Ashley Roughton

Ashley has particular experience in:

•  Intellectual property: patents (mechanical, chemical and biotechnological), trade marks (both registered and passing off), breach of confidence and restraint of trade.
•  Crime (prosecuting and defending section 107 and section 92 matters as well as trade descriptions matters) and matters with a technical content
•  Border controls and condemnation proceedings.
•  Registered and un-registered designs.
•  Competition generally and also involving either a technical element or intellectual property.
•  Licensing of all types.
•  Semiconductor topographies.
•  Copyright (media, entertainment, industrial designs and fashion)
•  Data Protection proceedings.
•  Medicines Control (both applications,licensing and criminal aspects)

Appeared in the European Court of Justice, the Court of First Instance, the Court of Appeal (both criminal and civil), the High Court (Chancery and Queen’s Bench Divisions), the Divisional Court (both civil and criminal), the County Court (both general and patents) the Crown Court, the magistrates’ court, the trade marks registry and the patent office.

Notable Cases:

Arsenal Football Club Plc v. Matthew William Reed  [2001] R.P.C. 922, Laddie J. relating to whether it was a defence to claim that use of a trade mark which was not use as a badge of origin amounted to infringing use. Matter referred to the European Court of Justice (Case 206/01)- A-G’s opinion [2002] I E.C.R. 10273; Judgment of the European Court of Justice [2003] Ch. 454; [2003] 3 W.L.R. 450; [2003] All E.R. (EC) 1; Judgment on return to Laddie J. (overturning the European Court of Justice’s findings of fact) [2002] EWHC 2695; [2003] 1 All E.R. 137; Laddie J. Court of Appeal - finding that there would almost inevitably be confusion if identical marks were used [2003] EWCA Civ 696; [2003] 3 All E.R. 865.could clam to be a “club, society or other organisation” whose main objects were charitable and thus claim an exemption to copyright infringement.

Regina v. Robert Alexander Johnstone, Regina v. Harrison, Regina v. Matthew Louis Croxson and Regina v. (1) Toon Chin Ho, (2) Charles Robert Eley and (3) Mayron Multimedia Limited [2002] F.S.R. 56 C.A.  Establishing that (1) the burden on establishing the statutory defence under section 95(5) of the Trade Marks Act 1994 was only evidential and (2) that in the correct circumstances the prosecution had to prove civil infringement in order to establish an offence under s92 of the Trade Marks Act 1994.

(Case T-198/00) Hershey Foods Corporation v. Office for Harmonisation in the Internal Market (Trade Marks and Designs) [2002] E.C.R. II-2567, C.F.I. on whether the Examination division of OHIM or the Boards of Appeal at OHIM should have given the applicant the opportunity to comment upon evidence that the mark in suit was inherently descriptive (in the absence of evidence of distinctiveness - which had yet to be filed).

ICS Computing Limited v. Capital One Services Incorporated [2002] N.I. 76, Wetherup J. Relating to service out of the jurisdiction of Northern Ireland in a breach of an IT contract case.

Rocky Mountain Traders Limited v. Hewlett-Packard and associated actions [2000] F.S.R. 411, Pumfrey J. and [2002] F.S.R. 1, C.A., relating to the infringement and validity of a patent for affixing CD labels to home burned CDs.

Miller Brewing Company v. (1) Rhui Enterprises Limited and (2) Derek Barney Sealey Isherwood and Miller Brewing Company v. (1) The Mersey Docks and Harbour Company, (2) Derek Barney Sealey Isherwood, (3) Middle East International Investment Group, (4) Hyet Pte Limited, (5) Overseas Union Bank Limited, (6) Seth Shipping Limited, (7) Bahr Behrend Agencies Limited and (8) Zim Israel Navigation Company Limited [2003] EWHC 1606; [2004] F.S.R. 81, Neuberger J. relating to whether an ex parte interim injunction ought to contain provision for the protection of third parties and on the extent of joint tortfeasors, specifically, whether and in what circumstances a person was to be regarded as an importer if he ordered goods from abroad but took no part in their importation as such.

