Legal 500 2020

Michael Edenborough QC: "One of the best silks for trademark work, he is brilliantly strategic and tactical."

Chambers & Partners 2020

Michael Edenborough QC: “A seasoned silk highlighted for his deep expertise in trademark law. He has additional expertise in patents and design rights disputes. … He is thorough and highly knowledgeable while being good with clients; a real heavyweight for trade mark work; [and] a very bright and careful thinker."

Freshasia Foods Ltd v Lu [2019] EWHC 638:

In Freshasia Foods Ltd v Lu [2019] EWHC 638, Stephanie Thompson successfully defended Mr Lu both at the interim injunction stage and at trial from claims that he had breached restrictive covenants and should be injuncted from working for his new employer. Arnold J found that the covenants were both void for uncertainty and unenforceable for being in breach of public policy and awarded indemnity costs to Mr Lu. The case also raised important questions of severability and was discussed in the recent Supreme Court decision of Egon Zehnder v Tillman.

Please click here for the judgment. 

IPCom GmbH & Co KG v Vodafone Group PLC [2019] EWHC 1212 (Pat) and [2019] EWHC 1255 (Pat):

In IPCom GmbH & Co KG v Vodafone Group PLC [2019] EWHC 1212 (Pat) and [2019] EWHC 1255 (Pat) Jonathan Harris QC (Hon.) and Sophia Hurst acted for Vodafone in a challenge to the court's jurisdiction to hear claims for infringement of standard essential patents and FRAND, where parallel proceedings had been ongoing in the German courts. 

Skullduggery Rum Ltd v Globefill Inc., [2020] ETMR 9:

Skullduggery Rum Ltd v Globefill Inc., [2020] ETMR 9, a 3D trade mark case involving a glass bottle in the shape of a human skull, which is shown above (along with an earthenware competitor).

Pathway IP SARL v Easygroup Ltd [2018] EWHC 3608 (Ch):

Stephanie Wickenden joined chambers in December, bringing with her a busy IP practice. Since joining chambers she has represented easyGroup in the Court of Appeal (unled) and in the High Court in relation to jurisdiction challenges to the trade mark claims. She also successfully represented easyGroup in Pathway IP SARL V Easygroup Ltd [2018] EWHC 3608 (Ch) a High Court appeal from the Trade Marks Registry which gives new guidance on how Nice Classification numbers may be used to interpret a trade mark specification. Stephanie continues to be involved in the Glaxo v Sandoz litigation, relating to the purple Seretide inhaler. 

Please click here to view the judgment. 

Alliance Pharmaceuticals v EUIPO [2020] EMTR 7:

A successful appeal to the General Court on the proper method on how to construe a potentially ambiguous trade mark specification

Lifestyle Equities CV v Royal County of Berkshire Polo Club Ltd [2019] FSR 14, [2019] ETMR 56:

Two interim applications against D1-3 and D4-5. The first concerned the judiciability of suing in the UK some foreign defendants for trade mark infringements that occurred abroad. The second concerned the scope of pleading that alleged the invalidity of some trade marks.

INVISTA v Botes and ors ([2019] EWHC 58 (Ch)):

Adrian de Froment acted for the successful defendants in INVISTA v Botes and ors ([2019] EWHC 58 (Ch)), a dispute involving allegations that biotechnology research scientists formerly employed by the claimant had acted in breach of confidence and of pre- and post-termination employment covenants, and had procured breaches of contract by a third party. This was also one of the rare cases in which a Part 36 offer was found not to have been a genuine offer to settle and it would therefore have been unjust to enforce the costs consequences in CPR 36.17 ([2019] EWHC 1086 (Ch)).

Please click here to view the judgment. 

Lifestyle Equities CV v Santa Monica Polo Club [2018] FSR 15:

A trademark trial concerning the logo of a polo player where the potentially differentiating words “Beverley Hills” and “Santa Monica” were held not sufficient to avoid liability. 

Pelikan v EUIPO (NBA Properties Inc. intervening):

An appeal before the General Court.

