Chris Cairns

Chris has worked in the IP profession for over 25 years and has specialised in the area of trade marks since 2001.

He covers all aspects of global trade mark protection and prosecution, including clearance searching, registration, oppositions, cancellations, assignments and due diligence.

Chris has worked with clients of all sizes, from start-ups and SMEs through to multinationals, and has advised clients in a broad range of commercial sectors, with specialisms in technology, food and drink, textiles, tourism, finance, software, energy and professional services.

Having been seconded to a large UK bank on several occasions and having worked as an in-house trade mark attorney for a FTSE-250 company for over 10 years while being in private practice, he has a valuable insight into the internal demands of clients and in-house IP departments.

Chris has a wealth of experience in protecting his clients' interests in trade mark opposition proceedings and has a proven track record in achieving results for his clients both in defence of and in proactively protecting his clients’ rights.

He adopts a tailored and pragmatic approach when advising his clients, working with his clients closely to understand their short and long-term commercial goals, and helping them to achieve the scope of trade mark protection they need to meet these goals.

Chris is experienced in managing client relationships, seeking always to provide a service to his clients that is personable, proactive and highly responsive. His clients and peers comment on his straightforward and down-toearth communication style.

He attends the global INTA conference annually, and regularly meets there with associates, recognising the value in meeting face-to-face wherever possible.

Chris sits on the Firm’s Operations Board.

Outside of work, he can often be found on the golf course or watching anime when not being a taxi for his three children.

• Example 1 – Portfolio Management – Chris manages trade mark portfolios for several high-profile clients in the food and drink, cosmetics, technology and life science research areas. He specialises in guiding clients through the complexities of overseas trade mark portfolio management. He assists the firm’s clients in building, protecting, and optimising their trade mark portfolios so that they align with their commercial objectives. Chris’ expertise lies in adopting a pseudo in-house trade mark counsel approach to understand his clients’ business and needs, providing commercial advice at all time (not options), streamlining costs, and ensuring portfolios remain strategically focused to clients’ business needs.
• Example 2 – Contentious Proceedings (Defensive) – Chris is currently in the process of registering a trade mark for a well-known UK-based food company at the UKIPO. The trade mark application has been opposed by a very large third party. While representing the client in ongoing opposition proceedings before the UKIPO, Chris is also in negotiations with the third party to resolve the matter amicably, providing the client with clear, practical guidance on defending the opposition, and trying to arrive at a negotiated settlement that aligns with the broader commercial objectives of the client.
• Example 3 – Complex Trade Mark Prosecution – One of Chris’ large cosmetics clients was seeking to register a borderline descriptive trade mark in the US, which was refused by the USPTO. The trade mark in question is the client’s house mark and flagship brand and is important for the US market. While previous attempts to register the same trade mark have failed, understanding the client’s business has allowed Chris to gather evidence of acquired distinctiveness which was successful in overcoming the refusal at the USPTO. The client is delighted with the result, and this ensures stronger protection is in place for the client’s flagship brand in a key market going forward.
• Example 4 – Infringement Action – One of Chris’ clients received a cease and desist letter in the UK from a very large US-based toy manufacturer threatening infringement and passing off proceedings. The client initially was in the process of removing their toy products from the market but was referred to Chris by a third party. Having discussed the issues with the client, it was felt that the cease and desist letter was thin. Rather than knee-jerk and remove the products from the shelves at such an early stage, Chris responded to the cease and desist letter providing sound and compelling arguments to deny the allegations of infringement and there has been no follow-up from the large US-based toy manufacturer to date.

• BSc Instrumentation With Applied Physics - Glasgow Caledonian University - 1997
• UK Chartered Trade Mark Attorney - UK Chartered Institute of Trade Mark Attorneys - 2009
• IP Litigation - UK Chartered Institute of Trade Mark Attorneys - 2012

• Intellectual Property Regulation Board - 2009