Trade Marks: Law and Practice

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Trade Marks: Law and Practice is a concise and practical account of UK trade marks law within the European and international context. The text incorporates and analyses ongoing amendments to the Trade Marks Act 1994 and the Trade Marks Rules 2008.

The EU trade mark system has been revised, and EUIPO practice has evolved and been overhauled. This edition incorporates the 2017 consolidation of amendments to the EU Trade Mark Regulation, in the form of Regulation (EU) 1001/2017, the introduction of EU Certification Trade Marks and new evidential rules for counterfeit goods in transit. Parallel changes under Directive (EU) 2015/2436 were implemented into National law in January 2019, by way of the Trade Mark Regulations 2018, including changes to criteria for registering national marks.

The system of international registration of trade marks under the Madrid Protocol and other international treaties has continued to develop and expand.

In the meantime, the UK has withdrawn from the EU, with a transitional period expiring at the end of 2020. Until this point, UK trade mark law has remained fully aligned with EU law. Legislation and arrangements to achieve this, and to provide for the future protection of marks, are summarised in a new chapter. That chapter also summarises the effects of the COVID-19 pandemic.

Trade Marks Law and Practice is essential reading for intellectual property lawyers in private practice or in-house, commercial lawyers, policy makers in government, trade mark agents and attorneys, trainees, academics and students. Non-specialist lawyers will also appreciate the accessible treatment of this complex area of law.


Fifth Edition, December 2020


This Fifth edition has been fully edited and revised to take account of recent legal developments. Key updates for this new edition include:

  • International collaboration on classification of goods & services; effects of IP Translator

  • Registering features of "shape and other characteristics", in the light of amendment, Louboutin and KitKat

  • The UK's requirement of intention to use by applicants Sky v Skykick

  • Frazer-Nash and the concept of the average consumer

  • The extent to which Offices and Courts can take judicial notice of well-known facts

  • Removal of trade marks and rebranding Mitsubishi v Duma

  • Online use, territoriality, targeting, spill-over; Iron & Smith/BE IMPULSIVE, Jadebay

  • Remedies for online infringement and the English Courts' decisions in Cartier v BSkyB

  • Tommy Hilfiger and other cases on joint tortfeasance

  • The relationship between confusion and goodwill in passing off cases since Starbucks v BSkyB

  • Kitemark, Der Grune Punkt and the relationship between certification, collective and regular trade marks
  • Contributors

    Peter Cornford  Contributor
    Professor Alison Firth  Contributor
    Andrew Griffiths  Contributor