Tel: 020 7405 1222 or email

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

  • Jason Rawding -and- Seaga UK Limited [2015] EWCA Civ 113

    Jason Rawding -and- Seaga UK Limited [2015] EWCA Civ 113

    This is a case about whether certain emails had been forged.  The appellant individual appealed against the trial judge’s finding that the appellant had provided a personal guarantee for the debts of a company of which he was, for a period, the majority shareholder.  The guarantee was claimed to have been provided in an exchange of emails between the appellant and the individual controlling the respondent company.  The appellant’s case was that the emails had been forged.  That was the only issue in the case.

    In the appeal, the appellant applied for permission to rely on additional expert evidence from a data recovery specialist, who had analysed back up tapes that had been found after the trial and which it was previously believed could have contained no useful information.  The conclusion of the expert having analysed the tapes was that the appellant did not send or receive any of the emails in issue.  

    The Court of Appeal admitted the evidence, allowed the appeal and ordered that the issue of the authenticity of the emails be referred back to the trial judge for determination in light of the new evidence.  

    Mark Vanhegan QC and Chris Aikens acted for the successful appellant in the appeal.

    [2015] EWCA Civ 113

     

  • 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)

     

     

  • Fresh Trading Limited -v- (1) Deepend Fresh Recovery Limited (2) Andrew Chappell [2015] EWHC 52 (Ch)

    Fresh Trading Limited -v- (1) Deepend Fresh Recovery Limited (2) Andrew Chappell [2015] EWHC 52 (Ch)

    This case concerned the copyright in the “Dude” logo – the cartoon face with a halo which is used by Innocent Smoothies. The ‘Dude’ was designed by a company called Deepend pursuant to an agreement under which it would be given shares in the company responsible for Innocent. No shares were ever given to Deepend and Deepend later went into liquidation. Some years later, Deepend Fresh Recovery Limited, the sucessor-in-title of Deepend’s rights (if any) in the copyright, brought an action at OHIM seeking to revoke Innocent’s trade marks for the Dude on the basis that it was the owner of copyright. OHIM initially found in Deepend Fresh Recovery Ltd’s favour and Innocent appealed. However, the OHIM proceedings were stayed pending Innocent’s High Court action for a declaration that it  was the owner of copyright in the Dude (in law or in equity), alternatively that any claim against it for infringement was barred due to acquiescence.

    The Judge held at trial that Innocent owned the copyright in equity and were thus entitled to an assignment of legal title from Deepend Fresh Recovery Ltd.

    Iain Purvis QC and Anna Edwards-Stuart appeared for Innocent (Fresh Trading Limited). Michael Silverleaf QC and Kathryn Pickard appeared for the Defendants

    [2015] EWHC 52 (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

     

  • Merck KGaA v Merck Sharp & Dohme Corp & Ors [2014] EWHC 3867 (Ch)

    Merck KGaA v Merck Sharp & Dohme Corp & Ors [2014] EWHC 3867 (Ch)

    A preliminary issue was ordered in the context of a trade mark and contract dispute between Merck KgaA and Merck Sharpe and Dohme and others.  The parties had entered into a co-existence agreement that was silent as to the proper law governing the agreement.  Applying the common law authorities to the agreement (because it dated from before the Rome Conventions) the Court held that the proper law of the contract was German law.  That was the system of law with which the transaction had its closest and most real connection.  Henry Carr QC and Benet Brandreth acted for the successful party Merck KgaA.

    [2014] EWHC 3867 (Ch)

  • 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