Sam Carter

Year called: 2014

Profile

Sam practises in all areas of intellectual property law, and has experience in cases concerning patents, copyright, design rights, trade marks, passing off, confidential information and competition law. He has appeared in the High Court, IPEC, EUIPO, UK IPO, and before the Appointed Person.

Sam was a scholar of Harris Manchester College, Oxford, where he achieved a double 1st in Law. Before studying law, he gained joint honours in Physics and Philosophy at the University of Bristol.
Following completion of the BPTC, Sam worked as a legal assistant at a leading intellectual property law firm, performing legal, technical and commercial research tasks, predominantly for the purposes of patent litigation.

Sam commenced pupillage at Hogarth Chambers in September 2015 and accepted an offer of tenancy in September 2016.Since accepting tenancy, he has gained valuable experience on secondment to a leading intellectual property law firm assisting in a patent case relating to automatic lawn mowers, amongst other matters.

Sam is a contributor to the CIPA Guide to the Patents Act, and to Copinger and Skone James on Copyright.
Sam can also accept public access instructions.

Cases

Copyright

Weiss Technik UK Limited & ors v SJJ System Services Limited & ors (2018-ongoing) – High Court copyright, database right, confidential information, breach of contract and conspiracy to cause loss by unlawful means dispute concerning software and other information relevant to the operation of environmental simulation chambers.

Island Records & ors v Live From Abbey Road Limited (2020-ongoing) – CCMC in High Court copyright dispute relating to ownership of copyright in materials associated with the Live From Abbey Road tv program.

NCFE v TQUK (2020) – High Court STS dispute concerning alleged infringement of copyright in training qualification specifications.

Caroline Ukoumunne v University of Birmingham [2020] EWHC 184 (IPEC); [2020] EWHC 2927 (IPEC) – strike out of claim for alleged infringement of copyright, breach of confidence, breach of contract relating to alleged plagiarism of doctoral thesis.

Vocal Star Limited v Phoenix Music Group Ltd (2019) – copyright infringement dispute relating to karaoke CD album covers.

Duffy Archive Limited v VR Music Limited (2018-2019) – copyright and trade mark dispute concerning the David Bowie lightning bolt used on the Aladdin Sane album cover.

First HDTV v Kartina World LLP (2018) – copyright dispute relating to sale of television decoders.
Latesail Limited v Sailchecker Limited (2018) – database right dispute.

TOA Taxis (Radio System) Limited v Massadiq Hussain (2017-2018) – copyright and passing off dispute relating to the use of a logo.

Jessica Carroll v Eye Flight Films Limited (2017-2018) – dispute relating to infringement of performance rights in a voiceover.

Victor Lilley v Financial Times Limited [2017] EWHC 1916 (Ch) – strike out of claim for alleged infringement of copyright in newspaper articles.

Victor Lilley v Euromoney Institutional Investor Plc [2017] EWHC 3593 (Ch) – strike out of claim for alleged infringement of copyright in newspaper articles.

 

Trade marks and passing off

Equisafety Ltd v Battle, Hayward & Bower Limited (2020-2021) – trade mark and passing off dispute concerning use of the MERCURY mark in relation to equestrian clothing and equipment.

IBSA Farmaceutici Italia Srl v Med-FX Ltd (2020) – Norwich Pharmacal application in the context of alleged parallel imports of dermal filler devices.

Urbanbubble Ltd v Urban Evolution Property Management Ltd (2020) – trade mark and passing off dispute between property management businesses.

Geneva Laboratories Limited v Queens Cosmetics Limited (2020) – trade mark dispute concerning allegedly counterfeit BIO-OIL.

Fit Kitchen Limited v Scratch Meals Limited (2019) – trade mark and passing off dispute concerning FIT KITCHEN branded ready meals.

Unilever (2019) – resisting applications by various parties to set aside default judgments entered on behalf of Unilever.

Dreamboys London Limited v Bargain Travel Bureau Limited (2018-2019) – trade mark and passing off dispute.

Camelot UK Lotteries Limited v Lottoland Limited (2018) – trade mark infringement dispute concerning use of the sign EUROMILLIONAIRE in relation to betting on the outcomes of lotteries.

F45 Training Pty Limited v Leo Star Limited (2018) – franchise dispute including trade mark infringement issues. (Settled)

Nicoventures Holdings Limited v The London Vape Company Ltd [2017] EWHC 3328 (Ch) – appeal to the High Court against a decision of the UK IPO in a trade mark opposition relating to e-cigarettes.

NK Streamline Transport Limited v Wimborne Cars Limited (2017) – passing off and confidential information dispute between taxi companies. Settled.

AVITA (2021) – acted for the respondent in appeal to the Appointed Person in consolidated trade mark oppositions.

INOV-8 TERRAULTRA (2021) – trade mark opposition.

EDU-SCI O/378/20 – trade mark opposition.

AXIS O/037/20 – trade mark opposition.

STORIES OF I DO O/159/19 – trade mark opposition.

PROAURA O/109/19 – trade mark opposition.

GLOBAL CEMENT REPORT O/070/18 – trade mark opposition on grounds of descriptiveness/lack of inherent distinctiveness.

