Benelux: Agencies China and SARs: Hong Kong International Malaysia Singapore United Kingdom: England United Kingdom: Scotland Marks & Clerk

Marks & Clerk is one of the world’s leading IP firms. Its team of patent and trademark attorneys is the largest in the United Kingdom, recognised alongside its team of lawyers as leaders in their field. Across its global practice, the firm has an unrivalled wealth and depth of expertise that ensure its clients are advised on how best to obtain, protect, exploit and defend their IP rights.

The firm’s trademark attorneys, lawyers and consultants operate across all sectors. The client base is diverse, ranging from new ventures to well-known multinational corporations. Marks & Clerk has offices in 16 locations, including eight in the United Kingdom, two in France and offices in Canada, Luxembourg, China, Hong Kong, Malaysia and Singapore. This allows it to offer clients access to an extensive but integrated international network of IP practitioners.

Globally, the firm has over 230 IP practitioners, including 60 trademark attorneys and 29 lawyers.

An international attorney practice

Marks & Clerk’s attorney practice is one of the top European filers of EU trademarks, but its expertise is renowned in all jurisdictions in which it operates. To assist clients with the development of their branding strategies, Marks & Clerk attorneys review and advise on existing portfolios of rights within the context of competitor and sector activity worldwide. Additionally, they advise on worldwide strategies for brand protection, portfolio management and renewals (working with world leader CPA Global), and on the many different ways to leverage IP rights. When seeking to secure brand protection, attorneys advise on whether a trademark can be used or registered; consider possible alternatives, including unregistered rights; conduct availability searches; and file and prosecute trademark applications through to registration.

In addition, the firm can:

  • advise on issues such as validity and conflict with third-party trademarks;
  • review the possibility of amending marks to avoid third-party rights;
  • bring and defend actions for revocation of trademark registrations;
  • oppose the grant of registrations before national or regional offices;
  • draft and record licences and assignments and assist in negotiations with third-parties;
  • assist with the transfer of rights or the acquisition of third-party rights; and
  • help to police marks and monitor for rights infringement.

Marks & Clerk’s trademark attorneys also advise on domain name issues and registration on the Internet, and can manage the application process for the registration of rights with the Trademark Clearinghouse.

A specialist IP legal practice

The firm’s legal practice has significant experience in the full range of legal services relating to the protection and enforcement of trademarks and related rights. The team specialises in dispute resolution, advising on trademark enforcement and passing-off disputes.

Marks & Clerk’s UK team has significant litigation experience, having represented clients in disputes in the Intellectual Property Enterprise Court, the High Court, the Court of Appeal, the Supreme Court and courts further afield such as the General Court of the European Union and the European Court of Justice. The firm also regularly advises on online brand enforcement issues, including takedown notices and domain name disputes. It has extensive experience in alternative dispute resolution, having acted for clients in mediation and arbitration, as well as in informal settlement discussions.

The firm’s lawyers have coordinated substantial anti-counterfeiting campaigns, particularly multi-jurisdictional strategies across Europe, working with Customs and hand-picked associate law firms to ensure that clients’ enforcement strategies are cohesive and consistent, and meet their key objectives.

Complementing this, Marks & Clerk’s lawyers are commercially focused and advise regularly on the exploitation of trademarks, helping clients to maximise the value of their brands by using their IP portfolio to provide streams of revenue, such as by way of licensing.

A unique consultancy

Launched in 2012, Marks & Clerk’s consulting practice provides a range of wider consultancy services complementary to our mainstream legal and IP advisory services. In particular, it offers:

  • valuations and all of the due diligence, documenting, validity and scope research and portfolio assessments needed to support credible valuations;
  • strategic advice on how to maximise the value of the portfolios reviewed;
  • budget and cash-flow forecasts; and
  • assessment of licensing options and structures.

Contact details

Marks & Clerk
90 Long Acre
London WC2E 9RA
United Kingdom

E: london@marks-clerk.com
T: +44 20 7420 0000
F: +44 20 7836 3339
W: www.marks-clerk.com

Professional contacts

Matthew Sammon, UK joint head of trademarks
E: msammon@marks-clerk.com

Kirsten Gilbert, UK joint head of trademarks
E: kgilbert@marks-clerk.com

Simon Speeks, Asian managing partner
E: sspeeks@marks-clerk.com

Other offices

Aberdeen, Beijing, Birmingham, Cambridge, Edinburgh, Glasgow, Hong Kong, Kuala Lumpur, Luxembourg, Manchester, Ottawa, Oxford, Paris, Singapore, Sophia Antipolis

Recommended individuals at this firm

Candice Kwok
Singapore

Martin Gutwillinger
Benelux: Agencies

Gerald Samuel
Malaysia

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Issue 67