Trade mark litigation—pre-litigation
Produced in partnership with Baker McKenzie

The following IP practice note produced in partnership with Baker McKenzie provides comprehensive and up to date legal information covering:

  • Trade mark litigation—pre-litigation
  • Pre-litigation
  • Pre-action conduct
  • Unjustified threats
  • Pre-action costs
  • Preparation
  • Trade mark courts
  • Courts
  • Judges
  • Allocation
  • More...

Trade mark litigation—pre-litigation

This Practice Note is part of a series of Practice Notes summarising the main stages in High Court trade mark litigation. It focuses on: the steps to be considered before issuing a claim; providing practical advice on pre-action conduct; unjustified threats; and preparing a claim. It covers the Intellectual Property List (Chancery Division) of the High Court, which is part of the Business and Property Courts. The Intellectual Property List has three sub-lists: the Intellectual Property sub-list, the Patents Court sub-list and the Intellectual Property Enterprise Court (IPEC) sub-list. Trade mark disputes are generally heard in the Intellectual Property sub-list or the IPEC sub-list.

Since IP completion day (11.00 pm on 31 December 2020) EU trade marks (EUTMs) are no longer protected in the UK, as Regulation (EU) 2017/1001 has been revoked. Accordingly, it is no longer possible to assert EUTMs in proceedings before UK courts.

This Practice Note is designed to set out guidance upon trade mark litigation in the UK, and therefore its focus is upon proceedings brought in relation to UK trade marks. This includes comparable trade mark rights granted on IP completion day to holders of EUTMs as at that date. For more information, see Practice Note: What does IP completion day mean for intellectual property?

See also Practice Notes:

  1. Trade mark litigation—starting proceedings and statements of case

  2. Trade mark litigation—case

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