Michael Hicks

Michael practices all aspects of intellectual property law, including patents, trade marks and passing off, copyright, designs and domain names.
Computer software and hardware disputes and other IT related disputes.
Franchising, dealership and licence agreement disputes.
IP and IT related contractual matters.
Other cases involving technical or scientific subject matter (e.g. sale of goods with technical issues)

House of Lords and European Court of Justice

United Wire Ltd v Screen Repair Services (Scotland) Ltd [2001] R.P.C. 24 - House of Lords – Explanation of the law relating to the repair of patented articles (filter screens used in oil wells).

Thetford Corp v. Fiamma SpA [1987] F.S.R. 244 (C.A.) and [1990] Ch. 339 (E.C.J.) - E.C.J. - Whether patent for article which was not in fact novel could be relied upon to prevent imports from Italy

British Leyland Motor Corp Ltd v Armstrong Patents Co Ltd [1986] A.C. 577 [1986] R.P.C. 279 - House of Lords – whether defendants had right to make spare parts for motor cars.

EI Du Pont de Nemours & Co (Witsiepe’s Application) [1982] FSR 303 - House of Lords – selection patents – whether claimed copolyesters described as especially effective because of their rapid hardening rates anticipated by earlier I.C.I. specification.

Court of Appeal

British Telecommunications Plc v One in a Million Ltd [1999] 1 W.L.R. 903, [1999] F.S.R. 1 - The leading UK case concerning Internet Domain names

Inline Logistics Ltd v UCI Logistics Ltd [2002] R.P.C. 32 - Court of Appeal - confidential information in relation to design of warehousing system

Inter Lotto (UK) Ltd v Camelot Group Plc [2004] R.P.C. 9 - Court of appeal - relationship between trade marks and passing off; whether registered trade mark defence to passing off claim; compatibility of Trade Marks Act 1994 with Community legislation

Phones 4U Ltd v Phone4U.co.uk Internet Ltd [2007] R.P.C. 5 - Court of Appeal - passing off and infringement of registered trade mark by use of domain name - the case explains the difference between confusion and deception and the effect of a colour limitation in a registered trade mark.

Other examples of recent cases

waynerooney.com WIPO D2006-0916 and waynerooney.co.uk (Nominet DRS 03844) - Domain name ownership disputes.

Pozzoli SpA v BDMO SA 29(7) I.P.D. 29056 - Patent infringement - DVD cases

Nova Productions Ltd v Mazooma Games Ltd [2006] E.M.L.R. 14 [2006] R.P.C. 14 - Leading copyright case on “look and feel” of computer software (video game).

Nova Productions Ltd v Mazooma Games Ltd (Interest on Costs) [2006] R.P.C. 15 - Whether interest is payable on costs only in exceptional circumstances.

Haberman v Comptroller General of Patents [2004] R.P.C. 21 - Duty of patent office to provide information relating to patent applications

Irvine v Talksport Ltd (Damages) [2003] E.M.L.R. 6 - Assessment of damages in passing off

Irvine v Talksport Ltd [2002] 1 W.L.R. 2355, [2002] F.S.R. 60 - Passing off by use of photograph of F1 racing driver

Cherie Blair v. Associated Newspapers Ltd (High Court, 2000) - Claim for interim injunction to restrain publication of diaries of nanny.

Cambridge Technology Partners (UK) Ltd v Axial (UK) Ltd - Lengthy arbitration involving contractual claim and counterclaim in relation to computer software development contract

Designers Guild Ltd v Russell Williams (Textiles) Ltd (t/a Washington DC) [2000] F.S.R. 121 - Copyright in fabric design.

Farmer v Moseley (Holdings) Ltd (t/a RTK Marine) [2001] 2 B.C.L.C. 572
Farmer v Moseley (Holdings) Ltd (Security for Costs) [2001] 2 B.C.L.C. 572 [2002] B.P.I.R. 473 - Whether design rights owned by insolvent company or its director. Whether security for costs should be provided when liquidator assigned design rights to claimant in return for share of proceeds of litigation.

Herbert v. Colt Car Company Limited (2001) - Arbitration concerning termination of car dealership agreement

DAAWAT Trade Mark [2003] R.P.C. 11 - Appointed person - whether trade mark registered in bad faith contrary to section 3(6) of Trade Marks Act 1994

Sport Universal SA v Prozone Holdings Ltd [2003] EWHC 204 - Practice relating to the disclosure of confidential source code in relation to software which tracked movement of football players on the pitch

Beiersdorf AG v Ramlort Ltd [2004] E.T.M.R. 15 - Trade marks – parallel imports of “Nivea” products

Monitoring Technologies Ltd v Bell Group Plc (2004) 27(2) I.P.D. 27015 - Security for costs in patent infringement action

Chambers & Partners 2012

In Intellectual Property: Michael is "a deeply impressive performer who "really gives extra value as he is always thinking about your case and how to help." A lawyer who "brings a lot of experience and is good at getting his hands dirty," he receives a good deal of praise for the soundness of his judgment and the efficacy of his advocacy style."

In Information Technology: "Michael is a fantastically able senior junior," who recently worked on SAS v WPL, a case concerning the copyrightability of computer software functions. Particularly strong on the IP side of IT work, he is "a natural when it comes to drafting, and always produces strong opinions."

In Media and Entertainment: "Michael Hick's recent media work has included acting for the owners of the rights to the works of Salvador Dali, as well as taking part in a dispute between computer games developers Codemasters and the organisers of the Le Mans 24 hour race."

Legal 500 2011

In Intellectual Property: Michael "has extensive and deep knowledge of IP law."

In Media and Entertainment: "The very knowledgeable Michael Hicks is recommended for his expertise in interactive media and computer games consoles."

In Information Technology: Michael is "highly recommended for software related work and provides good and practical input."

Chambers & Partners 2011 Michael "impresses as "user-friendly, approachable and excellent with clients." "Enthusiastic and hard-working," he is sought out for his expertise in the electronic, computers and software fields. He recently acted for SAS institute in a claim against World Programming in the design of computer software."

Also mentioned in the Legal 500

Qualifications

School: Brighton College
University: Trinity College, Cambridge – open scholarship to read natural sciences.

Regulation

Racing dinghies and keelboats