Book Review: Contentious Trade Mark Registry Proceedings

Calling all trade mark practitioners; The Chartered Institute of Trade Mark Attorneys (CITMA) have published a practical guide just for you!

Contentious Trade Mark Registry Proceedings, is currently one of kind, in that it is the only text to provide to the practice and procedure of contentious matters before the United Kingdom Trade Marks Registry. The guide is authored by Michael Edenborough QC - who has appeared in over 275 matters before the UK registry and over 60 appeals before the Appointed Person. It also includes expert contributions from a number of other authors.

The comprehensive guide covers in detail contested ex parte applications, inter partes oppositions, revocations and invalidations, rectification applications; as well as appeals to the Appointed Person or the High Court of England and Wales. Furthermore, the text also considers who matters might be concluded without a substantive decision from a tribunal or court.

The aim of the text is to be a handbook kept closely at the side of any trade mark practitioner looking to prevail in matters before the UK registry and on appeal. It addresses how to prepare and present a case, including details of how to plead a case, prepare evidence, and draft submissions. Most helpfully, it offers practical guidance along with possible arguments, tactics and stratagems that could be utilised.

Edenborough points out that compliance with the procedural aspects can often be overlooked when focusing on substantive law, however it is vital that the process is underpinned by the proper procedure in order to avoid refusal of admissible evidence for example.

The book is set out in 8 detailed chapters, providing thorough explanation to each aspect of bringing a matter before the UK registry. Chapter 1 consists of an introduction and general information such as governing provisions, representations, precedent, and time periods.

Chapter 2 sets out clearly the steps needed to follow in setting out the parties’ formal written grounds and notice of opposition; statements of case.

Chapter 3 carefully considers the evidence required in order to establish the alleged facts in the statement of case as a provable fact. This includes looking at burden of proof, presentation of evidence, types of evidence such as expert, survey, opinion, hearsay, as well as explaining inadmissible evidence.

Chapter 4 talks the reader through interim applications, and chapter 5 addresses hearings, including written and oral evidence, cross-examination and witnesses.

New TM Kat Bible
Image: Stephen Mitchell

Chapter 6 focuses on challenging a decision through appeal to the Appointed Person or the High Court, judicial review, or CJEU reference.

Chapter 7 details costs and finally, chapter 8 discusses alternative dispute resolution such as arbitration, mediation and negotiation.

This book will undoubtedly be a bible in the proverbial pocket of any trade mark practitioner. It is a comprehensive guide that is laid-out with thoughtful coherence, making it easy to read cover-to-cover or as a reference.

Purchase directly from CITMA here

ISBN: 9781999831714

Hardback, 270 pages (plus a few extra pages for notes)

Cover price: £190 to non-members, £160 to CITMA members