Benet Brandreth KC

Call: 1999
Silk: 2018

Benet practises in all areas of Intellectual Property law as well as contractual and commercial disputes, particularly those with a technical or entertainment law aspect.

He has a particular interest in Trade Mark law and has appeared in a number of significant recent trade mark cases including Cartier v BSkyB and others, which established the availability and conditions for the grant of Internet blocking injunctions in areas other than copyright, Merck v Merck, which considered the law on targeting, use in the course of trade and scope of revocation for non-use of trade mark. He also appears regularly in the General Court and Court of Justice of the European Union including OHIM v National Lottery Commission Case C-530/12P, which established the obligation on EUIPO to investigate matters of law in trade mark invalidation actions, and Brandconcern v EUIPO Case C-577/14 P, which established the proper approach to class heading specifications.

Prior to taking Silk, Benet was appointed to the Attorney-General’s A panel of Counsel in 2015, whose members deal with the most complex government cases in all kinds of courts and tribunals, often against QCs. From 2005 – 2010 Benet was on the C panel, advising on disputes ranging from claims for breach of contract arising out of the UK-Russia Closed Nuclear Cities Partnership to claims for infringement of data protection principles by prisoners.

Benet is an expert on classical rhetoric and has a long interest in language. He is the rhetoric coach to the Royal Shakespeare Company and others, an advocacy trainer for the Middle Temple, the author of two novels The Spy of Venice and The Assassin of Verona, and an award-winning performer.

Benet was appointed as a part-time Criminal Recorder on the Midlands Circuit towards the end of 2019.

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Recent & Notable Cases

Merck KGaA v Merck & Co., Inc and others [2024] EWHC 820 (Ch)

Mr Justice Edwin Johnson ruled on allegations that Merck Sharpe & Dohme LLC had breached the terms of an Order obtained following a long-running contract and trade mark action brought by Merck KgaA against MSD over t...

Lidl v Tesco [2024] EWCA Civ 262

The Court of Appeal has just handed down its much anticipated judgment in Lidl v Tesco. This was an appeal from the decisions of Mrs Justice Joanna Smith in [2023] EWHC 873 (Ch) (liability) and [2023] EWHC 1517 (Ch) (fo...

The Court of Appeal has just handed down its much anticipated judgment in Lidl v Tesco. This was an appeal from the decisions of Mrs Justice Joanna Smith in [2023] EWHC 873 (Ch) (liability) and [2023] EWHC 1517 (Ch) (form of order), concerning the use by Tesco of the blue and yellow Clubcard sign and Lidl’s earlier rights in the Lidl logo. At first instance, Lidl succeeded in its claim for trade mark infringement, passing off and copyright infringement, however several of its Wordless Mark Registrations were invalidated on the ground of bad faith. The Judge also held that Lidl should be granted an injunction to restrain copyright infringement in any event.

The appeal was heard by Lewison, Arnold and Birss LLJ, and focused primarily on Lidl’s contention that the Clubcard signs conveyed the message of price matching with Lidl. Arnold LJ gave the main judgment, in which he dismissed Tesco’s appeal against the findings of trade mark infringement and dismissed Lidl’s appeal against the Judge’s finding of bad faith. The Court allowed Tesco’s appeal on the issue of copyright infringement. Birss LJ gave a short judgment in which he adopted a different analysis on detriment for the purposes of s.10(3), and in particular reinforced the proposition that a case of infringement for detriment to distinctive character cannot be made out solely on the basis of a “pure dilution” argument.

The judgment contains a useful summary of the applicable law in relation to all causes of action. Further, Arnold LJ engaged in a detailed consideration of the role and proper assessment of different types of evidence in trade mark and passing off cases. The judgment raised several interesting points:

surveys carried out prior to litigation and for non-litigious purposes can be relied on without the permission of the court and even if they are not statistically significant;
a judge is entitled to rely on evidence given by real consumers insofar as they assist the court in ascertaining the perception of the average consumer;
the judge is entitled to rely on evidence the admissibility of which is not objected to by the other side;
it is reasonable to infer, in the absence of an alternative explanation, that a price-matching perception was due to the similarity of the respective signs, despite this not being expressly stated by the evidence;
Arnold LJ agreed with the proposition that innocent adoption of the sign complained of is not, in and of itself, sufficient for a finding of due cause – something more is needed;
it was confirmed that, where objective circumstances give rise to a prima facie case of bad faith, the evidential burden shifts to the applicant to explain its intentions at the time of making the application. This is a legitimate approach regardless of the length of time passed since the application was made; and
the case of Ladbroke v William Hill was held not to be relevant to the question of whether a derivative work is original over an antecedent work.

Lastly, Lewison LJ expressed his view that there cannot be a finding of due cause under s.10(3) where the judge finds that the defendant’s sign took unfair advantage of a registered trade mark. However, the issue thus remains to be clarified by the courts at a later date.

Finally, the Court emphasised the importance of restricting appeals to a review of first instance decisions.

Benet Brandreth KC and Edward Cronan appeared for Lidl, instructed by Bird & Bird. Iain Purvis KC and Hugo Cuddigan KC appeared for Tesco, instructed by Haseltine Lake Kempner LLP.

[2024] EWCA Civ 262

Abbott Diabetes Care Inc. & ors v Dexcom Incorporated & ors [2024] EWHC 36 (Pat) – Trial A

Abbott Diabetes Care Inc. & ors v Dexcom Incorporated & ors [2024] EWHC 36 (Pat) This is a patent case relating to continuous glucose monitoring (“CGM”) technology, which now plays an important role in the man...

Tesco v Lidl [2023] EWHC 873 (Ch)

Lidl brought trade mark infringement, passing off and copyright infringement claims against Tesco. The complaint concerned Tesco’s blue and yellow Clubcard Prices symbol, which was said to infringe Lidl’s logo. Tesco cou...

