Guest book review: Contentious Trade Mark Registry Proceedings

This is a book review of Contentious Trade Mark Registry Proceedings by Michael Edenborough KC. This review is kindly provided by Zoi Krokida, Lecturer in AI, Innovation and Law at Brunel University London. This title was nominated in the IPKat book of the year awards 2023! Here's what Zoi has to say:

The book entitled Contentious Trade Mark Registry Proceedings, 2nd Edition, is written by Michael Edenborough KC, a Barrister with experience in several hundred trade mark matters before the UK registry and many tens of such appeals before the Appointed Person and the High Court. 

At the introduction, Edenborough states: ‘Rather, this work is intended to be a vade mecum to help trade mark practitioners navigate the practical aspects of how to prevail in matters before the UK registry and on appeal; in particular, it addresses how to prepare and present a case to maximum effect in those forums.’

Having expanded and updated the first edition of the book, the second edition consists of 10 chapters along with 3 appendices. The first chapter sets the legal framework governing trade mark disputes at UK, EU and international level and addresses the role of judgements and precedent from domestic courts, the Court of Justice of the European Union, the European Intellectual Property Office and foreign tribunals. In chapter 2, the author discusses drafting principles for the statements of grounds and counter-statements while in chapter 3 the author addresses the substantive trade mark law in cases of particular relevance to pleading statements, such as oppositions for absolute and relative grounds, revocation and invalidation. 


Chapter 4 delves into the submission of oral and written evidence as well as addresses the different categories of evidence, admissible and inadmissible evidence, judicial notes and the case of correcting errors. Chapter 5 discusses the applications to registrar and requests for disclosing confidential information. 

Chapter 6 addresses procedural hearings in trade mark cases while chapter 7 provides a meticulous analysis of the general principles of appeals and the procedures for the appeals to the Appointed Person and the High Court. Chapter 8 addresses the different categories of costs for the parties. 

Finally, chapter 9 discusses the prematurely ended proceedings and chapter 10 delves into the settled proceedings of the courts, with an emphasis on existing alternative resolution procedure schemes. 

At the outset of the book, it is stated that ‘this work is intended to cover the practice and procedure relating to contentious matters before the United Kingdom trade mark registry’. Undeniably, the author has not only fulfilled that aim, but delivered a comprehensive and high-standard book that was indeed missing in the current trade mark law practice. Amongst the most valuable chapters, chapter 5 provides deep insight into interim and final decisions, procedural hearings, settlement proceedings, requests for time extension and the change of parties during the course of the proceedings; chapter 6 delves into an analysis of hearings in different contexts and different formats and discusses the requirements of oral examination of witnesses; and chapter 8 offers a systematic review of the award of costs that might in trade mark proceedings, from costs in ex parte to costs against the Registrar to and the costs on appeal. Drawing from years of experience and expertise, the author offers a plethora of examples of good practices in navigating procedural hearings, providing oral evidence and appeals, highlights common mistakes that trade mark attorneys might encounter and then offers suggestions as to how to avoid them. 

Be cautious about asking open-ended questions in cross-examination, as the witness might take the opportunity to supplement their evidence-in-chief in a manner that is unhelpful to your client’s case.

In addition, any references to the statutory provisions of the TMR 2008 and TMA 1994 along with quotes from trade mark law cases enrich the already exceptional content of the book. 

Moreover, there is greater coverage than is usual in legal textbooks of possible arguments, tactics and stratagems that could be deployed to advance one’s case or to neutralize one’s opponent’s case.

To the merits of the book, the three appendices that gather the forms to be used in trade mark proceedings, the Tribunal practice notes and the translation of Latin terms that can be used in the hearings respectively. From a time-efficient perspective, all of them are of seminal importance for legal practitioners since they could save them time from searching for the relevant forms and Tribunal practice notes in different sources. 

Contentious Trade Mark Registry Proceedings is an invaluable resource for practitioners that deal with contentious trade mark matters. To summarize, it is a must-have book for every chartered trade mark attorney.


Publisher: The Chartered Institute of Trade Mark Attorneys

Available in hardback

700 pages

ISBN: 978-1-9998317-2-1

Guest book review: Contentious Trade Mark Registry Proceedings Guest book review: Contentious Trade Mark Registry Proceedings Reviewed by Hayleigh Bosher on Friday, February 23, 2024 Rating: 5

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