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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 advice and appellate advocacy concerning the validity, revocation or cancellation of registered intellectual property rights such as trade marks, registered designs and patents. Typically, such work arises in the context of infringement or ownership disputes relating to such rights. He is often instructed in cases involving unregistered IPRs such as goodwill, copyright, designs and confidential information. Further, he has been instructed on matters dealing with plant varieties, moral rights, database rights, Geographical Indications, data protection and Freedom of Information requests relating to IPRs, and the calculation of the financial relief and other remedies that might be available.

His forte is finding points of law and practice that can be evoked in order to solve a problem that has arisen for the client (be it lay or professional).

In addition, Michael acts as an expert witness on points of English law in foreign cases, and as a mediator in IP cases - in particular where the parties wish to adopt the facilitative approach for their mutual advantage.

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, Geographical Indications (e.g. PDOs, PGIs, and TSGs), database rights and moral rights

Michael 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 law and practice.

He has 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 the EU IPO, and on Article 267 references and appeals to the Court of Justice (over 50 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 literally hundreds of matters before the trade mark registry, and in many tens of appeals to the Appointed Person and the High Court.

Michael took silk in 2010, which was 12 years after his first reported case. He now has well over a 100 cases in the law reports, two thirds of which were appeals or judicial reviews.

The following reported cases are merely a selection to illustrate the range of cases in which Michael has been involved. Some areas of his practice are under –represented by reported cases, as they settle more often than others before reaching court and so do not result in a reported case (this is particularly so for GI cases and the patent matters in which he is involved).

Trade Marks and Passing-Off Substantive Law

Pinterest Inc v Premium Interest Ltd [2015] ECC 14: whether a CTM confers a right to use that provides a free-standing defence to a passing-off action.

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.

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).

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.

 

Copyright, Designs and 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.

 

Patents

[Michael is regularly instructed on a wide variety of patent and technical confidential information cases, covering such technologies as biotechnology gene mutations, pharmaceuticals, mechanical devices, and methods of doing business. He is currently instructed by the DoH as the IP silk along with another silk and two juniors in a competition / abuse of the patent system allegation relating to the patenting and supply of a widely-used pharmaceutical.]

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.

 

General Procedural Matters

Hendrick v Knight [2014] ETMR 58: the possibility of a pro bono costs order before the Appointed Person.

Her Majesty's Solicitor General v Dodd [2014] FSR 27: committal for contempt of court relating to false witness statements in an IP matter.

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.

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.

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.

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.



Other areas of expertise

Lifestyle Equities CV v Santa Monica Polo Club [2018] FSR 15
A trade mark 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.  [Court IPEC. ME. IP.]Pinterest Inc v Premium Interest Ltd [2015] ECC 14; [2015] ETMR 30
Whether or not a CTM... more

Simba Toys GmbH & Co KG v OHIM (Rubik’s Cube) Case T-450/09; [2015] ETMR 15
An appeal to the General Court... more

Intra-Presse v OHIM (GOLDEN BALLS) Case T-437/11; [2014] ETMR 1; and, Case C-581/13 P, [2015] ETMR 6
Pro bono appeal to the... more

Moroccanoil Israel Ltd v Aldi Stores Ltd [2014] ETMR 55
Trial for passing-off with respect... more

Her Majesty’s Solicitor General v Dodd [2014] FSR 27
An application for committal for... more

Utopia Tableware Ltd v BBP Marketing Ltd [2013] FSR 43
A reference from the Patents... more

CIPA v Registrar of Trade Marks (IP TRANSLATOR) Case C-307/10; [2013] RPC 11; [2013] RPC 20; [2013] ETMR 42
Appeared in Case C-307/10 which... more

Secretary of State for Health & Ors v Servier Laboratories Ltd & Ors
Alleged breaches of articles 101... more

R (otao Prudential) v Special Commissioner of Income Tax [2013] UKSC 1; [2013] 2 WLR 325; [2013] 2 All ER 247
The Supreme Court ruled on... more

Temple Island Collections Ltd v New English Teas Ltd [2012] FSR 9; [2012] ECDR 11
A copyright infringement case regarding... more

