having "road tested" this book for quite some time, this Kat believes that for trade mark practitioners this is the kind of book you will use if you come across a problem in your day-to-day practice and need a quick refresher to remind you of the most important points. Sometimes further reading will be required to get to the nitty gritty details but the carefully researched footnotes will make this an easy endeavour. For students and trainees it will serve as a very solid and surprisingly comprehensive reference (and revision) book which - at a prize of under £45 - will give you a sound grounding in and understanding of UK trade mark law and practice. It might also work as basis for students' revision notes for the (current) ITMA exams. Indeed, its handy size makes it ideal for revising during your daily commute and it is affordable enough for students to be able purchase it without having to think twice. If you are a trade mark practitioner and/or trainer, or a patent attorney/lawyer (who perhaps only deals with trade mark matters on occasion) then this book is certainly a book worth having on your shelf in the office. The book may also be of interest to foreign trade mark professionals that have UK connections.

Bibliographic information: publication date 2010, 4th edition, 464 pages, paperback, ISBN 978-0-19-957968-6, Oxford University Press. More details here.

Rapture factor: relatively high - but this is a book that wants to be used.

1 comment:

Peter Smith said...

With a high rapture factor, it sounds irresistible!

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