CITMA Seminar for Litigators

Thursday 14th November

12pm - Jonathan Moss, Hogarth Chambers
Issues arising from Waterrower (UK) Limited v Liking Limited (T/A Topiom) relating to copyright and Retained EU law.

Jonathan has been involved in a number of significant cases across the IP spectrum. These include jurisdiction (AMS Neve v Heritage Audio), breach of confidence (Mulsanne v Marshmallow), privacy (Max Clifford v News Group Newspapers), copyright (Lucasfilms v Ainsworth) and designs (Magmatic v PMS).

Since 2016 Jonathan has taught design law at Oxford University on their Diploma in Intellectual Property Law. He also lectures for CIPA on their Basic Litigation Skills Course and on their Patent Attorney Litigation Course.

In 2020 and 2021 he was nominated for Junior IP Barrister of the Year at the Managing IP Awards.

12.45pm - Richard Darby, 3 New Square
Issues arising from service of process on defendants outside the territory of the UK

Richard has been involved with intellectual property law since 2009. He started his career as a patent attorney at a top intellectual property law firm. During this time he regularly represented clients at hearings at the European Patent Office: defending and attacking patents, and convincing EPO examiners to grant applications.

Since transferring to the Bar in 2023, he has gained experience beyond patents across the full range of intellectual property rights, including trade marks, copyright, passing off, designs, supplementary protection certificates, and contractual disputes involving intellectual property.

1.30pm - Michael Silverleaf KC, 11 South Square
Issues arising from the recent decision of Mellor J in Lifestyle Equities v Berkshire Poloclub

Michael specialises in IP, IT, data protection and technical commercial litigation.

He has been a qualified mediator since 2003 and regularly conducts mediations in IP and technical commercial disputes.

He took silk in 1996 and is one of the most senior practitioners at the IP Bar.

During his career, he has appeared in many important and high profile cases including the phone hacking litigation in 2008-13.

He represented the UK government in the Silhouette case in the CJEU and has considerable expertise in the field of exhaustion of rights.

Thursday 21st November

12pm - Becky Knott, Hogarth Chambers
Sky v SkyKick – how matters stand today

Becky is a barrister at Hogarth Chambers, specialising in Intellectual Property. After successful completion of her pupillage, Becky began her tenancy with Hogarth in April 2024.

Prior to qualifying as a barrister, Becky qualified as a Chartered Trade Mark Attorney and Trade Mark Attorney Litigator, although she is now non-practising. She also worked as a Legal Advisor in the Litigation & Licensing team at Potter Clarkson for five months in 2022 – 2023, to gain insight in the world of an IP solicitor.

Becky is a member of CITMA Council and sits on the CITMA Law & Practice Committee and the CITMA Litigation Working Group. She is also a tutor on the Professional Certificate in Trade Mark Practice at Nottingham Law School, Nottingham Trent University and blogged for The IPKat in 2022.

12.45pm - Iona Berkeley, 8 New Square
Trial advocacy in the IPEC

Iona Berkeley has an excellent reputation as a leading Senior Junior in Intellectual Property matters.

She specialises in every aspect of IP, including trade marks, passing off, patents, copyrights, designs, confidential information, and associated areas such as media and entertainment, IP related international arbitrations and, contractual disputes and media and entertainment. She is a co-author of Kerly’s law of Trade Marks (16th and 15th Ed and associated supplements) and Laddie, Prescott and Vitoria, The Modern Law of Copyright (5th and 4th Ed).

The legal directories describe her as: “..very bright, extremely practical, user friendly and commercial” (Legal 500 2022); “..an excellent advocate who has the respect of opponents and the bench (Chambers & Partners 2018); and as having “..a brilliant mind and a wonderful manner with clients. She is enthusiastic and proactive and recognises issues quickly.” (Chambers & Partners 2021)

1.30pm - Denise McFarland, 3 New Square
Transfers between courts, lists and tracks

Denise has huge advocacy experience acting for parties before the UK Courts and in EU Courts and tribunals, including; the High Court of England and Wales (Court of Appeal and Supreme Court) the Intellectual Property Enterprise Court, or IPEC, the UK Intellectual Property Office, the Company Names Tribunal, the EU Intellectual Property Office, the EU Patent Office and the General Court of the European Union (Luxembourg) and appeals to the Court of Justice. She has also appeared before both the legal and technical Boards of Appeal and the Opposition Division of the EPO.

Wednesday 3rd November

12pm - How to end litigation before judgement and final order
Jacqueline Reid, 11 South Square

• Submitting to judgment
• Discontinuance
• Tomlin orders
• Striking out

12.45pm - Parallel imports and repackaging post Brexit
Denise McFarland, 3 New Square

• What is the post-Brexit position on exhaustion
• Exports from UK to EEA
• Imports from EEA to the UK
• Will the UK and EEA begin to diverge on necessary conditions for exhaustion, eg. concept of consent
• Which party has the burden in the relevant elements
• What about repackaging/relabelling into and from the UK/EEA
• Is Northern Ireland differently treated

1.30pm - Comparative advertising and business protection from unfair advertising regulations 2008 
Maxwell Keay, 8 New Square

•    What is comparative advertising and when it is actionable per se and under the TMA.
•    Look-alikes and smell-alikes – what is an imitation or replica.
•    What are the defences
•    How to plead (and plead against) a comparative advertising claim. 

Wednesday 10th November

12pm - Further and better particulars
Daniel Selmi, 3 New Square

• When to request “further information” under Part 18
• How to make requests for further information
• How to react to requests for further information
• Remedies if the further information is refused or inadequate

12.45pm - Witness statements 
Geoffrey Pritchard, 3 New Square

• New Business and Property Court trial witness statement regime PD57AC
• Witness memory and witness prompting, including via documents 
• Drafting of witness statements generally
• Not applicable to non-trial statements, eg interim applications, IPEC or UK IPO, but potential effect of  PD57AC on such statements and potential for increased scrutiny 

1.30pm - Estoppel and abuse
Andrew Lomas, One Essex Court

• Res judicata
• Varieties of estoppel
• Rule in Henderson and Henderson
• Abuse of process generally
• Relevance of related UK IPO (or older EUIPO) proceedings to court proceedings – oppositions and invalidations