Published November 6, 2023

CITMA is proud to announce the publication of the much-anticipated and greatly updated 2nd edition of Contentious Trade Mark Registry Proceedings, authored by Michael Edenborough KC.

Aimed at CITMA members and intellectual property lawyers, this comprehensive 700-page guide is a valuable resource for anyone navigating contentious trademark matters in the UK.

An essential guide for trademark practitioners

The 2nd edition of Contentious Trade Mark Registry Proceedings is an extensive and updated guide designed to aid both new and seasoned practitioners in their understanding of the practice and procedure associated with contested ex parte and inter partes matters within the UK registry. The book serves a dual purpose: it offers a comprehensive introduction for newcomers to the field, while also providing in-depth guidance on complex issues that may arise during fully disputed matters.

What’s new in the 2nd edition?

This edition, in particular, stands out for its wealth of new content. Readers can expect to find an abundance of case law and discussions on various issues, covering advanced scenarios and quoting all principal rules. Additionally, it includes the text of most Trade Mark Practice Notes (TPNs) for quick and easy reference, making it an indispensable resource for trademark practitioners.

Author Michael Edenborough KC, with his extensive experience in handling trademark matters before the UK registry, adds a valuable perspective to the guide. He has been involved in numerous trademark cases before the UK registry, Appointed Person, and High Court, giving him a unique insight into the intricacies of contentious trademark proceedings.

Comparing the 1st edition to the new one Michael Edenborough KC said: “The second edition does much more. It is aimed not only at the new entrant but also at the experienced Trade Mark Attorney, and so as well as guiding someone new, it seeks to achieve a second objective of satiating the curiosity of an established practitioner. The fact that the second edition now has two objectives is reflected in its length, which is more than double that of the first edition.

Comprehensive coverage

Contentious Trade Mark Registry Proceedings delves into a broad spectrum of topics relevant to trademark practitioners, including:

  • Drafting statements of case in opposition, revocation, invalidity, and rectification proceedings.
  • Preparing and presenting evidence
  • Handling interim applications
  • Conducting hearings
  • Appealing to the Appointed Person and High Court
  • Awarding of costs
  • Prematurely ending and settling proceedings.

Ian Bartlett, Beck Greener and Chair of the CITMA Law & Practice Committee said: “Michael Edenborough’s book is a tour de force. No stone or fragment of IPO law and practice in this area appears to have been left unturned or unexamined.  This updated edition is replete with practical guidance built on Michael’s huge experience in this technical and highly specialized area.

“It is an invaluable resource both for the seasoned practitioner and those just cutting their teeth. I recommend it highly.”

The 2nd edition of Contentious Trade Mark Registry Proceedings is available in hardback format, featuring some 700 pages of invaluable insights. It is available exclusively from the CITMA website.

It can be bought by visiting our shop. This publication promises to be an indispensable resource for CITMA members and all intellectual property lawyers seeking guidance on contentious trademark matters in the UK.




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