Nigel handles contentious and non-contentious trade mark and other intellectual property matters for clients which include SMEs, large corporates and individuals. He is a Registered Trade Mark Attorney, European Trade Mark Attorney and Fellow of The Chartered Institute of Trade Mark Attorneys.

 

Nigel’s practice includes:

  • carrying out and analysing the results of searches for trade marks and other intellectual property rights
  • advising on the registrability of trade marks and other intellectual property rights
  • preparing and filing UK, EU and international trade mark applications and advising and dealing with objections in relation thereto
  • bringing and defending trade mark opposition and cancellation proceedings at the UK Intellectual Property Office and European Intellectual Property Office
  • appeals of decisions of the UK Intellectual Property Office to the Appointed Persons and High Court
  • appeals of decisions of Examiners, Opposition Division and Cancellation Division of the European Union Intellectual Property Office (EUIPO) to the Boards of Appeal of the EUIPO
  • representation of clients at hearings on trade mark matters before the UK Intellectual Property Office
  • sending and responding to letters before action on intellectual property matters
  • drafting and preparing co-existence agreements and undertakings 
  • drafting assignments and licences for intellectual property rights and attending to their recordal
  • carrying out due diligence for investors and vendors
  • providing business advice on the management of intellectual property portfolios and future filing strategies
  • preparing and filing applications for registered designs
  • filing and defending domain name disputes (UDRP and DRS)

 

Nigel’s work has included:

  • filing and registering the first 3-dimensional trade mark in the UK (the shape of the ‘Toblerone’ chocolate bar) in 1994
  • registration of slogan trade marks including "We Restore, You Recover" (Case R 2197/2011-2 of 11 May 2012 before the Second Board of Appeal of EUIPO) Nigel obtained acceptance of the slogan,one of the few slogans to have been accepted by EUIPO;
  • a successful appeal to the Appointed Person in an opposition overturning objections on multiple grounds (Starfire Publishing Limited v. Ordo Templi Orientis [2009] RPC 14)
  • appeal to the Appointed Person concerning the dominant and distinctive element of a composite trade mark in PetMed Express, Inc. v Petmeds Limited (BL O/471/11).

 

Nigel’s experience and memberships include:

  • Examiner for The Joint Examination Board of (The Chartered Institute of Patent Attorneys and The Institute of Trade Mark Attorneys from 1997 until 2013 with responsibility for setting and marking one of the advanced level examination papers for qualification as a Registered Trade Mark Attorney in the UK
  • council member and director of The Institute of Trade Mark Attorneys from 1999 until 2004 and was a member of its Education & Training and Continuing Professional Development Committees
  • Member of The International Trademark Association (INTA), European Communities Trade Mark Association (ECTA),  Fellow of The Royal Society for the encouragement of Arts, Manufactures and Commerce (FRSA) and an Affiliate Member of The Royal Town Planning Institute.
     

Nigel joined the trade mark profession in 1987 with a well-known firm of patent and trade mark attorneys in London, where he obtained his UK trade mark qualifications by passing the examinations of The Institute of Trade Mark Attorneys (ITMA) in November 1993. Since this time Nigel has been a partner in two leading firms of patent and trade mark attorneys in London and Bristol. Nigel joined the firm in January 2015.

 

Tel: +44 (0)20 7842 8000
DDI: +44 (0)20 7842 8013

London


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