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The Modern Law of Trade Marks, third time around

By Johanna Gibson, David Pearce, Jeremy Phillips and Ilanah Simon.

There comes a time in every lawyer's life when he needs more than just an internet connection and a smattering of favourite sites -- that dreadful moment when he has to consult a book. If he needs some joined-up thinking in the field of trade marks, and he's an English-speaking practitioner with a UK/European practice, he might just find that the book he's consulting is The Modern Law of Trade Marks (Third edition, 2008), published by LexisNexis and positively bulging with points to ponder, references to run to and an amplitude of verba ipsissima from some very quotable members of the judiciary.

The authors of this edition are barristers Christopher Morcom QC, Ashley Roughton and Simon Malynicz, all of IP specialists Hogarth Chambers. No wives, partners or significant others have been identified in the Preface, from which it may be inferred that the authors had to write the whole thing themselves -- no mean task for a triumvirate who also have much to occupy them during the working day. There's also a Foreword by Sir William Aldous, who opines:

"I expressed the hope in my foreword to the second edition that the problem of the delays involved in references to the European Court would be solved. Unfortunately it has not been ... This the national courts realise. It has led to reluctance on behalf of the parties and the courts to refer".

The IPKat disagrees. It seems to him that in many disputes there's always at least one party who is delighted that there will be a reference for a preliminary ruling, since it buys him time -- and the judges seem quite excited about referring their questions to the ECJ now that they've been encouraged to offer their suggested answers too.

Right: if you think your hoover is a dyson, you might think of adding this tome to your Christmas present list.
According to the publishers, who admittedly have a vested interest in saying nice things about it,

"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 [the IPKat says, if you look at the case law, you'll see that this book is actually a monument to decades of clients having either followed bad advice or chosen not to follow the good advice]. It includes detailed analysis of important UK and European legislation and decisions [which is why it has expanded to nearly 1,800 pages in length], in-depth commentary on the complexities of the Trade Marks Act 1994 [from some out-of-depth drafting?] 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".

The IPKat thinks that this is a fair description of the content. He is particularly pleased to see that the sections on customs and criminal offences have a lot more meat in them and are really very good now, probably in response to the confession by many law firms that they're not so big and important that they don't do that kind of grubby work. The sections covering criteria of registrability are also clear, well-structured and easy to follow, which makes them a pleasant change from some of the impenetrable source material which they have sought to explain.

On the downside, the IPKat appreciates that little has been written about the effect of the Intellectual Property Enforcement Directive 2004/48 and that, throughout Europe, there has hardly been any case law, but he feels that pretty well everything we've ever learnt about civil remedies is now under the shadow of the Directive and that there should be a great big disclaimer at the foot of every page of the section on Remedies, saying "All this is subject to the interpretation and application of Directive 2004/48".

As for the book itself, the Appendices start at p.953, which means that readers are getting around 800 pages of further padding in the form of things they're already got copies of several times over in their offices and libraries (though he's delighted to see the oft-forgotten Trading With the Enemy Act among them). The IPKat would rather see a lighter, cheaper book on sale, seeing as anyone who wants to have a copy of the relevant provision with him when he's reading the authored text will probably want them both open at the same time, which you can't do when they are all bound into the same volume.

Bibliographic data: hardback, cxv + 1,767 pages. ISBN 9781405727556. Website here. Rupture factor: severe

Full post as published by IPKat on June 30, 2008 (boomark / email).