Boult Wade Tennant

Firm overview:

“Absolutely at the top of its game,” and “brilliant on the trademark prosecution side”, say peers about European IP firm Boult Wade Tennant. The “thoughtful, attuned and client-driven” team of attorneys is “a safe pair of hands” for non-contentious referrals from firms. In the UK, Boult Wade Tennant is responsible for almost 30,000 trademark applications and registrations before the UK Intellectual Property Office (UKIPO). 

With locations in the UK, Germany and Spain, the team continues to work with its European clients post-Brexit and advises on brand selection with a view to avoiding disputes. Equally, its attorneys assist on settling matters or handling registry disputes before the UK and EU IPOs where necessary, and work with solicitors and barristers when matters reach the courts. 

To combat counterfeiting and trademark infringement, Boult Wade Tennant has experience working with Trading Standards and the police to target and intercept the trade of counterfeit goods.

Team overview:

Boult Wade Tennant has six European offices, with the UK team of attorneys based across London, Cambridge and Reading to form the trademark and domain names group. 

Peers “particularly highlight the skills and range of partner Catherine Wolfe”. Wolfe is a trademark attorney and previously served as president of the Chartered Institute of Trade Mark Attorneys. Her experience includes filing trademark applications in registers worldwide and acting in ex parte and inter partes hearings at the UK Trademarks Registry.

The “superbly bright” attorney Felicity Hide focuses on dispute resolution and settlements and handling matters before the UKIPO, working with clients in entertainment, media, technology and finance. 

Peers “have the utmost respect” for Tony Pluckrose—“he is a fine attorney.” Pluckrose is experienced in trademark prosecution and oppositions, as well as patents, and has supported the firm’s key clients in UK High Court litigation alongside solicitors and barristers. 

Rachel Conroy, head of the trademark and domain names group, is complimented by peers for her technical ability. In addition to her experience in trademark prosecution and portfolio management, Conroy’s work involves coordinating with Trading Standards and customs authorities on counterfeit matters.

Key matters:

• Boult Wade Tennant represented the applicant Friendz Social Media in an opposition regarding its mark ‘Friendzr’ before the Intellectual Property Office. The opponent relied on its earlier mark ‘Friendfinder’, in use since 2000, to argue that there was a likelihood of confusion between the two marks. In reviewing the marks, attention was drawn to the visual difference in the endings ‘zr’ and ‘finder’ and the pronunciation of the client’s mark—likely to be ‘friends-are’ or ‘friends-zed-are’.
  
  Overall, it was concluded that the marks were not highly similar and the opponent’s trademark was not inherently distinctive, the only common element of the marks was the word ‘friend’ and there was no likelihood of confusion. Boult Wade Tennant’s client succeeded in March 2023 and the opponent was ordered to contribute to the client’s costs incurred as a result of the opposition.

Clients:

Friendz Social Media, Harman, Lambretta, The Royal Shakespeare Company, TDK