Tim has been instructed in IPR cases before the Chancery Division of the High Court, the Intellectual Property and Enterprise Court (IPEC), as well as representing clients before the UK Trade Mark Office, the EUIPO / EPO and CJEU. Tim also lectured in IP law on Cambridge University’s Masters in Bioscience Enterprise MPhil course for 5 years.
Recent and Reported Cases
Trade Marks & Passing Off
Lifestyle Equities CV v Ahmed & Ahmed [2024] UKSC 17; [2024] 2 W.L.R. 1297; [2024] E.T.M.R. 32
Tim (led by Peter Knox KC and Laurent Sykes KC) successfully represented the Ahmeds in their appeal to the Supreme Court. The Court had to consider whether the liability of directors and senior employees alleged to be joint tortfeasors in respect of a strict liability tort (such as trademark infringement) was also a matter of strict liability. The SC held that it was not. Further to that issue, the SC also held that there was no joint and several liability as between defendants in respect of a claim for an account of profits and that genuinely earned directors’ salaries were not required to be accounted for when taking an account of profit.
Lifestyle Equities v Ahmed & Ahmed [2021] EWCA Civ 625; [2021] F.S.R. 31; [2021] Bus. L.R. 1020: Tim (led by Peter Knox KC) acted for the director Defendants in respect of a claim for an account of profits against them. The case raises important points of law in respect of the liability of directors as joint tortfeasors, where their company has been held liable for a strict liability tort (trade mark infringement) and whether, when taking such account, the directors and company are jointly or severally liable for the sums to be accounted. The case was appealed to the Supreme Court (hearing 20 / 21 Feb 2023) and judgment is expected shortly.
Asian Business Publications Ltd v British Asian Achievers Awards Ltd [2019] EWHC 1094 (IPEC) – Tim acted for the defendant in respect of a claim for passing where there was alleged that the addition of the word “British” to name of its awards event did not sufficiently distinguish it from awards operated by the Claimant to avoid a misrepresentation arising.
Grenade (UK) Ltd v Grenade Energy Ltd & Anr [2016] EWHC 877 (IPEC) – represented the Defendants at the Claimant’s application for summary judgment for passing off & trade mark infringement
Sun Mark Ltd and Bulldog Energy Drink Ltd v Red Bull GmbH – (Case C-206/15 P: 2015) -represented the applicants in their application for permission to appeal to the CJEU in circumstances where the applicants had not taken part in proceedings before the General Court in respect of trade mark Opposition proceedings that has be resisted to that point in time by OHIM.
Weight Watchers Ltd & Others v Love Bites & Others [2012] EWPCC 11, [2012] E.T.M.R. 27: represented the Defendants in respect of allegations of trade mark infringement where the PCC (now the IPEC) exercised its power to give a preliminary non-binding judgment in a trade mark case for the first time.
Sun Mark v Red Bull – 2011 – instructed by Sun Mark on three related cases in involving Sun Marks’ trade mark disputes with Red Bull GmBH. (a) judicial review proceedings brought against the UKIPO and Red Bull as an interested party alleging that the UKIPO had improperly granted trade marks to Red Bull that had been applied for in bad faith bad faith (led by Aidan Robertson QC) (b) Drafting amended grounds of appeal and appeal skeleton in respect of the ruling of Arnold J. in Claim No. HC10 CO173 finding Sun Mark had infringed certain Red Bull trade marks (led by John Baldwin QC) and (c) trade mark office proceedings for the revocation of two Red Bull trade marks (No. 790389 & 824548) – all three claims were eventually compromised.
UKIPO – Trade Marks
“ISLAM CHANNEL” – acted for the applicant in respect of the UK Trade Mark Office’s refusal, under s.3(1)(b) and (c) of the TM Act, to grant a trade mark for Islam Channel (UK 00003119213 – (2016))
“PHYSIO SOLUTIONS / PHYSIOTHERAPY SOLUTIONS” – acted for the Opponent in its Opposition to the registration of “Physiotherapy Solutions”- OP 401540 – and the counterclaim for revocation – CA 500535 (2015)
“SAVE AN ORPHAN” (UK Trade Mark Opposition No.: 2628031 (2013)) – represented the Opponent in opposition proceedings in respect of the Save an Orphan trade mark.
Copyrights
Munim v Rahman [2022] EWHC 2870 (Ch): Tim was instructed to deal with the copyright ownership / infringement claims in respect of the design of a trophy for the Asian Restaurant & Takeaway Awards, in circumstances where an ex-employee /consultant claimed copyright in the trophy as the sole creator of the artistic work.
Davies v Wolverhampton Wanderers Football Club (1986) Ltd [2019] EWHC 1252 (Ch): Tim acted for the Defendant in respect of his claims to have created the iconic wolf’s head design, now used by the football club, as a school boy in the 1960s. Consequently, he was the copyright owner of that work and that it has been unconsciously copied by graphic designers working for the club when creating the club’s team badge.
Database Rights and Data Protection
Raminder Ranger v House of Lords Appointments Commission [2015] EWHC 45 (QB); [2015] 1 WLR 4324 – representing Dr Ranger in his Part 8 claim against HOLAC for access under the Data Protection Act for access to letters held by the Commission that allegedly contained information pertaining to his application for membership of the House of Lords.
Executive Grapevine International Limited v Wall & Others [2012] EWHC 4152 (Ch); – Chancery Division of the High Court before Norris J.: represented the Claimant in its claim for infringement of database rights by an ex-employee who had stolen copies of the company’s marketing databases and sold them via e-Bay.
Patents
European Patent Office
Opposition to EP 1 021 120 B1 by HOOVER Ltd. (GB). – Acting for the opponent in oral opposition proceedings at the EPO in Munich.
Opposition to EP 1 161 405 by BIAGRO Inc. / Opposition to EP 743931 by MANDOPS (UK) Ltd. – joined cases heard before the EPO.