“I find him to be very approachable and responsive. His understanding of the legal issues and his balancing with our commercial position are continually impressive.” Chambers & Partners 2023
“Jamie is efficient, accessible and knowledgeable – his written submissions and advocacy skills are rock solid.” Legal 500 2023
“Jamie was always swift to respond, and our client was immensely impressed by his eloquent and powerful advocacy at trial.” Chambers & Partners 2022
“A future star, especially for trademark work. He is very calm and very helpful – clients love him and solicitors can rely on him.” Legal 500 2022
“More than a match for more senior counsels.” Legal 500 2021
Profile
Jamie specialises in intellectual property, media and entertainment. He regularly appears in cases in the High Court, the Intellectual Property Enterprise Court and the United Kingdom Intellectual Property Office as well as being instructed in cases proceeding at the General Court of the European Union. He is a contributor to the CIPA Guide to the Patents Act and Copinger and Skone James on Copyright and a co-author of A User’s Guide to Trade Marks and Passing Off. He teaches on various IP courses at Nottingham Trent University and construction lawyers at King’s College London.
Since joining Hogarth Chambers, Jamie has been involved in the full range of intellectual property disputes, with his practice covering patents, trade marks, copyright, designs and confidential information. Recent highlights include representing The Lord Chamberlain in trade mark opposition proceedings at the UKIPO and appearing for Sega in its dispute with Manchester United over the game Football Manager.
In 2021, Jamie was appointed to the Attorney General’s ‘C’ panel of counsel.
Jamie completed a combined Bachelor of Arts and Master of Natural Sciences degree at the University of Cambridge, focussing on materials science. Afterwards, Jamie remained at Cambridge to undertake a doctorate in materials science. He then spent five years in the construction industry, initially assisting expert witnesses in a wide range of construction disputes and subsequently advising banks and other funders on risk in construction projects. During this time, he completed a part time Master of Science degree in construction law and dispute resolution and a part time law degree.
His technical and commercial background provides Jamie with an ideal foundation for working on complex intellectual property disputes and enables him to take a pragmatic view of disputes.
Directory & Testimonial Quotes
Chambers & Partners 2023
Intellectual Property:
“I find him to be very approachable and responsive.
Media & Entertainment: “Jamie has a hands-on approach. He turns things around very quickly and is very approachable.”
Legal 500 2023
Intellectual Property: “Jamie is efficient, accessible and knowledgeable – his written submissions and advocacy skills are rock solid.”
Chambers & Partners 2022
Intellectual Property: “Jamie was always swift to respond, and our client was immensely impressed by his eloquent and powerful advocacy at trial.”
Legal 500 2022
Intellectual Property: “A future star, especially for trademark work. He is very calm and very helpful – clients love him and solicitors can rely on him.”
Legal 500 2021
Intellectual Property: “More than a match for more senior counsels.”
Cases
Patents
Vernacare Ltd v. Moulded Fibre Products Ltd (IPEC) [2022] EWHC 2197 (IPEC) – junior counsel for the successful claimant in infringement proceedings concerning maceratable washbowls for use in hospitals (appeal outstanding)
Psittacus Systems Ltd v. Training Qualifications UK Ltd (Ch) (settled) – counsel for the claimant in patent and copyright infringement proceedings for an online examination system
Close Brewery Rentals Ltd v. Geco Holdings Ltd (IPO) (O/458/21) – counsel for the unsuccessful proprietor of a patent for an automated system for cleaning beer kegs and casks using ultra high pressure water, in entitlement proceedings
Don-Bur (Bodies & Trailers) Ltd v. Fluid Power Design Ltd (IPEC) (settled) – counsel for the claimant in a patent infringement claim concerning articulated truck and trailer linkage systems
Zacharias v. Dazcom (IPO) (O/340/20) – counsel for the unsuccessful applicant in an entitlement dispute concerning the inventorship of the ‘Fluxuator’ tool for plumbers
Unwired Planet International Ltd v. Huawei Technologies Co., Ltd [2016] EWHC 576 (Pat) – part of the team representing the defendant in a telecommunication patent infringement and revocation trial (whilst on secondment to a firm of solicitors) and assisting with grounds of appeal
