Michael Edenborough KC

Principal areas of practice within IP:

• Trade marks and passing-off
• Copyright and designs (both registered and unregistered)
• Patents and trade secrets/confidential information
• Other 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 to place them in the best possible position to protect, exploit and enforce their IPRs, or to avoid or minimise 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 over 150 cases in the law reports, two-thirds of which are 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

• Thatchers Cider Co v Aldi Stores [2025] EWCA Civ 5, [2025] FSR 9, [2025] ETMR 15: an appeal on what amounts to unfair advantage in the context of lookalike packaging.
• Lifestyle Equities v Royal County of Berkshire Polo Club [2023] EWHC 1839 (Ch), [2023] ETMR 37, [2023] FSR 22; [2024] EWCA Civ 814, [2024] ECC 20, [2024] FSR 32: whether it is appropriate to consider third parties’ activities when assessing the existence of the likelihood of confusion.
• Oatly v Dairy UK [2023] EWHC 3204 (Ch), [2024] RPC 5; [2024] EWCA Civ 1453, [2025] ECC 5: appeals on the rare section 3(4) absolute ground of refusal for registration of a trade mark.
• Lifestyle Equities v Amazon UK Services [2021] EWHC 118 (Ch), [2021] ETMR 27, [2021] FSR 19; [2022] EWCA Civ 552, [2022], FSR 20, [2023] BusLR 1010, [2023] 1 All ER 905; [2024] UKSC 8, [2024] 3 All ER 93, [2024] BusLR 532,[2024] FSR 21: successfully defended an appeal to the Supreme Court on whether the Amazon.com website targeted consumers in the UK/EU.
• EasyGroup v Easy Live (Services ) [2022] EWHC 3327 (Ch), [2023] ETMR 12; [2023] EWCA Civ 1508, [2024] ECC 2, [2024] BusLR 141, [2024] FSR 15: at trial, 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 easyGroup of a third party’s use of a non-orange, non-travel sector sign. The successful appeal concerning what constituted damage for a licensor in a passing-off case.
• Standard International Management v EUIPOCase T-768/20, 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.
• Fromageries Bel v J Sainsbury [2019] EWHC 3454 (Ch), [2020] ETMR 14, [2020] BusLR 440, [2020] RPC 3: an appeal to the High Court concerning the invalidation of a colour/shape mark due to lack of certainty.
• Skullduggery Rum v Globefill [2020] ETMR 9: 3D trade mark in the shape of a human skull, Article 7(1)(e)(iii) added value issues.
• Lifestyle Equities v Santa Monica Polo Club[2017] EWHC 3313 (Ch), [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 v Aldi Stores [2014] EWHC 1686 (IPEC), [2014] ETMR 55, [2015] ECC 6, [2015] FSR 4: a trial for passing-off with respect to look-a-like packaging.
• adidas v Marca ModeCase C-102/07, EU:C:2008:217, [2008] BusLR 1791, [2008] ECR I-2439, [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] EWHC 122 (Ch), [2002] FSR 55, [2003] ETMR 30;[2003] EWCA Civ 48, [2003] FSR 44, and costs judgment [2003] EWCA Civ 429, [2004] FSR 32: reducing the specification of the ESB trade mark from “beer” to “bitter”.

Trade Marks and Passing-Off Procedural Issues

• Bargain Busting Ltd v Shenzhen SKE Technology Co Ltd, [2025] EWHC 1239 (Ch), [2025] ETMR 28, [2026] FSR 3: interim injunction application concerning unjustified threats and freedom of speech.
• Stokeley-Van Camp Inc v Kremezzat GmbH:BL O/1161/24, [2025] RPC 10: an appeal to the Appointed Person to determine the relevant principles for the granting of an extension of time in the trade mark registry.
• Crafts Group LLC v M/S Indeutsch International [2023] EWHC 1455 (IPEC), [2023] ECC 18, [2023] FSR 23; and [2023] EWHC 1914 (IPEC), [2023] FSR 24; [2024] EWCA Civ 87, [2024] FSR 19: at first instance the case revolved around whether a counterclaim for EU TM infringement brought after IP Completion Day could establish EUTMR jurisdiction; on appeal the central issue was the correct basis for granting a stay in an EU trade mark case.
• 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.
• Praesidiad v Tescon Sicherheitssysteme Schweiz BL O-240-20, [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 v Royal Country of Berkshire Polo Club [2018] EWHC 3552 (Ch), [2019] FSR 14: securing jurisdiction over foreign defendants for acts of infringement committed overseas.
• CIPA’s TM Application (IP TRANSLATOR) BL O-215-10, [2010] RPC 31; Case C-307/10, EU:C:2012:361, [2013] ETMR 42; [2013] RPC 20: 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 v Anheuser-Busch [2009] EWCA Civ 1022, [2010] RPC 7: an appeal on the issue of statutory acquiescence, which became the subject of an Article 267 reference to the Court of Justice (Case C-482/09, EU:C:2011:605).
• Imagination Technologies v OHIM(Pure Digital) Case T- 461/04, EU:T:2007:294, [2008] EMTR 10, appealed to the ECJ Case C-542/07 P, EU:C:2009:362, [2010] ETMR 19: concerned the date by which a trade mark application needs to have acquired a distinctive character.

