Q&A with Mark Holah, Partner, Bird & Bird

By Mark Holah


The international IP group welcomed new partner Mark Holah at the beginning of 2015. A key addition to the firm’s international brand management practice, Mark’s expertise and market place recognition will help to ensure that we remain one of the leading practices in this area. Mark was previously head of the trade mark and brand protection group at Fieldfisher, where he spent 13 years; 11 as a partner. He has over 20 years’ experience of advising on intellectual property issues, with a particular focus on brand protection and trade mark portfolio management.

Do you have any horror stories about companies which haven’t protected their brand successfully?

Lots, including several clients I’ve worked with. An obvious example is a famous London nightclub that allowed someone else to apply to register their trade mark first – it took several years, a huge amount of money and a trip to the Court of Appeal to get ownership of the mark back.

What has been a career highlight so far?

Shallow I know, but I can’t look beyond one of the Spice Girls recommending me to another of the Spice Girls. I’m not saying which ones…

Do you have any dos and don’ts for new brands breaking into the market?

The most important thing to do is proper trade mark (and where relevant design) clearance searches. There is no point putting a lot of effort and expense into developing a brand that you can’t protect or, even worse, that someone else can stop you using. The most important thing to avoid is ignoring the previous two sentences!

What changes to EU trade mark law are likely in 2015?

There are changes to the Trade Marks Directive and Community Trade Mark Regulation under discussion that should come into effect in 2015. These will affect the law in many ways, one of the most important being how terms in specifications are interpreted, which will have an effect on the infringement rights given by many registrations.

Finally, why did you choose to come to Bird & Bird?

Because the firm has for many years been considered to have one of the, if not the, best IP practice in Europe. Add to that our commitment to being a leading brand protection practice and why would I want to be anywhere else?

This article is part of BrandWrites by Bird & Bird - May 2015