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  • Canada
    • Ottawa
    • Toronto
  • China
    • Beijing
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    • Cambridge
    • Edinburgh
    • Glasgow
    • London
    • Manchester
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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
  • Digital Transformation
    • 3D Printing
    • Artificial Intelligence
    • Blockchain
    • Data & Connectivity
    • Extended Reality
    • Industry 4.0
  • Energy & Environment
  • Life Sciences
  • Agritech
  • Medical Technologies
  • Chemistry
  • Transport
  • Entertainment & Creative Industries
  • Food & Drink
  • Fashion & Retail
  • Universities & Research Bodies
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    • Creating value for start-ups
    • The IP driven start-up
  • Financial Services
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  • Working with us
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  • Diversity & Inclusion
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  • Unified Patent Court hub
  • Beyond Brexit: European trade mark hub
  • M&C Reacts
Photo: John Ferdinand

John Ferdinand

Partner

Europe
Birmingham

Get in contact

+44 121 643 5881 jferdinand@marks-clerk.com
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John has over 15 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, automotive, media and entertainment sectors as well as representing clients in manufacturing industries such as transport and security infrastructure 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 previously participated in an International Trade Mark Association (INTA) committee to help drive policy and best practice among different IP offices in this area. Earlier in his career 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 fluently, 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

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Latest articles by John Ferdinand

Hermes store front
Article
- 09 February 2023

US court decision rules that use of “MetaBirkin” in relation to NFTs infringes trade mark rights in “Birkin” - Hermès v Mason Rothschild

A first instance decision has just issued confirming that Hermès has succeeded in their US lawsuit against Mason Rothschild regarding use of “MetaBirkin” in relation to NFTs.
Read more
flags outside a UK building
Article
- 03 February 2023

Change to UKIPO practice where no UK representative has been appointed

As of January 2023, there has been an important, immediately implemented practice change by the UKIPO for rights where no UK or EEA based representative has been appointed – our recent article on this topic can be found here.
Read more
Photo: an EU flag flying next to a Union flag
Article
- 02 February 2023

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
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