Michael Hicks

Year called: 1976

“He is responsive, helpful and a pleasure to work with in cases.” Chambers & Partners 2020

“The content of his advocacy was exceptional, as was his dedication and commitment to the case.”  Chambers & Partners 2019

” Incredibly bright and thoughtful and able to get to grips with complex matters quickly.” Chambers & Partners 2018

Extremely pragmatic, commercially aware and very user-friendly.”  Legal 500 2017

“He is fantastic on paper, has really good judgement and is incredibly adept at handling questions from the bench.  He is very gentle but redoubtable before the court.”  “He is extremely personable and very good with clients”  Chambers & Partners 2017

Profile

Michael Hicks specialises in all areas of intellectual property and information technology law as well as other cases with a high technical content. He has been instructed in many of the leading cases in the fields of copyright, patents, trade marks, passing off designs, confidential information, and information technology. 

Michael won "IP, IT and Media Junior of the Year" in the Legal 500 UK Awards 2019 and also Chambers & Partners “Intellectual Property/Information Technology Junior of the Year” award in 2013.

     

 

Directory & Testimonial Quotes

Legal 500 2021
Intellectual Property:
“Extremely user friendly and hardworking.”
Media & Entertainment:  “He understands a client’s business very well and isn’t afraid to get his hands dirty.”
IT & Telecoms:  “He’s pragmatic, unflappable, responsive and incredibly user-friendly.”

Chambers & Partners 2020
Intellectual Property: “He is hugely experienced, provides excellent commercial advice and has great technical understanding.”
Media & Entertainment: “He’s a pleasure to deal with and a very clever barrister.”
Information Technology: “Always approachable and good at cutting through detail to get to the issues.”

Legal 500 2020
Intellectual Property:
“He is pragmatic, unflappable and incredibly user-friendly.”
Media & Entertainment:  “An impressive barrister offering sensible commercial advice, based on technical excellence.”
IT & Telecoms:  “He offers very sensible commercial advice, based on technical excellence.”

Chambers & Partners 2019
Intellectual Property: “The content of his advocacy was exceptional, as was his dedication and commitment to the case. His calm and measured approach kept the case simple and focused so that he could drive the client’s case home at trial in the best possible light.”
Media & Entertainment: “He is a fighter and a very dogged advocate.” ​
Information Technology: “He is hugely knowledgeable and excellent with clients, as well as a great team player.” “He has a great cross-examination style, and is regularly two to three steps ahead of the witness.”​

​Legal 500 2019
Intellectual Property:One of the best barristers for soft IP, with a wealth of experience under his belt and a combination of in-depth knowledge, commercial acumen, and fast response times.”
​Media & Entertainment: He has a very hands-on approach to resolving challenging issues.”
IT & Telecoms:He is user friendly, good with clients and understands the commercial issues for the business, rather than merely the legal issues in the dispute.”

Chambers & Partners 2018
Intellectual Property: “He is very user-friendly and will always go the extra mile for clients and instructing solicitors”
Media & Entertainment:​He has very strong critical analysis skills.  He’s a creative thinker who displays great attention to detail and real determination and energy to do the very best for his client.”
Information Technology:Incredibly bright and thoughtful and able to get to grips with complex matters quickly.”

Legal 500 2017
Media & Entertainment: Highly commercial, very accessible, excellent with clients and technically strong.”
Information Technology:Extremely pragmatic, commercially aware and very user-friendly.”
IT & Telecoms: Excellent on trade mark and design cases, and very friendly and fun to work with.”

Chambers & Partners 2017
​Intellectual Property: He is fantastic on paper, has really good judgement and is incredibly adept at handling questions from the bench.  He is very gentle but redoubtable before the court.”  “He is extremely personable and very good with clients”
Media & Entertainment:He is very approachable barrister who has an excellent manner with clients, and quickly puts them at their ease.  He prepares very thoroughly, his written and oral style is accessible, and he is a pleasure to work with.”
Information Technology: “He is very impressive and has a really deep knowledge and understanding of the subject”

Legal 500 2016
Intellectual Property: “He has an indepth knowledge of trade mark and design law”
Media & Entertainment: “Hugely impressive, and willing to help meet client expectations.”
IT & Telecoms:  “First-class for all software related disputes.”

