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Michael Edenborough QC

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Michael Edenborough QC

Areas of Expertise

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Year of Silk: 2010
Year of Call: 1992
medenborough@serlecourt.co.uk

Overview

Michael’s practice centres on appellate advocacy and advice concerning the validity, revocation or cancellation of registered intellectual property rights such as patents, trade marks and designs. In addition, he commonly deals with such issues as infringement, subsistence and ownership of those registered rights and the related unregistered IPRs such as copyright, design right and passing-off at first instance and on appeal. He is also instructed on matters relating to  plant varieties, moral rights, database rights, Geographical Indications, data protection and Freedom of  Information issues.

He aims to provide commercial solutions for his clients, so as to place them in the best possible position to protect, exploit and enforce their IPRs, or to avoid or minimize their liability if threatened by such rights, be it by negotiation, ADR, registration, litigation or otherwise. His forte is tricky points of practice and procedure.

Michael took silk in 2010, 12 years after his first reported case. He now has over a 100 reported cases, two thirds of which are appeals or judicial reviews, and so averages over 6 reported cases a year.

He acted for the Comptroller-General of Patents, the Registrar of Trade Marks and the UK Government before the Court of Justice of the European Union, the House of Lords, the Court of Appeal and the High Court (both Chancery Division and Patents Court) on, inter alia, appeals from the Patent Office and the Registry. He has been instructed by the Chartered Institute of Patent Attorneys, the Institute of Trade Mark Attorneys and AIPPI UK to advise and act for them in the Court of Justice and the Supreme Court. He appears regularly before the General Court of the European Union (formerly the Court of First Instance), Luxembourg on appeals from OHIM, and on Article 267 references and appeals to the Court of Justice (over 40 cases in all). He has also  acted before both the legal and technical Boards of Appeal and the Opposition Division of the European Patent Office.  He has acted in more than 275 matters before the trade mark registry, and in over 50 appeals to the Appointed Person.

Areas of Expertise and Cases


Add section

Intellectual Property

Principal Areas of Practice within IP

Trade marks and passing-off
Copyright and designs (both registered and unregistered)
Patents and trade secrets / confidential information
Others IPRs such as plant varieties, certificate and collective marks, GIs (e.g. PDOs, PGIs, and TSGs), database  rights and moral rights

The following reported cases are merely a selection. Some areas are unrepresented, as they settle more often than others before reaching court.

Trade Mark Law and Practice

Golden Ball Ltd v OHIM (GOLDEN BALLS) Case T-437/11; [2014] ETMR 1: a pro bono publico appeal to the General Court from OHIM concerning the issue of the similarity or otherwise of translated similar phrases, in this case “Golden Balls” and “Ballon d’Or”.

CIPA's TM Application (IP TRANSLATOR) [2010] RPC 31, [2012] ETMR 42; [2013] RPC 20; [2013] ETMR 42: an Article 267 TFEU reference to the CJ, Case C-307/10, on the proper construction of a trade mark statement of goods and services: "means-what-it-says" vs "class headings covers all" approach.

Omega Engineering v Omega SA [2010] FSR 26, ChD; [2011] ETMR 40, CA; and, [2013] FSR 25: two related cases concerning the proper approach to the construction of trade mark settlement agreements when the Nice Classification system has changed during the lifetime of the agreement, and the proposed limitation might not be POSTKANTOOR compliant.

Imagination Technologies Ltd v OHIM (Pure Digital) Case T- 461/04, [2007] ECR II-122, [2008] EMTR 10, CFI: appealed to the ECJ Case C-542/07 P, [2010] ETMR 19: concerned the date by which a trade mark application needs to have acquired a distinctive character.

Budejovicky Budvar NP v Anheuser-Busch Inc. [2010] RPC 7: appeal to the CA on the issue of statutory acquiescence which became the subject of an Article 267 reference to the Court of Justice (Case C-482/09).

