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, certification 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 Chartered Institute of Trade Mark Attorneys and AIPPI UK to advise and act for them in the Court of Justice and the Supreme Court. He used to appear often (but now shadow drafts the pleadings) 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 of the more important and/or interesting ones to illustrate the type of work in which he is commonly instructed. Some areas of his practice are under-represented by reported cases, as those areas 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/confidential information matters in which he is involved).

Trade Marks and Passing-Off Substantive Law

Lifestyle Equities CV v Royal County of Berkshire Polo Club Ltd: [2023] EWHC 1839 (Ch), [2023] ETMR 37, [2023] FSR 22: a High Court trade mark trial raising novel points of law. 

easyGroup Ltd v Easy Live (Services ) Ltd: [2023] ETMR 12; costs [2023] EWHC 240 (Ch), [2023] Costs LR 367; [2023] EWCA Civ 1508: a trade mark trial where the cross-examination established that the Defendants had taken unfair advantage of the Claimant’s trade marks. This was the first time that infringement was established by the use of a non-orange, non-travel sector sign. Successful appeal on what may count as damages in passing-off actions. 

Standard International Management LLC v EUIPO: Case T-768/20, ECLI:EU:T:2022:458, [2022] ETMR 44: a General Court case establishing for the first time that the concept of targeting applies equally to genuine use cases as it does to infringement claims.  Leading Stephanie Wickenden, also of Serle Court. This was the last case filed by UK counsel before the UK exited the EU.

Lifestyle Equities CV v Amazon UK Services Ltd: [2021] ETMR 27, [2021] FSR 19; [2022] EWCA Civ 552, [2022] FSR 20: a Court of Appeal judgment that addressed Amazon’s various international business models in the context of trade mark infringement over the internet.

Fromageries Bel SA v J Sainsbury plc [2020] ETMR 14, [2020] BusLR 440: an appeal to the High Court concerning the invalidation of a colour/shape mark due to lack of certainty.

Skullduggery Rum Ltd v Globefill Inc [2020] ETMR 9: 3D trade mark in the shape of a human skull, Article 7(1)(e)(iii) added value issues.

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.

Moroccanoil Israel Ltd v Aldi Stores Ltd [2014] ETMR 55: Trial for passing-off with respect to look-a-like packaging.

adidas v Marca Mode Case C-102/07, [2008] FSR 38; [2008] ETMR 44: 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.

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: reducing the specification of the ESB trade mark from “beer” to “bitter”.

Trade Marks and Passing-Off Procedural Issues

Crafts Group LLC v M/S Indeutsch International, [2022] EWHC 1455 (IPEC), [2023] ECC 18; [2023] FSR 23 and 24; a case that revolved around whether a counterclaim for EU TM infringement brought after IP Completion Day could establish EUTMR jurisdiction.

Lifestyle Equities CV v Royal County of Berkshire Polo Club Ltd [2022] EWHC 1244, [2022] FSR 22: an application concerned with the compliance of non-expert trade evidence in a trade mark matter to PD57AC.

Chanel v EUIPO Case T-44/20 [2021] ETMR 40: an appeal to the General Court to determine whether an earlier trade mark may be re-orientated spacially so as to increase its similarity with the latter application.

Praesidiad NV v Tescon Sicherheitssysteme Schweiz GmbH [2020] FSR 33: an appeal to the Appointed Person on the nature of discretion to extend time in which to serve a TM8.

Lifestyle Equities CV v Royal Country of Berkshire Polo Club Ltd [2019] FSR 14: securing jurisdiction over foreign defendants for acts of infringement committed overseas.

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

CIPA's TM Application (IP TRANSLATOR) Case  C-307/10 [2010] RPC 31; [2012] ETMR 42; [2013] RPC 20; [2013] ETMR 42: an Article 267 TFEU reference to the CJ on the proper construction of a trade mark specification 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, [2008] EMTR 10, 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

Islestarr Holdings Ltd v Aldi Ltd, [2019] EWHC 1473 (Ch), [2020] ECDR 20: a summary judgment application on whether the relief pattern in make-up powder was protectable by copyright and duly infringed.

Utopia Tableware Ltd v BBP Marketing Ltd [2014] ECC 34: trial of registered and unregistered design rights in the design for a beer glass.