Chambers & Partners 2016
Intellectual Property: “Combines superb attention to detail with creative thinking and exceptionally sound judgement.”
Media and Entertainment: “He’s very knowledgeable, very able and very helpful.”
Information Technology: “Absolutely superb – he works extremely hard, is magnificent on his feet and is very persuasive without being confrontational.”

Legal 500 2015
Intellectual Property: ​”He is second to none in accurately assessing the client’s position and how the dispute might play out”
​Media and Entertainment: ​”A very approachable barristers, who has an excellent manner with clients and quickly puts them at ease”
IT & Telecoms: ​”Recommended for software disputes”

Chambers & Partners 2014
Intellectual Property:Among the most experienced and highly regarded juniors around. Regularly acts as sole counsel in major hard and soft IP disputes. Offers excellent service, is always thorough and reliable, and proves great with clients. He always goes that extra mile.” “Someone I would not want on the other side,” said one peer.
Media & Entertainment: They like him as he “is very interested in the cases and is the type of person who will call you in the morning because he has thought of something overnight.”  He is “Always thorough and always reliable, he goes that extra mile and is good with clients too.”
Information Technology: Michael is “Highly regarded for his work on software copyright cases. He was recently heavily involved with SAS Institute v World Programming Limited, an important matter that confirmed that the functionality of a computer program and the programming language cannot be protected by copyright.”

Legal 500 2014
Intellectual Property: “A very clever and creative lateral thinker, with very sound judgement.”
IT & Telecoms: “Representing SAS in SAS Institute Inc v World Programming, a case of fundamental importance to copyright in computer software.”

Chambers & Partners 2013
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.”
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.”

Chambers & Partners 2012
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.

World Trade Mark Review 2017
“is always in demand.  Passionate about maths and science.”

Michael is regarded in Who’s Who Legal 2015

Cases

Trade Marks and Passing Off

Jaguar Land Rover Ltd v Bombardier Recreational Products Inc [2016] EWHC 3266 (Ch) – a trade mark case relating to the use of the name "Defender" on off-road vehicles.

Fine and Country v Okotoks (2012) 109(34) L.S.G. 24 (High Court); [2013] EWCA Civ 672 (Court of Appeal)
Claim for passing off and infringement of registered trade mark by “Fine & Country” against “Fine” estate agents. Issues included questions of use of allegedly descriptive names and validity of registered trade marks.

Redd v Red Legal [2012] EWPCC 50 and [2012] EWPCC 54; [2013] ETMR 13
Claim for passing off and trade mark infringement by firm of solicitors (“Redd”) against firm of licensed conveyancers (“Red Legal”).

Fayus v Flying Trade Group [2012] EWPCC 43
Claim for passing off in relation to ethnic food products. Non-binding opinion on the merits.

Adobe v Netcom – Various judgments including [2012] 2 CMLR 41; [2012] ECC 33; [2012] ETMR 39 (judgment on 2 March); and [2012] ETMR 38; [2013] FSR 5 (judgment on 24 February)
Parallel import case raising various points of law including (a) compatibility of settlement with competition law and (b) a ruling that in cases involving alleged infringement of Community Trade Marks a counterclaim for revocation on the ground of non-use can only be made in respect of goods or services that are the subject of the allegation of infringement.

Kingspan v Rockwool [2011] EWHC 250 and [2011] EWHC 1066 
Trial involving claims for declarations, infringement of registered trade mark and malicious falsehood arising out of videos made by the defendant for a promotional campaign for insulation material.

Ruiz de la Prada de Sentmenat v OHIM – Quant T-522/08 and T-523/08 (13 September 2011)
Court of Justice decision concerning Mary Quant flower logo.

Riemann & Co v Linco Care Ltd [2007] EWHC 3466 (Ch); [2007] E.C.C. 23 
Interim injunction in trade mark infringement claim relating to P20 once a day sun screen protection – whether “C20+packaging”  infringed “P20”.

