We provide a full range of services relating to registered and unregistered trade marks, including:
Prior to filing an application for registration
Undertaking or organising searches to establish if a trade mark is available for registration and use without infringing the registered and unregistered rights of others;
Advising on the results of searches;
Advising as to the inherent registrability of trade marks;
Advising as to the suitability of domain names.
Trade Mark applications
Drafting trade mark applications;
Filing and prosecuting trade mark applications in the UKIPO, EUIPO, WIPO and the Irish Patent Office;
Filing applications to register domain names;
With the cooperation of foreign attorneys, filing and prosecuting applications abroad.
Trade Mark Registrations
Advising as to the validity, enforcement and infringement of trade marks;
Attending to the renewal of trade marks worldwide;
Dealing with use requirements.
Commercial and General
Assigning and licensing applications, registrations and associated rights (including advising on the IP aspects of a proposed agreement and attending to the registration of transactions and transfers worldwide);
Setting up watches to investigate the trade mark activity of others;
Advising and developing trade mark filing strategies, including assisting with budgeting;
Managing trade mark portfolios;
Undertaking due diligence investigations, for example identifying the trade mark registrations and applications amongst assets included in a transaction, checking their status and their ownership;
Undertaking IP Audits, including identifying all of the existing IP of a business, establishing the ownership of the IP, and identifying any necessary or recommended steps to further safeguard the identified rights.
Acting in validity, revocation and infringement disputes whether at a Patent Office or in the courts;
Acting in opposition, revocation, invalidity, appeal proceedings before the UKIPO, EUIPO and the CJEU;
Preparing and filing third party observations;
Managing litigation in multiple jurisdictions;
Acting in domain name disputes.
Trade Mark Advocacy
When a UK or Irish Trade Mark Application is opposed, or someone attempts to cancel them, the Intellectual Property Office (or, in Irish matters, the Irish Patent Office) allows parties to request a formal hearing on the matter.
At Beck Greener, we find hearings often offer the best opportunity to persuade the Office of the merits of a case, particularly where the facts are complex or the relevant marketplace is specialised. Many firms hire barristers who were previously unfamiliar with the case to represent clients at hearings, though at Beck Greener we handle the advocacy ourselves, believing that the attorney who has handled the case from the outset is best placed to argue it before the tribunal, and our strong record of success bears that out.
In addition, a number of our attorneys also hold Higher Courts Litigation Certificates, granting them rights to practice before the English courts, beyond those held by other attorneys. As a result, the firm has experience advocating before both the Intellectual Property Enterprise Court and the High Court. The latest statistics on frequency of attendance at IPO hearings over the last five years show we are the only firm of attorneys or solicitors with two members in the top ten. Further, our head of trade marks Ian Bartlett is now placed second in the country by number of hearings since 2013. We believe this illustrates our commitment to offering the best, most comprehensive service - from initial advice, commencement of proceedings and the submission of evidence, right through to written arguments and oral advocacy, our attorneys have the skills and expertise to see cases through to a final decision.
*Source: CITMA Review, Issue 438, December 2017/January 2018.