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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

  • 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.

     

  • 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

  • International Stem Cell Corporation v Comptroller General C-364/13 [2014]

    International Stem Cell Corporation v Comptroller General C-364/13 [2014]

    Preliminary ruling of the CJEU in relation to the patentability of methods of producing stem cells from parthenogenetcally-activated human oocytes.  The Court held that such oocytes are not to be regarded as ‘human embryos’ within the meaning of Directive 98/44/EC.

    Piers Acland QC acted for International Stem Cell Corporation

    [2014] EUECJ C-364/13

     

  • Interflora Inc & Anor v Marks and Spencer Plc [2014] EWCA Civ 1403

    Interflora Inc & Anor v Marks and Spencer Plc [2014] EWCA Civ 1403

    The Interflora v M&S saga goes on … and on … and on.

    On 5 November 2014 the Court of Appeal gave judgment on Marks and Spencer’s appeal from the judgment of Arnold J in May 2013 that M&S’s Google Adword bidding on Interflora was an infringement of Interflora’s trade mark registration.  Arnold J had decided that M&S’s advertising triggered in response to searches for Interflora did not enable reasonably well-informed and reasonably attentive internet users to ascertain whether the products and service offered in the advertisements were being offered as part of the Interflora network.  He accordingly held that M&S had infringed Interflora’s trade mark.

    The Court of Appeal decided that Arnold J had been wrong in his analysis of the legal test laid down by the CJEU in its decision in Google France and elaborated in its decision on the reference in this case in 2011.  It also decided that he had been wrong to find that initial interest confusion forms part of UK and European trade mark law.  However, it held that he had been correct in his assessment of the nature of the average internet user and correct to find that a conclusion that significant proportion of consumers were led incorrectly to believe that M&S’s delivery service was part of the Interflora network was sufficient to reach a finding of infringement.

    In the light of the legal errors in Arnold J’s judgment the Court of Appeal was unable to determine whether he would have found that there was infringement had he applied the correct legal tests.  Consequently the Court decided that it would have to remit the action for a retrial on the issues and factual questions arising in that determination applying the correct legal tests.

    We will update this post when the date and terms of the retrial have been fixed.

    [2014] EWCA Civ 1403

  • Les Laboratoires Servier v Apotex Inc & ors [2014] UKSC 55

    Les Laboratoires Servier v Apotex Inc & ors [2014] UKSC 55

    The latest instalment in the long-running Servier v Apotex case reached the Supreme Court. In a ruling handed down on 29th October the Court upheld the decision of the Court of Appeal that Apotex’s claim for damages under a cross-undertaking was not barred as a matter of law by the principle ex turpi causa non oritur actio (the ‘illegality defence’).

    Although Apotex’s claim was based on acts which would have been an infringement of Servier’s Canadian patent, this was not an act of sufficient turpitude to engage the defence. However, the majority of the Supreme Court rejected the reasoning of the Court of Appeal that the application of the defence required an intense analysis of the surrounding circumstances to find a ‘just and proportionate response’ to the illegality. They confirmed that the defence was a strict rule of law. Iain Purvis QC appeared for Servier.

    [2014] UKSC 55

  • Cartier International AG & Ors v British Sky Broadcasting Ltd & Ors [2014] EWHC 3354 (Ch)

    Cartier International AG & Ors v British Sky Broadcasting Ltd & Ors [2014] EWHC 3354 (Ch)

    A test case concerning the ability of Trade Mark proprietors to seek orders against ISPs requiring them to block counterfeiter’s websites.  The Court gave consideration to whether it had jurisdiction to make such orders under Section 37 of the Senior Courts Act and Article 11 of the Enforcement Directive and held that it did.  The Court then considered the factors applicable to the grant of such orders as a question of discretion.  The Court held it would make orders against the ISPs in respect of a number of counterfeiters’ websites.  The orders would be subject to a “sunset” clause.

    [2014] EWHC 3354 (Ch)

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...