Legal 500 2020

Michael Edenborough QC: "One of the best silks for trademark work, he 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."

Lifestyle Equities CV v Santa Monica Polo Club:

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:

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):

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.

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. 

Intra-Presse v OHIM (GOLDEN BALLS):

Pro bono appeal to the General Court and then the Court of Justice concerning the similarity of "Golden Balls" to "Ballon d'Or": involved issues of translated phrases.

Moroccanoil Israel Ltd v Aldi Stores Ltd:

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

Her Majesty’s Solicitor General v Dodd:

An application for committal for contempt of court.  In a design right and registered design right infringement case (which was successful), 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:

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):

Appeared in Case C-307/10 which was heard by the Grand Chamber (13 judges) of the Court of Justice with 12 interveners.  The case decided how 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:

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:

The registrability of slogans as trade marks.

Temple Island Collections Ltd v New English Teas Ltd:

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):

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

Harrison v Harrison:

Concerns the moral rights of derogatory treatment and false attribution.

William Evans v Focal Point Fires plc:

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:

The CA made a reference to the CJEU on what is meant by acquiescence in the trade mark legislation.

Blacklight Power v Comptroller-General of Patents:

Acted for the Comptoller-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 puported 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:

Acted for the Registrar of Trade Marks on this appeal from the registry on whether "shopping mall services" were registrable per se.

Toshiba/Priority Period and Re-establishment:

Application for restitutio integrum for a missed priority date.

adidas AG v Marca Mode CV:

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.

Kitfix Swallow Group Ltd v Great Gizmos Ltd:

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

Imagination Technologies Ltd v OHIM (Pure Digital):

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:

Acted for the Comptroller-General of Patents in this matter dealing with entitlement proceedings, amendments to pleadings and the powers of the Comptroller-General.

Kustom Musical Amplification Inc v OHIM (shape of a guitar body):

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:

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:

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:

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.

R v DEFRA ex parte Northern Foods:

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 [2006] EULR 929.

Lambretta Clothing v Teddy Smith:

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

Hormel Foods v Antilles Landscape Investments:

Abuse of process and issue estoppel in a trade mark matter.

Reckitt Benkiser v Home Pairfum:

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:

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