Charlotte Blythe (née Scott)

Year called: 2012

“Charlotte is fantastic to work with: she is approachable, gives clear advice and is a real hit with clients.”  Chambers & Partners 2020

Profile

Charlotte undertook her pupillage at Hogarth Chambers in 2012-2013 and has been a tenant since September 2013. Charlotte’s practice includes the full-range of soft intellectual property, including trade marks, passing off, copyright, design right and related commercial matters. She regularly appears in both the High Court and the IPEC (including the small claims track) for trials, CMCs and interim applications, including interim injunctions, both as a junior and in her own right.

In particular, Charlotte is becoming a trade mark specialist. She registered the most appearances as Counsel at the UKIPO in 2019, 2018 and 2017 (according to the CITMA Review) and regularly conducts appeals before the Appointed Person and the High Court, as well as matters before the EUIPO and the General Court. Charlotte also teaches on the Professional Certificate in Trade Mark Practice for Trade Mark Attorneys course at Nottingham Law School.

Charlotte is a contributor to Copinger & Skone-James on Copyright. She was also awarded the AIPPI Prize for 2015 for her contribution to the UK’s responses to AIPPI’s “Questions” for 2015.

Prior to coming to the Bar, Charlotte was a Scholar of Emmanuel College, Cambridge where she read Law. She also helped found Instant Impact Ltd, a graduate and early career recruitment agency. Instant Impact is now a leading company in its field and Charlotte continues to be involved in its legal and commercial affairs. This experience provides Charlotte with a valuable insight when advising commercial clients.

Directory & Testimonial Quotes

Legal 500 2021
Intellectual Property: 
“A reliable junior with good knowledge, who offers practical advice and assistance.”

Chambers & Partners 2020
Intellectual Property: 
“She is very quick off the mark and is sharp on her feet.”

Chambers & Partners 2019
Intellectual Property: “She is a very safe pair of hands and is very pragmatic.”

Charlotte is mentioned in the Who’s Who in the Law 2015.

Cases

SP Tools TM, BL O/257/20 (decision of 24 April 2020) – a decision of the Appointed Person in an opposition concerning relative grounds and proof of use.

Vega Finance TM, BL O/081/20 (decision of 31 January 2020) – a decision of the Appointed Person in an opposition concerning relative grounds. [https://www.ipo.gov.uk/t-challenge-decision-results/o08120.pdf]

Zohara TM, BL O/073/2020 (decision of 5 February 2020) – a decision of the Appointed Person including a detailed review of how to assess likelihood of confusion in circumstances where the goods are directed at a diverse range of consumers and encountered in a variety of circumstances. [https://www.ipo.gov.uk/t-challenge-decision-results/o07320.pdf]

Aiwa Co Limited v Aiwa Corporation [2019] EWHC 3468 (Ch), [2020] ETMR 12 (13 December 2019) – a decision of the High Court on appeal from the UKIPO concerning revocation action on grounds of non-use concerning in particular the relevance of second hand sales by third parties. [https://www.bailii.org/ew/cases/EWHC/Ch/2019/3468.html]

Bentley 1962 Ltd v Bentley Motors Ltd [2019] EWHC 2925 (Ch), [2020] ETMR 8 (1 November 2019) – a trade mark infringement claim concerning various issues related to concurrent use by the parties and the impact of context. [https://www.bailii.org/ew/cases/EWHC/Ch/2019/2925.html]

Nike v Miss Jessica Import & Export Ltd (settled August 2019) – a passing off and trade mark infringement claim in the IPEC concerning the importation of lookalike Nike trainers.

Manuka TM – an application for a certification mark which is being opposed by a number of parties on various absolute and relative grounds.

Truscott Terrace Holdings LLC v System Products UK Ltd (17 April 2019) [2019] RPC 15 – a decision of the Appointed Person in a design invalidity application. This was only the second appeal to the AP in a design right matter

Kallo Foods Limited v Whole Earth Sweetener Company LLC (settled March 2019) – a trade mark infringement and passing off claim concerning the peanut butter brand “Whole Earth”.

Dior v Charlotte Tilbury (settled early 2019) – a trade mark infringement and passing off claim concerning the brand “Dolce Vita”.

Performing Right Society Ltd v Townsend (decision of 28 February 2019) – successful summary judgment and strike out application in copyright infringement claim in the High Court.