Enercon TM Case T-472/07 before the CFI, and then appealed to the ECJ Case C-59/09: acted for ITMA in an attempt to secure rights of representation and audience for Trade Mark and Design Litigators.

adidas v Marca Mode Case C-102/07,[2008] ECR I-2439, [2008] FSR 38, [2008] ETMR 44, ECJ: acted for the UK Government on the scope of protection that should be afforded to a mark that was distinctive only by reason of acquired distinctiveness, in this case the three-stripe mark Smirnoff Trade Marks [2006] RPC 16: acted for the grandson of Pierre Smirnoff against the American producers of grain spirit.

West (t/a Eastenders) v Fuller Smith & Turner [2002] FSR 55 and [2003] ETMR 30; [2003] FSR 44 and costs judgment [2004] FSR 32, CA: reducing the specification of the ESB trade mark from “beer” to “bitter”.

Gerber products Co v Gerber Foods International [2002] ETMR 77 and [2003] RPC 1; [2003] RPC 34, CA: interesting points on sovereign immunity in relation to trade mark use and infringement and geographical limitations.

BUD and BUDWEISER BUDBRÄU TMs [2002] RPC 38; [2003] RPC 25, CA: part of the “Bud/Budweiser” dispute.

Various appeals from OHIM to the Court of First Instance/General Court and then on further appeal to the Court of Justice, Luxembourg (instructed in over 35 such appeals), e.g. Citigate Case T-301/09, [2013] ETMR 17; Smart Technologies Case C-311/09 P [2012] ETMR 49; Hoo Hing Case T-300/08, [2010] ETMR 9, and Case T-303/08 [2011] ETMR 44 (and on appeal Case C-76/11 P, [2012] ETMR 22); Cheapflights Case T-460/09 [2011] ETMR 43; Omnicare Case T-277/06, [2009] EMTR 62 (and on various appeals Cases C-587/11 P and C-588/11 P); Gerson (Yellow-tipped paint filter) Case T-201/06; Astex Technology Case T-48/06, [2009] ETMR 3; The Beast (shape of a guitar body) Case T- 317/05, [2007] ECR II-427, [2007] EMTR 72; Vitacoat Case T- 277/04, [2006] ECR II-2211; Selenium Ace Case T-312/03, [2005] ECR II-2897; Bioknowledge Case T-387/03, [2005] ECR II-191; Biomate Case T-107/02, [2004] ECR II-1845 and [2008] ETMR 14; Hiwatt Case T-39/01, [2003] ECR II-5233 and [2003] ETMR 98 concerning various procedural and substantive matters.

Several appeals from the trade mark registry to the High Court, e.g. Omega [2013] FSR 25; PlentyofFish Media [2012] PRC 5; Land Securities' App [2009] RPC 5; Rousselon Frères (SABATIER) (Nos. 1 & 2) [2008] RPC 30 and 31, [2009] BusLR 64; Fiorelli TM [2007] RPC 18; Omega Engineering v Omega [2005] FSR 12; General Cigar v Partagas y Cia [2005] FSR 45; Omega v Omega Engineering [2003] FSR 49; Alliance & Leicester plc’s App [2002] RPC 29: on various issues such as confusion evidence, pleadings, abuse of process and cross-examination.

Numerous appeals from the trade mark registry to the Appointed Person (appeared in over 50 such appeals), e.g. APU Joint Stock Co v Singer [2013] RPC 13; BSA by R2 [2008] RPC 22; Pan World Brands v Tripp [2008] RPC 2; Datasphere TM [2006] RPC 23; WISI TM [2006] RPC 22 and [2007] ETMR 5; Muhammad Sarmad’s App [2006] ETMR 2; Robert McBride’s Application for a 3D TM [2005] ETMR 85; Ferrero’s TMs [2004] RPC 29; Silver Spring Mineral Water’s App [2003] RPC 21; and, Royal Enfield TMs [2002] RPC 24: concerning a multitude of procedural and substantive points such as a time periods for non-use allegations, amendment of pleadings and bad faith.

Copyright, Designs and related Moral Rights

Utopia Tableware Ltd v BBP Marketing Ltd [2013] FSR 43: reference from the PCC to the Attorney General to bring contempt proceedings.

Temple Island Collections v New English Teas [2012] FSR 9: the scope of protection of a digitally manipulated photograph (the Red Bus case).

Harrison v Harrison [2010] FSR 25: a rare case concerning the moral rights of derogatory treatment and false attribution.

