What I have been doing recently
As of mid July 2022
I will update this 2-3 times a month.
Registered Designs: furniture wards continue. Registered Designs: novelty destroying disclsoures and medical device design. Trade Marks: opposition, to what extewnt can a descriptive senior mark oppose the registration of a similar junior one? Trade Marks: Black Cabs and Landrovers revisited – to what extent can a ‘descriptive’ shape be registered – representing an applicant in opposition proceedings. Data: can a data subject make a data subject access request in relation to information which will be disclosed in short order, but in the course of proceedings (answer: it depends). First CJEU appearance since Brexit … in French. Confidential Information misuse: issue as to particularity. Filming location contracts: gone wrong, asked to pick up the pieces for a film location owner. AI: more contracts on ontological lists (basically an AI programme (not program) comparing what some people call something, like a leg, and others call the same thing, like a lower limb). Registered Designs: enforcement and contempt. Chattels: getting (high value) stuff back. Trade Marks: advising and representing client in trade mark case where there is no clear overlap between fields of activity, 10(3) and passing off. Medical Devices: advising on whether a device which had different modes of use constituted one or several devices; was the certificate of conformity adequate? Designs: registered and unregistered designs; representing client in relation to skip accessories – ensuring pleadable case is fit for trial. Medical devices: advising client on generic registrability of one product in a number of models. Passing off and trade mark infringement: advising and representing client in relation to similar (but not identical) fields of activity
Data: advising data controller as to what extent is a national security issue relevant to a failure to answer an information notice issued by the Information Commissioner. Passing off: advising client on not quite spot-on fields of activity. Medical Devices: advising on whether a refusal to grant marketing authorisation on the basis that the device was not a medical device at all was a matter which the applicant could complain about. Trade Marks: advising on registrability of a trade mark in the UK, EU and the Channel Islands. Patent exploitation: advising on purchase and licensing of IP rights (incl patent rights) relating to means of consolidating terminologies across allied areas (both in medical journals and the defence sector) – ontological lists. Contract: IP exploitation agreement and basis for termination. Data: to DP or FoIA, that is the question; representing client subject to both kinds of notice and identifying any common issues. Registered Designs: infringement trial with issue on novelty as a defence. Patents: liability of software commissioner for infringement of the software author in telecommunications. Trade marks: demarcation agreement. Employee inventions and entitlement: advising employee on forming breakaway startup and scope of duty to invent in an immunology setting.
IP crime: fashion case; counterfeiting and money laundering (value circa £1m). Patents and UK Registered Design: advising on mechanicals and design of mechanicals. Data: advising on consequences of breach and misdirected emails; advising on whether to report the matter to the Information Commissioner. Passing off: advising on consequences of a claimant’s part 36 offer, and positive benefits accruing should the offer be beaten. Photographic copyright: advising on subsistence, jurisdiction and infringement concerning catalogue photographs relating to automotive spare parts. Designs: shoe wars; advising client on infringement.
Data: like everybody else I am involved in the current government email inquiry by the Information Commissioner. Trade marks: how wide do we construe the services part of the Nice Convention; advising client. Copyright: advising on infringement in the face of an assertion made by a photograph spotter operating recognition software. Trade marks: advising client in a litigation context, where one mark (of almost infinite repute) drowns out another mark (belonging to a third party). Data: advising client in relation to lengthy delays in responding to DSARs. Competition: advising client in relation to agreements having a distortion effect concerning differential trading terms between platforms.