Charlotte Blythe (née Scott)

Year called: 2012

“On complicated trade mark cases, she has been brilliant.” “She is a thorough barrister and is a good opponent to have. She fights hard for her clients.” Chambers & Partners 2022

“Charlotte has fantastic experience on trade-mark matters. She is amenable, gives clear advice and is great with clients.” Legal 500 2022

“She is very quick off the mark and is sharp on her feet.” “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 the IPEC, the High Court, the Court of Appeal, the General Court and the Trade Marks Registry, both as a junior and in her own right.

Charlotte specialises in trade marks. She has registered the most appearances as Counsel at the UKIPO in the five years 2016 to 2020 (according to the CITMA Review) and registered the second most appearances in 2021, despite being on maternity leave. She also 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 read Law at Emmanuel College, Cambridge. She also helped found Instant Impact Ltd, an in-house recruitment consultancy. 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

Chambers & Partners 2022
Intellectual Property:
“On complicated trade mark cases, she has been brilliant.” “She is a thorough barrister and is a good opponent to have. She fights hard for her clients.”

Legal 500 2022
Intellectual Property: 
“Charlotte has fantastic experience on trade-mark matters. She is amenable, gives clear advice and is great with clients.”

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

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

Cases

Trade Marks / Passing Off

Bentley 1962 Ltd v Bentley Motors Ltd, Court of Appeal [2020] EWCA Civ 1726, [2021] FSR 14 (16 December 2020), First Instance [2019] EWHC 2925 (Ch), [2020] ETMR 8 (1 November 2019) – a trade mark infringement claim concerning various issues including identifying the defendant’s sign, the relevance of context and issues of concurrent use.

Swiffpay TM, BL O/542/20 (decision of 30 October 2020) – a rare successful appeal to the Appointed Person concerning relative grounds.

S4S TM, BL O/002/21 (decision of 4 January 2021) – a decision of the Appointed Person concerning the Hearing Officer’s assessment of alleged evidence of actual confusion.

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.

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 whether second hand sales by third parties amounts to genuine use.

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.

Kallo Foods Limited v Whole Earth Sweetener Company LLC (settled March 2019) – a trade mark infringement and passing off claim in the High Court 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”.

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 trade.

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.

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.

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.

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.

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.

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.

Trade Mark Registry

Charlotte has appeared in countless Registry decisions. A recent selection includes:

Quan TM, BL O/035/22 (decision of 18 January 2022) – successful defence of an opposition concerning the likelihood of confusion between QUAN and QUANTAWARE.

Coolair TM, BL O/847/21 (decision of 17 November 2021) – a successful opposition based on prior unregistered rights.

McVegan TM, BL O/675/21 (decision of 16 September 2021) – a successful opposition by McDonald’s based upon its family of “Mc” marks.

Gucci.LLC TM, BL O/274/21 (decision of 16 April 2021) – a successful opposition based on relative grounds by the fashion house Gucci.

Axate TM, BL O/486/20 (decision of 1 October 2020) – successful defence of an opposition by AXA based on relative grounds.

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, in which Masterchef, the television show, was successful in full.

Copyright and Designs

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

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.

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

Interim applications

Lifestyle Equities CV & Anor v Sportsdirect.Com Retail Ltd & Ors [2017] EWHC 2384 (Ch) – a successful security for costs application.

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.

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

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.

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 has recently returned from maternity leave having had a baby boy. When she has time, Charlotte enjoys playing and watching sport, in particular tennis and skiing, and loves to travel.

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