Rxworks v Dr Paul Hunter [2007] EWHC 3061 (Ch); [2008] E.C.C. 15; [2008] R.P.C. 13; (2008) 31(2) I.P.D. 31011
Trade mark infringement case as to whether use of the term ‘vet.local’ amounted to trade mark use.

Phones 4U Ltd v Phone4U.co.uk [2007] R.P.C. 5; (2006) 103(23) L.S.G. 32; (2006) 150 S.J.L.B. 668 (Court of Appeal)
Trial and appeal of claim for passing off and infringement of a registered trade mark arising out of use of domain name “phone4u.co.uk”. The Court of Appeal judgment considers various important points of passing off and trade mark law, including the difference between confusion and deception and the effect of a colour limitation in a registered trade mark.

Beiersdorf AG v Ramlort [2005] E.T.M.R. 15 
Claim for infringement of trade marks by the parallel import of “Nivea” products.

Interlotto (UK) v Camelot [2003] 4 All E.R. 575; [2004] R.P.C. 9; (2003) 26(10) I.P.D. 26064 (Court of Appeal) 
Case involving the relationship between trade marks and passing off: whether a registered trade mark is a defence to a passing off claim, and the compatibility of Trade Marks Act 1994 with Community legislation.

Irvine v Talksport [2002] 1 W.L.R. 2355; [2002] 2 All E.R. 414; [2002] E.M.L.R. 32; [2002] F.S.R. 60; (2002) 25(6) I.P.D. 25039; (2002) 99(18) L.S.G. 38; (2002) 152 N.L.J. 553; (2002) 146 S.J.L.B. 85
Irvine v Talksport (Damages) [2003] E.M.L.R. 6 

Passing off case relating to the use of a photograph of a F1 racing driver for promotional material and subsequent assessment of damages.

DAWAAT Trade Mark [2003] R.P.C. 11
Claim involving question of whether a trade mark was registered in bad faith contrary to section 3(6) of the Trade Marks Act 1994.

British Telecommunications v One in a Million [1999] 1 W.L.R. 903; [1998] 4 All E.R. 476; [1999] E.T.M.R. 61; [1997-98] Info. T.L.R. 423; [1998] I.T.C.L.R. 146; [2001] E.B.L.R. 2; [1999] F.S.R. 1; [1998] Masons C.L.R. 165; (1998) 95(37) L.S.G. 37; (1998) 148 N.L.J. 1179 (Court of Appeal) 
Leading UK case concerning internet domain names.

Iomega v Nomai SA 
Passing off dispute involving technical question of whether defendant’s disks were compatible with Iomega’s Zip drives and discs (settled following trial but before judgment).

My Kinda Town v Soll and Grunts Investment [1981] Com. L.R. 194; [1982] F.S.R. 147; [1983] R.P.C. 15 
Whether use of name “Chicago Pizza” gave rise to passing off of one restaurant for another..

 

Patents

Global Flood Defence Systems Ltd & Anor v. Van Den Noort Innovations BV & Ors [2015] EWHC 153 (IPEC), [2016] EWHC 99 (IPEC), [2016] EWHC 189 (IPEC) & [2016] EWHC 1851 (Pat) – a claim for unlawful threats of patent infringement, unpaid royalties and misrepresentation.

Spudmuckers v. Tyrrells – a patent infringement and confidential information case relating to crisp packaging.

Swarovski-Optik KG v Leica Camera AG [2013] EWHC 1227 
Patent infringement claim concerning zoom telescopic rifle sights.

Datacard Corporation v Eagle Technologies [2011] EWHC 244 (Pat); [2012] Bus. L.R. 160; [2011] R.P.C. 17 
Patent infringement and trade mark claims in respect of replacement printer ribbons for thermal transfer ribbons.

Atrium Medical Corporation v DSB Invest Holding [2011] EWHC 429
Claim concerning the purchase and sale of intellectual property in the medical field.

Red Spider Technology Ltd v Omega Completion Technology Ltd [2010] EWHC 59 (Pat)
Claim for infringement of patent and design right in relation to design of oil well injection valve.