Glencairn v Dartington Crystal:

A registered design case about a whisky glass.

Gama Healthcare Ltd v Pal International Ltd:

Successfully resisting a passing off claim based on the packaging of clinical wet wipes used in the NHS.

Pinterest Inc v Premium Interest Ltd [2015] ECC 14, [2015] ETMR 30, [2015] FSR 27:

Whether or not a CTM gives its proprietor a right to use such that it can act as a free-standing defence to an allegation of passing-off.

Simba Toys GmbH & Co KG v OHIM (Rubik’s Cube) [2015] ETMR 15:

An appeal to the General Court of the European Union, which decided that the black outline of the Rubik's Cube was permissible as a Community Trade Mark. Subsequently overturned on appeal where Simba was represented by different counsel.

Ukelele Orchestra of Great Britain v Clausen:

Acted for The United Kingdom Ukelele Orchestra (‘TUKUO’).  The trial of the dispute between the Ukulele Orchestra of Great Britain (‘UOGB’) and TUKUO.  UOGB succeeded in their passing off action, but TUKUO succeeded on their counterclaim in invalidating UOGB’s trade mark and in resisting UOGB’s claim for infringement of copyright in an alleged dramatic work consisting of the format of their concerts.

NMSM Group Ltd v The Nightingale UK Limited:

IPEC trial over claim that gay bar "Queer Street" infringed the trademark of "Bar Queer", raising an issue of whether the relevant IP rights had been effectively transferred to the claimant. 

Moroccanoil Israel Ltd v Aldi Stores Ltd [2014] ETMR 55, [2015] FSR 4, [2015] ECC6:

Trial for passing-off with respect to look-a-like packaging.

Her Majesty’s Solicitor General v Dodd [2014] FSR 27:

An application for committal for contempt of court.  In a design right and registered design right infringement case (which was successful [2014] ECCC 34), the claimant's principal witnesses had given false evidence repeatedly about another, but eventually not pursued, cause of action.  The principal deponent was sent to prison for 6 months, and the other for 2 months

Utopia Tableware Ltd v BBP Marketing Ltd [2013] FSR 43:

A reference from the Patents County Court to request the Attorney General to bring proceedings for contempt against two witnesses who had given false evidence on behalf of the claimant.

CIPA v Registrar of Trade Marks (IP TRANSLATOR) [2012] ETMR 42, [2013] RPC 11, [2013] BusLR 740:

A reference that was heard by the Grand Chamber (13 judges) of the Court of Justice with 12 interveners.  The case decided how general terms in trade mark specifications should be construed.

Secretary of State for Health & Ors v Servier Laboratories Ltd & Ors:

Alleged breaches of articles 101 and 102 TFEU and interference with the Claimants' economic interests by unlawful means in relation to the patent protection obtained for the hypertension drug perindopril.

Secretary of State for Health & Ors v Servier Laboratories Ltd:

Rejected the defendants' attempt to rely on a French criminal statue in order to resist providing further information and disclsoure.

R (otao Prudential) v Special Commissioner of Income Tax [2013] 2AC 185, [2013] 2 WLR 3325, [2013] 2 All ER 247:

The Supreme Court ruled on the issue of whether legal advice privilege should be extended to tax accountants when advising on tax matters. Several authorities related to IP attorneys.

Karen Millen Fashions Ltd v Millen:

A quia timet action to prevent the defendant’s threatened trademark infringement and passing-off.

Smart Technologies v OHIM [2012] ETMR 49:

The registrability of slogans as trade marks.

Temple Island Collections Ltd v New English Teas Ltd [2012] FSR 9, [2012] ECDR 11::

A copyright infringement case regarding pictures of a Routemaster bus in front of the Houses of Parliament that raised questions about the scope of copyright protection of a digitally manipulated photograph.

Pass J Holdings Ltd v Spencer:

Trade Mark Registry (Appointed Person)

Tresplain Investments Ltd v OHIM (Golden Elephant) [2012] ETMR 22, [2011] ETMR 44, [2010] EMTR 9:

Interpretation of article 8(4) CTMR, in particular what is meant by "more than mere local significance".

