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Our People
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Regions
  • Asia
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Offices
  • Canada
    • Ottawa
    • Toronto
  • China
    • Beijing
    • Hong Kong
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    • Paris
    • Sophia Antipolis
  • Luxembourg
  • Malaysia
  • Singapore
  • UK
    • Aberdeen
    • Birmingham
    • Cambridge
    • Edinburgh
    • Glasgow
    • London
    • Manchester
    • Oxford
Client liaison
  • Japan
  • Korea
Expertise
Services
  • Patents
  • Brands & Trade Marks
  • Designs
  • Litigation & Dispute Resolution
  • Commercial IP & Contracts
  • Due Diligence
  • Freedom to Operate
  • EPO Patent Oppositions
  • European Patent Validations
  • Anti-counterfeiting
  • Open Source & Third Party Code
Sectors
  • Energy & Environment
  • Life Sciences
  • Agritech
  • Medical Technologies
  • Chemistry
  • Transport
  • Entertainment & Creative Industries
  • Food & Drink
  • Fashion & Retail
  • Universities & Research Bodies
  • Start-ups & Spin-outs
  • Digital Transformation
    • 3D Printing
    • Artificial Intelligence
    • Blockchain
    • Data & Connectivity
    • Extended Reality
    • Industry 4.0
About Us
  • Working with us
  • Awards
  • Corporate & Social Responsibility
  • Diversity & Inclusion
  • Careers
Insights
  • M&C Reacts
  • Beyond Brexit - UK & EU trade marks
  • Covid-19
  • Unitary Patent & Unified Patent Court
  • All publications

John Ferdinand

Partner

Europe
Birmingham

Get in contact

+44 121 643 5881 jferdinand@marks-clerk.com
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John has over 10 years’ experience in the trade mark profession and works with a portfolio of national and international clients on developing a strategy for their trade mark protection. He works on trade mark searches, applications, oppositions and other contentious actions covering the UK, Europe and the rest of the world.

John’s practice involves a wide spread of sector expertise including the food and drink, apparel, FMCG, media and entertainment sectors as well as representing clients in manufacturing industries such as the plumbing and heating sector and electrical accessories.

With significant experience working with clients to develop innovative trade mark protection strategies, John helps to strategically assess clients' geographic priorities and to identify the best forms of protection for clients’ commercial needs. This often involves advice on combining trade mark protection with other IP rights, such as registered designs, and advice on bespoke enforcement strategies to address counterfeiting activity – for example, through online marketplace platforms.

John has expertise in advising on protection of non-traditional trade marks including shape marks in particular and is a member of the International Trade Mark Association’s European and Central Asian sub-committee in this area. In a recent case, John also worked on a successful appeal to the General Court of the EU concerning registration of a client’s mark on the basis of acquired reputation.

Earlier in his career John worked on secondment in the in-house IP team of a significant food industry client and uses this experience to provide clear, concise and commercially focused advice to his clients.

John graduated from Cambridge University with a degree in Modern Languages. He speaks Spanish and French fluentl​y, as well as having qualifications in Japanese and Catalan. John is a member of the Institute of Trade Mark Attorneys and qualified as a Trade Mark Attorney in 2010.

John has been recognised as a leading individual by World Trademark Review 1000.

Languages

  • English
  • Español (Spanish)
  • Français (French)

Specialist in

  • Brands & Trade Marks
  • Fashion & Retail
  • Entertainment & Creative Industries

Qualifications

Registered and Chartered Trade Mark Attorney (UK)

MA Modern Languages, University of Cambridge

Search our people

Latest Insights

Photo: an EU flag flying next to a Union flag
Insight
- 25 April 2022

Key differences between the EU and UK TM opposition systems

Brand owners and their advisers now need to treat the EU and UK separately when protecting and enforcing trade marks, so more dual, identical EU and UK trade mark applications are being filed than before.
Read more
Photo: a group of people in business wear making notes
Insight
- 25 April 2022

How to coordinate action against identical EU and UK TM applications

Where it is necessary to run simultaneous oppositions, any action taken should be appropriate and targeted to the requirements of each jurisdiction.
Read more
Photo: meeting discussion with laptop on table
Insight
- 25 April 2022

Negotiation and settlement - UK & EU trade marks

Opposing a trade mark application can be a useful means of helping to prevent or limit use of the mark in question, avoid dilution of an earlier mark, and deter other third parties from adopting similar marks in future.
Read more
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