Copyright, Designs and Moral Rights

• Marks and Spencer v Aldi Stores [2024] EWCA Civ 178, [2024] ECDR 17, [2024] FSR 16: an appeal concerning which designs are appropriate to include within the state of the art, in particular with respect to the claimant’s own previous designs (the Christmas Gin Bottle case).
• Islestarr Holdings v Aldi [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 v BBP Marketing [2013] EWHC 3483 (IPEC), [2014] ECC 34: trial of registered and unregistereddesign rights in the design for a beer glass.
• Temple Island Collections v New English Teas [2012] EWHC 108 (Ch), [2012] 2 CMLR 16, [2012] FSR 9: the scope of protection of a digitally manipulated photograph (the Red Bus case).
• Harrison v Harrison [2010] EWPCC 3, [2010] FSR 25, [2010] ECDR 12: a rare case concerning the moral rights of derogatory treatment and false attribution.
• Landor & Hawa v Azure Designs [2005] EWPCC 45, [2006] FSR 22; [2006] EWCA Civ 1285, [2006] ECDR 31, [2007] FRS 9: 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 [2005] EWPCC (Des) 25, [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 [2004] EWCA Civ 886, [2005] RPC 6: 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; [2002] EWCA Civ 1007, [2003] FSR 19: 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 involve 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 [2008] EWHC 2763 (Pat), [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] EWHC 160 (Pat), [2006] RPC 24; [2006] EWCA Civ 1094, [2007] RPC 9,[2007] BusLR 1; [2007] UKHL 43, [2007] BusLR 1796, [2008] 1 All ER 425, [2008] RPC 1: 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 [2003] EWHC 3409 (Admin), [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] EWHC 541 (Admin), [2002] RPC 46: a judicial review of a decision of the Patent Office about its powers to actex 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

• Makeality Ltd v City Doggo Ltd, [2025] EWCA Civ 400, [2025] Costs LR 543: IPEC Small Claims Track allocation.
• Entertainment One UK 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 v Inreach Group [2022] EWHC 2867 (Ch), [2023] RPC 4: whether certain trade mark legislation violated a party’s human rights.
• Alliance Pharmaecuticals v EUIPOCase T-279/18, EU:T:2019:752, [2020] ETMR 7: construction of ambiguous trade mark specification.
• Boyer v Stockbridge BL O-796-18, [2019] FSR 20: the consequences of a default judgment in the UK trade mark registry, in particular whether a res judicata arose.
• Hendrick v KnightBL O-323-14, [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] EWHC 240 (QB), [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] UKSC 1, [2013] 2 AC 185, [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.
• EnerconTM Case T-472/07, EU:T:2010:25, before the CFI, and then appealed to the ECJ, Case C-59/09, EU:C:2009:452: 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, [2010] RPC 15: 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 [2005] EWHC 2971 (Admin), [2006] ETMR 31, [2006] FSR 29, [2006] EuLR 643, [207] 1 All ER 216: concerning the Protected Geographical Indication “Melton Mowbray Pork Pies”; the reference from the CA to the ECJ, Case C-169/06, EU:C:2007:140 on the meaning of “region” settled.
• Hormel Foods v Antilles Landscape Investments [2005] EWHC 13 (Ch), [2005] ETMR 54, [2005] RPC 28: abuse of process and issue estoppel.
• Reckitt Benkiser (UK) v Home Pairfum [2004] EWHC 302 (Ch), [2004] FSR 37, [2005] ETMR 94: refusal to join a new Part 20 defendant as an abuse of process in a threats action.