Harrison v Harrison [2010] FSR 25, [2010] ECDR 12:

Concerns the moral rights of derogatory treatment and false attribution.

William Evans v Focal Point Fires plc [2010] ETMR 29, [2010] RPC 15:

This case established that an estoppel can arise from a previous trade mark registry invalidation decision in a subsequent action for passing-off in the High Court.

Budejovicky Budvar NP v Anheuser-Busch Inc [2009] RPC 7:

A reference by the Court of Appeal to the CJEU on what is meant by acquiescence in the trade mark legislation.

Blacklight Power v Comptroller-General of Patents [2009] RPC 6, [2009] BusLR 748:

An appeal from the Patent Office that 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.

Hasbro:

A case on the rights of audience of Trade Marks and Design litigators.

Land Securities’ App [2008] ETMR 67, [2009] RPC 5:

An appeal from the registry on whether "shopping mall services" were registrable per se.

Toshiba/Priority Period and Re-establishment [2009] EPOR 17:

Application for restitutio integrum for a missed priority date.

adidas AG v Marca Mode CV [2008] ETMR 44, [2008] FSR 38, [2008] BusLR 1791:

CJEU reference 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.

Kitfix Swallow Group Ltd v Great Gizmos Ltd [2008] ETMR 11, [2008] FSR 9, [2008] BusLR 465:

Failed application by the Defendant for a stay of OHIM cancellation proceedings in favour of UK infringement and invalidation proceedings.  The Claimant was ultimately successful:  its CTM was held valid and infringed, and passing-off was found.

Imagination Technologies Ltd v OHIM (Pure Digital) [2008] ETMR 10:

Concerns the date by when a mark needs to have acquired a distinctive character.

Rhone-Poulenc Rorer International Holdings Inc v Yeda Research and Development Co Ltd [2007] BusLR1796, [2008] RPC 1, [2008] 1 AllER 425:

An appeal to the House of Lords concerning entitlement proceedings, amendments to pleadings and the powers of the Comptroller-General.

Kustom Musical Amplification Inc v OHIM (shape of a guitar body)  [2007] ETMR 72::

Registrability as a trade mark of the shape of the body of a guitar, which was called "The Beast"!

Landor & Hawa International Ltd v Azure Designs Ltd [2006] ECDR 31, [2007] FSR 9:

Leading case on the "method or principle of construction" exclusion to UK design right and the "technical function" exclusion to Community design right.

Smirnoff Trade Marks [2006] RPC 16:

An attempt to invalidate/revoke all the Smirnoff UK trade marks.  Acted for the grandson of Pierre Smirnoff against the American producers of grain spirit.

Woodhouse v Architectural Lighting Systems [2006] RPC 1:

Registered and unregistered design right infringement trial concerning street lamps; the leading case on cancellation of a registered design on grounds that the applicant was not entitled to the related unregistered right.

Barrett v Universal Island Records Ltd:

Substantial claim involving record royalties, claims to own copyright and performers rights. The action raised issues in relation to the construction of a settlement agreement, abuse of process and res judicata and several issues in relation to performers rights including the question whether the rights conferred by sections 182A and 182B of the Copyright Designs and Patents Act 1988 are new rights for the purpose of the Copyright and Related Rights Regulations 1996.

Lambretta Clothing v Teddy Smith [2005] RPC 6:

Leading case on the interaction between copyright protection and design right protection.

Hormel Foods v Antilles Landscape Investments [2005] ETMR54, [2005] RPC 28:

Hormel Foods v Antilles Landscape Investments

Reckitt Benkiser v Home Pairfum [2004] FSR 37, [2005] ETMR 94:

Refusal to join a new Part 20 defendant as an abuse of process in a threats action.

R v Comptroller General of Patents, ex part Penife [2004] RPC 37:

A judicial review of a decision of the Patent Office acting as a receiving office for WIPO.