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IP/IT Set of the Year 2005, 2007, 2009, 2011 & 2013

Chambers and Partners Bar Awards

“The summit of excellence for IP advice and advocacy”

Chambers and Partners 2015

“An IP powerhouse”

Chambers and Partners 2015

Welcome to 11 South Square

11 South Square is a leading barristers chambers specialising in all areas of intellectual property law. The set is made up of 6 Queen’s Counsel and 10 juniors together with two leading Professors in the area of IP law. Many Members have extensive experience in science and industry enabling them to offer top quality advocacy and advice to their clients.

Our members frequently act in leading cases in the areas of intellectual property, information technology and media and have appeared in courts and tribunals of all levels in the UK and other jurisdictions throughout the world.

 

Notable Cases

  • Lumos Skincare Ltd v Sweet Squared (UK) Ltd & others [2015] EWHC 1313 (IPEC)

    Lumos Skincare Ltd v Sweet Squared (UK) Ltd & others [2015] EWHC 1313 (IPEC)

    This was the account of profits following the Claimant’s successful appeal to the Court of Appeal, which held that the Defendants’ sale of nail care products under the name LUMOS amounted to passing off and ordered the Defendants to account for their profits.

    The Defendants (a US manufacturer and two UK distributors) had admitted participation in a common design under which the US manufacturer produced LUMOS products and supplied them to the UK distributors for onward sales.  On the account of profits, the US manufacturer argued that it need not account for its profits arising out of its sales to the UK distributor, because such sales did not themselves pass off. The judge rejected this argument, agreeing with the Claimant that the Court of Appeal’s order entitled the Claimant to recover the profits that each defendant had accrued from the common design.

    The Defendants also argued that they had not made any profit. Chris successfully argued to the contrary and the Claimant was awarded £57,000.

    Chris appeared as sole counsel on the account of profits.  He previously appeared as junior counsel with Richard Hacon (as he then was) in the Court of Appeal and at trial in the Patents County Court.

    Lumos Skincare Ltd v Sweet Squared (UK) Ltd & others [2015] EWHC 1313 (IPEC)

  • Starbucks (HK) Limited & Anr v British Sky Broadcasting Group plc & Ors [2015] UKSC 31

    Starbucks (HK) Limited & Anr v British Sky Broadcasting Group plc & Ors [2015] UKSC 31

    The Supreme Court has considered the difficult question as to when an overseas business can rely upon the goodwill in its name to restrain acts of passing off in the UK. 

    The Appellants ran a very successful TV subscription service under the name “NOW TV” in Hong Kong. That service enjoyed a reputation amongst members of the Chinese speaking community in the UK and was accessed and enjoyed for free in the UK via the internet. In 2012, the Respondents launched their “NOW TV” service in the UK. The Appellants sued for passing off. The key issue was whether the Appellants could establish goodwill in the jurisdiction.

    The Supreme Court reaffirmed the rule that to succeed in a passing off action it is necessary for a claimant to establish a goodwill in the jurisdiction and, to do so, it must demonstrate the presence of clients or customers in the jurisdiction for the goods and services concerned. It was held that the Appellants could not rely upon the reputation that they enjoyed in the UK. Whilst people in the UK accessed the Appellants’ services in the UK such people were not “customers” within the jurisdiction because they received the services for free. 

    Michael Silverleaf QC and Kathryn Pickard appeared for the Appellants. Iain Purvis QC appeared for the Respondents.

    Starbucks (HK) Limited & Anr v British Sky Broadcasting Group plc & Ors [2015] UKSC 31

     

  • Bodo Sperlein Ltd v Sabichi Retail Ltd & anr [2015] EWHC 1242 (IPEC)

    Bodo Sperlein Ltd v Sabichi Retail Ltd & anr [2015] EWHC 1242 (IPEC)

    This was a combined two-day trial for copyright infringement and an account of profits.  The claimant traded in bespoke, contemporary homeware.  One of the Claimant’s signature collections was a range of porcelain dinnerware carrying a ‘Red Berry’ motif.  The Defendants operated at the mass-produced end of the market, and had imported a range of tableware into the UK carrying a ‘Red Blossom’ design, sold through their network of shops.  The Red Blossom design was very similar to the Red Berry design, which led to an allegation of copying.  The Defendants claimed independent design. 

    The Defendants’ account of independent design did not stand up under cross-examination, and neither their designer nor their director was able to rebut the inference of copying.

    The Defendants argued that they had made next-to-no profit.  However, the Claimant obtained an award of £31,700, and secured payment of 100% of its costs. 

    Chris Hall appeared as sole counsel for the Claimant.

    Bodo Sperlein Ltd v Sabichi Retail Ltd & Sabichi Homewares Ltd [2015] EWHC 1242 (IPEC)

  • Iglotex SA v Iglo Foods Group Ltd (IGLOTEX) Case T-282/13

    Iglotex SA v Iglo Foods Group Ltd (IGLOTEX) Case T-282/13

    This was the appeal following a successful opposition at OHIM.  The applicant, Iglotex SA, had sought to register a figurative mark containing the word IGLOTEX.  Iglo Foods opposed this on the basis of an earlier word mark IGLO.  A particular issue was the importance of the word element in the figurative mark when assessing that mark’s overall distinctive character.  

    The General Court held that the word element IGLOTEX was sufficiently distinctive to give rise to a likelihood of confusion between the figurative mark and the word IGLO.  OHIM’s decision was upheld and the appeal was dismissed. 

    Chris Hall appeared before the General Court as sole counsel for Iglo Foods.