APT Training & Consultancy Ltd v Birmingham & Solihull Mental Health NHS Trust [2019] EWHC 19 (IPEC), [2019] ETMR 22 (9 January 2019) – a successful claim for trade mark infringement and passing off in the IPEC. The key issue concerned whether the NHS body was using its signs in the course of

Just TM, BL  O/662/18 (decision of 18 October 2018) – an application to cancel a trade mark for non-use, specifically concerning variant use.

BMW v Kellmatt Ltd [2018] EWHC 2090 (IPEC); [2018] 6 WLUK 233 (13 June 2018) – two cross summary judgment applications in an IPEC trial concerning infringement of a trade mark by a printer of promotional materials for use by a third party.

Brandft TM, BL O/353/18 (decision of 4 June 2018) – an appeal to the Appointed Person concerning a trade mark opposition based on the likelihood of confusion.

Wise Driving TM, BL O/254/18 (decision of 24 April 2018) – an appeal to the Appointed Person concerning a trade mark opposition based on relative grounds.

Lifestyle Equities CV & Anor v Sportsdirect.Com Retail Ltd & Ors [2018] EWHC 728 (Ch) (20 April 2018)​,  Lifestyle Equities CV & Anor v Sportsdirect.Com Retail Ltd & Ors [2018] EWHC 962 (Ch) (20 April 2018)​ –  a 6-day High Court trial concerning trade mark infringement and inducing breach of contract. Preceded by a security for costs application: [2017] EWHC 2384 (Ch).

Student Union Lettings Ltd v Essex Student Lets Ltd [2018] EWHC 419 (IPEC) – an IPEC trial regarding trade mark infringement, specifically concerning the s.11(3) defence.

Birlea Furniture Ltd v Platinum Enterprise (UK) Ltd [2018] EWHC 26 (IPEC) – an IPEC trial concerning trade mark infringement via an online marketplace.

Bed Bath ‘n’ Table TM, BL/O/085/18 (decision of 2 February 2018) – an appeal to the Appointed Person concerning a trade mark opposition based on absolute grounds.

BMW AG v Technosport London Ltd [2017] EWCA Civ 779; [2017] ETMR 32 – an appeal to the Court of Appeal in respect of trade mark infringement and passing off concerning use of the word BMW by an independent, specialist garage.

Burgon & Ball Limited v Bosmere Products Limited (settled March 2017) – an IPEC multi-track claim relating to gardening products including trade mark infringement, passing off and infringement of copyright.

Unilever NV v OHIM, Technopharma Ltd Intervening, Case No. T-811/14 (judgment of 17 February 2017) – an appeal to the General Court, representing the Intervener, concerning various EUTM oppositions and cross cancellation applications and the principles surrounding stays in the EU IPO.

TT Education Limited v Pie Corbett Consultancy Ltd, BL O/017/17 (decision of 19 January 2017) –  an appeal to the Appointed Person relating to various cross applications for conflicting trade marks based on both absolute and relative grounds.

K&N Engineering Inc v K and N Engineering Kent Ltd (unreported, January 2017) – an application to commit the defendants to prison for breaches of an injunction relating to trade mark infringement and passing off.

Far East Direct UK Ltd v Phillips Pet Supplies & Ors (settled May 2016) – an IPEC claim for groundless threats of design right infringement.

The One Blue TM, BL O/165/16 (decision of 22 March 2016 at CMC) – an appeal to the Appointed Person concerning an opposition of a trade mark on absolute grounds.

The National Guild of Removers and Storers Ltd v Central Moves Ltd & Anor (December 2015) – a claim for passing off in the IPEC small claims track. The Claimant sought to appeal the decision relating to the damages awarded on the basis of a reasonable royalty.

Plant Theatre Ltd v Garden Best Buy Ltd & Anor (October 2015) – a successful passing off (based on get up) and trade mark infringement claim in the small claims track of the IPEC.

The Lacamanda Group v OHIM (ongoing) – appeal to the General Court concerning a trade mark opposition rejected by OHIM.

Nicholsons Solicitors v Jones (February 2015) – a successful application for an interim payment in relation to a claim for unpaid fees in the Queen’s Bench Division.