Advising on entitlement, infringement and validity in respect of a wide range of patents covering medical and mechanical devices, telecommunications, specialist clothing and sports equipment
Trade marks and passing off
Shorts International Ltd v. Google LLC (IPEC) – junior counsel for the claimant in trade mark infringement and passing off proceedings concerning use of the sign ‘SHORTS’
National Art Collections Fund v. Via Art Fund, Inc. (O/745/21 and O/1136/22) – counsel for the Art Fund in a series of oppositions and cancellation applications concerning the signs ‘ART FUND’ and ‘VIA ART FUND’
easyGroup Ltd v. Easyfundraising Ltd (Ch) – counsel for the claimant in a trade mark infringement dispute concerning various signs incorporating the word ‘easy’ for online fundraising platforms
Morgan Lloyd Trustees Ltd v. The Commissioners for His Majesty’s Revenue and Customs (TC) – junior Treasury counsel for the respondent in a pension valuation dispute turning on the interpretation and valuation of intellectual property assets
Skyworks Solutions, Inc. v. Sky Ltd/EUIPO (O/483/22 and General Court) – counsel for the appellant in UKIPO proceedings (with an appeal to the High Court) and an appeal to the General Court regarding the opposition to the registration of the sign ‘Sky5’ by Sky Ltd (the intervenor)
Stichd Sportmerchandising BV v. Rowley [2022] EWHC 933 (Ch) – counsel for the successful applicant concerning the implication of a term into a merchandising and licensing agreement
Shine TV Ltd v. SKA Trading Ltd [2022] EWHC 3156 (Ch) – counsel for the respondent in an unsuccessful appeal by Shine TV against a decision of the UKIPO that MISTER CHEF was conceptually dissimilar to MASTER CHEF
Re: The Governing Body of Shrewsbury School (unreported) – counsel for the applicant in an appeal against a decision to refuse an application for the trade mark ‘SHREWSBURY SCHOOL’ on the basis of acquired distinctiveness
Tik Tok International Ltd v. TikTok Information Technologies UK Ltd (O/917/21) [2022] EWHC 1220 (Ch) – counsel for the respondent in an unsuccessful appeal against a decision of the UKIPO turning on similarity of goods and services
Guide Association v. Genius Brands International, Inc. (O/561/21 and O/251/22) – counsel for the respondent in a successful appeal to the Appointed Person turning on indirect confusion
Rightmove Group Ltd v. Addison (IPEC) (unreported) – counsel for the claimant in proceedings concerning the use of the sign ‘RIGHT MOVED’ by the defendants and a successful default judgment application
Euro Games Technology Ltd v. Novomatic AG (O/243/22) – counsel for the appellant in an unsuccessful appeal to the Appointed Person regarding the consideration of computer software as services or goods
Buzbees Beverages Ltd v. Buzzed Drinks Ltd (IPEC) (settled) – counsel for the claimant in trade mark infringement and passing off proceedings concerning the use of the sign ‘BUZZ’ and ‘BUZZED’ for tonic water
Poundstretcher Ltd v. My Fabulosa Ltd (O/745/22) – counsel for the opponent in partially successful UKIPO opposition proceedings concerning the use of the sign ‘FAB FRESH’ for household cleaning products
Kinkabu Ltd v. Cybernet Entertainment LLC (O/1067/22) – counsel for the successful applicant in opposition proceedings concerning the signs KINK and KINKABU for sex toys
Hilife Music Ltd v. Hilife Music Entertainment Ltd (O/1066/22) – counsel in a series of cross applications for invalidity focussed on the sign ‘HILIFE’ for music recording services
Manchester United Football Club Ltd v. Sega Publishing Europe Ltd (Ch) [2020] EWHC 1439 (Ch) (settled) – junior counsel in a trade mark infringement dispute concerning the computer game ‘Football Manager’, involving successfully opposing an application to amend
easyGroup Ltd v. Easy Life Ltd (Ch) [2021] EWHC 1705 (Ch); [2021] EWHC 2150 (Ch) – junior counsel for the unsuccessful claimant in a trade mark infringement dispute regarding the use of various signs incorporating the word ‘easy’ for a variety of household goods
Seated Inc. v. Seated Technologies, Inc. (O/027/22) – counsel for the opponent in opposition proceedings regarding the sign ‘SEATED’ for online ticketing and reservation services
Whizsolve Pte. Ltd v. Snap Inc. (O/768/21) – counsel for the applicant in opposition proceedings concerning the sign ‘SNAPSOLVE’
Hydro Paws Ltd v. Hydro Paws Manchester Ltd (Ch) (unreported) – counsel for the claimant in a successful application for an interim injunction for trade mark infringement and passing off in the provision of hydro therapy for pets under the sign ‘Hydro Paws’