Tresplain Investments Ltd v OHIM (Golden Elephant) Case T-303/08; [2011] ETMR 44; and, Case C-76/11 P; [2012] ETMR 22
Interpretion of article 8(4) CTMR... more

Harrison v Harrison [2010] FSR 25
Concerns the moral rights of derogatory... more

William Evans v Focal Point Fires plc [2010] ETMR 29; [2010] RPC 15
This case established that an... more

Budejovicky Budvar NP v Anheuser-Busch Inc CA, [2010] RPC 7
The CA made a reference to... more

Blacklight Power v Comptroller-General of Patents [2009] RPC 6
Acted for the Comptoller-General of... more

Hasbro Case C-59/09 P
A case on the rights... more

Land Securities’ App [2008] ETMR 67
Acted for the Registrar of... more

Toshiba/Priority Period and Re-establishment J-09/07; [2009] EPOR 17
Application for restitutio integrum for... more

adidas AG v Marca Mode CV Case C-102/107; [2008] ETMR 44; [2008] FSR 38 985; [2008] BusLR 1791
Acted for the UK Government... more

Kitfix Swallow Group Ltd v Great Gizmos Ltd [2008] ETMR 11; [2008] FSR 9; [2008] BusLR 465
Failed application by the Defendant... more

Imagination Technologies Ltd v OHIM (Pure Digital) Case T-461/04; [2008] EMTR 10; and, Case C-542/07 P; [2010] ETMR 19
Concerns the date by when... more

Rhone-Poulenc Rorer International Holdings Inc v Yeda Research and Development Co Ltd [2007] UKHL 32; [2008] RPC1; [2008] 1 All ER 425
Acted for the Comptroller-General of... more

Kustom Musical Amplification Inc v OHIM (shape of a guitar body) Case T-317/05; [2007] ECR II-427; [2007] EMTR 72
Registrability as a trade mark... more

Landor & Hawa International Ltd v Azure Designs Ltd [2006] FSR 22; [2006] ECDR 31; [2007] FRS 9
Leading case on the "method... more

Smirnoff Trade Marks [2006] RPC 16
An attempt to invalidate/revoke all... more

Woodhouse v Architectural Lighting Systems [2006] RPC 1; [2006] ECDR 11
Registered and unregistered design right... more

R v DEFRA ex parte Northern Foods (Melton Mowray Pork Pies) [2006] ETMR 31; [2006] FSR 29; [2007] 1 All ER 216
Concerning the Protected Geographical Indication... more

Lambretta Clothing v Teddy Smith CA [2005] RPC 6
Leading case on the interaction... more

Hormel Foods v Antilles Landscape Investments (Spambusters) [2005] ETMR 54; [2005] RPC 28
Abuse of process and issue... more

Reckitt Benkiser v Home Pairfum [2004] FSR 37; [2005] ETMR 94
Refusal to join a new... more

R v Comptroller General of Patents, ex part Penife [2004] RPC 37
A judicial review of a... more

Blayney (t/a Aardvark Jewellery) v Clogau St Davids Gold Mines [2002] FSR 14; and, CA: [2003] FSR 19
Leading case on the quantification... more

West (t/a Eastenders) v Fuller Smith & Turner (ESB) [2002] FSR 55; and CA: [2003] ETMR 30; [2003] FSR 44, and costs judgment [2004] FSR 32
Revocation of the specification of the... more

R v Comptroller General of Patents, ex parte Ash and Lacy [2002] RPC 46
A judicial review of a... more

Wheatley v Drillsafe [2001] RPC 7
Notable as the only patent... more

All Quotes

Brilliant barrister” Michael Edenborough QC of Serle Court is a silk “you can rely on for excellent advocacy on the big day”.
World Trademark Review 2018

“A seasoned silk highlighted for his deep expertise in trade mark law. He has additional expertise in patents and design right disputes. 
Chambers & Partners 2018

" 'His advice is razor shape and practical' and 'he is great with clients'.  The Serle Court silk is a top appellate advocate and a creative problem solver."
World Trademark Review 2017