    Iglotex SA v Iglo Foods Group Ltd (IGLOTEX) Case T-282/13 

  • IPCom v HTC & ors [2015] EWHC 1034 (Pat)

    IPCom v HTC & ors [2015] EWHC 1034 (Pat)

    Iain Purvis QC and Brian Nicholson continue to represent IPCom in this long-running telecoms patent dispute.  In proceedings against HTC, the most recent Judgment considers the validity, infringement and essentiality of the Patent (previously upheld as valid and essential to the UMTS Standard by the UK Court of Appeal) following amendment of the Patent in Opposition Proceedings before the EPO.  The UK Patents Court at first instance held the Patent valid but, disagreeing with two German Courts on the material matters, found the Patent was not infringed by HTC and, accordingly, not essential to UMTS.  An appeal lies to the Court of Appeal with permission of either Court.

     

  • Maier & Anor v Asos Plc & Anor [2015] EWCA Civ 220

    Maier & Anor v Asos Plc & Anor [2015] EWCA Civ 220

    The Court of Appeal considered an appeal from the judgment of Rose J. in a trade mark dispute between the proprietor of the mark ASSOS and the operators of the fashion website ASOS.  The Court held that Rose J. had erred in finding that there was no infringement because she had wrongly treated the mark as confined to the context of those goods for which it had been used rather than also considering notional and fair use.  However, they held by a majority (Sales LJ dissenting) that the Defendants were entitled to the Own Name Defence.

    [2015] EWCA Civ 220

  • Mattel Inc. and J W Spear and Sons Limited v Zynga Inc. [2015] EWCA Civ 290

    Mattel Inc. and J W Spear and Sons Limited v Zynga Inc. [2015] EWCA Civ 290

    This was the appeal from the judgment of Peter Smith J ([2013] EWHC 3348 (Ch)) in which he dismissed Mattel’s claims for infringement of its registered trade marks SCRABBLE and SCRAMBLE by an electronic word game app called SCRAMBLE With Friends and modelled on the gameplay of the well-known game Boggle.  The trial judge held that the SCRABBLE mark was not infringed (save in one insignificant case) and that the SCRAMBLE mark was invalid but would have been infringed had it been valid.  The Court of Appeal reversed the judge’s finding on the validity of the SCRAMBLE registration and held that it was infringed.  The Court also reviewed entirely the judge’s consideration of infringement of the SCRABBLE mark holding that he had applied the wrong approach to the assessment of the likelihood of confusion.  It nevertheless upheld that finding on different grounds.  It also reversed his finding that a particular form of the SCRAMBLE sign as used by Zynga infringed the SCRABBLE registration. 

    Michael Silverleaf appeared for the successful appellants. 

    [2015] EWCA Civ 290

  • G-Star Raw CV v Rhodi Ltd & ors [2015] EWHC 216 (Ch)

    G-Star Raw CV v Rhodi Ltd & ors [2015] EWHC 216 (Ch)

    This was an action for infringement of unregistered UK design right.  The claimant was the well-known fashion brand, G-Star.  The defendants were responsible for the ‘Voi’ brand of jeans and casual clothing.  The case related to the claimant’s pioneering ‘Arc’ jean design.  The claimant said that certain design rights in that design had been infringed by 9 different Voi products.  All the Voi products were manufactured overseas.  There had been a prior set of proceedings between the parties in 2010, also relating to the ‘Arc’ jean.  Those had been compromised in a confidential settlement which included conditions relating to the subsequent conduct of the defendants.  In the present case, the defendants submitted that in light of those earlier proceedings, they would have been foolhardy to risk any further trespass on the claimant’s rights, a fortiori in respect of the ‘Arc’ design.

    The judge held that all 9 of the Voi products were copied from and made substantially to all the ‘Arc’ designs asserted, and that, in light of the earlier proceedings, the defendants knew or had reason to believe that the Voi products were infringing articles.  The personal defendants were held not to be liable as joint tortfeasors.

    Hugo Cuddigan acted for G-Star.

    G-Star Raw CV v Rhodi Ltd & ors [2015] EWHC 216 (Ch)

     

     

  • Rihanna & ors v Topshop & ors [2015] EWCA Civ 3

    Rihanna & ors v Topshop & ors [2015] EWCA Civ 3

    This was the trial and subsequent appeal of a complaint made by the world famous singer, Rihanna, that Topshop had infringed her rights by selling a t-shirt with her image on it and that this constituted an act of passing off. There was no claim in copyright because the photo on the t-shirt was taken by an independent photographer, and he had licensed his copyright to Topshop.  This matter has gained much media attention both because of the parties involved and because the claim itself was framed so as to cover any image of Rihanna. 

    At trial, the claimants restricted their claim to a particular complaint about the image used on t-shirt, saying that it reflected particular promotional images from Rihanna’s Talk that Talk album.  They succeeded on that narrower basis.  The Court of Appeal has now upheld the first instance judgment, finding  that, with all the particular factors of the case, the sale by Topshop of the t-shirt did amount to passing off. 

    Hugo Cuddigan acted for Topshop. 

    Rihanna & ors v Topshop & ors [2015] EWCA Civ 3

News

  • Silk Announcement

    11 South Square is delighted to announce that Hugo Cuddigan was successful in his application for Silk and his appointment was made official at the Silks Ceremony on 16th February...

  • Iain Purvis QC awarded ‘IP/IT Silk of the Year’

    3rd October 2014 - Iain Purvis QC received the award for 'IP/IT Silk of the year' at the 2014 Chambers and Partners Bar Awards. 11 South Square was also nominated for 'IP/IT Set of the...