Landor & Hawa v Azure Designs [2006] FSR 22; [2006] ECDR 31 and [2007] FRS 9, CA: leading case on the “method or principle of construction” exclusion to UK design right and the “technical function" exclusion to Community design right.

Woodhouse v Architectural Lighting Systems [2006] RPC 1 and [2006] ECDR 11: registered and unregistered design right infringement trial concerning street lamps; and the leading case on cancellation of a registered design on grounds that the applicant was not entitled to the related unregistered right.

Lambretta Clothing v Teddy Smith [2005] RPC 6, CA: leading case on the interaction between copyright protection and design right protection.

Blayney (t/a Aardvark Jewellery) v Clogau St David’s Gold Mines [2002] FSR 14; [2003] FSR 19, CA: leading case on the quantification of damages in a copyright infringement action.

Patent Law and Practice

Toshiba’s App J-09/07 [2009] EPOR 17: acted for the appellant before the Legal Board of Appeal in the EPO seeking restitutio in integrum for a missed priority deadline.

Blacklight Power v Comptroller-General of Patents [2009] RPC 6, [2009] BusLR 748: acted for the Comptroller-General of Patents in this appeal from the Patent Office, which concerned the appropriate test for inventions that might not have any industrial applicability. The purported invention involved a novel species of hydrogen as proposed by the Grand Unified Theory of Classical Quantum Mechanics.

Rhone-Poulenc Rorer v Yeda Research [2006] RPC 24, PtCt; [2007] Bus LR 1 and [2007] RPC 9, CA; [2008] RPC 1, HLs: acted for the Comptroller-General of Patents in this matter dealing with entitlement proceedings, amendments to pleadings and the powers of the Comptroller-General.

R v Comptroller General of Patents, ex parte Penife [2004] RPC 37: a judicial review of a decision of the Patent Office acting as a receiving office for WIPO.

R v Comptroller General of Patents, ex parte Ash and Lacy [2002] RPC 46: a judicial review of a decision of the Patent Office concerning its powers to act ex officio.

Wheatley v Drillsafe [2001] RPC 7, CA: notable as the only patent case in which Aldous LJ was in the minority.

Other Cases

R (otao Prudential) v Special Commissioner of Income Tax [2013] 2 WLR 325; [2013] 2 All ER 247: whether the common law right of legal advice privilege extended to advice given by tax accountants.

AAG Investments Ltd v BAA Airports Ltd [2010] EWHC 2844 (Comm) [2011] 2 All ER 1171: successful strike-out of part of the Cl's case as it contained without prejudice material.

Evans (t/a Firecraft) v Focal Point Fires [2009] EWHC 2784 (Ch) [2010] ETMR 29: acted for the Cl in establishing that an estoppel can arise from a previous trade mark registry invalidation decision in a subsequent action for passing-off in the High Court.

Kitfix Swallow Group v Great Gizmos [2008] ETMR 11 and [2008] FSR 9: stay of OHIM proceedings in favour of UK proceedings.

R v DEFRA ex parte Northern Foods [2006] ETMR 31 and [2006] FSR 29: concerning the Protected Geographical Indication “Melton Mowbray Pork Pies”; the reference from the CA to the ECJ Case C-169/06 on the meaning of “region” settled.

Hormel Foods v Antilles Landscape Investments [2005] ETMR 54 and [2005] RPC 28: abuse of process and issue estoppel.

Reckitt Benkiser v Home Pairfum [2004] FSR 37and [2005] ETMR 94: refusal to join a new Part 20 defendant as an abuse of process in a threats action.

The Leonard Cheshire Foundation v Paul Anthony Darke [2001] ETMR 90: acted for the charity to recover a domain name from a disgruntled former employee.

Joe Cool (Manchester) Ltd's TM Application [2000] RPC 926: a rare case concerning IPRs and what happened to them on the insolvency of the company.




All Quotes

"Focuses on trade mark matters but is very capable across the whole IP spectrum. He is noted for his skilful advocacy and knowledge of his subject. 'A man with a sterling mind', he is renowned for the superiority of his intellect."

