James has a broad practice area advising clients in all aspects
of intellectual
property including trade marks, designs and copyright, patents, confidential information and domain name disputes and has
considerable experience of brand protection programmes acting for
multi-national companies including Dell, Google and Elvis Presley
Enterprises.
James is a regular writer and speaker on IP law including
contributing articles for Intellectual Property Magazine and
lecturing on Cambridge University's Master's in Bioscience
Enterprise (MBE) multidisciplinary biotechnology and business
degree course. He is a member of TIPLO and INTA.
James' contentious intellectual property experience includes
acting for Remington in the long running trade mark litigation with
Philips related to the validity and infringement of a mark
representing the head of a three-headed rotary shaver before the
High Court and Court of Appeal.
In 2005-6 he acted for Morton's Club Limited, the licensors of
Morton's club in Berkeley Square, London, in successfully defending
trade mark infringement proceedings and seeking a declaration of
invalidity of a European CTM for MORTON'S held by the claimant
Morton’s of Chicago, Inc.
James acted for the Defendants in the case of Helmet Integrated
Systems Ltd v Tunnard before the Patents County Court and Court of
Appeal successfully defending an action for the infringement of
unregistered design rights relating to the design of a
firefighter's helmet developed by a former employee of the Claimant
and related employment issues.
James works closely with leading IP professionals around the
world and has a wide experience in the coordination of
international parallel IP proceedings in multiple jurisdictions
with considerable experience working with leading IP lawyers in
India including acting for the Claimant in an international misuse
of trade secrets action for the past five years as well as acting
on interrelated international patent entitlement actions.
Some of James' reported cases include:
- Menashe v. William Hill (High Court) ([2002] 3 All ER 597,
[2002] RPC 47) - regarding the interpretation of the putting
into effect of an invention within a jurisdiction when component
parts of the invention (computer servers / terminals etc.) were
located in different jurisdictions around the world;
- Menashe v. William Hill (Court of Appeal) ([2003] 1 WLR 1462,
[2003] RPC 31) - As above;
- Gerber v. Gerber (Court of Appeal) ([2003] RPC 34) - which
concerned trade mark revocation proceedings for non-use (under 1938
Trade Marks Act);
- Miguel Torres v. Cantine Mezzacorona S.C.A.R.L. - (High
Court) ([2004] RPC 25) - which concerned the registrability of
marks and prior rights;
- Miguel Torres v. Cantine Mezzacorona S.C.A.R.L. - (Court
of Appeal) (2004) RPC 26) - as above
- Reckitt Beckiser UK Ltd v Home Pairfum Ltd & Ors (High
Court) ((2004) FSR 37 : (2004) 27(7) IPD 27074) - which
concerned the issue of threats in trade mark infringement
proceedings;
- Koninklijke Philips Electronics NV v (1) Remington Consumer
Products Ltd (2) Rayovac Europe Ltd (High Court) ((2005) FSR 17 :
(2005) 28(1) IPD 27110 : Times, November 2, 2004) - related to
the validity and infringement of a mark representing the head of a
three-headed rotary shaver;
- Koninklijke Philips Electronics NV v (1) Remington Consumer
Products Ltd (2) Rayovac Europe Ltd (Court of Appeal) ((2006) 29(4)
IPD 29029) - related to the validity and infringement of a mark
representing the head of a three-headed rotary shaver;
- Helmet Integrated Systems Ltd v Tunnard & Ors (Patents
County Court) ((2006) FSR 41)) - concerning unregistered design
rights relating to the design of a firefighter’s helmet and related
employment issues
- Helmet Integrated Systems Ltd v Tunnard & Ors (Court of
Appeal) ((2007) IRLR 126 : (2007) FSR 16 - Employment issues
as above;
- Vestergaard Frandsen & Ors v Bestnet Europe Ltd & Ors
(High Court) ((2008) 31(1) IPD 31005) - defending strike out
proceedings brought by the Defendants in a misuse of confidential
information (trade secrets) action
- Vestergaard Frandsen & Ors v Bestnet Europe Ltd & Ors
(High Court) ((2009) EWHC 657 (Ch)) - concerning the
protection of confidential information (trade secrets) from
misuse
James also speaks basic Spanish.