Red Spider Technology Ltd v Omega Completion Technology Ltd [2009] EWHC B43 (Pat); [2010] FSR 6
Application for pre-action disclosure in relation to claimed patent infringement for electronic component for an oil well valve. Inspection refused.

Boegli-Gravures v Darsail-ASP [2009] EWHC 2690
Patent infringement claim concerning packaging for cigarettes.

Walker v Daxbourne Int Ltd PCC (24 June 2009) and [2009] EWCA Civ 1511
Patent infringement trial concerning clip on wig.

Pozzoli SpA v BDMO SpA [2007] EWCA Civ 588; [2007] F.S.R. 37; (2007) 30(8) I.P.D. 30051; [2007] Bus. L.R. D117
Patent infringement claim concerning DVD cases. Re-states the test for lack of inventive step.

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

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

Stoves Ltd v Baumatic Ltd (2000) 23(10) I.P.D. 23086; I.P. Law. 2000, 5(Oct), 12; C.I.P.A.J. 2000, 29(8), 400
Patent infringement claim concerning cooling system for oven door.

United Wire Ltd v Screen Repair Services (Scotland) [2000] 4 All E.R. 353; [2000] E.N.P.R. 324; [2001] F.S.R. 24; [2001] R.P.C. 24; (2000) 23(12) I.P.D. 23099 (House of Lords)
House of Lords decision on the law relating to the repair of patented articles (filter screens used in the oil industry).

Oy Parlok AB v Jonesco [1997] EWHC Patents 350
Claim concerning the infringement of patents relating to bicycle mud guards.

Thetford v Fiamma SpA [1987] 3 C.M.L.R. 266; [1987] F.S.R. 244 (Court of Appeal); and [1990] Ch. 339; [1990] 2 W.L.R. 1394; [1988] 3 C.M.L.R. 549; [1989] 1 F.S.R. 57 (European Court of Justice)
Whether a patent for an article that was not in fact novel (but which was nevertheless valid) could be relied upon to prevent imports from Italy.

EI Du Pont de Nemours & Co (Witsiepe’s Application) [1982] FSR 303 (House of Lords)
Selection patents.

Cassidy v Eisenmann [1980] F.S.R. 381
Private prosecution falsely marking product “Brevetato” (patented) 

 

Copyright

Deutsche Borse AG v. Realtime Analysis News Limited –  a case relating to an action to restrain infringement of copyright.

SAS v World Programming [2011] 2 C.M.L.R. 9; [2011]; Eu. L.R. 303; [2011] F.S.R. 12 (High Court); [2013] Bus. L.R. 941; [2012] 3 C.M.L.R. 4; [2012] R. P. C. 31 (European Court of Justice); and [2013] R.P.C. 17 (High Court)
The leading case concerning the extent of copyright protection for computer software.

Ravensworth v VLM Holdings [2013] EWHC 228
Whether or not a sub-licence to use computer software granted by a subsidiary company automatically terminated when the head licence between the subsidiary and its parent copyright owner was terminated.

Destra v Comada [2013] EWHC 1575
Dispute as to ownership of copyright in relation to computer software for managing financial funds.

Anglia Autoflow v Wrightfield [2008] EWPCC 3  
Trial and subsequent costs hearing on whether the copyright in computer program for a Programmable Logic Controller (PLC) for controlling automated handling equipment was infringed by a PLC program which performed a similar function.

Nova Productions v Mazooma Games [2006] E.M.L.R. 14; [2006] R.P.C. 14; (2006) 29(3) I.P.D. 29023; (2006) 103(8) L.S.G. 24
Leading copyright case on whether or not there was infringement in relation to the “look and feel” of a video game and in relation to the protection of “functionality” of software.

Sport Universal SA v Prozone Holdings [2003] EWHC 204
Technically complex case concerning source code for computer software which tracks the movement of football players on a pitch. Involved allegations of breach of contract, infringement of copyright and misuse of confidential information.

Designers Guild v Russell Williams (Textiles) (t/a Washington DC) [2000] F.S.R. 121; (1999) 22(7) I.P.D. 22067
Important case concerning copyright in fabric designs.

