Marks & Clerk

Firm overview:

Global IP attorney firm Marks & Clerk is in the top ten trademark filing representatives before the UK Intellectual Property Office (UKIPO) for 2022 and 2023. The team advises on trademark protection and portfolio management, and holds the largest EU portfolio of any firm in the UK, as well as expanding and maximising the value of brands. Before a matter reaches court, Marks & Clerk assists with trademark monitoring, anti-counterfeiting investigations and handles registry and domain name disputes.

Primarily recognised for its “good reputation” in trademark filing and prosecution, peers also often find themselves across from the firm in registry disputes. When matters escalate, Marks & Clerk has a team of commercial and IP lawyers working with the brand protection team to collaborate on trademark litigation before the High Court, Intellectual Property Enterprise Court and the Court of Appeal. Notably, the firm was engaged in a UKIPO appeal, which resulted in a policy change around parties without a UK address for service.

Team overview:

The firm has over 300 solicitors, trademark attorneys and patent attorneys across offices in Europe, Asia and America and boasts over a century of heritage as a leading IP firm. In the UK, Marks & Clerk is based in eight locations in England and Scotland with an additional footing in Luxembourg making it one of the biggest European IP practices. A dedicated brand protection and trademark team handles litigation and portfolio matters from the UK.

Key matters:

• Tradeix v New Holland Ventures (BL O/681/122) Marks & Clerk represented Australian corporate advisory firm New Holland Ventures in an invalidation matter concerning its international registration of ‘Marco Polo’. The client obtained the UK registration in 2020 and in 2021, finance platform TradeIX applied for a declaration of invalidity against the mark, triggering a notice of two months for the client to appoint a UK-based address for service. Due to the COVID-19-related lockdown in Australia, the client missed both the original notice and a second notice from the UKIPO.
• In 2022, the UKIPO declared the UK designation of the mark invalid. The client instructed Marks & Clerk, appointed an address for service in London, and appealed on the grounds that it did not have an opportunity to file its defence. The appeal concluded the invalidity decision had not been served properly on the client and the UKIPO should have set a deadline for appointing a UK address for service. The initial decision was set aside and returned to the UKIPO. The UKIPO introduced a new practice: where there is no address for service in the UK, the notification will be posted to the address available at that time, including non-UK addresses or the details of the party itself. The party needs to provide an address for service within one month. The case is a reminder to brand owners to update their address details.
• Marks & Clerk’s Birmingham office advised Premier League football club Aston Villa on registering a new club logo as a trademark in December 2023. New designs can be controversial with passionate tradition-conscious football fans, with the logo receiving some heavy criticism on social media.

Clients:

Aston Villa FC, Spa Monopole, New Holland Ventures