Chambers & Partners UK 2014

" 'The most visible and trademark-focused barrister out there', He is frequently seen on some of the country's most important cases, particularly those concerned with registry related issues. Praised for 'knowing law and procedure inside out', he is the first choice of counsel for many firms."

World Trademark Review 2013

" 'is very sharp and gives prompt and very pragmatic advice' according to one of his many votaries. He is celebrated for his achievements before the trade mark registry, as well as for his nous in copyright, design right and patent matters."

Chambers & Partners UK 2013

"reliable, quick to respond, very amiable and easy to get along with." He also possesses "an excellent knowledge of case law."

Chambers & Partners UK 2012

“a real all-rounder who is excellent at finding ways around difficult issues”. He provides "concise, practical advice in language that clients understand," pleasing solicitors by virtue of the fact that "he turns things around very quickly."

Chambers & Partners UK 2011

"really gets stuck in" and is also very commercial: "He's someone I really enjoy putting in front of clients," enthused one interviewee. He provides advice that "gets to the point very quickly," and he always exhibits "a phlegmatic approach – he's not a showboater."

Chambers & Partners UK 2010

"robust advocate and one of the few all-rounders who excels in trade mark work, yet also proves a true heavyweight on patent technology matters" - "he seems to know everything and can explain what is going on with ease" - "no one is going to flip a point past you with him on the case."

Chambers & Partners UK 2009

“bringing order out of chaos” - “always on the right wavelength” - “[he has the] knack of mastering the law and applying it” - “[his] hardcore technical knowledge astounds and impresses those around him as does the way he churns out top-quality work.”

Chambers & Partners UK 2008

Recommendations

Intellectual Property (Chambers & Partners and Legal 500)

Trade Marks (World Trademark Review)

Michael Edenborough QC

Michael Edenborough QC

Year of Silk: 2010
Year of Call: 1992
Email: medenborough@serlecourt.co.uk

Overview

Michael’s practice centres on appellate advocacy and advice concerning the validity, revocation or cancellation of registered intellectual property rights such as patents, trade marks and designs. In addition, he commonly deals with such issues as infringement, subsistence and ownership of those registered rights and the related unregistered IPRs such as copyright, design right and passing-off at first instance and on appeal. He is also instructed on matters relating to  plant varieties, moral rights, database rights, Geographical Indications, data protection and Freedom of  Information issues.

He aims to provide commercial solutions for his clients, so as to place them in the best possible position to protect, exploit and enforce their IPRs, or to avoid or minimize their liability if threatened by such rights, be it by negotiation, ADR, registration, litigation or otherwise. His forte is tricky points of practice and procedure.

Michael took silk in 2010, 12 years after his first reported case. He now has over a 100 reported cases, two thirds of which are appeals or judicial reviews, and so averages over 6 reported cases a year.

He acted for the Comptroller-General of Patents, the Registrar of Trade Marks and the UK Government before the Court of Justice of the European Union, the House of Lords, the Court of Appeal and the High Court (both Chancery Division and Patents Court) on, inter alia, appeals from the Patent Office and the Registry. He has been instructed by the Chartered Institute of Patent Attorneys, the Institute of Trade Mark Attorneys and AIPPI UK to advise and act for them in the Court of Justice and the Supreme Court. He appears regularly before the General Court of the European Union (formerly the Court of First Instance), Luxembourg on appeals from OHIM, and on Article 267 references and appeals to the Court of Justice (over 40 cases in all). He has also  acted before both the legal and technical Boards of Appeal and the Opposition Division of the European Patent Office.  He has acted in more than 275 matters before the trade mark registry, and in over 50 appeals to the Appointed Person.

Areas of expertise

Recommendations

Intellectual Property (Chambers & Partners and Legal 500)

Trade Marks (World Trademark Review)

Quotes

"Focuses on trade mark matters but is very capable across the whole IP spectrum. He is noted for his skilful advocacy and knowledge of his subject. 'A man with a sterling mind', he is renowned for the superiority of his intellect."

Chambers & Partners UK 2014

" 'The most visible and trademark-focused barrister out there', He is frequently seen on some of the country's most important cases, particularly those concerned with registry related issues. Praised for 'knowing law and procedure inside out', he is the first choice of counsel for many firms."