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; [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; [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 biotech gene mutations, pharmaceuticals, mechanical devices, and methods of doing business. He is also instructed as a part of a team of counsel in patent / confidential information cases that involved other areas of law such as competition, directors’ duties and general commercial matters. For example, in a case for the Department of Health, he is 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; further, he was the junior silk in a 28-day trial involving allegations of breaches of directors’ duties relating to two high-tech North Sea oil drilling companies that included patent and copyright issues.

Jones v Irmac Roads Ltd [2022] EWHC 495 (IPEC), [2022] FSR 18: a case that decided that the equitable assignment of an invention needed to be in writing, as is the case with the assignment of a patent application or a granted patent. Acted pro bono publico.

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] 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

Entertainment One UK Ltd v Cong Ty Tnhh Tu Cong Nghe Va Dich Vu Sconnect Vietnam,  [2022] EWHC 3295 (Ch), [2023] ECDR 10, [2023] 1 WLR 2333: the leading case on electronic service of originating documents. 

Enreach UK Ltd v Inreach Group Ltd, [2022] EWHC 2867 (Ch), [2023] RPC 4:  whether certain trade mark legislation violated a party’s human rights.

Alliance Pharmaecuticals v EUIPO Case T-279/18 [2020] ETMR 7: construction of ambiguous trade mark specification.

Boyer v Stockbridge [2019] FSR 20: the consequences of a default judgment in the UK trade mark registry

Hendrick v Knight [2014] ETMR 58: considered the possibility of a pro bono publico 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: acted for AIPPI UK on an appeal to the Supreme Court on 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 [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; [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; [2005] RPC 28: abuse of process and issue estoppel.

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.

While many telecommunications and Information Technology disputes are contractual in nature, many also involve some consideration of intellectual property rights such as patents, satellite and broadcasting rights, copyright and database rights. An in-depth appreciation and familiarisation with these rights is often central to understanding the issues involved.

Michael has experience in dealing with large disputes that utilise such technology, and his previous scientific training is often crucial to discovering and exposing the real problem in such cases.

In these areas of law, various intellectual property rights are deployed to underpin the justification for the often very-large remuneration packages that are involved. It is common for the traditional boundaries of the IP rights involved to be pushed to the limit (and sometimes to stray perilously close to crossing-over). In such circumstances it is vital to ascertain precisely the proper limits of what can and cannot be done in order to ensure that the resultant contract achieves the desired objectives. In this regard, the handling of goodwill and image rights associated with sporting or entertainment celebrities is often key to formulating a solution.

Michael has acted for a wide range of clients in these various fields, from the celebrities themselves to their agents and production companies, and handled a multitude of IP rights, such as a registered trade marks, goodwill, copyright, designs (registered and unregistered), and moral rights.

Michael’s particular expertise in this field is his use of the facilitative, rather than evaluative, approach to mediation. So, rather than acting as a substitute tribunal attempting to determine the relative merits of the case on incomplete evidence and partial submissions, he endeavours to find a way for the parties to reach a solution to their impasse – not one that involves compromise and dissatisfaction on each side, but one that allows each party to gain something positive from the situation. This approach often requires the parties to reconsider their previously held positions and to appreciate both the potential weaknesses in their own case and the potential strengths in the other side’s case, and then to perceive where benefits can be gleaned for both sides; sometimes by working together, and on other occasions by leaving each other to follow their separate paths.

Michael has extensive experience in artistic copyright matters having acted for or against a wide range of clients, such as artists, animators, film companies, galleries and museums. Many of those cases also involved a detailed consideration of the related moral rights that may be invoked, such as the right to be identified as the author, the right to object to derogatory treatment, and the right to negate false attribution. For example, he acted for the street artist Stik in his dispute with a gallery over the unauthorised segmentation and sale of the resultant panels of a work of art painted onto the side of a shipping container.

He has dealt with a wide range of copyright works, such as graphic works and sculptures, and works that are not readily categorised under the CDPA 1988 such as installations and other forms of contemporary art.

Further, he has experience advising upon matters relating to artists’ resale right.

In addition, due to his previous experience as a scientist, in particular as a chemist and physicist to doctoral level, he has a particular expertise in dealing with art forgeries as he can readily understand the chemical and physical technical data that underpins such claims and counterclaims.