Chambers UK 2021

Michael Edenborough QC: "He is both an analytical and a tactical thinker." "He is very responsive and proactive."

Stephanie Wickenden: "She is very calm and collected, and has a good sense of commerciality." "She brings a lot of good ideas to the table and brings a good dynamic to any litigation."

Legal 500 2021

Michael Edenborough QC: "Michael's strengths are his wide but detailed knowledge of IP law, and ability to find ways through complex issues. As an advocate, he is calm, measured and clear in his submissions and responses to questions from the bench - one of the best QCs at the IP Bar, particularly for trade mark work."

Thomas Elias: "His other areas of Chancery expertise add materially to the breadth and depth of the advice that he gives on IP issues"

easyGroup v Beauty Perfectionists & ors [2021] EWHC 3385 (Ch):

On 17 December 2021, the Chancellor of the High Court, Sir Julian Flaux, handed down judgment in easyGroup v Beauty Perfectionists & ors [2021] EWHC 3385 (Ch). The Defendants applied to strike out the claim so far as it sought EU relief, arguing that the UK court had no jurisdiction to grant EU-wide remedies after 1 January 2021. The Defendants’ arguments included that the UK court could not be considered an “EU trade mark court” for the purposes of pending proceedings. This argument was rejected, and the application to strike out dismissed on the basis of the court’s construction of paragraph 20, Schedule 2A of the Trade Marks Act 1994, which was that:

“although paragraph 20 is not a model of clear drafting, paragraph 20(3) does not limit the jurisdiction which is retained in pending proceedings under paragraph 20(2) and under Article 67 of the Withdrawal Agreement with which the 2019 regulations must be read. The words: “the EU trade mark court may grant an injunction to prohibit unauthorised use of the comparable trade mark (EU) which derives from the existing EUTM” are giving the Court a power and discretion to grant an injunction in respect of infringement of a comparable trade mark (EU) which, by definition, the Court has not previously had because comparable trade marks (EU) did not exist. The preceding words: “without prejudice to any other relief by way of damages, accounts or otherwise available to the proprietor of the existing EUTM” are simply making clear that this new power and discretion does not affect or limit the existing remedies available to a proprietor of an EUTM, which include a pan-EU injunction, where appropriate...”  

The Chancellor further gave guidance on the implementation of the Withdrawal Agreement, finding it to have direct legislative effect owing to section 7A of the EU Withdrawal Agreement Act 2020.

Stephanie Wickenden acted for the successful claimant, instructed by Stephenson Harwood. The Chancellor has granted the Defendants permission to appeal.  To read the final judgment please click the link below.

Fromageries Bel SA v J Sainsbury PLC:

Michael Edenborough QC appeared in the appeal to the High Court on the validity of the Babybel red colour trade mark.

Lifestyle Equities CV v Amazon UK Services Ltd [2021] ETMR 27, [2021] FSR 19:

Michael Edenborough QC acted in the five-days’ trial on whether the various Amazon internet business models were permissible when they were involved in the sale of allegedly counterfeit articles of clothing.

Chanel v EUIPO Case T-44/20, [2021] ETMR 40:

Michael Edenborough QC appeared in the appeal to the General Court on whether it was permissible to re-orientate figurative marks to increase the likelihood of confusion.

Micron Technology Inc v EUIPO Case T-386/20, [2021] ETMR 51:

Michael Edenborough QC appeared in the appeal to the General Court on whether a comma could save an application from offending against article 7(1)(c).

Lunar Holdings Ltd v Lunar Caravans Ltd:

In Lunar Holdings Ltd v Lunar Caravans Ltd, Thomas Braithwaite blended IP and company law when he appeared in the IPEC for defendants accused of breach of a trade mark licence. A summary judgment application was defeated on the grounds that the claimant arguably did not have good title to the trade mark, having acquired it by way of an unlawful return of capital and disguised distribution by a company to its shareholder.

What will happen after Brexit?:

Top 10 #SerleShare Updates 2020:

Glencairn IP Holdings Ltd & Anor v Product Specialities Inc & Ors [2020] EWCA Civ 609:

Stephanie Wickenden acted as sole counsel for the successful appellants in the Court of Appeal in Glencairn IP Holdings Ltd & Anor v Product Specialities Inc & Ors [2020] EWCA Civ 609 which created new precedent in respect of solicitors’ conflicts. The Appellants/Defendants’ solicitors previously acted for another defendant in a case brought by the same claimant where the facts had some overlap, and which was resolved by a confidential mediation. The Court found that the principles to be applied were not the same as those in former clients, but that there was a potential for a conflict of duties owing to the confidential information received through the previous mediation. On the facts, the solicitors had not breached any duty as they had implemented an appropriate information barrier.

Please click here to view the judgment.

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.

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.

Please click here to view the judgment.

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.

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.

SerleShare:

'TBD (Owen Holland) Ltd v Simons [2020] EWCA Civ 1182' article by Zoe O'Sullivan QC

IP Magazine:

'Land Rover Defender lacks ‘distinctiveness’, court rules' comments by Michael Edenborough QC

The Times:

'The end is nigh for Europe’s central patents court' article by Michael Edenborough QC

IP Magazine:

'End of the line' article by Michael Edenborough QC

Global Legal Post:

'Is Europe's unified patent court dead in the water - or can it be revived?' comments by Michael Edenborough QC

The Daily Express:

'Meghan Markle and Harry BACK DOWN on Sussex Royal brand – trademark application withdrawn' comments by Michael Edenborough QC

Solicitors Journal :

'Cats and Dogs: A Lesson in Unregistered IP Rights' article by Michael Edenborough QC

IPITeasers:

IP ITeasers post 001: "Chess Checks Copyright" by Michael Edenborough QC 

IP ITeasers post 002: "Haka Hacks Heritage" by Michael Edenborough QC 

IP ITeasers post 003: "Female Finds Feta" by Michael Edenborough QC 

IP ITeasers post 004: "Paella Pockets Protection" by Michael Edenborough QC 

IP ITeasers post 005: "Amazon Annihilates Anonymity" by Michael Edenborough QC 

IP ITeasers post 006: "Digital Markets Act Divides Opinion" by Professor Suzanne Rab