Simon heads up the Intellectual Property team and is both a solicitor and a UK and European trade mark attorney. He advises on all aspects of intellectual property, and has a wealth of experience advising in relation to trade marks, copyright (including software), designs, database rights, patents and breach of confidence. He works with clients across a range of sectors including: media and entertainment, advertising and sport, fashion, cosmetics, restaurants and foodstuffs, and electronics.
Simon has worked with a number of major global companies in creating, exploiting and protecting their brands. He also has considerable experience in sports law, having advised governing bodies, clubs and individuals on rights protection, sponsorship and database rights.
Simon has been involved in numerous significant reported cases in relation to trade mark, copyright and database right infringement and is regularly recommended by clients for his contentious expertise. He has worked with a number of major global companies in creating, exploiting and protecting their brands.
Simon has advised in the following notable cases:
- Lifestyle Equities C.V v The Copyrights Group Limited and others [2021] EWHC 1212 (Ch) – successful defence in an EU and UK trade mark infringement and passing off action.
- easyGroup Limited v (1) Easy Live (Services Limited, (2) Achilleas Pavlou Achilleous and (3) Jonathan Richard Dean Burnside (IL-2019-000120) .
- easyGroup Limited v (1) Felice D’Angelo and (2) Easyrimborso SRL (IL-2018-000219) – successful UK action for trade mark infringement and passing off, and a damages inquiry.
- easyGroup Limitied v (1) Easy cleaning Solutions Limited, (2) Easy Newco Limited and (3) Mr David James Pearce (IL-2019-000053).
- Garmin Switzerland GmbH’s UK opposition No. OP000420454 to Vivo Mobile Communication Co., Ltd’s UK Trade Mark Application No. UK00003460054 for VIVO (stylised) –recently won.
- MEOMI DESIGN INC v KNOW YOURSELF PBC (United States Patent and Trademark Office before the Trademark Trial and appeal Board). Opposition No. 91246554 and USPTO Application No. 87840736 for ORGANAUTS – as Worldwide counsel, overseeing the action being dealt with locally by Fross Zelnick.
- AIWA Co. Ltd v Aiwa Corporation (CH-2019-000059) – Appeal to the UK High Court from UKIPO – consolidated actions CA501768, CA501769 and others (trade mark use).
- easyGroup Limited v Netflix Inc (IL-2018-000176) – Trade mark infringement and passing off.
- Nvidia Corp v Hardware Labs Performance Systems Inc [2016] EWHC 3135 (Ch) – Groundless threats, trade mark infringement.
- Nominet Decision of Independent Expert D00018324 – easy Group Limited and Kevin Adams [2016] – Successful transfer of domain names to our client.
- Cyclehoop Limited v Bike Dock Solutions Ltd and others (IP 14 M02140) – Unregistered design rights.
- Trademark Licensing Co Ltd and others v Leofelis SA [2012] EWCA Civ 985 – Trade mark infringement and unlawful interference.
- Leofelis SA v Lonsdale Sports Equipment Limited and others [2008] E.T.M.R. 63 – Trade mark licence breaches.
- British Board of Film Classification v Interactive Software Federation of Europe [2009] C00550 – Trade mark and copyright infringement and passing off.
- ‘The Football Fixtures’ database cases (ECJ) [2005] E.C.D.R. 3, 4 and 5.
- RFU and Nike European Operations v Cotton Traders (UK High Court) [2002] E.T.M.R. 76 – Trade marks, passing off and breach of contract.
- Daimler Chrysler v Javid Alavi T/A Merc (UK High Court) [2001] R.P.C. 42 – Trade mark and passing off case – one of the first cases relating to “reputation” based infringement under section 10(3) of the 1994 Act.
- Beautimatic International Limited v Mitchell International Pharmaceuticals Limited (UK High Court) [2000] F.S.R. 267 – Trade mark infringement action clarifying the law on when there is use of a trade mark on packaging in the UK.
- Walkers Crisps and Others v Tayto and others (High Court of Ireland) [2000] – Trade mark infringement and passing off.
- Philips Electronics NV v Remington Consumer Products Limited (UK Court of Appeal) [1999] RPC 809 – The most important case in the EU in relation to “shape” trade marks.
- British Airways Plc T/A Speed v Performing Right Society Ltd (Copyright Tribunal) [1998] R.P.C. 581 – Quantum payable under PRS tariff.
- Milliken Denmark A/S v Walk Off Mats Ltd (Patents Court) [1996] F.S.R. 292 – Patent infringement.
Expertise
Credentials
Ranked in Chambers UK 2024
Recommended in The Legal 500 UK 2024
Recommended in World Intellectual Property Review (WIPR) UK Trade Mark rankings 2024
Recognised by Best Lawyers as a leader in IP Law since 2017
Former Legal Advisor to the European Communities Trade Mark Association (until Brexit)
Member of the International Trade Mark Association (INTA)
Member of the Law and Practice Committee of Chartered Institute of Trade Mark Attorneys (CITMA)
Member of the Designs Working Group of Chartered Institute of Trade Mark Attorneys (CITMA)
Former CITMA Council Member
Member of the Law Society
Regular contributor to the CITMA Journal and has also written articles for (amongst others): The European Intellectual Property Review, Copyright World, Trademark World, and The Entertainment Law Review
Twitter @BrandsLawyer
Simon's Blogs
Blog - 08/11/2023
Copyright in works generated by Artificial In...
Intellectual Property
Blog - 24/11/2022
Legal and commercial considerations of Cristi...
Corporate
Blog - 07/04/2022
Update: Oh why oh why did Ed Sheeran not infr...
Intellectual Property
Blog - 26/01/2022
Future Exhaustion of IP Rights Regime in the ...
Intellectual Property
