How I can help your business

• Develop and implement trade mark protection strategies aligned to your commercial priorities across the UK, EU and internationally.
• Advise on clearance, prosecution, portfolio management and contentious matters, including oppositions and disputes.
• Provide practical guidance on anti-counterfeiting, enforcement strategies and protection of non-traditional marks, including shape marks.

Overview & Expertise

John Ferdinand is a Registered and Chartered Trade Mark Attorney (UK) and Office Managing Partner of Marks & Clerk’s Birmingham office. He has over 20 years’ experience advising national and international clients on the development and implementation of trade mark protection strategies.

He advises on all aspects of trade mark practice, including clearance searches, applications, oppositions and wider contentious matters across the UK, Europe and internationally. His experience spans a broad range of sectors, including food and drink, apparel, sports, media and entertainment, as well as manufacturing and engineering. He is also recognised for his work on non-traditional trade marks, particularly shape marks, and has contributed to policy development in this area through his involvement with INTA (International Trade Mark Association) committees.

John has significant experience managing international trade mark disputes, including parallel proceedings in the UK and EU. He has played a leading role in developing Marks & Clerk’s anti-counterfeiting offering and provides practical guidance on enforcement strategies, including action against online infringement. His work often involves combining trade mark protection with other IP rights, such as registered designs, to deliver commercially effective outcomes.

Earlier in his career, he was seconded to the in-house IP team of a major food industry client, experience which informs his clear, commercially focused advice.

John graduated from the University of Cambridge with a degree in Modern Languages and qualified as a Trade Mark Attorney in 2010. He speaks English, French and Spanish.

Client Work & Case Experience

• Successfully advised a high-profile sport and entertainment brand on overcoming a number of objections to registration of high profile trade mark rights in Europe including via successful appeal to the General Court of the EU, settlement of a series of complicated multi-jurisdictional trade mark disputes and in UDRP domain name recovery action to safeguard a new brand
• Advised on successful UK and EU protection of elements of branding and packaging design, including position and figurative trade marks, for a global toy manufacturer
• Successfully renegotiated a number of international trade mark coexistence agreements to provide greater clarity and reassurance for clients in the fashion and retail sector
• Advised a client in the food and drink sector on settlement of a trade mark dispute resulting in favourable coexistence terms and a significant settlement payment prior to a third party’s acquisition by a multinational business
• Devised and implemented a strategy for protection of non-traditional trade mark rights in the EU and UK over its livery branding assets to safeguard exclusivity of a luxury brand in the aviation sector