World Trademark Review 2013

" 'is very sharp and gives prompt and very pragmatic advice' according to one of his many votaries. He is celebrated for his achievements before the trade mark registry, as well as for his nous in copyright, design right and patent matters."

Chambers & Partners UK 2013

"reliable, quick to respond, very amiable and easy to get along with." He also possesses "an excellent knowledge of case law."

Chambers & Partners UK 2012

“a real all-rounder who is excellent at finding ways around difficult issues”. He provides "concise, practical advice in language that clients understand," pleasing solicitors by virtue of the fact that "he turns things around very quickly."

Chambers & Partners UK 2011

"really gets stuck in" and is also very commercial: "He's someone I really enjoy putting in front of clients," enthused one interviewee. He provides advice that "gets to the point very quickly," and he always exhibits "a phlegmatic approach – he's not a showboater."

Chambers & Partners UK 2010

"robust advocate and one of the few all-rounders who excels in trade mark work, yet also proves a true heavyweight on patent technology matters" - "he seems to know everything and can explain what is going on with ease" - "no one is going to flip a point past you with him on the case."

Chambers & Partners UK 2009

“bringing order out of chaos” - “always on the right wavelength” - “[he has the] knack of mastering the law and applying it” - “[his] hardcore technical knowledge astounds and impresses those around him as does the way he churns out top-quality work.”

Chambers & Partners UK 2008

Intellectual Property

Principal Areas of Practice within IP

Trade marks and passing-off
Copyright and designs (both registered and unregistered)
Patents and trade secrets / confidential information
Others IPRs such as plant varieties, certificate and collective marks, GIs (e.g. PDOs, PGIs, and TSGs), database  rights and moral rights

The following reported cases are merely a selection. Some areas are unrepresented, as they settle more often than others before reaching court.

Trade Mark Law and Practice

Golden Ball Ltd v OHIM (GOLDEN BALLS) Case T-437/11; [2014] ETMR 1: a pro bono publico appeal to the General Court from OHIM concerning the issue of the similarity or otherwise of translated similar phrases, in this case “Golden Balls” and “Ballon d’Or”.

CIPA's TM Application (IP TRANSLATOR) [2010] RPC 31, [2012] ETMR 42; [2013] RPC 20; [2013] ETMR 42: an Article 267 TFEU reference to the CJ, Case C-307/10, on the proper construction of a trade mark statement of goods and services: "means-what-it-says" vs "class headings covers all" approach.

Omega Engineering v Omega SA [2010] FSR 26, ChD; [2011] ETMR 40, CA; and, [2013] FSR 25: two related cases concerning the proper approach to the construction of trade mark settlement agreements when the Nice Classification system has changed during the lifetime of the agreement, and the proposed limitation might not be POSTKANTOOR compliant.

Imagination Technologies Ltd v OHIM (Pure Digital) Case T- 461/04, [2007] ECR II-122, [2008] EMTR 10, CFI: appealed to the ECJ Case C-542/07 P, [2010] ETMR 19: concerned the date by which a trade mark application needs to have acquired a distinctive character.

Budejovicky Budvar NP v Anheuser-Busch Inc. [2010] RPC 7: appeal to the CA on the issue of statutory acquiescence which became the subject of an Article 267 reference to the Court of Justice (Case C-482/09).

Enercon TM Case T-472/07 before the CFI, and then appealed to the ECJ Case C-59/09: acted for ITMA in an attempt to secure rights of representation and audience for Trade Mark and Design Litigators.

adidas v Marca Mode Case C-102/07,[2008] ECR I-2439, [2008] FSR 38, [2008] ETMR 44, ECJ: acted for the UK Government on the scope of protection that should be afforded to a mark that was distinctive only by reason of acquired distinctiveness, in this case the three-stripe mark Smirnoff Trade Marks [2006] RPC 16: acted for the grandson of Pierre Smirnoff against the American producers of grain spirit.

West (t/a Eastenders) v Fuller Smith & Turner [2002] FSR 55 and [2003] ETMR 30; [2003] FSR 44 and costs judgment [2004] FSR 32, CA: reducing the specification of the ESB trade mark from “beer” to “bitter”.

