Simon Malynicz KC

Trade marks

Sky v SkyKick – the leading case on the bad faith ground of invalidity – after a trial, a reference to the CJEU, several consequential hearings and two CA hearings, the case is now headed to the Supreme Court.

Montres Breguet v Samsung – the most recent word on “trade mark use” & the defences under the E-Commerce Directive in a trial on infringement arising out of Samsung’s smartwatch faces that resembles Swiss watch brands such as Omega, Longines and Tissot.

Halloumi – appeals before the General Court & CJEU on collective marks, certification marks and PDOs.

Nestle v Cadbury (Colour Purple) – the leading case on colour marks, acting for Nestle, invalidated Cadbury’s purple single-colour trade mark.

Cadbury v Nestle (Kit Kat shape) – CJEU and CA judgments on shape marks and acquired distinctive character

Interflora v Marks & Spencer  – acted for Interflora in trade mark infringement trial before the High Court resulting in appeals to the CA on the admissibility of survey evidence and reference to the CJEU on the question of infringement on the internet by Google ads.

Intel v CPM – the leading CJEU case on trade mark dilution

 L’Oreal v Bellure – acted for the UK government in the leading CJEU case on trade mark free-riding

Zee Entertainment v Zeebox)– Court of Appeal case concerning surveys in passing off

Comic Enterprises v Fox (The Glee case) – High Court trial and Court of Appeal case concerning trade mark infringement arising out of the title of the US TV series

Specsavers v Asda – acted for UK government before the CJEU in a reference on the issue of use of a trade mark in a variant form

CIPA (IP Translator)  –acted for the UK government in CJEU reference concerning the interpretation of the specification of goods and services, class headings and legal certainty

Budejovicky Budvar v Budweiser [2012] acting for Czech brewer before the Court of Appeal and in the reference to the CJEU that “invented” honest concurrent use” under the new Act.

Copyright

 Kogan v Martin – the Court of Appeal applied EU originality approach to claims for joint authorship of the copyright in the script to the Meryl Streep/Hugh Grant movie Florence Foster Jenkins

SAS Software – CJEU case on copyright in software and documentation

Promusicae – CJEU case on copyright injunctions against file-sharing on the internet

Copydan – CJEU reference on private copying.

UPC Telekabel Wien – CJEU reference on injunctions against ISPs in copyright infringement cases.

Football Dataco v. Yahoo – CJEU reference on database right and authors own intellectual creation standard.

Football Association Premier League ­– copyright in football broadcasts, reference to the CJEU and appeal to Court of Appeal

NLA v. Meltwater – Copyright Tribunal and High Court proceedings concerning copyright infringement by online news aggregators. Acted in strike out proceedings.

Deakin v. Cardrax  – two week trial before the PCC concerning copyright in greeting cards and joint tortfeasorship.

SGAE, AGEDI,  LSG, all references to the ECJ concerning various copyright directives.

PPL v. Attorney-General –  Francovich damages case against the government involving copyright exceptions and the Rental Rights Directive.

Patent

• MMI v. CellXion [2010-2012] – Two High Court trials and two Court of Appeal hearings re patent for mobile telephone interception equipment
• Actavis [2013] CJEU reference on SPCs
• Unilever v SC Johnson [2012] PCC trial on shower head technology
• Universal Engraving v Falctontec [2012] PCC case involving magnetic technology.
• EPO Case G3/08 (Patentability of computer software.)[2010] Acted for the UK.
• Monsanto Technology [2010] – reference to the CJEU on the Biotech Directive, acted for the UK.
• AHP Manufacturing [2009] a reference to the CJEU concerning supplementary protection certificates, acted for the UK.

Designs

• Skruf Snus [2015] appeal to the General Court from OHIM concerning RCD for a snuff box design
• Kohler Mira v. Triton [2010] Community registered design and UKUDR in bathroom products. Interlocutory hearings in Patents Court, with trial due in 2011.
• Care Monitoring v. Burrell [2009], a five day Community design right and UKUDR trial in the PCC concerning patient monitoring devices.
• Fundacion Espanola para la Innovacion de la Artesania (‘FEIA’) [2008] the first reference to the CJEU on the Community Designs Regulation, acted for UK.
• Oakley v. Animal [2006], Court of Appeal – case concerning the UK’s implementation of the Designs Directive.

Information Technology

IT cases include Artificial Solutions v. Creative Virtual [2008] a five day trial before Arnold J and Mass Information Systems v. RBS, acting for RBS in a contractual dispute with an IT supplier.

FOI work includes acting for the Department of Work and Pensions in DWP v. Collingbourne [2010] a two day “trial” (hearing with cross-examination) before the First Tier (Information Rights) concerning trade secrets and the public interest.