B&B Cole Ltd v. Jollibee Food Corporation (O/123/20 and O/016/21) – counsel for the successful trade mark applicant for the sign ‘Jollibee’ in a dispute about similarity of goods and services, both before the Registrar and the Appointed Person
Yellow Bulldog Ltd v. AP & Co. Ltd (O/309/20) [2020] EWHC 3558 (Ch) – counsel for the unsuccessful trade mark applicant (and opponent) in proceedings before the Registrar and on appeal to the High Court concerning proving the extent of goodwill owned in an unregistered right
The Lord Chamberlain v. Harrold (O/404/20) – counsel for The Lord Chamberlain in a successful opposition to an application to register the words ‘The Royal Butler’ and a heraldic device for education and entertainment services
Dome Group Financial Advisers Ltd v. Dome Consulting Ltd (O/757/19 and O/489/20) – counsel for the successful opponent in opposition proceedings concerning the similarity of ‘financial’ and ‘business advisory and consultancy’ services, both at first instance and on appeal to the Appointed Person
Cinkciarz.pl sp. z o.o. v. EUIPO (T-84/19 & T-88/19 to T-98/19) EU:T:2020:231; [2020] E.T.M.R. 42 – junior counsel for the intervenor (Mastercard) in twelve joined appeals to the General Court, which annulled the decisions of the Boards of Appeal where it had failed to suspend proceedings pending the outcome of parallel proceedings
NXP BV v. ID Management Systems [2019] EWHC 1902 (IPEC) – counsel for the claimant in a trade mark infringement trial concerning counterfeits and parallel importation
easyGroup Ltd v. Netflix, Inc. (Ch) – junior counsel in a trade mark infringement dispute regarding the Netflix comedy ‘Easy’
Apple Inc. v. Pear Technologies Ltd (C-295/19 P) EU:C:2019:805 – junior counsel in a trade mark infringement case regarding the similarity of apples and pears as signs for technological goods
Golden Cala Trading Est. v. Mack (O/300/19 and O/029/20) – counsel for the partially successful opponent in a trade mark opposition and appeal to the Appointed Person concerning contact lenses
Ion IP Ltd v. Donohue (O/746/18 and O/243/19) – counsel for the successful trade mark owner in a revocation action concerning bad faith and wellington boots
Cambridge Neurotech Ltd v. The Chancellor, Masters and Scholars of the University of Cambridge (O/102/19 and O/003/20) – counsel for the partially successful trade mark applicant in an opposition and subsequent appeal concerning specialist research apparatus and associated services
Breitling v. Taktak (IPEC (small claims)) (unreported) – counsel for the successful defendant in trade mark infringement proceedings, awarded its costs because of the unreasonable behaviour of the claimant
Martinez (t/a Prick) v. Prick Me Baby One More Time Ltd (t/a Prick) [2018] EWHC 776 (IPEC) – counsel for the claimant in a passing off trial concerning a tattoo parlour and a cactus shop
Scolmore (International) Ltd v. CDS (Superstores International) Ltd (t/a The Range) (IPEC) (settled) – counsel for the claimant in a damages inquiry in respect of counterfeit plugs in a claim for trade mark infringement and passing off
Jemella Group Ltd v. Shenzhe Jinri Electrical Appliance Co Ltd (IPEC) (unreported) – counsel for the claimant in a successful application for alternative means of service in China to be deemed to be good service in a claim concerning counterfeit goods, trade mark infringement and hair straighteners
Turbo-K Ltd v. Turbo-K International Ltd (Ch) (partially settled) – junior counsel for the defendants in a complex dispute concerning passing off, trade mark infringement, breach of contract and misrepresentation in the field of turbine engine cleaning fluids
HBI Europe GmbH v. MMS Wholesale Ltd (IPEC) (settled) – counsel for the defendant in a claim involving trade mark and copyright infringement, passing off and confidential witness evidence in respect of tobacco rolling trays
Cooper v. Consolidated Developments Ltd (TIN PAN ALLEY) (O/135/18) – counsel for the appellant on appeal to the Appointed Person in a successful rebuttal of a strike out application, leading to transfer of the appeal to the High Court on the basis that it raised a matter of legal importance
Fior v. Walt Disney Co Ltd [2017] EWHC 2933 (IPEC) (settled) – junior counsel for the claimant in a claim regarding trade mark infringement and merchandising under the sign Alice Through the Looking Glass
Memoria Ltd v. Funeral Zone Ltd [2017] EWHC 2497 (IPEC) (settled) – counsel for the claimant in an unsuccessful application for interim relief leading to an order for an expedited trial in a claim for passing off and trade mark infringement in relation to the funeral sector