“He is recognised for his experience assisting government agencies and abilities handling appellate proceedings. He is brilliant in court and his knowledge base is second to none.”
Chambers & Partners 2017

"Very easy to work with and knows his stuff inside out"
Legal 500 2016

"Well known for his authoritative handling of trade mark disputes, including geographical [indication] cases involving food and drink.  He is also recommended for copyright and patent matters, and includes government agencies among his clients.  'His commanding presence and fastidious approach immediately win client confidence.'  'A leading light in the realm of trade marks and passing off.'"
Chambers & Partners 2016

"A talented silk who can hold his own in front of the country's most senior judges"
Legal 500 2015

"...is a details man.  He's got a real forensic eye and he can be relied upon to trip up the other side: if there's a weakness in a case, he'll find it.  He has appeals to the European courts pretty much tied up."
World Trademark Review 2015

"Best known for trade mark matters, although he has an academic background in biophysics and so is highly adept at cases involving patent issues. 'He is a thoughtful advocate, able to get to the bottom of a point, place it in context, and present it simply and persuasively.' 'Very-user friendly, and clear - judges warm to him.' ."
Chambers & Partners UK 2015

"Combines intellectual rigour with practical advice"
Legal 500 2014

"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 (2002 to present)
    Legal 500 (2003 to present)

Trade Marks
    World Trademark Review (2013 to present)

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 advice and appellate advocacy concerning the validity, revocation or cancellation of registered intellectual property rights such as trade marks, registered designs and patents. Typically, such work arises in the context of infringement or ownership disputes relating to such rights. He is often instructed in cases involving unregistered IPRs such as goodwill, copyright, designs and confidential information. Further, he has been instructed on matters dealing with plant varieties, moral rights, database rights, Geographical Indications, data protection and Freedom of Information requests relating to IPRs, and the calculation of the financial relief and other remedies that might be available.

His forte is finding points of law and practice that can be evoked in order to solve a problem that has arisen for the client (be it lay or professional).

In addition, Michael acts as an expert witness on points of English law in foreign cases, and as a mediator in IP cases - in particular where the parties wish to adopt the facilitative approach for their mutual advantage.

Areas of expertise

Recommendations

Intellectual Property
    Chambers & Partners (2002 to present)
    Legal 500 (2003 to present)

Trade Marks
    World Trademark Review (2013 to present)

Quotes

Brilliant barrister” Michael Edenborough QC of Serle Court is a silk “you can rely on for excellent advocacy on the big day”.
World Trademark Review 2018

“A seasoned silk highlighted for his deep expertise in trade mark law. He has additional expertise in patents and design right disputes. 
Chambers & Partners 2018

" 'His advice is razor shape and practical' and 'he is great with clients'.  The Serle Court silk is a top appellate advocate and a creative problem solver."
World Trademark Review 2017

“He is recognised for his experience assisting government agencies and abilities handling appellate proceedings. He is brilliant in court and his knowledge base is second to none.”
Chambers & Partners 2017

"Very easy to work with and knows his stuff inside out"
Legal 500 2016

"Well known for his authoritative handling of trade mark disputes, including geographical [indication] cases involving food and drink.  He is also recommended for copyright and patent matters, and includes government agencies among his clients.  'His commanding presence and fastidious approach immediately win client confidence.'  'A leading light in the realm of trade marks and passing off.'"
Chambers & Partners 2016

"A talented silk who can hold his own in front of the country's most senior judges"
Legal 500 2015

"...is a details man.  He's got a real forensic eye and he can be relied upon to trip up the other side: if there's a weakness in a case, he'll find it.  He has appeals to the European courts pretty much tied up."
World Trademark Review 2015

"Best known for trade mark matters, although he has an academic background in biophysics and so is highly adept at cases involving patent issues. 'He is a thoughtful advocate, able to get to the bottom of a point, place it in context, and present it simply and persuasively.' 'Very-user friendly, and clear - judges warm to him.' ."
Chambers & Partners UK 2015

"Combines intellectual rigour with practical advice"
Legal 500 2014

"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, Geographical Indications (e.g. PDOs, PGIs, and TSGs), database rights and moral rights

Michael 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 law and practice.

