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IP/IT Set of the Year 2005, 2007, 2009, 2011, 2013 & 2016

Chambers and Partners Bar Awards

“The first port of call for IP cases due to the expertise and efficient service on offer”

Legal 500 2017

“Very impressive set of fantastic barristers”

Chambers and Partners 2018

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

  • The National Guild of Removers & Storers Ltd v Bee Moved Ltd & Ors [2018] EWCA Civ 1302

    The National Guild of Removers & Storers Ltd v Bee Moved Ltd & Ors [2018] EWCA Civ 1302

    NGRS is a trade body which represents and provides services to its members in the removal and storage business.  NGRS appealed the first instance decision of Mr Recorder Campbell QC in which he held that, despite advertising on a website, www.reallymoving.com, the Respondents were not responsible for the misrepresentation ‘Members of NGRS’ on the www.reallymoving.com ‘directory page’ for the purposes of the tort of passing off.  The first ground of appeal was that the Judge erred in law in requiring that the respondents had knowledge of the directory page or intended the advert to appear there. The second ground was that the Judge erred in accepting the oral evidence of the Third Respondent, Mr Sampson – that he did not know about the wording on the webpage, despite what was alleged to be contradictory written evidence on the same issue.  NGRS also applied for permission to adduce supporting evidence on appeal in respect of the factual ground.

    Kitchin LJ and Asplin LJ heard the appeal.  In her judgment, Asplin LJ refused permission to adduce the evidence. She held that the balance was in favour of the finality of the litigation, including because the evidence could have been obtained before the trial.  In light of that, the factual ground of appeal was dismissed.  In respect of the legal ground, Asplin LJ held that the Judge was correct in finding that respondent had not made the representation; instead it was the act of the website owner, an independent third party, without the consent of the respondent.  She did not consider that the Judge had erred in requiring knowledge or intention in those circumstances and the legal ground of appeal was dismissed.

    Adam Gamsa appeared for NGRS

    [2018] EWCA 1302 (Civ)

  • Koninklijke Philips v Asustek and HTC [2018] EWHC 1224 (Pat)

    Koninklijke Philips v Asustek and HTC [2018] EWHC 1224 (Pat)

    Philips alleged infringement by HTC and ASUS of three Patents, which it had declared essential to the European Telecommunications Standards Institute (ETSI) Universal Mobile Telecommunications System (UMTS) standards, in particular the sections that relate to High Speed Packet Access (HSPA/3.5G).  This was the first technical trial, concerning the validity of the EP’525 Patent.  The invention of the EP’525 Patent relates to base station power control of acknowledgement messages (ACKs and NACKs) transmitted by a mobile phone as part of a Hybrid Automatic Repeat reQuest (HARQ) scheme.  HTC and ASUS accepted infringement but contended that the EP’525 Patent is obvious over two pieces of prior art: a temporary document submitted by Motorola to the 3GPP TSG-RAN Working Group 1 and 2 ad hoc meeting in Sophia Antipolis held on 5 and 6 April 2001 and a contribution submitted by Motorola to the 3GPP2 TSG-C meeting in Montreal held between 9-13 July 2001.  Arnold J held the EP’525 Patent to be valid over the pleaded prior art notwithstanding a finding of invalidity of the Dutch equivalent of the EP’525 Patent in the Netherlands.

    Mark Vanhegan QC and Adam Gamsa were instructed by Bristows for Philips

    [2018] EWHC 1224 (Pat)

  • Apple Retail UK Ltd v Qualcomm (UK) Ltd [2018] EWHC 1188 (Pat)

    Apple Retail UK Ltd v Qualcomm (UK) Ltd [2018] EWHC 1188 (Pat)

    Brian Nicholson and Christopher Hall act for the claimant in the global litigation between Apple and Qualcomm.  The dispute raises several issues including FRAND licensing, patent exhaustion, and competition law.  In this latest stage, Morgan J delivered a judgment on the scope of the jurisdiction of the English courts, in particular finding that a claim for a declaration as to exhaustion of rights in a patent is validly served on a foreign party under CPR 63.14 at the registered service address for that patent in the UK.

    [2018] EWHC 1188 (Pat)

  • Bose Corporation v Freebit AS [2018] EWHC 889 (Pat)

    Bose Corporation v Freebit AS [2018] EWHC 889 (Pat)

    In this action Bose’s in-ear headphones and StayHear eartips were alleged to infringe a patent owned by Freebit.  The patent is for an ear unit with a shape allowing it to fit comfortably and stably in the outer ear.  Bose denied that their products fell within the scope of the claims and alleged that Freebit’s patent was invalid.  The claims of the patent (as granted and as proposed to be amended) were found to have been anticipated by the supply of the Freebit H1 product in Norway before the priority date.  The added matter attack also succeeded.  The court construed the claims such that the ear unit must have the required shape before it is inserted into the ear; it is not sufficient for the ear unit to adopt the required shape when placed within the ear, for example as a result of being made from flexible material.  On that construction the Bose products fell outside the scope of the claims and did not infringe.

    Hugo Cuddigan QC and Chris Aikens acted for Freebit.

