Brands & Trade Marks

Maximising the value of brands and trade marks

The right protection in the right markets, aligned with your business plan and budget

A brand can be your most valuable asset, giving you rights that need protecting, enforcing and commercialising. By providing you with a bespoke road map, we’ll ensure you get the best value out of your intellectual property. Wherever you are in the world, whatever the size of your business, whatever sector you’re in, we’ll make your brands and trade marks work harder for your budget.

European and global

We have trade mark attorneys in the UK and in mainland Europe, qualified to act before the UKIPO, the EUIPO and in the courts. We work as an in-house team, irrespective of our locations. We hold the largest active EU trade mark portfolio of any firm in the UK.

Our attorneys are placed in key markets worldwide and have in-depth knowledge of those markets. In addition to our own offices, we work with attorney firms with the expertise and service ethic our clients expect, making sure your needs are never compromised.

Legal and commercial expertise

We’re experts in securing trade mark rights, protecting and enforcing brands and solving legal branding challenges. Marks & Clerk has a large global pool of professionals. We’ll select people with the right legal and commercial expertise and who are a good cultural fit for your business.

Specialists

for the result you need

Tom Farrand

Head of Trade Marks Registered and Chartered Trade Mark Attorney (UK)

Tom is a Registered Trade Mark Attorney with more than 30 years’ experience working with brand and intellectual Property owners across a range of industries.

Jonathan Colombo

Partner Canadian Trademark Agent, Barrister and Solicitor

Jonathan Colombo is the Managing Partner of Marks & Clerk Canada, and Head of the firm’s Trademarks practice group.

Simon Speeks

Partner Chartered Trade Mark Attorney (UK)

Simon specialises in all aspects of trade mark law, including transactional work, licensing and franchising arrangements, enforcement of rights, portfolio management and disputes.

Kirsten Gilbert

Partner Solicitor (UK)

Kirsten is a Partner and an intellectual property lawyer at Marks & Clerk Law who specialises in litigation, alternative dispute resolution and brand strategy. Kirsten advises in a broad range of sectors including food & drink, financial services, pharmaceuticals, fashion and creative industries.

Trade mark services

Protecting

Getting the right protection in the right markets, aligned with your business plan and budget, is central to our approach. We’ll work with you to produce the best road map for your IP protection. We can:

advise on the risks associated with new brands and naming, and conduct the relevant searches
provide clarity on difficult issues such as validity and infringement
advise on the best way to register all brands, including those that may be difficult to protect
advise on the best protection strategy for a mark and then manage its implementation worldwide.

Defending

You don’t always have to go to court to defend your brands. We’ll work with you to guard against others trying to profit from your intellectual assets. We can:

monitor new applications that may affect your trade mark rights
use our experienced anti-counterfeiting team to instruct seizure of goods
work with you to adapt a brand to avoid impinging on a third party prior right
handle all contentious issues relating to trade marks, from oppositions to company name disputes to domains.

Our team of specialist commercial lawyers and IP litigators works closely with the brand protection team. Together they help you with pre-litigation strategy and all aspects of litigation and dispute resolution relating to trade marks (including infringement and passing-off).

If you choose - or are forced - to litigate, we can help you achieve your objectives in the highest courts around the world through:

obtaining urgent interim injunctive relief
defending you against third parties' assertions of trade mark infringement
seeking to protect your marks from third-party infringers
seeking to defend your marks from the challenges of others.

Managing portfolios

We can take care of your administrative needs, making sure the reminders, deadlines and renewals involved in securing trade marks are safely managed. Our systems are ISO 9001 quality-assured so you can be confident about leaving the admin with us. We can:

assist with the transfer of rights or the acquisition of third party rights
help you design internal systems for the most efficient and effective management of IP arising from your branding processes
provide internal training programmes for your teams.

Maximising value

Trade marks are not just for defending market share and maintaining competitive advantage. They can also generate revenue and raise the value of your business. We can:

review your existing portfolio of rights and offer advice on its strengths and weaknesses
review competitor and sector activity worldwide and help you plan your branding strategy accordingly
draft licences and assignments and assist in negotiations with third parties
ensure you’re getting the maximum IP return from your brand portfolio
assist in developing suitable new brands and corporate images.

Latest Insights

News

- 10 August 2022

Marks & Clerk’s trade mark team also celebrates exam success!

In addition to our excellent patent team results in July, we are also thrilled to announce that several members of the Marks & Clerk Trade Mark team are enjoying exam success.

Article

- 27 July 2022

Overcoming hurdles when it comes to marketing activity for the Birmingham Commonwealth Games

Plenty of businesses will be keen to capitalise on the buzz around the upcoming Commonwealth Games in Birmingham to show their support and connect with customers through marketing and advertising activity. However, there are strict rules that regulate what companies can and cannot do. Here we explain the issues and give guidance on major “dos and don’ts”.