The art of persuasion: advocacy before the trade marks registry

6th Jun 2025

How to master strategies for persuasive written and oral advocacy, and achieve success before the various UK IPO registries. Michael Edenborough KC has shared the tools you need to transform your approach to advocacy.

Author of Contentious Trade Mark Registry Proceedings, Michael Edenborough KC has toured the UK sharing ‘the art of persuasion’ – his unique tips from an established career of appearing before the UK registry, with more than 300 first instance and AP cases under his belt.

We summarise some of the key take-away points from Michael’s talks in Glasgow, Manchester and Bristol that will help you understand how to present your case better in adversarial tribunal proceedings.

The 2^nd edition of Contentious Trade Mark Registry Proceedings is available to buy - it is a complete guide for any trade mark practitioner conducting, or wanting to find out more about conducting, contentious trade mark matters in the UK.

Click here to find out more the publication

Uniting the “trinity of trinity”

To present a case in the best possible light in the UK’s adversarial tribunal proceedings, it is essential to build a strategy based on three pillars that Michael describes as the “trinity of trinity”: law, evidence, and procedure.

Law is the framework on which you will build your case, though the framework may be flexible in cases where the law is unclear or – arguably – wrong.

Evidence is what you will use to prove your points of law, and includes documents and live witness testimony.

Procedure is the mechanism whereby you introduce the evidence that will prove your legal points. It “dovetails the evidence into the legal framework” and includes pleadings, interim issues, and substantive hearings.

All three must combine to build a successful case.

The art of persuasion: common points in oral and written advocacy

Michael notes that there are considerations common to oral and written advocacy:

• Advocates are not allowed to give evidence: If you refer to evidence in written or oral statements, the source must be a deponent of fact or opinion, rather than the maker of the submissions.
• Preparation is key and cannot be rushed: You need to take time to analyse the problem, know what you are going to say, why you need to say it, and how to present it in the correct format.
• Clarity is critical: Clearly define matters, then delineate where your argument is going and differentiate it from where you are not going.
• Elan is important: Deliver your argument with flair, and make sure that what you say is fair and fitting.

Written advocacy: statement of grounds and counterstatements

The statement of grounds should be a story with a beginning, middle, and end, stating who we are, why we are here, what we want, and why we should get it. Michael strongly advises against overstating a case, as this opens an easy opportunity for attack by the opposition.

The counterstatement is more challenging. It must put forward the facts you have and the law that supports your case in a way that is “attractive, correct, and neutralises the other side”. Michael advises using admissions more frequently than traditionally has been the case. Admissions demonstrate that you know the case and its context thoroughly. Non-admissions should be used less, and they are only proper to use when you do not know whether a statement is true or false and it is a matter of contention that requires to be proved. Never “not-admit” something that you know to be true. Denials should be used when you consider that the other side is wrong and have a counter case to advance – bare denials without advancing a counter case are impermissible.

Further guidance for pleadings included:

• Plead facts, not beliefs: Your case should rely on factual evidence not supposition.
• Use technical terms and grammar correctly: The success of your case can hinge on the correct use of commas and the accurate use of technical terms. A non-trade mark example would be the difference between a person being hung and hanged.
• Avoid ambiguity: Even if you need to be deliberately ambiguous, you should do so in a way that doesn’t appear ambiguous.
• Present documents clearly: Avoid using narrow margins, as judges like to make notes. Be consistent with spacing and fonts and embolden definitions for easy reference. Documents that appeal to the eye give the impression that everything is cool, calm and collected.

Oral advocacy: finding your style

Everyone is different when it comes to oracy, says Michael. Fully scripted arguments are a prompt if your mind goes blank, but they can bore the listeners. When reading, you may miss facial expressions indicating the hearing officer is confused or has misunderstood something, robbing yourself of the opportunity to revert or rephrase your point.

Modular speaking notes, referenced to evidence with the key points listed, allow more flexibility to vary the order of events if the need arises. However, if you lose your thread, it is harder to pick it up again as there is no safety net of prepared text.

When making your presentation, it is important to modulate your voice so everyone can hear clearly, but do not shout as that is very annoying. Michael also underlines the value of silence – a well-placed pause can emphasise a point or bring the Judge’s attention back to you if they have wandered.

Michael noted that there are various styles that advocates adopt. Some maintain one style throughout, but others vary their approach as the situation requires. You may wish to be a “wise owl” to demonstrate your legal expertise and mastery of the papers. A “commanding eagle” approach helps to direct the judge to your desired outcome, while an element of “peacock” performance demonstrates passion, introduces memorability and avoids the argument becoming too dry. A “friendly budgie” approach can inculcate some levity, but too much can, however, undermine the authority of the submissions.

Whether you are a “wise owl”, a “commanding eagle”, a “peacock” or a “friendly budgie”, with Contentious Trade Mark Registry Proceedings, 2^nd Edition in your corner, you will be well-prepared to soar to success.

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