Gerber products Co v Gerber Foods International [2002] ETMR 77 and [2003] RPC 1; [2003] RPC 34, CA: interesting points on sovereign immunity in relation to trade mark use and infringement and geographical limitations.

BUD and BUDWEISER BUDBRÄU TMs [2002] RPC 38; [2003] RPC 25, CA: part of the “Bud/Budweiser” dispute.

Various appeals from OHIM to the Court of First Instance/General Court and then on further appeal to the Court of Justice, Luxembourg (instructed in over 35 such appeals), e.g. Citigate Case T-301/09, [2013] ETMR 17; Smart Technologies Case C-311/09 P [2012] ETMR 49; Hoo Hing Case T-300/08, [2010] ETMR 9, and Case T-303/08 [2011] ETMR 44 (and on appeal Case C-76/11 P, [2012] ETMR 22); Cheapflights Case T-460/09 [2011] ETMR 43; Omnicare Case T-277/06, [2009] EMTR 62 (and on various appeals Cases C-587/11 P and C-588/11 P); Gerson (Yellow-tipped paint filter) Case T-201/06; Astex Technology Case T-48/06, [2009] ETMR 3; The Beast (shape of a guitar body) Case T- 317/05, [2007] ECR II-427, [2007] EMTR 72; Vitacoat Case T- 277/04, [2006] ECR II-2211; Selenium Ace Case T-312/03, [2005] ECR II-2897; Bioknowledge Case T-387/03, [2005] ECR II-191; Biomate Case T-107/02, [2004] ECR II-1845 and [2008] ETMR 14; Hiwatt Case T-39/01, [2003] ECR II-5233 and [2003] ETMR 98 concerning various procedural and substantive matters.

Several appeals from the trade mark registry to the High Court, e.g. Omega [2013] FSR 25; PlentyofFish Media [2012] PRC 5; Land Securities' App [2009] RPC 5; Rousselon Frères (SABATIER) (Nos. 1 & 2) [2008] RPC 30 and 31, [2009] BusLR 64; Fiorelli TM [2007] RPC 18; Omega Engineering v Omega [2005] FSR 12; General Cigar v Partagas y Cia [2005] FSR 45; Omega v Omega Engineering [2003] FSR 49; Alliance & Leicester plc’s App [2002] RPC 29: on various issues such as confusion evidence, pleadings, abuse of process and cross-examination.

Numerous appeals from the trade mark registry to the Appointed Person (appeared in over 50 such appeals), e.g. APU Joint Stock Co v Singer [2013] RPC 13; BSA by R2 [2008] RPC 22; Pan World Brands v Tripp [2008] RPC 2; Datasphere TM [2006] RPC 23; WISI TM [2006] RPC 22 and [2007] ETMR 5; Muhammad Sarmad’s App [2006] ETMR 2; Robert McBride’s Application for a 3D TM [2005] ETMR 85; Ferrero’s TMs [2004] RPC 29; Silver Spring Mineral Water’s App [2003] RPC 21; and, Royal Enfield TMs [2002] RPC 24: concerning a multitude of procedural and substantive points such as a time periods for non-use allegations, amendment of pleadings and bad faith.

Copyright, Designs and related Moral Rights

Utopia Tableware Ltd v BBP Marketing Ltd [2013] FSR 43: reference from the PCC to the Attorney General to bring contempt proceedings.

Temple Island Collections v New English Teas [2012] FSR 9: the scope of protection of a digitally manipulated photograph (the Red Bus case).

Harrison v Harrison [2010] FSR 25: a rare case concerning the moral rights of derogatory treatment and false attribution.

Landor & Hawa v Azure Designs [2006] FSR 22; [2006] ECDR 31 and [2007] FRS 9, CA: leading case on the “method or principle of construction” exclusion to UK design right and the “technical function" exclusion to Community design right.

Woodhouse v Architectural Lighting Systems [2006] RPC 1 and [2006] ECDR 11: registered and unregistered design right infringement trial concerning street lamps; and the leading case on cancellation of a registered design on grounds that the applicant was not entitled to the related unregistered right.