Phonographic Performance Limited v John Nash (trading as Charlie Wrights International) (January 2015) – successful application for a charging order in respect of judgment concerning copyright infringement.

McCormack Training Limited v Goldmark Training Services Limited & Anor [2015] EWHC 41 (IPEC) – a 2-day copyright infringement action in the IPEC, including literary, dramatic and photographic copyright in instruction manuals.

Phonographic Performance Limited v John Nash (trading as Charlie Wrights International) [2014] EWHC 3986 (Ch) – a successful summary judgment application in the High Court in relation to a copyright infringement action.

Anglian Windows Limited v Anglian Roofline Limited [2014] EWHC 4204 (IPEC) – a successful interim injunction application in the IPEC in relation to trade mark infringement and passing off.

Volkswagen AG v Garcia [2013] EWHC 1832 (Ch); [2014] FSR 12 – an application for an interim injunction relating to confidential information, freedom of expression and  publication of security algorithms.

Mukerjee v Sen [2013] EWHC 1997 (Ch) – partnerships and accounts.

 

UKIPO Trade Mark Registry Decisions

Charlotte has appeared in numerous trade mark registry hearings covering oppositions and cancellations on all grounds. A sample of recent cases includes:

Nip+Fab Unicorn Essence TM, BL O/260/20 (decision of 1st May 2020) – an opposition based on unregistered rights.

Masterchef TM, BL O/172/20 (decision of 17 March 2020) – a conjoined opposition and invalidity raising issues of damage to reputation, passing off and bad faith. [https://www.ipo.gov.uk/t-challenge-decision-results/o17220.pdf]

Jollibee TM, BL O/123/20 (decision of 27 February 2020) – a trade mark opposition based on damage to reputation and passing off. [https://www.ipo.gov.uk/t-challenge-decision-results/o12320.pdf]

Axis TM, BL O/037/20 (decision of 17 January 2020) – a trade mark opposition based on relative grounds, specifically concerning overlap in a device element but with differing verbal elements. [https://www.ipo.gov.uk/t-challenge-decision-results/o03720.pdf]

Xplora TM, BL O/682/19 (decision of 7 November 2019) – a trade mark opposition based on relative grounds with proof of use in issue. [https://www.ipo.gov.uk/t-challenge-decision-results/o68219.pdf]

Brooklyn TM, BL O/293/19 (decision of 29 May 2019) – a trade mark opposition based on absolute grounds, specifically descriptive geographical indications. [https://www.ipo.gov.uk/t-challenge-decision-results/o29319.pdf]

See also: BL O/176/20, BL O/119/20, BL O/066/20, BL O/014/20, BL O/657/19, BL O/484/19, BL O/365/19, BL O/199/19, BL O/189/19, BL O/082/19, BL O/071/19, BL O/806/18, BL O/662/18, BL O/471/18, BL O/437/18, BL O/368/18, BL O/249/18, BL O/094/18, BL O/086/18, BL O/054/18, BL O/031/18.

Membership

Intellectual Property Bar Association

International Association for the Protection of Intellectual Property (AIPPI UK)

Chancery Bar Association.

 

Qualifications and Regulations

Qualifications

BA(Hons) in Law, University of Cambridge 2010
Called to the Bar, Inner Temple 2012
Bar Professional Training Course, 2012

Regulations

Charlotte is a self-employed, independent barrister whose practice is governed by the Code of Conduct of the Bar of England and Wales. She is registered with the Bar Standards Board of England and Wales (Bar Ref: 59731).

She has professional indemnity insurance provided by the Bar Mutual Indemnity Fund (BMIF Ref: 2190/059). Please refer to the BMIF website  for full details of the world-wide cover provided, and the BMIF’s contact details.

 

Publications

LexisNexis (since 2016/2017) – Charlotte is a member of the Q&A and InBrief IP and IT panels on the LexisNexis subscription site LexisPSL

IPR Col.l 38 Issue 5 2016 on Damages Inquiries and Accounts for Profits in the IPEC

EIPR Col.l 38 Issue 4 2016 on Minder Music v. Sharples

 

Human Interest

Charlotte regularly plays tennis and netball. She also enjoys skiing and loves to travel.

She is an active member of the IPSoc Committee (the society for junior IP practitioners), having been Social Secretary for 2014-2015.

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