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Area of Law: Intellectual Property
Judgment has been handed down in D.W. Windsor Limited v Urbis Schreder Ltd [2025] EWHC 563 (IPEC), a patents dispute, following a 2-day trial in the IPEC on 17 and 18 December 2024.
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Judgment has been handed down in Bionome v Clearwater [2024] EWHC 3155 (Ch), an interesting High Court appeal concerning intellectual property and trusts. The judgment of Tom Mitcheson KC addresses issues including the patent entitlement, the proper construction of an alleged assignment and whether a trust had been validly declared by conduct. The case is also a rare example of a successful application to adduce fresh evidence on appeal under CPR r. 52.21(2), applying the Ladd v Marshall criteria.
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Michael Edenborough KC and Thomas St Quintin (Hogarth Chambers) (instructed by Brandsmiths) acted for the successful Respondent in the Supreme Court, which dismissed Amazon’s appeal on whether its amazon.com site had targeted customers in the UK. This now becomes the leading judgment on targeting and will provide helpful, detailed guidance on the matter.
Read MoreArea of Law: Intellectual Property
Elizabeth Jones KC acted for the successful defendants against members of the Wailers who claimed to have been parties to recording contracts with Bob Marley, and also claimed ownership of the copyrights in certain tracks written by Bob Marley.
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Michael Edenborough KC and Stephanie Wickenden have successfully represented Crafts Group in their appeal to the Court of Appeal in Crafts Group LLC v MS Indeutsch International [2024] EWCA Civ 87.
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Stephanie Wickenden and Niamh Herrett successfully represented Aldi in Thatchers Cider Company Limited v Aldi Stores Limited.
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Michael Edenborough KC and Stephanie Wickenden successfully represented easyGroup on appeal in easyGroup Ltd v Easy Live (Services) Ltd. Having established infringement under s.10(3) for some of the Defendants’ signs, the Court of Appeal confirmed that passing off should also have been found. The judgment, given by Lord Justice Arnold, gives interesting guidance on lost licensing revenue as a head of damage under passing off. The Court of Appeal also overturned a declaration of infringement granted by the trial judge in respect of the signs not found to infringe. The Court imposed its own much narrower declaration.
Read MoreArea of Law: Intellectual Property
Michael Edenborough KC acted for Oatly in a High Court appeal from the UK IPO concerning the use of the word 'milk' in the trade mark 'Post Milk Generation', which is used on the packaging of some of Oatly’s oat based products.
Read MoreArea of Law: Intellectual Property
Stephanie Wickenden acted for Lord Andrew Lloyd Webber and Sir Trevor Nunn, securing summary judgment against a claim brought against them by a former dancer claiming copyright in “Memory” from the musical “Cats”.
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Michael Edenborough KC acted for Crafts on this important procedureal case about whether post IP Completion Day amendments can relate back to an action started before then. Permission to appeal to the CoA has been granted.
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Thomas Elias acted for Aldi in this registered design case concerning the Christmas illuminated snow-globe Gin Bottle. Michael Edenborough KC led Thomas in the appeal.
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Michael Edenborough KC, leading Gwilym Harbottle of Hogarth Chambers and John Eldridge of Serle Court, acted for the successful claimant in securing service of the originating documents by email. This case provided clear guidance of what previously was an unclear procedure.
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Stephanie Wickenden (led by outside leading counsel) represented easyGroup in the Court of Appeal (having also appeared at trial). The appeal gave significant guidance on non-use, confusion and the defence of honest concurrent use.
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Stephanie Wickenden and Stefano Braschi acted for easyGroup against the band Easy Life that was using imagery redolent of the airline. The band undertook to change its name. The case was widely reported in the popular press.
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Thomas Elias acted for the claimants in this cross-jurisdictional trade mark dispute arising in the context of a sale of shares in one of the defendant companies. At an interim hearing, the claimants resisted applications for a stay and for security for costs, and obtained an unless order against the defendants.
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Michael Edenborough KC and Stephanie Wickenden (assisted by Stefano Braschi at trial and Anneliese Mondschein on appeal) acted for easyGroup in a case where for the first time a defendant was held liable for using a non-orange Sign in relation to non-travel services. The appeal on the scope of the declaratory relief and the issue of damage to complete the tort of passing-off was successful.
Read MoreArea of Law: Intellectual Property
Michael Edenborough KC leading outside junior counsel acted for the successful appellants on whether certain advertisements and offers for sale on amazon.com targeted the UK and the EU. The result meant that certain advertisements on the amazon.com site were held to constitute use of the infringing signs within the UK / EU27. Further, sales from the amazon.com site to customers located in the UK / EU27 also constituted actionable use. This result has far reaching consequences on how internet businesses who have customers located in several countries need to conduct their trade in those various jurisdictions. The Supreme Court heard Amazon’s appeal in November 2023.
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Thomas Elias and John Eldridge appeared against each other in an IP licensing case concerning literary works posted on a website.
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Michael Edenborough KC acted pro bono publico in this case that dealt with the hitherto unresolved point about the assignment of the legal and equitable interest in an invention, prior to it being encapsulated in a patent application.