Bowater Windows Ltd v Aspen Windows Ltd  [1999] F.S.R. 759; (1999) 22(7) I.P.D. 22066
Copyright in relation to advertising pitch. Approach to contempt application.

PCR Ltd v Dow Jones Telerate Ltd [1998] E.M.L.R. 407; [1998] F.S.R. 170; (1998) 21(4) I.P.D. 21037
Infringement of copyright and confidential information claim in relation to reports for state of the cocoa crop. Raised question of substantial part, fair dealing and public interest defence.

British Leyland Motor Corp v T.I. Silencers (1987) WL 1454986 (Court of Appeal)
Copyright in spare parts for motor cars.

British Leyland Motor Corp v Armstrong Patents [1986] A.C. 577; [1986] 2 W.L.R. 400; [1986] 1 All E.R. 850; [1986] E.C.C. 534; [1986] F.S.R. 221;[1986] R.P.C. 279; (1986) 5 Tr. L.R. 97; (1986) 83 L.S.G. 1971; (1986) 83 L.S.G. 974; (1986) 136 N.L.J. 211; (1986) 130 S.J. 203 (House of Lords) 
Well known case involving spare parts for motor cars.

 
Designs
Magmatic v PMS International [2013] E.C.C. 29 
Claim for infringement of design right and registered design in relation to the well-known “Trunki” suitcase for children (as shown on the Dragons Den).

Whitby Specialist Vehicles Ltd v Yorkshire Specialist Vehicles Ltd [2013] EWHC 2776 (Pat)
Whether claim concerning allegations of infringement of design in ice cream van should be struck out against alleged joint tortfeasor.

Mainetti (UK) v Hangerlogic UK [2012] EWPCC 42
Registered design claim in relation to clothes hangers.

Red Spider Technology Ltd v Omega Completion Technology Ltd [2010] EWHC 59 (Pat)
Claim for infringement of patent and design right in relation to design of oil well injection valve.

Farmer v Moseley (Holdings) Ltd (t/a RTK Marine) [2001] 2 B.C.L.C. 572; (2000) 23(6) I.P.D. 23047 (7 March); and [2001] 2 B.C.L.C. 572; [2002] B.P.I.R. 473 (02 July)
Design right claim involving question of whether design rights were owned by an insolvent company or its director.

Dyrlund Smith A/S v Turberville Smith Ltd (C.A.) [1998] F.S.R. 774; (1998) 21(8) I.P.D. 21089; Times, June 4, 1998
Whether or not undertaking to take licence of right in respect of designs which are in final 5 years of protection can always defeat application for interim injunction.

Re Bance Ltd's Licence of Right (Copyright) Application [1996] R.P.C. 667
The first decision on licences of right under CDPA 1988.

British Leyland Motor Corp v Armstrong Patents [1986] A.C. 577; [1986] 2 W.L.R. 400; [1986] 1 All E.R. 850; [1986] E.C.C. 534; [1986] F.S.R. 221;[1986] R.P.C. 279; (1986) 5 Tr. L.R. 97; (1986) 83 L.S.G. 1971; (1986) 83 L.S.G. 974; (1986) 136 N.L.J. 211; (1986) 130 S.J. 203 (House of Lords) 
Well known case involving spare parts for motor cars.

 
Information Technology

Noel Starbuck v. Patsystems (UK) Ltd [2017] EWHC 397 (IPEC)
​A case relating to issues regarding ownership and infringement of software for use in a financial trading system.

Blizzard Entertainment Inc v. Bossland GmbH
​Acting for a gaming developer to prevent the sale of "cheat" and "bot" programs.

118 Data Resource Ltd v. IDS Data Services Ltd & Ors. [2014] EWHC 3629 (Ch)
​Allegations of infringement of rights in a database of names and addresses and issues relating to the keeping and use of a database.  Also explored the issue of enforcement of a right of entry and inspection via a licence agreement.

