Beck Greener’s experience and expertise in the field of trade marks is recognised by the industry. The firm is amongst the top 20 filers of British Trade Mark Applications in the country, the top 30 filers of EU Trade Mark Applications, and ranked number 2 for appearances at oral hearings before the UK Intellectual Property Office. In addition, partners Ian Bartlett and Rowland Buehrlen both appear in the top 10 of the list of trade mark attorneys and solicitors by appearance at hearings before the UK Intellectual Property Office (Source: CITMA Review, Issue 448, March/April 2019).
The firm’s main office is based in London, though we also have an office in Alicante, Spain, to ensure that whatever happens with the current Brexit negotiations, we can continue to provide our full range of services relating to European Union Trade Marks and Designs post-Brexit.The Legal 500 describes Beck Greener as 'excellent on all fronts' with a team that is 'responsive and 'quick'. The trade mark department also provides 'excellent service with personal attention from highly experienced partners and associates'.
The World Trademark Review 1000 states that 'Beck Greener has always been excellent at trademarks. The firm serves up perspicacious advice on prosecution and brand strategy to an enviable cadre of clients and acquits itself with distinction across the full range of contentious matters'.
One of the Trade Mark Partners at Beck Greener, and one of our Trade Mark associates, are also patent attorneys, with a technical, scientific background and over 30 years between them practising trade marks before the UK Intellectual Property Office. All other Registered Trade Mark Attorneys at the firm hold law degrees, the majority of whom also qualified as solicitors or barristers. This legal background allows the department to provide clients with the focussed, robust legal advice they need to be able to grow and maintain their brands effectively. Further, our ratio of trade mark partners to professional staff is top-heavy. This allows us to provide clients with the confidence that their work is undertaken and supervised by hands-on experts with the experience to provide practical, business-focussed advice.
Our attorneys can file and prosecute your trade mark applications at a UK-national and EU-wide level, as well as filing International registrations under the Madrid system to obtain protection around the world. Using firms of foreign attorneys we also file and prosecute national applications abroad. We are skilled also at dealing with the commercial aspects of trade marks, such as licensing, assignment, and other formal transactions.
Alongside registering and administering your trade mark portfolio around the world, our attorneys can assist in contentious matters. All our attorneys handle trade mark opposition and cancellation actions before the UK Intellectual Property Office, the Appointed Person and EUIPO (the European Union Trade Marks Registry). We have a longstanding, impressive record of success before these tribunals.
The majority of contentious matters reach settlement before court proceedings are issued. All our attorneys have extensive experience advising on resolving IP disputes, as well as drafting and amending, undertakings, agreements and other documentation to formalise terms of settlement.
Further, a high proportion of the Registered Trade Mark Attorneys at the firm also hold advanced rights to conduct IP Litigation before the English Courts, so that we can both advise clients, and continue to act for them, should the need for litigation arise. The head of the department, Ian Bartlett, was one of the first Trade Mark Attorneys to conduct an appeal before the High Court in Aveda Corporation v Dabur India Ltd  EWHC 589. The firm has since represented clients in the High Court, Intellectual Property Enterprise Court, and at hearings before both the UKIPO and appeals to the Appointed Person with considerable success.
Recent matters before the High Court and the IPEC in which Beck Greener conducted all written and oral advocacy for our clients include:
- CH/2014/0647 Pedro Carmelo Mora Alvarez v UK Intellectual Property Office  (unreported)
- IP-2016-000117 Unilever PLC and Others v Appna Cash & Carry (Manchester) Limited (settled)
Recent matters before the Appointed Person in which Beck Greener conducted all written and oral advocacy for our clients include:
- O-396-15 TWG Tea Company Pte Ltd v Mariage Frères SA (Reported also at  R.P.C. 7)
- O-131-16 Sakura! Sakura device
- O-049-17 Rochester
In addition, Beck Greener has a strong record of success in trade mark matters before the General Court of the European Union and the Court of Justice of the European Union (the two highest courts in the EU). Recent cases include:
- T‑453/15 Trinity Haircare AG v EUIPO – Advance Magazine Publishers (VOGUE) (judgment of 15 September 2016)
- T-341/13 Groupe Léa Nature v OHIM - Debonair Trading Internacional (SO'BiO ētic) (judgment of 8 June 2017)
Such real-world litigation experience enables the department to provide a more comprehensive, joined up service. In the past, such contentious work would have to be passed on to outside solicitors and barristers, increasing costs for clients. Now, from conception and application of a brand through to registration and enforcement, we are well equipped to address all aspects of trade mark work.
The department works with clients across a number of commercial sectors and of various sizes. We represent large multinationals and internationally famous brands, alongside small businesses and sole traders, in fields as diverse as telecommunications, publishing, TV production, medical devices, fashion, household appliances, haircare, financial services and retail. As stated in The Legal 500 “Beck Greener has a notable reputation in the entertainment industry”. Regardless of size or field of business, the firm is adept at meeting the specific needs of clients, and providing a tailored service to accommodate their requirements.