Mitchell Beebe

Call: 2017 (UK); 2013 (Australia)

Mitchell has a broad practice across all areas of intellectual property law and commercial disputes with a technical or IP aspect.

He has appeared, both led and unled, in matters in the High Court, the IPEC and the Court of Appeal, and in proceedings before the UK IPO and EUIPO. He has also appeared in commercial arbitrations under the LCIA and WIPO Rules. His recent work has included patent disputes concerning prosthetic heart valves and delivery systems for transcatheter aortic valve implantation (Edwards Lifesciences Corporation & Anor v Meril GmbH & Anor), small molecules (Neurim Pharmaceuticals (1991) Ltd & Anor v Generics UK Ltd (t/a Mylan) – both at first instance and on appeal), and mechanical ventilation (Tehrani v Hamilton Bonaduz AG & Ors), as well as trade mark disputes (Bentley 1962 Ltd & Anor v Bentley Motors Ltd – both at first instance and on appeal), and a claim of misuse of confidential information in a high frequency (quantitative) trading strategy (confidential LCIA arbitration).

Mitchell has also assisted on secondment on Garmin (Europe) Ltd v Koninklijke Philips N.V. [2019] EWHC 107 (Ch) and on the RAND aspects of TQ Delta v ZyXeL Communications UK Ltd & Anor HP-2017-000045.

Before coming to the Bar, Mitchell completed both a law degree and a science degree (with a major in pharmacology) and qualified as a solicitor in Australia. He worked for four years with Herbert Smith Freehills in both Australia and London. During that time, he worked on large-scale construction disputes and on intellectual property disputes with a focus on pharmaceutical patents.

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Recent & Notable Cases

Lisa Dräxlmaier GmbH v BOS GmbH & Co. KG [2022] EWHC 1642 (Pat)

This was an application for expedition of a hearing which would address an application for expedition of a STS trial in the Patents Court. The Defendant’s patent, EP(UK) 3,266,631 (the “Patent”), concerns sun blinds f...

Neurim v Mylan [2022] EWCA Civ 699

In these proceedings the Claimants allege infringement by Mylan of European Patent (UK) No. 3 103 443 (“EP443”). EP443 is a second medical use patent which (as unconditionally proposed to be amended) claims the use of a...

Tehrani v Hamilton & ors [2021] EWHC 3457 (IPEC)

This dispute concerned a patent for mechanical ventilation. Professor Tehrani was the registered proprietor of EP UK Patent No. 2,424,721 (“the Patent”), titled “Method and apparatus for controlling a ventilator”. A mech...

Bentley Motors Limited v (1) Bentley 1962 Limited (2) Brandlogic Limited [2020] EWCA Civ 1726

This was an appeal from the decision of Hacon HHJ in [2019] EWHC 2925 (Ch) where it was held that the well-known luxury car manufacturer Bentley Motors had infringed Bentley Clothing’s trade marks for the word BENTLEY for clothing (the so-called Word Mark and Series Mark) under both ss.10(1) and 10(2) of the Trade Marks Act 1994 (the “Act”). Hacon HHJ had held that Bentley Motors were not entitled to a defence of honest concurrent user and the defence under the transitional provisions of the Act was narrow and limited only to Bentley Motors’ use prior to the coming into force of the Act on 31 October 1994.

Bentley Motors was granted permission to appeal Hacon HHJ’s findings under ss.10(1) and 10(2) and the transitional provisions (which Bentley Motors put on a wider basis on appeal than at trial). Permission to appeal Hacon HHJ’s decision on honest concurrent use was refused.

The appeal was dismissed.

Before the Court of Appeal, Bentley Motors contended on s.10(1) that Hacon HHJ had failed to consider condition (vi) for infringement, being that the trade mark use must affect, or be liable to affect, one of the functions of the trade mark. The Court of Appeal rejected this argument and agreed with Bentley Clothing that the issue of condition (vi) had never been raised by Bentley Motors at trial (other than in the context of honest concurrent use). Given the Hacon HHJ had rejected Bentley Motors’ case on honest concurrent use and permission to appeal had been refused, it was not open to Bentley Motors to contend that condition (vi) was not satisfied for some other reason. Hacon HHJ was correct to find Bentley Motors had infringed the Word Mark and the Series Mark under s.10(1).

It was therefore not necessary for the Court of Appeal to consider s.10(2).

On the transitional provisions, the Court of Appeal held there was no basis to interfere with Hacon HHJ’s formulation of the defence.

Hugo Cuddigan QC and Mitchell Beebe acted for the Claimants, instructed by Fox Williams LLP

[2020] EWCA Civ 1726

Neurim v Mylan [2020] EWHC 3270 (Pat)

The Claimants (“Neurim”) alleged infringement of EP(UK) 1,441,702 B1 (the “Patent”), which claims 2mg prolonged release pharmaceutical formulations including the active ingredient melatonin to improve the restorative qua...

Edwards Lifesciences Corporation & Anor v Meril GmbH & Anor [2020] EWHC 2562 (Pat)

This was the first of three technical trials in a patent action concerning transcatheter heart values, artificial heart valves that can be implanted into a patient without the need for surgery, and their delivery systems...

Bentley 1962 Ltd & Anor v Bentley Motors Ltd [2019] EWHC 2925 (Ch)

This was a claim of trade mark infringement under ss.10(1) and 10(2) of the Trade Marks Act 1994 against the well-known luxury car manufacturer Bentley Motors Limited. The Claimants, Bentley 1962 Limited and Brandlogic Limited (together, “Bentley Clothing”), were respectively, a family firm who sold clothing under the brand ‘Bentley’ and the owner of three registered UK Trade Marks containing the word BENTLEY. Bentley Motors had used the word BENTLEY on clothing both alone and in combination with the ‘B in Wings’ device (referred to as the “Combination Sign”).

Bentley Clothing succeeded under both ss.10(1) and 10(2).

In relation to s.10(1), Bentley Clothing’s case was that use of the Combination Sign was use of two separate marks – the word BENTLEY and the ‘B in Wings’. This was put on two grounds. First, Bentley Motors was estopped from saying the Combination Sign was one mark given a prior decision involving the parties in the UKIPO, and second, the average consumer would treat it as two marks. While there was no estoppel, Hacon HHJ held that the Combination Sign was two marks and its use in relation to clothing was infringement of Bentley Clothing’s word marks for BENTLEY. Had there been no infringement under s.10(1), it was held that there would have been infringement under s.10(2).

Hacon HHJ then considered Bentley Motors’ defences. The first concerned the transitional provisions under the Trade Marks Act 1994. Due to some clothing sales prior to 1994, Bentley Motors was permitted to use the word BENTLEY to a limited extent on advertising literature for the sale of jackets, silk ties, caps and scarves but not on the goods themselves or on tags or other materials attached to the goods. The second defence was honest concurrent use. Since 1998, Bentley Motors had been on notice as to Bentley Clothing’s business and trade marks. It had adopted a policy of ‘grandmother’s footsteps’, involving a conscious decision to adopt use of the word BENTLEY in incremental stages to avoid triggering a response from Bentley Clothing. This conduct did not constitute honest concurrent use. This defence was rejected.

Hugo Cuddigan QC and Mitchell Beebe acted for the Claimants, instructed by Fox Williams LLP

[2019] EWHC 2925 (Ch)