Jadebay Ltd v. Clarke-Coles Ltd (t/a Feel Good UK) [2017] EWHC 1400 (IPEC) – counsel for the successful claimant in a combined hearing of liability and quantum in respect of trade mark infringement and passing off concerning Amazon listings and flag poles
Powercell Global Ltd v. Duracell Batteries BVBA (POWERCELL) (unreported) – counsel for the applicant in a successful application for permission to file a late Form TM8 defence and counterstatement in trade mark opposition proceedings at the UK IPO in respect of energy drinks
Ceroc Enterprises Ltd v. Davies (IPEC (small claims)) (unreported) – counsel for the defendant in a damages inquiry following default judgment, beating a settlement offer from the claimant in respect of a type of dance
Pearson (t/a Pink Butterfly) v. Grand Events Holding Ltd (IPEC (small claims)) (unreported) – counsel for the successful defendant in a trade mark infringement and passing off trial regarding a wedding venue and the differences between dog, cat and rat goodwill
Furnitureland.co.uk Ltd v. Furniture Village Ltd (FURNITURELAND) (O/032/16 and O/507/16) – junior counsel for the successful defendant in trade mark revocation proceedings at the UK IPO and on appeal to the Appointed Person in respect of furniture stores
Designs
Additional Lengths Ltd v. So Secret Hair Extensions Ltd (IPEC) (settled) – counsel for the defendants in a UK registered design infringement case concerning hair extensions
Tutti Frutti Direct Ltd v. Kooltrade Ltd (IPEC) (settled) – counsel for the defendants in a UK unregistered design right infringement case concerning bedside cribs
Preston Innovations Ltd v. Middy Tackle Ltd (IPEC) (settled) – counsel for the claimant in a UK unregistered design right infringement case concerning fishing tackle
Parisian (UK) Ltd v. Missi Ltd (IPEC) (settled) – counsel for the defendant in a UK and Community unregistered design right claim and counterclaim in respect of dress designs
Moda Furnishings Ltd v. Allen (IPEC) (settled) – counsel for the defendant in a claim for UK and Community unregistered design right infringement concerning rattan furniture
Copyright/media/entertainment
Pasternak v. Prescott [2022] EWHC 2695 (Ch) – junior counsel for the claimant in an infringement case concerning infringement by a novel of the selection and arrangement of material in a factual book concerning the history of Boris Pasternak and the writing of Doctor Zhivago
Crypto Open Patent Alliance v. Wright (Ch) – junior counsel for the defendant in proceedings seeking a declaration that he is not Satoshi Nakamoto, the author of the Bitcoin White Paper
Buchanan v. Xenomania Songs Ltd & ors (Ch) (unreported) – counsel for the successful fourth defendant, Xenomania, in an application to strike out a claim in respect of royalties said to have been wrongly claimed by the fourth defendant for the exploitation of songs by Sugababes
Nkrumah v. Fyffe (IPEC) – counsel for the claimant in a dispute over royalties arising out of the use of a sample in the track ‘Coward’
Price v. Mukhlis (IPEC) (settled) – counsel for the claimant, aka Bounty Killer, in a claim for unpaid royalties arising out of an agreement by the defendant to collect his royalties to reduce withholding tax in exchange for a percentage
The Administrator General of Jamaica v. Studio 1UK Music Ltd (Ch) (unreported) – counsel for the successful claimants in a summary judgment application, in proceedings for infringement of the recordings of Coxsone Dodd, made in his studio, ‘Studio 1’ in Jamaica and in a subsequent application for an interim payment and stay of proceedings pending the conclusion of Jamaican proceedings
Your City Office Ltd v. Lee (Ch) (settled) – counsel for the claimant in a dispute over ownership and licensing of software for virtual office services
Edmonds v. Vaus (Ch) (unreported) – counsel for the successful claimant in a claim for delivery up of wine which disappeared during transportation by the defendant
Lennox Estates Ltd v. S&W Ventures Ltd [2021] EWHC 3323 (IPEC) – counsel for the successful claimant, obtaining summary judgment, in a claim for infringement of architectural drawings for a residential development
Smith v. Dryden (Ch) – counsel for the ninth defendant, successfully joined to proceedings concerning the infringement by Rudimental, in Waiting All Night, of a song, Can You Tell Me, which the ninth defendant alleged he had co-authored with the claimant, where she had commenced proceedings without his involvement
THJ Systems Ltd v. Sheridan (Ch) – counsel for the defendants in a partnership dispute revolving around the copyright subsisting in code and images generated by software for simulating share trading in real time
