Womble Bond Dickinson has trademarked the name “Womble” as part of a “defensive strategy” launched by the firm after its transatlantic merger, The Lawyer can reveal.
The firm registered the name Womble Bond Dickinson over the summer, as well as just the word Womble.
Both trademarks cover the UK and EU, while the standard Bond Dickinson trademark was renewed last year and lasts for 10 years.
The two trademarks cover legal services, telecommunication services, provision of financial advice, business management advice and computer software. They also cover paper and cardboard goods, and education and training services.
Trademark lawyers claim the word Womble – more closely associated with children’s TV show – was able to be registered because it is for goods and services that are not similar to “The Wombles” TV show.
However, they queried whether the owners of “The Wombles” would object to the trademark, citing that some of the goods and services could overlap. These include the publishing classes of the trademark used in education and training services.
MW Trade Marks represents The Wombles owner (the estate of Elizabeth Beresford), led by partner Anne Wong. It is not known whether there will be any objection from their client.
“The law firm would have to show that they have used the trademark Womble in the next five years, otherwise it could be challenged,” said one trademark partner.
This raises questions over the future of the Bond Dickinson name, with another sources adding that Womble may have been registered for domain name reasons.
A spokesperson for Womble Bond Dickinson said: “This is a standard defensive trademark strategy. As part of becoming Womble Bond Dickinson, we already had “Bond Dickinson” registered in the UK, so along with “Womble Bond Dickinson” we sought to also register “Womble” in recognition of the heritage of that name in the US market.”
There are few firms in the UK that have merged with non-UK based firms with no presence in this country.
Of the few that have announced tie-ups in the last few years – none of the non-UK firms have registered individual trademarks in the UK. Freehills did not register its name after its merger with Herbert Smith, while Patton Boggs did not apply either after merging with Squire Sanders.
Kaye Scholer’s name is also not trademarked after its merger with Arnold & Porter earlier this year.