He has 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 the EU IPO, and on Article 267 references and appeals to the Court of Justice (over 50 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 literally hundreds of matters before the trade mark registry, and in many tens of appeals to the Appointed Person and the High Court.

Michael took silk in 2010, which was 12 years after his first reported case. He now has well over a 100 cases in the law reports, two thirds of which were appeals or judicial reviews.

The following reported cases are merely a selection to illustrate the range of cases in which Michael has been involved. Some areas of his practice are under –represented by reported cases, as they settle more often than others before reaching court and so do not result in a reported case (this is particularly so for GI cases and the patent matters in which he is involved).

Trade Marks and Passing-Off Substantive Law

Pinterest Inc v Premium Interest Ltd [2015] ECC 14: whether a CTM confers a right to use that provides a free-standing defence to a passing-off action.

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.

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).

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.

 

Copyright, Designs and 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.

 

Patents

[Michael is regularly instructed on a wide variety of patent and technical confidential information cases, covering such technologies as biotechnology gene mutations, pharmaceuticals, mechanical devices, and methods of doing business. He is currently instructed by the DoH as the IP silk along with another silk and two juniors in a competition / abuse of the patent system allegation relating to the patenting and supply of a widely-used pharmaceutical.]

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.

 

General Procedural Matters

Hendrick v Knight [2014] ETMR 58: the possibility of a pro bono costs order before the Appointed Person.

Her Majesty's Solicitor General v Dodd [2014] FSR 27: committal for contempt of court relating to false witness statements in an IP matter.

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.

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.

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.

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.

Cases of note

Lifestyle Equities CV v Santa Monica Polo Club [2018] FSR 15
A trade mark 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.  [Court IPEC. ME. IP.]Pinterest Inc v Premium Interest Ltd [2015] ECC 14; [2015] ETMR 30
Whether or not a CTM... more

Simba Toys GmbH & Co KG v OHIM (Rubik’s Cube) Case T-450/09; [2015] ETMR 15
An appeal to the General Court... more

Intra-Presse v OHIM (GOLDEN BALLS) Case T-437/11; [2014] ETMR 1; and, Case C-581/13 P, [2015] ETMR 6
Pro bono appeal to the... more

Moroccanoil Israel Ltd v Aldi Stores Ltd [2014] ETMR 55
Trial for passing-off with respect... more

Her Majesty’s Solicitor General v Dodd [2014] FSR 27
An application for committal for... more

Utopia Tableware Ltd v BBP Marketing Ltd [2013] FSR 43
A reference from the Patents... more

CIPA v Registrar of Trade Marks (IP TRANSLATOR) Case C-307/10; [2013] RPC 11; [2013] RPC 20; [2013] ETMR 42
Appeared in Case C-307/10 which... more

Secretary of State for Health & Ors v Servier Laboratories Ltd & Ors
Alleged breaches of articles 101... more

R (otao Prudential) v Special Commissioner of Income Tax [2013] UKSC 1; [2013] 2 WLR 325; [2013] 2 All ER 247
The Supreme Court ruled on... more

Temple Island Collections Ltd v New English Teas Ltd [2012] FSR 9; [2012] ECDR 11
A copyright infringement case regarding... more

Tresplain Investments Ltd v OHIM (Golden Elephant) Case T-303/08; [2011] ETMR 44; and, Case C-76/11 P; [2012] ETMR 22
Interpretion of article 8(4) CTMR... more

Harrison v Harrison [2010] FSR 25
Concerns the moral rights of derogatory... more

William Evans v Focal Point Fires plc [2010] ETMR 29; [2010] RPC 15
This case established that an... more

Budejovicky Budvar NP v Anheuser-Busch Inc CA, [2010] RPC 7
The CA made a reference to... more

Blacklight Power v Comptroller-General of Patents [2009] RPC 6
Acted for the Comptoller-General of... more