SAS v World Programming [2011] 2 C.M.L.R. 9; [2011]; Eu. L.R. 303; [2011] F.S.R. 12 (High Court); [2013] Bus. L.R. 941; [2012] 3 C.M.L.R. 4; [2012] R. P. C. 31 (European Court of Justice); and [2013] R.P.C. 17 (High Court) 

The leading case concerning the extent of copyright protection for computer software.

Ravensworth v VLM Holdings [2013] EWHC 228 
Whether or not a sub-licence to use computer software granted by a subsidiary company automatically terminated when the head licence between the subsidiary and its parent copyright owner was terminated.

Destra v Comada [2013] EWHC 1575
Dispute as to ownership of copyright in relation to computer software for managing financial funds.

Codemasters Software Co Ltd v Automobile Club de l’Ouest (no 1) [2009] EWHC 2361 (Ch); [2009] Info. T.L.R. 203; [2010] F.S.R. 12; and (no 2) [2009] EWHC 3194; [2010] F.S.R. 13
Case concerning rights to depict branded “real” vehicles in a car racing video game (“Race Driver: Grid”) which included game play involving racing in the Le Mans Championships series. Involved questions of extent of indemnity granted by licensor of some of the rights.

Anglia Autoflow v Wrightfield [2008] EWPCC 3  
Trial and subsequent costs hearing on whether the copyright in computer program for a Programmable Logic Controller (PLC) for controlling automated handling equipment was infringed by a PLC program which performed a similar function.

Nova Productions v Mazooma Games [2006] E.M.L.R. 14; [2006] R.P.C. 14; (2006) 29(3) I.P.D. 29023; (2006) 103(8) L.S.G. 24 
Leading copyright case on whether or not there was infringement in relation to the “look and feel” of a video game and in relation to the protection of “functionality” of software.

Sport Universal SA v Prozone Holdings [2003] EWHC 204
Technically complex case concerning the disclosure of confidential source code in relation to software that tracks the movement of football players on the pitch, involving allegations of breach of contract, infringement of copyright and misuse of confidential information. Both the claimant’s and defendant’s software was used by major football clubs. Settled in April 2003 shortly before trial.

British Telecommunications v One in a Million [1999] 1 W.L.R. 903; [1998] 4 All E.R. 476; [1999] E.T.M.R. 61; [1997-98] Info. T.L.R. 423; [1998] I.T.C.L.R. 146; [2001] E.B.L.R. 2; [1999] F.S.R. 1; [1998] Masons C.L.R. 165; (1998) 95(37) L.S.G. 37; (1998) 148 N.L.J. 1179 (Court of Appeal)
The leading UK case on internet domain names.

Prudential v Unisys
Acting in TCC claim in relation to a major terminated IT project involving over 200 staff.

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

 
Confidential Information and Malicious Falsehood

Niche Products Ltd v. Macdermid [2013] EWPCC 11 (7 March 2013); and [2013] EWHC 1493 (5 June 2013) 
Claim concerning allegedly false statements made in relation to technical tests on sub-sea control fluids.

Kingspan v Rockwool [2011] EWHC 250; and [2011] EWHC 1066 
Trial involving claims for declarations, infringement of registered trade mark and malicious falsehood arising out of videos made by the defendant for a promotional campaign for insulation material.

Cembrit Blunn v Apex Roofing Services [2007] EWHC 111 
Whether circulation of an internal letter relating to a potential claim against the Defendant constituted infringement of copyright and misuse of confidential information.

Inline Logistics v UCI Logistics [2002] T.C.L.R. 5; [2002] R.P.C. 32; (2002) 25(1) I.P.D. 25002 (Court of Appeal) 
Confidential information in relation to the design of a warehousing system.

Blair v Associated Newspapers (High Court, 2000) 
Interim injunction to restrain publication of diaries of nanny.

 
Domain names

Numerous domain name disputes including:

Waynerooney.com WIPO D2006-0916; and waynerooney.co.uk (Nominet DRS 03844)
Wayne Rooney domain names

British Telecommunications v One in a Million [1999] 1 W.L.R. 903; [1998] 4 All E.R. 476; [1999] E.T.M.R. 61; [1997-98] Info. T.L.R. 423; [1998] I.T.C.L.R. 146; [2001] E.B.L.R. 2; [1999] F.S.R. 1; [1998] Masons C.L.R. 165; (1998) 95(37) L.S.G. 37; (1998) 148 N.L.J. 1179 (Court of Appeal)
Leading UK case concerning internet domain names.