LUMIQS T-133/18 – appeal to the General Court in the context of trade mark opposition proceedings.

LITTLE KICKERSS O/826/18 – trade mark opposition.

C3 EX MACHINA O/010/18 and O/394/18 – permission to admit late-filed TM8 in the context of invalidity proceedings.

GOYA O/663/18 – permission to admit late-filed TM8s in the context of multiple related invalidity and revocation proceedings.

VIVO O/218/17 – appeal to the Appointed Person on the subject of non-use in the context of trade mark opposition proceedings.

ADVANTAGE HOLIDAYS O/043/17 – trade mark opposition.

 

Patents

Mainetti (UK) Limited v Gifts 4 All Occasions Limited (2020) – Norwich Pharmacal application in the context of allegations of patent infringement relating to a children’s car seat.

Clearswift Limited v Glasswall (IP) Limited [2018] EWHC 2442 (Pat) – a revocation action concerning virus checking software.

Positec Power Tools (Europe) Limited v Husqvarna AB (2017-2018) – assisted as a secondee to solicitors for the Claimant in a patent claim relating to a method for operating an electronic device (such as an automatic lawnmower) within an electronic demarcating system. Experiments were performed by both parties. The case settled shortly before trial.

Advised pre-action on various other patent matters.

 

Designs

Taylor’s Eye Witness Limited v KN Master Limited (2018) – unregistered design right, copyright, trade mark and passing off dispute relating to kitchen knives.

Parisian (UK) Limited v Missi Limited (2017) – unregistered design right dispute relating to the design of clothing. Settled.

Advised pre-action on various other registered and unregistered design right matters.

 

Confidential Information

Weiss Technik UK Limited & ors v SJJ System Services Limited & ors (2018-ongoing) – High Court copyright, database right, confidential information, breach of contract and conspiracy to cause loss by unlawful means dispute concerning software and other information relevant to the operation of environmental simulation chambers.

Choudhrie v Choudhrie [2019] EWHC 2066 (Ch) – junior counsel in application to strike out claim for declaration in relation to extent of duties of confidence owed by wife on separation.

 

Miscellaneous

Kieran Hebden v Domino Recording Company Limited (2020-ongoing) – dispute concerning royalty payments for digital exploitation of music of the artist Four Tet.

Beauty Service Limited v eBay Europe SARL (2016-2018) – dispute relating to eBay VeRO notifications. Settled.

 

Assisted on during pupillage

 

Patents

Glass v Freyssinet [2015] EWHC 2972 (IPEC) – patent trial concerning cathodic protection apparatus and method.

Meter-Tech LLC v British Gas Trading Ltd – [2016] EWHC 2278 (Pat) – a patent trial concerning smart meters, where the Court held that a large scale use could be within the experimental use exception but had to relate to the subject matter of the invention.

Global Flood Defence Systems v Johann Van Den Noort Beheer BV [2016] EWHC 1851 – dispute relating to unlawful threats of patent infringement, unpaid royalties, and misrepresentation.

American Science & Engineering Inc v Rapiscan Systems Inc BL O/119/16 – a revocation action in the IPO concerning a patented x-ray imaging system and method for detecting contraband.

TWI Ltd v Zircotec IP Ltd BL O/183/16 – a revocation action in the IPO concerning a patented method of coating an organic substrate and the article so produced.

 

Trade marks and passing off

Oran Pre-Cast Limited v Oranmore Precast Limited [2016] EWHC 1846 (IPEC) – trade mark and passing off dispute, also involving contractual issues relating to whether the claim had been compromised.

Caspian Pizza Limited v Maskeen Shah [2015] EWHC 3567 (IPEC) – trade mark, passing off and franchise dispute concerning a franchise of pizza restaurants.

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

Coreix Ltd v CoreTX Holdings Plc [2017] EWHC 1695 (IPEC) – assisted drafting pleadings in trade mark infringement dispute between telecoms businesses.

Clarins v. Avon (2016) – a case relating to comparative advertising for “Anti-Ageing” serums.

FITBUG O/554/15 – cancellation and revocation action in the trade mark registry.

SOULUXE O/445/16 – trade mark opposition.

 

Copyright

PPL v Nightclub (London) Ltd [2016] EWHC 892 – committal for breach of an injunction restraining the public performance of sound recordings.

 

Designs

PMS International v Magmatic [2016] UKSC 12 – the leading Supreme Court case on Registered Community Designs concerning the well-known “Trunki” suitcase.

Membership

IP Bar Association

Chancery Bar Association

AIPPI

IPSoc (the society for junior IP practitioners)

Qualifications and Regulations

Qualifications

BA Law, University of Oxford, 2013
BSc Physics and Philosophy, University of Bristol, 2010
BPTC, City Law School, 2014
Regulations

Sam 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: 62430)

He has professional indemnity insurance provided by the Bar Mutual Indemnity Fund (BMIF Ref: 2190/061). 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”), 8th ed. – Contributing editor (ss7-13)

Copinger & Skone James on Copyright. Contributing editor.

Product-by-process claims: clarification from the UK court in Hospira v Genentech E.I.P.R. 2015, 37(5), 314-320

Human Interest

Sam enjoys theatre and live music, and also runs a small record label.

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