The Modern Law of Trade Marks is a comprehensive guide on trade mark law enabling practitioners to provide clients with effective advice with the best possible support and authority. It includes detailed analysis of important UK and European legislation and decisions, in-depth commentary on the complexities of the Trade Marks Act 1994 and the Madrid Protocol and the CTM Regulation.

All aspects of registered trade marks are included, together with information on applications, registration, protections and infringement. Divided into 7 parts, key topics covered are: Background to the Law; Registered Marks; Passing Off; Civil Proceedings; Customs and Criminal Offences; International Treaties; and the Community Trade Mark.

Part I - General Introduction;
1. Subject-matter and history of the law;

Part II - Registered Marks;
2. The Comptroller-General and the registry;
3. Representation at the registry;
4. Definition of a trade mark;
5. Registrability;
6. Conflict with earlier rights;
7. Loss of rights and rectification;
8. The application for registration;
9. Procedures after acceptance and after registration;
10. Special categories of trade marks;
11. Registered trade marks as property;
12. Infringement and protection of well-known marks;
13. Threats;

Part III - Passing Off and Miscellaneous;
14. Passing off;
15. Malicious falsehood, trade libel, defamation and emergency;

Part IV - Special Topics;
16. Exhaustion of rights;
17. The Internet;
18. Protected Designations of Origin and Protected Geographical Indications;

Part V - Civil Proceedings;
16. Domestic Procedure and Remedies;
17. Procedure in the European Court of Justice and Court of First Instance;

Part VI - Customs and Criminal Offences;
18. Border controls - the domestic procedure and domestic proceedings;
19. Border controls - the European procedure;
20. Criminal Aspects of the law of Trade Marks;

Part VII - International Treaties;
21. International registration under the Madrid Protocol;
22. The Paris Convention and the TRIPS Agreement;

Part VIII - The Community Trade Mark;
23. The Community Trade Mark Regulation and its implementation in the UK;
24. The Community Trade Mark Regulation: the law relating to trade marks;
25. Applications for Community trade marks;
26. Registration procedure;
27. Maintenance of the Community trade mark and cessation or loss of rights;
28. Procedure before the Office;
29. Appeals;
30. Community collective Marks;
31. Proceedings for infringement

By Christopher Morcom, QC; Ashley Roughton; and Simon Malynicz, Hogarth Chambers

Student Law Journal review, published here with permission.
Reviewed on 11 October 2009

For many businesses, the brand and trade mark is extremely important. Getting it right often means the brand and trade mark is instantly recognised and leads to an increase in customer loyalty. To ensure such rights are protection, trade mark law (including common law passing off) steps into the breach. Such an important area of law deserves a clear and comprehensive text. Fortunately, Morcom, Roughton & Malynicz: The Modern Law of Trade Marks provides exactly this.

Written by a team of experienced intellectual property from specialist set, Hogarth Chambers, Morcom, Roughton & Malynicz: The Modern Law of Trade Marks is impressively separated into eight parts: general introduction; registered marks; passing off and miscellaneous; special topics; civil procedures; customs and criminal offences; international treaties and the Community Trade Mark. It also has eight excellent appendices: United Kingdom statutes; secondary legislation; rules of Court; international registration; international conventions; European material; miscellaneous registry material; and useful website addresses.

The authors' experience in trade mark law is evident throughout the text. For example, the chapter dealing with civil proceedings explains the procedure in trade mark courts. This is important, particularly for lawyers who do not exclusively practise in this area of law. The text's written style is also largely practical with the material being divided into short and manageable sections with a number of footnotes or cross-references to other parts of the text. Being a largely practitioner's text, the appendices are excellent meaning most of the resources are to hand and contained in one handy volume. Precedents would, however, have been extremely welcome.

For many practitioners, Morcom, Roughton & Malynicz: The Modern Law of Trade Marks is a one-stop and comprehensive resource on trade mark law. It has been thoroughly updated since the last edition to include the latest developments in both domestic and international trade mark law. Practitioners who do not exclusively practise in this area of law may, however, miss the lack of precedents. That said, this is a superbly accessible and practical account of trade mark law meaning it is, and continues to be, an important practitioner text.