Hasbro Case C-59/09 P
A case on the rights... more

Land Securities’ App [2008] ETMR 67
Acted for the Registrar of... more

Toshiba/Priority Period and Re-establishment J-09/07; [2009] EPOR 17
Application for restitutio integrum for... more

adidas AG v Marca Mode CV Case C-102/107; [2008] ETMR 44; [2008] FSR 38 985; [2008] BusLR 1791
Acted for the UK Government... more

Kitfix Swallow Group Ltd v Great Gizmos Ltd [2008] ETMR 11; [2008] FSR 9; [2008] BusLR 465
Failed application by the Defendant... more

Imagination Technologies Ltd v OHIM (Pure Digital) Case T-461/04; [2008] EMTR 10; and, Case C-542/07 P; [2010] ETMR 19
Concerns the date by when... more

Rhone-Poulenc Rorer International Holdings Inc v Yeda Research and Development Co Ltd [2007] UKHL 32; [2008] RPC1; [2008] 1 All ER 425
Acted for the Comptroller-General of... more

Kustom Musical Amplification Inc v OHIM (shape of a guitar body) Case T-317/05; [2007] ECR II-427; [2007] EMTR 72
Registrability as a trade mark... more

Landor & Hawa International Ltd v Azure Designs Ltd [2006] FSR 22; [2006] ECDR 31; [2007] FRS 9
Leading case on the "method... more

Smirnoff Trade Marks [2006] RPC 16
An attempt to invalidate/revoke all... more

Woodhouse v Architectural Lighting Systems [2006] RPC 1; [2006] ECDR 11
Registered and unregistered design right... more

R v DEFRA ex parte Northern Foods (Melton Mowray Pork Pies) [2006] ETMR 31; [2006] FSR 29; [2007] 1 All ER 216
Concerning the Protected Geographical Indication... more

Lambretta Clothing v Teddy Smith CA [2005] RPC 6
Leading case on the interaction... more

Hormel Foods v Antilles Landscape Investments (Spambusters) [2005] ETMR 54; [2005] RPC 28
Abuse of process and issue... more

Reckitt Benkiser v Home Pairfum [2004] FSR 37; [2005] ETMR 94
Refusal to join a new... more

R v Comptroller General of Patents, ex part Penife [2004] RPC 37
A judicial review of a... more

Blayney (t/a Aardvark Jewellery) v Clogau St Davids Gold Mines [2002] FSR 14; and, CA: [2003] FSR 19
Leading case on the quantification... more

West (t/a Eastenders) v Fuller Smith & Turner (ESB) [2002] FSR 55; and CA: [2003] ETMR 30; [2003] FSR 44, and costs judgment [2004] FSR 32
Revocation of the specification of the... more

R v Comptroller General of Patents, ex parte Ash and Lacy [2002] RPC 46
A judicial review of a... more

Wheatley v Drillsafe [2001] RPC 7
Notable as the only patent... more

Qualifications

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

Memberships

Associate Member of CIPA and CITMA
Member of AIPPI and the Royal Society of Chemistry

Publications

Goowill, or not...?
CITMA, Manchester, 23.11.2017
Handout Available 

Combating the spread of pirated products: experience and prospects
WIPO Regional Seminar, Kyrgyz Republic, 23.06.2016
Handout Available

Code of Silence: non-agricultural Gls
ITMA Review, 05.2016
Handout Available

Counterfeiters, copycats and copyists
Intellectual Property Magazine, 01.04.2016
Handout Available

Interdigitating PO and TM proceedings
28.01.2015
Handout Available

Poisonous Priorities
Reddie & Grose, 26.03.2014
Handout Available

Quantum in IP Matters
Hogan Lovells, 10.12.2013
Handout Available

IP Enforcement in the UK and Europe
Palo Alto, USA, 08.03.2012
Handout Available

The Art of Trade Mark Litigation
LSE, 14.01.2010
Handout Available

Sex and Swastikas
31.07.2008
Handout Available

Concise Commentary on European Trade Mark and Design Law
Contributor (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
(2nd edition 2002) Revised the chapter on Plant Variety Rights for the 2nd edition

Organic Reaction Mechanisms: A Step-by-Step Approach
(2nd edition 1999)

Lecture Notes on Intellectual Property Law
(1st edition 1995, reprinted 1997)


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