(1) WWF - World Wide Fund for Nature (Formerly the World Wildlife Fund) and (2) World Wildlife Fund Incorporated v. World Wrestling Federation Entertainment Incorporated, THQ/JAKKS Pacific LLC (Third Party) [2003] EWCA Civ 401; [2004] F.S.R. 161, C.A. on whether a third party could be in contempt of court for the acts of the defendant if the defendant had some degree of control over the third party.

Kavanagh Balloons Propriety Limited v. Cameron Balloons Limited [2003] EWCA Civ 1952; [2004] F.S.R. 698, C.A. relating to what circumstances a part 36 offer should be taken account of in a patent action.

David Paul Johnson v. The Medical Defence Union Limited [2004] E.W.H.C. 2509; [2005] 1 All E.R. 87; [2005] 1 W.L.R. 750; The Times 25^th of November 2004, Laddie J., on whether documents which were not disclosable as personal data could still be disclosed as part of the disclosure process.

David Paul Johnson v. The Medical Defence Union Limited [2004] E.W.H.C. 347, Laddie J., on what constituted computerised records.

Kavanagh Balloons Propriety Limited v. Cameron Balloons Limited [2004] R.P.C. 87 P.C.C. relating to  whether the flight of a balloon in a field was making available to the public and what level of proof was required to prove prior-user in such circumstances.

David Paul Johnson v. The Medical Defence Union Limited [2006] E.W.H.C. 321, (2006) 89 B.M.L.R. 43, The Times 4^th of April 2006, Rimer J., Application for compensation relating to unfair data processing.  Affirmed on appeal

Mastercigars Direct Limited v. Hunters & Frankau Limited [2006] E.W.H.C. 410; [2006] R.P.C. 32, H.H.J. Fysh Q.C. (Sitting as a Judge of the High Court), Concerning parallel imports and the question of consent. The Court held that the links between the undertaking and the trade mark owner had to be strong and that control itself was not enough. This was overturned on appeal.

Chambers & Partners 2012

In Intellectual Property: "Ashley Roughton has a broad practice that takes in both technically demanding patent work and complex trade mark litigation. He is known for his discreet handling of sensitive issues, and in recent times he has been engaged in a series of disputes relating to design rights of various types."

Legal 500 2011

Ashley is recommended as a leading junior in the field of Intellectual Property.

Cited in the Legal 500 (2003) as having an “impressive reputation.” and mentioned as leading junior and in Chambers & Partners (2003) as a “rising star who has demonstrated skill in numerous summary judgments”.

Cited in Chambers & Partners (2004) as having an “acute analyses of problems relating to criminal IP work for copyright and trademarks”.

Cited in the Legal 500 (2005) as a leading junior and as having had “another busy year”.

Cited in Chambers & Partners (2006) as “Impressive” and “‘stands out from the crowd’ especially when dealing with criminal and counterfeiting matters.’. Also cited as being in the 3^rd division of leading juniors.

Cited in Chambers UK (2008) as “Known for being quick on his feet and “good at responding to requests for advice promptly in a short time and offers ready and detailed knowledge of customs procedures relating to counterfeit goods” being in the 3rd division of leading juniors.

Member of The Inner Temple, The Bar European Group, The Intellectual Property Bar Association, The European Circuits, The International Association for the Protection of Industrial Property (Council member), The Competition Law Association (Committee member), The Intellectual Property Lawyers Association and the Chancery Bar Association.

Qualifications

B.Sc. (Eng) (Hons) (Lond), Ph.D. (Cantab), Dip.Law. (Westminster), M.Sc (Econ) (City).

Ashley read mechanical engineering at London University and completed a Phd at Cambridge University. He also has a diploma in law and a Masters degree in economics. He has acted predominantly in industrial aspects of intellectual property law and does much criminal defence and prosecution work.

Regulation

All mountain sports (mountaineering, rock climbing, skiing and walking), cooking, croquet and bicycle and shirt collecting. Slight and irrelevant interest in opera and game and graph theory.