Brush up your trade mark law? A couple of new titles

This ancient fragment of
a rare first edition of Kerly
was recently excavated by
archaeologists

In one sense Kerly's Law of Trade Marks and Trade Names is hardly new.  It is now in its 15th edition but first saw the light of day back in 1894. This, as not even the oldest of Kats can personally remember is the year which saw Nicholas II ascend to the throne as the last Tsar of Russia, the African kingdom of Dahomey (now Benin) fell to the French, noted wit James Thurber was born, the short-lived Republic of Hawaii was formed and women in South Australia were given the right to vote. 

The new web-enabled iPot?

Against all these changes, Kerly appears quite immutable. It still has the same plain cover, the same serious contents, the same quietly, quaintly, boringly reliable air to it which has pervaded it for much of its life.  The 12th edition ruled for 15 years and was little loved towards the end of its reign since most attempts to apply its analyses to the law of the Community trade mark and harmonised national law in Europe were about as useful as trying to connect your teapot to the internet.  Fortunately, for readers, users, publishers and booksellers -- indeed, for everyone except the poor authors -- new editions now come out much more frequently.

Good ingredients -- and
plenty of food for thought

A quick word about the authors: they are listed on the publisher's website in two groups -- male and female -- each list being in alphabetical order, thus: David Keeling; David Llewelyn; James Mellor, QC; Tom Moody-Stuart; Iona Berkeley. On the spine and title page the order is quite different. Is there some subtle message here, it may be wondered. Anyway, notwithstanding the order, this blogger has had the pleasure of taking tea with, having arguments with, chairing and/or reading the thoughts of almost all of the team and can personally vouch for their trade mark credentials. Just as good ingredients don't guarantee that the pudding will turn out well but, all things being equal, will produce a good result, so do will a good team of authors improve the likelihood that the book will turn out well too.  Having sampled various bits of it (it's not really cover-to-cover stuff, but it's great for reference and research purposes), this blogger can say that, as of right now, the proof of the pudding is that it's well up to standard.

So what's in this new edition? Pretty much everything you'd expect.  As publishers Sweet & Maxwell state, this volume

• Provides full explanation of the UK law of trade marks and trade names
• Covers classification, registration (UK & European), different types of marks, enforcement, infringement and litigation
• Includes coverage of assignments
• Goes through licensing, merchandising and franchising
• Deals with infringement and available remedies
• Looks at mediation and arbitration in the context of trade marks
• Incorporates recent legislative change such as the Trade Marks Regulations 2008, the Trade Marks (Earlier Trade Marks) Regulations 2008 and the Community Trade Mark (Amendment) Regulations 2008.

Without wishing to bore his readers, this reviewer reiterates how fervently he'd like the publishers to produce a version of this weighty tome which is shorn of its appendices.  The text of this work ends at page 886. There then follow somewhere in the region of 530 pages of statutes, directives, rules and regulations which (i) can't be electronically searched and (ii) any trade mark practitioner who buys this book is likely to have not just once but probably many times over. Anyone who wants a copy of the relevant statute etc open in front of him so that he can check it while he reads the Kerly text will find it easier to use a separate copy anyway rather than flipping backwards and forwards between the text and the appendices. Please!

Bibliographic data: hardback, xcvi + 1454 pages. ISBN: 9781847037701. Rupture factor: substantial (would have been a lot less if the book were sold without all the statutes etc stuck into the back as appendices). Price: £295.Web page here.

Can you spot the flags of the European
Union's 13 important countries?

Unlike Kerly, the Practitioner's Manual for Trademark Prosecution and Litigation in the EU, by Felix Hauck, is a genuinely new title. The author, an experienced trade mark practitioner with the Cologne, Germany, firm of Von Kreisler Selting Werner, has opted for the same publisher as Kerly, this being Sweet & Maxwell, who have shown some commendable initiative in putting this title together.  It even has a pretty cover but, for reasons which this reviewer cannot fathom, has apparently chosen not to display it on the book's web page (for which, see Bibliographic data, below).

What is this new work all about? Let the publisher's web-blurb explain:

• "Provides general knowledge of the trade mark system in the EU, taking you through the basic legal principles and the significance of filing and litigation strategies
• Shows how the trade mark laws of the EU member states have been harmonised, as well as looking at the non-harmonised areas of law
• Brings you commentary on the Community Trade Mark Directive including the must-know decisions of the European Court of Justice, in particular with respect to the question of likelihood of confusion
• Deals with the filing options provided by the EU trade mark system and the Madrid Agreement, including the interplay between both systems; providing you with case examples and filing advice  ...

• Explains the judicial trade mark system for the 13 most important EU member states [well done, Ireland, for making the Top Thirteen -- though there may be one or two folk out there who'd disagree ...] and contains valuable information on the local fees and the necessary involvement of local attorneys
• Guides you through the procedure for obtaining a Community trade mark, explains the particularities of a Community trade mark compared with national trade marks and looks at the possibilities of enforcing it at a national and at a EU level
• Goes through the options and costs of enforcing trade mark claims in court and out of court in each country; this includes C&D letters and preliminary injunction proceedings
• Outlines the proceedings for a trade mark application in each of the national registering offices, including costs, scope of examinations, timescales, and remedies in case of refusal
• Covers the opposition, revocation and judicial proceedings on a national and on a EU level, including costs, scope of examinations, timescales, and remedies in case of refusal
• Sets out multistate filing and litigation strategies and explains the possibilities of forum shopping
• Adopts a country by country approach, making it easy to compare proceedings for enforcement claims for each jurisdiction
• Compares the advantages and disadvantages of a Community trade mark and a national trade mark registration ...".

Dr Hauck has put together an able panel of national contributors, retaining for himself the task of covering both the European Union and Germany. The result of their labours is a book which is long on genuinely useful content and guidance, relatively unburdened by the weight of excessive citations and pleasantly light in terms of appendices (cf Kerly, supra).  The numbering and arrangement of subheadings is relatively constant between national chapters so that it is easy to navigate between country chapters when seeking to compare them. The choice of those subheadings is presumably influenced by Dr Hauck's observation that the same questions tend to be repeatedly asked -- though their answer often tends to differ from country to country.

The publishers are confident that this book will run and run.  The words "Ist edition" appear on the cover itself  and the website provides for a discount for those who wish to commit themselves now to the purchase of subsequent editions. Will it run and run? This reviewer thinks so -- if it's properly marketed and sensibly priced.  It's far better focused than the publisher's previous attempt to do something along the same lines in the European Trade Mark Litigation Handbook, a title which sank so deeply that even attempts to dredge it up via Google have failed.

Bibliographic data: paperback, xxxiv + 5456 pages. ISBN 978 0 414 04621 4. Price £125. Rupture factor: medium-to-low. Book's web page here.