Marks & Clerk

WTR Research

The WTR 1000 focuses exclusively on trademark practice and has firmly established itself as the definitive 'go-to' resource for those seeking world-class legal trademark expertise.

Silver - Firms: prosecution and strategy

Bronze - Firms: enforcement and litigation

Marks & Clerk has one of the largest UK trademark teams, with 35 qualified professionals – including 10 partners – working from offices in nine cities across the country. While its prosecution and litigation functions may operate separately on paper, in practice they operate in tandem, with solicitors and trademark attorneys joining forces to provide total support across the trademark lifecycle. Brexit has proved no obstacle to its continued growth, thanks to the merger of its UK and EU operations and the expansion of its European team from three to nine people. Companies that have appreciated its precision prosecution this last year include Jägermeister, Pukka Pies and Pal International. Taking care of a rebranding strategy for Pukka and a large-scale global filing programme for Pal International is Birmingham-based John Ferdinand, who has been protecting the marks of his cross-sector multinational clientele for more than a decade and is an authority on non-traditional marks, especially shape marks. He is joined on the prosecution side by Claire Keating, Esther Gottschalk and head of trademarks Tom Farrand. Keating “has a strong mastery of the subject matter, figures out alternative ways to solve problems and has a keen understanding of a client’s business needs”. Gottschalk is equally commercially astute and is an especially valued trademark guardian for US players; while Farrand has been providing far-sighted strategic counsel for decades and brings hands-on experience from building and developing teams within a leading private-equity owned business. On the contentious front, two key cases for the firm involved representing rugby stars Mike Tindall, James Haskell and Alex Payne in a high-profile podcast-related dispute; and defending musician Alan Parsons against a High Court claim brought by The Project Band Ltd. Acting on both pieces was Kirsten Gilbert and by her side on the latter was Vicky Butterworth. Gilbert heads up the brand protection team and has been a vital resource to rights holders for 20 years, whether for enforcement issues or licensing arrangements. Intimately familiar with both trademark and copyright law, of counsel Butterworth is known for her creative pre-litigation strategies. Also resident in the brand protection team is Gina Lodge, an expert on pharmaceutical trademark issues who is as at home fighting complex disputes as she is providing strategic advice to investors. She recently acted for Scottish clothing company the House of Bruar in Community design infringement proceedings.

Bronze - Firms

Global outfit Marks & Clerk “consistently provides first-rate counsel and an extremely efficient service”. It is in pole position to tackle hefty mandates thanks to its multinational network of 18 offices in seven countries, and in July 2020, it acquired additional firepower in the form of three Bereskin & Parr practitioners, Jonathan Colombo, Amrita V Singh and Catherine Lovrics. “A force to be reckoned with and a formidable litigator and negotiator, Jonathan thinks outside the box to achieve great results. He is an excellent collaborator and a master at fusing the worlds of trademarks and copyrights, which is beneficial to entertainment customers. His addition to the team has significantly increased its strength.” Joining the IP lead in the guide this year, Singh and Lovrics come in for effusive praise. “Amrita is an outstanding person to bounce ideas off, and her comments are always creative and insightful. She is a skilled litigator who knows her client’s goals, provides practical solutions to any issues that arise, and is an invaluable resource to brand owners navigating the complexities of Canadian trademark law.” Of Lovrics one patron enthuses: “Cat is my go-to attorney in the country. She is bright, thoughtful, and always considers both the legal and business implications of matters. Her tireless approach means she always delivers high-quality work with practical insights.”

Silver - Firms: prosecution and strategy

Marks & Clerk garners enthusiastic reviews from those who instruct in Singapore: one source asserts that “the firm provides sound guidance that reflects an understanding of our business and meets all our demands in terms of response time and fee competitiveness”. Expressing similar sentiments, another comments “it has all the substantive trademark knowledge and prosecution skills you expect, but has the crucial ability to recognise commercial opportunities and advantages and develop IP strategies to take advantage of them”. The focal point for praise, Candice Kwok is “clear sighted, accurate, attentive and efficient” and “goes above and beyond for her clients”. “She combined deep trademark expertise with strong business acumen – she understands how to protect trademarks in alignment with your corporate priorities and in your key markets.” Her advice is just the ticket for rapidly expanding national businesses, such as Veredus Laboratories, a provider of innovative molecular diagnostic solutions, and snack food company Cocoba, both of which she has recently undertaken strategic international filing tasks.

Silver - Agencies

Marks & Clerk Malaysia leverages its membership to the international group to achieve global outreach at competitive prices. Since its inception in 2009, this local branch of the UK behemoth has been steadily expanding its clientele base to encompass individuals and corporations from Europe, the United States, Korea, and Japan – including household names such as Bridgestone and CJ Cheiljedang. The firm has an impeccable track record when it comes to opposition hearings for such players: its director, battle-hardened litigator Gerald Samuel, is usually on the frontlines of these proceedings. A persuasive negotiator, Samuel often explores possibilities of amicable solutions, but is not afraid to clash swords when the situation calls for it.

Gold - Firms: trademark attorneys

With 17 offices around the globe, Marks & Clerk can swiftly and ably tend to trademark issues wherever on the map they crop up. Its UK offering is characterised by significant strength and depth, and the Scottish contingent is an important part of this: from offices in Edinburgh, Glasgow and Aberdeen, a dedicated and experienced team provides an A-to-Z trademark service to a glittering roster of clients. The twin engines of the practice are Jason Chester and Janice Morrison, who both split their time between Edinburgh and Glasgow and receive superlative recommendations from patrons. “Jason is of great help when advising on trademark registrations, as well as on opposition and invalidity strategies. He provides practical solutions based on an understanding of clients’ businesses”. “Janice is one of the most organised and orderly professionals I have worked with. She makes clients’ lives easier by providing input quickly and promptly, always sending appropriate reminders close to a deadline. She is a wonderful resource for advice and strategy beyond handling routine UK and EU filings. She often anticipates issues and provides advice ahead of filings in order to reduce obstacles”.

Recommended - Firms

Backed by the resources of an international firm, Marks & Clerk’s Luxembourg outpost has access to an impressive IP toolkit, which it readily deploys when devising effective cross-border filing strategies and filing marks on a worldwide scale. Senior associate Martin Gutwillinger is a smooth operator who assists a diverse clientele in safeguarding their assets locally and further afield. He is also the resident domain name guru and steps in when conflicts arise in cyberspace.

Bronze - Firms: prosecution and strategy

A fixture on Hong Kong’s IP scene since 1984, international powerhouse Marks & Clerk stands out as the leading prosecution practice. With a hefty stack of marks and portfolios under the deft management of its trademark team, the firm protects and enforces IP rights on behalf of service users, which range from SMEs to multinationals. A UK-registered attorney who has been stationed in the city for nearly three decades, partner Simon Speeks has unparalleled China experience and has guided many US players in fields as diverse as entertainment, food and beverages and mineral exploration, as well as helping engineering companies and financial institutions to navigate the Greater China trademark scene.

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