Roger Wyand QC

Patents

Edwards v Cook [2009] EWHC 1304 (Pat); Corevalve v Edwards [2009] EWHC 6 (Pat)  Two cases concerning patents for an aortic heart valve carried in a stent to be implanted by a transcatheter method.

Actavis v Novartis [2009] EWHC 41 (Ch) – revocation of a pharmaceutical patent for a sustained release formulation of a cholesterol lowering statin on the grounds of obviousness

Actavis v Janssen [2008] EWHC 1422 (Pat) – revocation of an enantiomer patent for a hypertension treatment pharmaceutical patent on the grounds of prior publication

Qual-Chem v Corus [2008] EWPCC 1; [2008] EWCA Civ 1177 – patent infringement action by a small company against the large steelmaker for an invention in respect of an improvement in the process of steel purification

Ultraframe v Eurocell [2006] EWHC 1344 – one of the few patent damages inquiries to go to full trial, deciding a range of important issues on the recovery of different heads of damage.

St Gobain v Fusion Provida [2005] EWCA Civ 177 – an infringement action in respect of a patent for a corrosion protection system for iron pipes.  Important consideration of the doctrine of “obvious to try”.

Kavanagh Balloons v Cameron Balloons [2004] RPC 87 – Patents County court case relating to whether the flight of a hot air balloon in a field was a making available to the public and the level of proof required to prove prior use in such circumstances.  Went to the Court of Appeal on costs [2004] FSR 698

Designs and Copyright

Proctor & Gamble v Reckitt Benckiser [2006] EWHC 3154; [2007] EWCA Civ 936 – The first High Court and Court of Appeal decision on a Community Registered Design with important consideration of ‘informed user’, designer’s degree of freedom and generally on scope of protection.

Lambretta v Teddy Smith CA [2005] RPC 6 – a case on unregistered design right involving consideration of the interrelation between design right and copyright.

Phonographic Performance Limited v South Tyneside Metropolitan Borough Council [2001] EMLR 17 – a case on whether a local authority could claim to be a ‘club society or other organisation’ whose main objects were charitable and thus claim exemption to copyright infringement by way of playing sound recordings in public

Trade Marks and Passing Off

Diageo v ICB [2010] EWHC   (Ch) – the latest in the line of extended passing off cases considering the protectability of ‘vodka’ as the designation of an alcoholic drink and whether the use of the trade mark VODKAT, in respect of a drink that could not be described as vodka, resulted in that drink being passed off as vodka.

Daimler v Sany [2009] EWHC 2581 (Ch) – an action for the infringement of the Daimler trade mark registrations for the three-pointed star device by the use of a device consisting of three numeral “1”s arranged in a similar orientation but with a gap at the centre and with the tops of the numbers extending outside the circle.  Consideration of the requirements for taking an unfair advantage and the proof of use required to resist a non-use attack.

L’Oreal v Bellure [2006] EWHC 1503 (Ch); [2006] EWHC 2355 (Ch); [2007] EWCA Civ 968; C-487/07 (ECJ) – The leading case on infringement of registered trade marks by taking unfair advantage of the reputation of the registered trade mark.  Also important for consideration of infringement by the publishing of a comparison table indicating which of the Defendants’ “smell alike” perfumes smell like the Claimants’ famous brands of perfumes.  Still to return to the Court of Appeal for a ruling as to the effect of the ECJ answers to the questions referred to it by the Court of Appeal

Philips v Remington [2006] EWCA Civ 16 – the latest stage of the long running battle over the trade mark consisting of a picture of a Philips’ three headed shaver.  The ECJ had already ruled in earlier proceedings between the same parties as to the meaning of the shape exclusion provisions in the Trade Marks Directive.

Sir Robert McAlpine v Alfred McAlpine [2004] RPC 36 – a passing off case involving the protection of the shared goodwill in the family name against the attempt by the Defendant, one of the owners of the shared goodwill, to usurp it by the adoption of the trading style “McAlpines”.

Arsenal v Reed [2003] RPC 39 – a case involving the interpretation of the Trade Marks Directive in respect of the nature of the use of the mark by a market trader that can be prevented by the trade mark proprietor.  Market trader selling scarves and other memorabilia with ARSENAL and other insignia belonging to Arsenal Football Club on them.

Roger has mediated a number of disputes including a 5 day mediation in a dispute involving more than 20 patents.
Roger has acted as an arbitrator and has represented a client in a large confidential arbitration.

Deputy High Court Judge of the Chancery Division
Authorised to sit in the Patents County Court and the Registered Designs Appeal Tribunal

Roger frequently gives talks to various organisations, including the IBA, ITMA and commercial conference organisers on a variety of intellectual property subjects.

Chambers & Partners 2012

In Intellectual Property: "Roger Wyand QC is a popular silk who has the reputation of being a "proper QC - a commanding presence with all the desirable gravitas." He has been central to the Interflora v Marks & Spencer litigation in the ECJ, which his arguably the most high-profile and significant IP case of recent times. Commentators says he is "absolutely first-class in terms of getting into the detail and has superb client management sklls." They further appreciate the fact that he is "very straightforward and to the point, and doesn't over-dramatise in court.""

Legal 500 2011

In Intellectual Property: Roger is "a superb advocate, who should be considered if you need someone to argue a difficult case."

Chambers & Partners 2011 Roger "is an astute, knowledgeable and commercial" lawyer who "understands his clients' needs and gives realistic advice." His "laid-back" but "switched-on" approach makes him "a pleasure to work with" and in court he impresses as "terrific on his feet". A good all-rounder," he is experienced in a wide range of IP litigation and recently appeared in L'Oreal v eBay and Interflora v Marks & Spencer, both of which were referred to the ECJ"

Member of the Intellectual Property Bar Association, the Chancery Bar Association and the Bar European Group.
Associate member of ITMA and CIPA

Qualifications

MA (Cantab) Natural Sciences with courses in Maths, Physics, Chemistry, Crystalline State and Metallurgy with Material Science.

Regulation