Phones 4U Ltd v Phone4U.co.uk [2007] R.P.C. 5; (2006) 103(23) L.S.G. 32; (2006) 150 S.J.L.B. 668 (Court of Appeal) 
Trial and appeal of claim for passing off and infringement of a registered trade mark arising out of use of domain name “phone4u.co.uk”. The Court of Appeal judgment considers various important points of passing off and trade mark law, including the difference between confusion and deception and the effect of a colour limitation in a registered trade mark.

 
Franchising/licensing

Ravensworth v VLM Holdings [2013] EWHC 228 
Whether or not a sub-licence to use computer software granted by a subsidiary company automatically terminated when the head licence between the subsidiary and its parent copyright owner was terminated.

Codemasters Software Co Ltd v Automobile Club de l’Ouest (no 1) [2009] EWHC 2361 (Ch); [2009] Info. T.L.R. 203; [2010] F.S.R. 12; and (no 2) [2009] EWHC 3194; [2010] F.S.R. 13 

Case concerning rights to depict branded “real” vehicles in a car racing video game (“Race Driver: Grid”) which included game play involving racing in the Le Mans Championships series. Involved questions of extent of indemnity granted by licensee of some of the rights.

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

 

Practice and Procedure

Redd v Red Legal [2012] EWPCC 50 
Whether amendments should be permitted in Patents County Court (Intellectual Property Enterprise Court) claim.

Destra v Comada [2012] EWPCC 39 
Law relating to applications to transfer within the context of an ownership of copyright case.

Niche Products Ltd v. Macdermid [2013] EWPCC 11 (7 March 2013); and [2013] EWHC 1493 (5 June 2013) 
Plea of lis alibi pendens in relation to parallel proceedings in Texas.

AS Watson (Health and Beauty Continental Europe) v The Boots Company [2011] EWPCC 26 
Whether a claim should be transferred to the High Court from the Patent County Court.

Allen v Bloomsbury Publishing and JK Murray (PKA JK Rowling) [2011] EWCA Civ 943 (Court of Appeal) 
Form of security of costs orders where the effect is to strike out the claim.

Red Spider Technology Ltd v Omega Completion Technology Ltd [2009] EWHC B43 (Pat); [2010] FSR 6 
Application for pre-action disclosure in relation to claimed patent infringement for electronic component for an oil well valve. Inspection refused.

Nova Productions v Mazooma Games (Interest on Costs) [2006] R.P.C. 15; (2006) 29(3) I.P.D. 29024 
Whether or not interest on costs is payable only in exceptional circumstances.

Beiersdorf AG v Ramlort [2005] E.T.M.R. 15 
Evidence in summary judgment applications.

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

Bowater Windows Ltd v Aspen Windows Ltd  [1999] F.S.R. 759; (1999) 22(7) I.P.D. 22066 
Copyright in relation to advertising pitch. Approach to contempt application.

Haddonstone Ltd v Sharp (CA) [1996] F.S.R. 767; (1996) 19(6) I.P.D. 19046; Independent, January 26, 1996 
Effect of undertaking relating to product “of the same design”, whether covered product of “substantially the same design” 

International Electronic v Weigh Data [1980] F.S.R. 423
Anton Piller (search) order made in the course of the trial.

Comparative Advertising

Clairns v. Avon 
A case relating to comparative advertising for "Anti-Ageing" serums. 

 

 

Qualifications and Regulations

Qualifications

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

 

Regulation

Michael 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: 13630)
 
He has professional indemnity insurance provided by the Bar Mutual Indemnity Fund (BMIF Ref: 2190/047). Please refer to the BMIF website  for full details of the world-wide cover provided, and the BMIF’s contact details.

 

Human Interest

In his spare time Michael races dinghies and other boats.

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