    [2018] EWHC 889 (Pat)

  • Anan Kasei Co. Ltd & Anor v Molycorp Chemicals & Oxides (Europe) Ltd [2018] EWHC 843 (Pat)

    Anan Kasei Co. Ltd & Anor v Molycorp Chemicals & Oxides (Europe) Ltd [2018] EWHC 843 (Pat)

    This was a claim for infringement of a patent concerned with a method for producing ceric oxide (also known as ceria). Ceria is used in catalytic applications, particularly as a co-catalyst for purifying vehicle exhaust gas. Molycorp denied infringement and counterclaimed for revocation of the patent on the grounds of: (i) obviousness over an earlier Rhône Poulenc Chimie group (the predecessor of the Rhodia group) patent for the production of mixed oxides including cerium/zirconium mixed oxide, (ii) Kirin-Amgen ambiguity insufficiency (because the meaning of “consisting essentially of ceric oxide” in the claim is truly ambiguous) and (iii) Biogen insufficiency on the basis that the claim covered materials not enabled by the patent.  Roger Wyand QC, sitting as a Deputy High Court judge, held the patent to be valid and infringed.

    Piers Acland QC and Adam Gamsa were instructed by Bird & Bird for Molycorp.

    2018 EWHC 843 (Pat)

  • Alliance Surgical Plc v Byrne & Ors [2018] EWHC B9 (Ch)

    Alliance Surgical Plc v Byrne & Ors [2018] EWHC B9 (Ch)

    Chris acted as sole counsel in this seven day High Court trial, successfully representing the defendants.  The first defendant was the claimant’s former CEO, whom the claimant sued (together with his new company and a third party) for breach of confidence and infringement of database right.  The case involved extensive cross-examination of several witnesses of fact and of an expert witness.

    [2018] EWHC B9 (Ch)

  • AMS Neve Ltd & Ors v Heritage Audio SL & Anor [2018] EWCA Civ 86

    AMS Neve Ltd & Ors v Heritage Audio SL & Anor [2018] EWCA Civ 86

    AMS Neve appealed the Judgment of HHJ Hacon ([2016] EWHC 2563 (IPEC)),  that the Court of England and Wales had no jurisdiction to hear an EU trade mark infringement action concerning alleged offers for sale and advertising on a website, based on Art. 97(5) (now Art. 125(5) EU Trade Mark Regulation. The decision turned on the meaning of the concept of “the Member State in which the act of infringement has been committed“. It was common ground that the only relevant alleged activity took place in Spain, the place of the Defendant’s domicile, since that was where decisions about the Defendant’s website were made. The CJEU, in Case C-360/12 Coty Germany GmbH v First Note Perfumes NV [2014] ETMR 49, ruled that that concept referred to active conduct by a defendant so “the linking factor … refers to the Member State where the act giving rise to the alleged infringement occurred or may occur, not the Member State where that infringement produces its effects.”

    At the Court of Appeal hearing the Claimant alleged that HHJ Hacon’s decision was wrong. The Court of Appeal decided to refer questions to the CJEU, as it doubted that the decision was correct, and because although there was a decision of the Bundesgerichtshof (German Supreme Court) which supported the Defendants’ arguments, and which should be given respect, there was no decision of the CJEU directly on this point in relation to the EU Trade Mark Regulation.

    Jacqueline Reid acts for the Defendants

    [2018] EWCA Civ 86

     

  • PulseOn OY v Garmin (Europe) Limited [2018] EWHC 47 (Ch)

    PulseOn OY v Garmin (Europe) Limited [2018] EWHC 47 (Ch)

    In this case PulseOn sued Garmin for infringement of both unregistered UK design right and registered community design.  The claim related to the use of photoplethysmography in wearable heart rate monitors.   Garmin was alleged to have infringed the rights in issue through the distribution of a wide range of wrist mounted fitness watches.  The unregistered design claim was abandoned after the  oral evidence from Garmin’s witnesses.  The judge held that the registered designs had a narrow scope of protection in light of the applicable design constraints.   As a result, none of the Garmin products was held to  infringe and the claim was dismissed.  Hugo Cuddigan acted for Garmin.

    [2018] EWHC 47 (Ch)

  • W3 Ltd v Easygroup Ltd & Anor [2018] EWHC 7 (Ch)

    W3 Ltd v Easygroup Ltd & Anor [2018] EWHC 7 (Ch)

    This was a complex trade mark dispute, the core of which was whether W3 Ltd had infringed any valid EU trade mark of easyGroup Ltd by use of the sign “EasyRoommate” as the name of an online flat-sharing service.  The case involved a large number of issues principally arising out a long period of concurrent trading by the parties, including on the date of assessment of an infringement claim, acquiescence, validity, revocation and chain of title to goodwill.  The Court held that easyGroup’s trade mark for the word EASY is and always was invalidly registered in relation to ‘advertising’ and ’temporary accommodation’ services because EASY was descriptive of those services and had not acquired distinctiveness through use of that mark or any other mark containing “easy”.  As for the eight other EU trade marks relied on by easyGroup, the Court held that none of them had been infringed on either of the two pleaded bases.  There was no likelihood of confusion with “EasyRoommate” in any of the forms in which that sign had been used and those of easyGroup’s EU trade marks which had been shown to have a reputation at the relevant dates (easyJet and easyHotel) had not suffered any of the actionable injuries (unfair advantage or detriment to distinctive character or repute).  easyGroup’s claim for passing off also failed.

    Had it been necessary to do so, the Court would have dismissed W3’s defence of statutory acquiescence inter alia because easyGroup’s letters before action had been sufficient to stop time running for the purposes of acquiescence, although the court considered that this was a point of law that needed to be determined by the CJEU.  W3’s statutory claim for groundless threats of proceedings for trade mark infringement was also dismissed on the ground that easyGroup’s threats had been only in relation to the supply of services.

    Mark Vanhegan QC and Chris Aikens successfully represented W3.

    [2018] EWHC 7 (Ch)

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