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Michael Edenborough KC and Stephanie Wickenden acted in this last appeal from the EUIPO to the General Court that was filed just before the UK left the EU on 31 December 2020 and that was signed by a UK advocate. It concerned the issue of targeted use in the context of a non-use allegation.
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Stephanie Wickenden acted for the successful Claimant on the Defendant’s application to strike out the claim so far as it sought pan-EU27 relief, arguing that the UK court had no jurisdiction to grant EU-wide remedies after 1 January 2021. While permission to appeal was granted by the Chancellor, Sir Julian Flaux, the Defendants eventually abandoned its appeal before it was heard and paid the Claimant’s costs.
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Michael Edenborough KC appeared in the appeal to the General Court on whether it was permissible to re-orientate figurative marks to increase the likelihood of confusion.
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Stephanie Wickenden acted as sole counsel for the successful appellants in the Court of Appeal that 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.
Read MoreArea of Law: Intellectual Property
In this case, Thomas Braithwaite blended IP and company law when he appeared in the IPEC for the defendants who were 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.
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Michael Edenborough KC appeared in the appeal to the High Court on the validity of the Babybel red colour trade mark.
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Michael Edenborough KC successfully maintained the registration of a 3D trade mark for a glass bottle in the shape of a human skull. This bottle and that of a competitor are shown in the banner at the top of this section.
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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).
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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 Supreme Court decision of Egon Zehnder v Tillman.
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In IPCom GmbH & Co KG v Vodafone Group PLC [2019] EWHC 1212 (Pat) and [2019] EWHC 1255 (Pat) Prof. Jonathan Harris KC (Hon.) 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.
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Stephanie Wickenden represented easyGroup successful High Court appeal from the Trade Marks Registry that gives new guidance on how Nice Classification numbers may be used to interpret a trade mark specification.
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Michael Edenborough KC leading outside junior counsel and Thomas Elias in two interim applications against D1-3 and D4-5. The first concerned the justiciability 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. There was a third interim decision that involved the admissibility of opinion evidence given by a trade witness.
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Stephanie Wickenden acted for Glaxo in this trial of a passing off case relating to the colour and shape of a respiratory inhaler. Led by outside leading counsel.
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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 that they 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)).
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Stephanie Wickenden acted as sole counsel in this dispute of jurisdiction application in relation to a trade mark and passing off claim, owing to previous proceedings in Cyprus.
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Stephanie Wickenden acted for Glaxo in this second appeal in relation to a revocation of a pharmaceutical shape mark. Led by outside counsel.
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Michael Edenborough KC leading Thomas St Quintin acted for the successful claimant in this 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.
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Thomas Elias acted for the successful intervener in this appeal before the General Court relating to the logo of the New Orleans Pelicans basketball team.
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Michael Edenborough KC acted for Simba in this successful 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.
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Thomas Elias 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.
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Gareth Tilley acted in this IPEC trial over a claim that the gay bar "Queer Street" infringed the trade mark of "Bar Queer"; the trial raised an issue of whether the relevant IP rights had been effectively transferred to the claimant during an insolvency procedure.
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Stephanie Wickenden acted for WPMC in this trial involving rights to footage of the first Beatles concert recorded in the USA. Claims were brought under UK and USA copyright, with defences of a collateral contract and proprietary estoppel. Led by outside leading counsel.
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Michael Edenborough KC and Thomas Elias acted for the successful Defendant in this trial for alleged passing-off with respect to look-a-like packaging.
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Michael Edenborough KC acted for the Defendants on the 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.
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Michael Edenborough KC acted pro bono publico for CIPA in the article 267 reference to the Grand Chamber of the CJEU in the IP TRANSLATOR case.
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Michael Edenborough KC leading Adil Mohamedbhai and Sophie Holcombe in an unsuccessful attempt to get a pro bono costs award from the Appointed Person.
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Philip Jones KC successfully acted for HMRC in this appeal that concerned the treatment of unregistered trade marks in an assignment that formed part of a tax avoidance scheme.
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Michael Edenborough KC and David Drake are two of the four counsel acting for the SoS in this claim to recovery the monopolistic profits made by Servier based upon its invalid patent for perindopril (an ACE inhibitor used to combat high blood pressure). Part of the claim involves an allegation that SErvier improperly obtained a European Patent by deceiving the EPO as to the allegedly novelty of the invention. There is satellite litigation before the CJEU on the competition aspects and various issues concerning the disclosure being purported prevented by the French criminal code.
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Michael Edenborough KC was instructed by AIPPI UK to intervene in the Supreme Court case that ruled on the issue of whether legal advice privilege should be extended to tax accountants when advising on tax matters. AIPPI was concerned to ensure that no adverse consequences inadvertently arose for the protection of advice given by patent and trade mark attorneys.
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Elizabeth Jones KC acted for EMI in relation to a dispute as to whether EMI could licence third parties to make Pink Floyd’s recorded music available on a track by track basis, or whether they were only entitled to licence complete albums.
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