ABP Technology v Voyetra Turtle Beach [2022] EWCA Civ 594

This was an appeal of a case management decision to allow certain amendments to a statement of case in a trade mark infringement claim. Both sides use the mark STEALTH in relation to headphones for computer gaming. The C...

ABP Technology v Voyetra Turtle Beach [2021] EWHC 3096 (Ch)

This was an interim hearing in a trade mark infringement claim. Both sides use the mark STEALTH in relation to headphones for computer gaming. The Claimant, ABP Technology, claims infringement of two UK trade marks for STEALTH and STEALTH VR. The only defence pleaded in the original Defence was that of honest concurrent use. The Claimant applied for summary judgment on the unamended Defence and the Defendants applied to amend the Defence and add a counterclaim.

Miles J dismissed the summary judgment application and partially allowed the amendment application. On the former, while there had only been a maximum of two years side-by-side use before the Claimant’s earliest infringement claim fell to be assessed, none of the cases on honest concurrent use define or stipulate a minimum period of use and it was arguable that length of use is only one factor to take into account when determining whether it applies.

The amendments sought by the Defendants each relied on their acquisition of a trade mark for STEALTH that pre-dated the Claimant’s registrations. Relying on that mark, they sought to add a defence under s. 11(1B) of the Trade Marks Act 1994, a counterclaim for a declaration that the Claimant’s registrations were invalid and a counterclaim for infringement of the earlier mark. The Claimant objected to the amendments on discretionary grounds, namely that the amendments could and should have been made earlier, and on the grounds that they had no real prospect of success. Miles J refused the amendment to introduce the counterclaim for a declaration that the Claimant’s marks were invalid on the ground that it had no real prospect of success, but allowed the other amendments. On the discretionary grounds, the Judge held that this was not a case of a late amendment and that the Defendants were entitled to wait until the First Defendant became the legal proprietor of the earlier STEALTH mark before seeking to amend their case.

Chris Aikens appeared for the Claimant and Benet Brandreth QC appeared for the Defendants.

[2021] EWHC 3096 (Ch)

Dr Reddy’s & Ranbaxy & ors v Warner-Lambert [2021] EWHC 2182 (Ch)

This is the inquiry into damages arising out of the pregabalin litigation. In what is the largest such inquiry in the history of the Patents Court, several generic pharmaceutical manufacturers, and the NHS, each seek com...

Nintendo Co Ltd v Sky UK Ltd & Ors [2019] EWHC 2376 (Ch)

An application for an Internet Blocking Injunction against UK ISPs. This was the first occasion on which such an order has been obtained in respect of a non-IP right. Nintendo sought protection against websites that dis...

Fisher & Paykel Healthcare Ltd & Anor v ResMed Ltd & Anor [2017] EWHC 2748 (Ch)

This was a claim for a declaration of invalidity and/or non-infringement of three patents, each of which was concerned with features of masks to be used with continuous pressure airway pumps for the treatment of sleep ap...

Napp Pharmaceutical Holdings Ltd v Dr Reddy’s Laboratories (UK) Ltd and Sandoz Ltd [2016] EWHC 1517 (Pat)

This was a patent infringement action brought against two generic manufacturers seeking to launch buprenorphine pain relief dermal patches. Napp claimed that the generic products fell within the claims of two of their p...

Cartier International AG & Ors v British Sky Broadcasting Ltd & Ors [2016] EWCA Civ 658

This was an appeal from the decision of Arnold J. It concerned the jurisdiction to grant Internet Blocking Orders and the applicable threshold requirements. The Court held that the jurisdiction was available under sect...

Appeal to ECJ Nissan Jodosha Kabushiki Kaisha C-207/15 P

An appeal from the General Court of the EU in respect of a decision by the Board of Appeal that treated sequential partial renewal as equivalent to surrender of the parts of the registration not mentioned in the initial...

Nike Innovate CV -v- Intermar Simanto O-222-16

An Appeal to Daniel Alexander QC sitting as Appointed Person. The case concerned an opposition that failed because the opponent was unable to establish genuine use of its earlier mark, a EUTM, by the sale of 55,000 pair...

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...

Jarden Consumer Solutions (Europe) Ltd v Seb SA & Anor [2014] EWHC 445 (Pat)

A patent dispute concerning a device capable of a novel method of frying. Validity challenged on the basis of anticipation and obviousness. Infringement denied on the basis that, properly construed, the alleged infring...

Merck KGaA v Merck Sharp & Dohme Corp & Ors [2016] EWHC 49 (Pat)

This was a claim for breach of contract and trade mark infringement between two pharmaceutical companies: Merck KgaA, the Claimant, and Merck Sharpe and Dohme Corp and others, the Defendants. The case concerned the use...

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...

Lambretta T-132/12 and T-51/12

In case T-132/12 the General Court upheld an appeal from the Board of Appeal of OHIM in an application for revocation for non-use. The GCEU considered the scope of the examination that the Board of Appeal was required t...

Weatherford Global Products v Hydropath Holdings Ltd & ors [2014] EWHC 2725 (TCC)

A breach of contract claim brought by Weatherford in respect of electronic fluid conditioners for use in the oil and gas industry against the supplier of the devices, Hydropath. Weatherford alleged that the devices brea...

Virgin Atlantic Airways Ltd v. Zodiac Seats UK Ltd and Delta Air Lines, Inc; The Comptroller General of Patents and the Secretary for State for Business, Innovation and Skills (intervening) [2013] EWCA Civ 1713

Iain Purvis QC and Brian Nicholson were instructed on behalf of Zodiac, and Benet Brandreth was instructed on behalf of Delta, in the Court of Appeal in this last part of the ongoing dispute regarding airline seats. Vir...