Trade Marks Company

Swindell & Pearson in Leading Position for Trade Mark Cases

November 05, 2013

Swindell & Pearson joint top for oral proceedings in trade mark cases at UK Intellectual Property Office.

Swindell & Pearson has been revealed to be amongst the very top firms for oral proceedings before the UK Intellectual Property Office (“UKIPO”) this year (2013). A review of the official records revealed that we hold joint top spot for the number of cases in which we have appeared and given oral arguments. Whilst written arguments are often used at the UKIPO, where the facts are difficult it can be advisable for the lawyer to appear in person. Swindell & Pearson’s placing at joint top spot highlights our particular experience and expertise in contentious trade mark matters, particularly those with difficult and conflicting evidence. In contrast to a number of our competitors, in each case we have elected for our attorneys to appear as advocates rather than instruct barristers, allowing us to leverage our close knowledge of our client, the law and the facts of the case. A number of our cases have involved conflicting or problematic evidence meaning that cross-examination has been necessary. This is an uncommon step at the UKIPO and cross examination is often perceived as the most difficult skill to master, so we are pleased that in those cases where we conducted cross examination we were successful in undermining the other side’s evidence to such an extent that the decision maker then criticised the other side’s evidence in the written decision.

Here are examples of such comments from 3 of our recent cases:

“[the opposition’s] approach to its evidence … is extremely casual” “although [the opposition’s key witness was] an honest witness, some of his evidence was vague and at times confused”.

“Although [the opposition’s witness] struck me as an honest witness, many of his answers were hazy and inconsistent; he failed to demonstrate a good grasp of the detail as to when various events occurred”

We are also pleased to say that a member of our trade mark team recently appeared as advocate before the High Court in defence of one of his earlier successes at the UKIPO. It is rare for a case to be appealed to the High Court, and even rarer for a trade mark attorney to appear as the advocate (such cases generally being run by senior QCs). Electing to appear saved the client approximately £30,000 in legal fees and meant that we could bring to the case our detailed knowledge of the law and the facts.

If you have any questions concerning our work at the UKIPO in trade mark matters, please get in touch with your usual contact at Swindell & Pearson Ltd or Aaron Wood at [email protected]

Swindell & Pearson has been helping businesses and individuals protect and defend their ideas, innovations and brands for over 130 years. With its head office in Derby, the firm also has offices in Stoke, Wolverhampton, Stafford, Sheffield and Burton. To find out how Swindell & Pearson can help you with any intellectual property requirements please get in touch via [email protected] or by telephone on 01332 367 051.