Lambretta Clothing v Teddy Smith [2005] RPC 6, CA: leading case on the interaction between copyright protection and design right protection.

Blayney (t/a Aardvark Jewellery) v Clogau St David’s Gold Mines [2002] FSR 14; [2003] FSR 19, CA: leading case on the quantification of damages in a copyright infringement action.

Patent Law and Practice

Toshiba’s App J-09/07 [2009] EPOR 17: acted for the appellant before the Legal Board of Appeal in the EPO seeking restitutio in integrum for a missed priority deadline.

Blacklight Power v Comptroller-General of Patents [2009] RPC 6, [2009] BusLR 748: acted for the Comptroller-General of Patents in this appeal from the Patent Office, which concerned the appropriate test for inventions that might not have any industrial applicability. The purported invention involved a novel species of hydrogen as proposed by the Grand Unified Theory of Classical Quantum Mechanics.

Rhone-Poulenc Rorer v Yeda Research [2006] RPC 24, PtCt; [2007] Bus LR 1 and [2007] RPC 9, CA; [2008] RPC 1, HLs: acted for the Comptroller-General of Patents in this matter dealing with entitlement proceedings, amendments to pleadings and the powers of the Comptroller-General.

R v Comptroller General of Patents, ex parte Penife [2004] RPC 37: a judicial review of a decision of the Patent Office acting as a receiving office for WIPO.

R v Comptroller General of Patents, ex parte Ash and Lacy [2002] RPC 46: a judicial review of a decision of the Patent Office concerning its powers to act ex officio.

Wheatley v Drillsafe [2001] RPC 7, CA: notable as the only patent case in which Aldous LJ was in the minority.

Other Cases

R (otao Prudential) v Special Commissioner of Income Tax [2013] 2 WLR 325; [2013] 2 All ER 247: whether the common law right of legal advice privilege extended to advice given by tax accountants.

AAG Investments Ltd v BAA Airports Ltd [2010] EWHC 2844 (Comm) [2011] 2 All ER 1171: successful strike-out of part of the Cl's case as it contained without prejudice material.

Evans (t/a Firecraft) v Focal Point Fires [2009] EWHC 2784 (Ch) [2010] ETMR 29: acted for the Cl in establishing that an estoppel can arise from a previous trade mark registry invalidation decision in a subsequent action for passing-off in the High Court.

Kitfix Swallow Group v Great Gizmos [2008] ETMR 11 and [2008] FSR 9: stay of OHIM proceedings in favour of UK proceedings.

R v DEFRA ex parte Northern Foods [2006] ETMR 31 and [2006] FSR 29: concerning the Protected Geographical Indication “Melton Mowbray Pork Pies”; the reference from the CA to the ECJ Case C-169/06 on the meaning of “region” settled.

Hormel Foods v Antilles Landscape Investments [2005] ETMR 54 and [2005] RPC 28: abuse of process and issue estoppel.

Reckitt Benkiser v Home Pairfum [2004] FSR 37and [2005] ETMR 94: refusal to join a new Part 20 defendant as an abuse of process in a threats action.

The Leonard Cheshire Foundation v Paul Anthony Darke [2001] ETMR 90: acted for the charity to recover a domain name from a disgruntled former employee.

Joe Cool (Manchester) Ltd's TM Application [2000] RPC 926: a rare case concerning IPRs and what happened to them on the insolvency of the company.

Qualifications

MA (Natural Sciences), Sidney Sussex College, Cambridge
DPhil (Biophysics), Exeter College, Oxford

Memberships

Associate Member of CIPA and ITMA
Council Member of AIPPI
Member of the Royal Society of Chemistry

Publications

Contributor to the Concise Commentary on European Trade Mark and Design Law (with Thomas Elias, edited by Charles Gielen and Verena von Bomhard, and forms part of the Concise Commentary on European IP Law series).
Intellectual Property in Europe: revised the chapter on Plant Variety Rights for the 2nd edition, Sweet & Maxwell 2002.
Lecture Notes on Intellectual Property Law (1st edition 1995, reprinted 1997).
Organic Reaction Mechanisms: A Step-by-Step Approach (2nd edition, 1999).


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