Shane Smyth of the MARQUES Education Team reviews A User’s Guide to Trade Marks and Passing off by Nicholas Caddick QC, Ben Longstaff, Jamie Muir Wood and Charlotte Duly (published by Bloomsbury Professional and available as a paperback and e-book here).

I must admit that sometimes when I see a book with the heading “A User’s Guide”, I get the heebie-jeebies. This is because as an IP attorney, I so often come across terms such as the relevant public and the informed user.

It is the word “guide” that amounts to a disservice. Now in its fifth edition, this has become a loyal companion and has been informing users since I was a young lad. Newly on board to the editorial team are James Muir Wood (barrister at Hogarth Chambers) and Charlotte Duly (trade mark attorney at Charles Russell Speechlys and member of the MARQUES Education Team).

The fallout of Brexit is specifically addressed, an issue which crosses my own desk on an almost daily basis. Not for the faint hearted are the UK statutory provisions and jurisprudence in relation to groundless threats and including potential liability against a professional advisor. A whole chapter is devoted to groundless threats and on how to navigate these waters.

While you may have at least a degree of familiarity with the law of passing off, there are other common law actions and I particularly found useful the summation on the law of malicious falsehood which tends to be somewhat of a back burner. That cannot be said of the latest developments in search orders following the 2020 Court of Appeal judgment in TBD (Owen Holland) Ltd v Simons & ors.

It is inevitable that in the future there will be at least some degree of variance between UK jurisprudence and that prevailing in the European Union or indeed UK jurisprudence on areas of trade mark law in which there is a paucity of EU case law. This is where this companion and any future edition will take centre stage in sending me in the right direction as I seek precedent.

The front cover of the fifth edition features a pair of Louboutin shoes. I wonder if we are in the realm of an oxymoron because although these shoes may not be fit for walking, you can certainly strut with this companion by your side.

This review is part of an occasional series contributed by members of the MARQUES Education Team. Shane Smyth is also a Partner of FR Kelly in Ireland and a MARQUES Council Member.