FBT Productions, LLC v. Let Them Eat Vinyl Distribution Ltd [2019] EWHC 829 (IPEC); [2021] EWHC 932 (IPEC); [2021] EWHC 1316 (IPEC) – counsel for the successful claimant in a claim for infringement of copyright in Infinite, the first album recorded by Eminem, with an inquiry as to damages subsequently awarding a four figure sum to the claimant
Symphonic Distribution, Inc. v. Defensive Music Ltd (QBD) (settled) – counsel for the claimant in a claim concerning breach of an agreement to collect royalties on behalf of artists represented by the claimant
Jagex Ltd v. Dequeue Ltd (Ch) (settled) – counsel for the defendant in a claim concerning the computer game Runescape and automation tools
Sexton v. Osman (Ch) (settled) – counsel for the defendant in a claim concerning breach of a management agreement
KKA Ltd v. Peel Ports Group Ltd (IPEC) (settled) – counsel for the claimant in a claim for infringement of architectural drawings
Tumber v. Independent Television News Ltd [2017] EWHC 3093 (IPEC) (settled) – counsel for the claimant in a partially successful strike out application and successful rebuttal of a cross-application to strike out the claim in respect of infringement of the copyright in a love poem
Phonographic Performance Ltd v. JJPB Ltd [2017] EWHC 1370 (Ch) – counsel for the claimant in a successful application for default judgment concerning the copyright in recorded music and the availability of injunctive relief
Koompirochana v. Photography By Lorna Ltd (IPEC) (settled) – counsel for the claimant in a claim for breach of moral rights in personal maternity and baby photographs
OMAS Tecnosistemi SRL v. Jurista Ltd (IPEC) (unreported) – counsel for the claimant in a successful application for default judgment in a claim for infringement of copyright in technical photographs for bottling machinery
Hook v. Sumner; Sumner v. Hook; Vitalturn Company Ltd v. Hook (Ch) (settled) – junior counsel for Peter Hook, former bassist of New Order and Joy Division in multiple disputes with the remaining members of New Order concerning copyright infringement, trade mark infringement, breach of fiduciary duty and a derivative action
Advising on artist resale right, including for artists seeking to recover undeclared royalties from galleries
Confidential information
ESL Fuels Ltd v. Fletcher (Ch) (settled) – junior counsel in a confidential information/licensing dispute concerning fuel products, involving several part 18 applications to clarify the confidential information (unreported)
Keyfresh IT Ltd v. Itech Information Technology Ltd [2018] EWHC 1337 (Ch) – counsel for the successful claimant in an application for an interim injunction in a claim for passing off and breach of confidence in a dispute between directors following the insolvency of their former company in the IT industry and in a subsequent successful application (unreported) to enforce the terms of a Tomlin order
Alliance Surgical plc v. Byrne (Ch) – junior counsel for the defendant in a breach of confidence dispute regarding customer lists
Niche Products Ltd v. Macdermid Offshore Solutions LLC (IPEC) (settled) – junior counsel in a three-day trial concerning the technical accuracy of a report into a control fluid for the oil and gas industry
Membership
ADR Group accredited civil and commercial mediator
Member of the British Literary and Artistic Copyright Association
Member of the Chancery Bar Association
Member of the Intellectual Property Bar Association
Member of the Society of Construction Law
Member of IPSoc (the society for junior IP practitioners)
Honorary Treasurer of the King’s College Construction Law Association
Qualifications and Regulations
Qualifications
BA, Natural Sciences, University of Cambridge, 2001
MSci, Natural Sciences, University of Cambridge, 2002
MA, University of Cambridge, 2005
PhD, Materials Science, University of Cambridge, 2006
MSc, Construction Law and Dispute Resolution, King’s College London, 2009
LLB, BPP Law School, 2011
BPTC, BPP Law School, 2012
Regulations
Jamie is a self-employed, independent barrister whose practice is governed by the Code of Conduct of the Bar of England and Wales. He is registered with the Bar Standards Board of England and Wales (Bar Ref: 59717)
He has professional indemnity insurance provided by the Bar Mutual Indemnity Fund (BMIF Ref: 2190/060). Please refer to the BMIF website for full details of the world-wide cover provided, and the BMIF’s contact details.
Publications
CIPA Guide to the Patents Act (the ‘Black Book’) (9th Edition, 2020 )
Copinger and Skone James on Copyright (18th Edition, 2020)
A User’s Guide to Trade Marks and Passing Off (5th Edition, 2021)
Appointments
In 2021, Jamie was appointed to the Attorney General’s “C” panel of counsel.
