CITMA Seminar for Litigators

Our series of six sessions has been carefully developed to ensure that you gain a holistic understanding of today's most important questions in litigation practice.

Issues arising from Au Vodka v NE10 Limited and Leon Hogan [2022] EWHC 2371 (Ch)

• Application for an interim injunction and application of American Cyanamid principles
• Passing off
• Letters before action
• (Ir)Relevance of copying (RoHo)
• Directors’ personal liability.

Without prejudice privilege and corresponding waiver

• When and how does it arise
• Mixed WP and open communications
• When and how can privilege be waived
• Effect of waiver including collateral waiver
• International dimension –  communications with adverse parties outside the UK and how to ensure WP privilege continues to apply.

Expert evidence in TM and Design cases

• Contrast with trade evidence
• What kind of expert evidence might be needed
• Finding and retaining suitable expert
• Surveys (ie. experiments)
• Seeking permission of the court
• How many experts and current views about hot-tubbing.
• Duties and obligations of the expert

Trial witness statements and preparing a witness for trial

• Interplay between CPR 32 and 57
• Effect of CPR 57
• Purpose and content
• Confirmation of compliance
• Sanctions
• Suspicion a statement contains something untrue or inconsistency with other evidence
• Witness familiarisation
• Rule against coaching
• Mock cross examination to prepare witnesses
• Contrast between trial statement and those given for other proceedings

Potential relevance of and enforcement of contracts and transactional documents in IP litigation

• Licence agreements, co-existence agreements, settlement agreements, assignments, etc
• Deeds v contracts
• Non-performance, breach, repudiation, recission (misrepresentation, mistake, etc) validity, etc.
• Equitable considerations
• Proof of existence of contract, copies, unsigned/undated copies
• Contracts formed under non-English law and/or with non-English jurisdiction

Mediation

• Duty to consider mediation and ADR generally
• When mediation might be appropriate and at what stage pre-action or post-post action
• How to set up a mediation, including agreeing and appointing a mediator, who should attend, ensuring and maintaining lines of communication with client and ensuring executive power
• What happens at a mediation and strategic considerations
• Post mediation procedures if positive outcome, including codification
• Post mediation if negative – further attempts at ADR.

Thursday 2nd November

12pm - Gwilym Harbottle, Hogarth Chambers
Contracts 

Most of Gwilym Harbottle’s practice is in IP and Media and Entertainment. His IP practice covers copyright and related rights (a particular expertise), trade marks and passing off, designs and data protection (including the GDPR).  He draws on both his IP and his Chancery/Commercial expertise when acting in Media and Entertainment disputes. He has advised and represented many of the leading copyright collecting societies and major brand owners. Recent interesting cases have concerned streamripping, cyberlockers, NFTs and online review sites.

He has extensive experience in High Court and IPEC litigation but has also been instructed in the Copyright Tribunal, as an expert witness on UK copyright law and by trade bodies to advise on proposed and new legislative developments. He continues to have a significant caseload in the Chancery/Commercial field, with a particular interest in real property law.

12.45pm - Aminder Khatkar, CMS
Expert advice in TM and design cases

Aminder is a Senior Associate in the Intellectual Property department. 

Aminder has considerable experience in advising clients in the technology, media, retail and fashion industries on all aspects of in IP.  He provides strategic advice to clients in relation to the protection and enforcement their IP rights, with a focus on brand protection, anti-piracy and anti-counterfeiting and trade mark, copyright and design right disputes.  He also works on commercial and corporate deals with an IP focus, trade mark portfolio management and advertising and marketing issues.

12.45pm - Kaisa Patsalides, CMS 
Expert advice in TM and design cases

Kaisa Patsalides is a Senior Associate in CMS’ Intellectual Property team in London and leads its dedicated Designs practice. Kaisa has 13 years' experience across all types of soft IP, with a focus on brand protection, trade mark and design portfolio management and enforcement, brand and product clearance, advertising and marketing, commercial IP transactions and IP licensing.

She has particular expertise in coordinating IP enforcement strategies and negotiating settlements. She is also highly experienced in complex transactional IP work and regularly advises on major international licensing deals. Kaisa advises clients across a variety of sectors with a focus on consumer products, fashion, luxury goods, technology and media.  

1.30pm - Joshua Schuermann, Reed Smith
Without prejudice privilege and corresponding waiver

Joshua is an associate in the Entertainment and Media Industry Group.

He is an experienced litigator, and regularly helps clients navigate complex disputes, from preliminary risk assessments and pre-action correspondence all the way to formal court proceedings.

He has acted for a broad range of clients within the creative industries, including musicians, renowned visual artists, international design studios, best-selling authors, and various media personalities.

Though his practice is primarily litigious, he also provides advice on contracts, licensing, multi-national IP portfolio management, and a range of commercial issues. 

Thursday 9th November

12pm - Andrew Lomas, One Essex Court
Issues arising from Au Vodka v NE10 Limited and Leon Hogan [2022] EWHC 2371 (Ch)

Andrew is an experienced court-room advocate with a broad commercial practice that spans contractual disputes, economic and statutory torts, and civil fraud. He is often instructed in cases with technical or complex subject matter (including software and pharmaceutical disputes), has particular experience of intellectual property litigation, and is familiar with all major of the arbitral institutions and rules (LCIA, ICC, HKIAC, VIAC, SCC, UNITRAL, ICSID). He has recently spent a significant amount of time living and working in Moscow and is a trusted advisor to UHNWIs.

12.45pm - Becky Knott, Hogarth Chambers
Trial witness statements

Becky is a pupil at Hogarth Chambers and a Chartered Trade Mark Attorney and Trade Mark Attorney Litigator, with nearly nine years of experience. She will start her second six of pupillage on 25^th September.

In addition to her pupillage, Becky is a tutor on the Professional Certificate in Trade Mark Practice at Nottingham Law School. She has contributed articles to the CITMA Review and was previously a ‘Guest Kat’ for the IPKat. Currently, she is in the process of co-authoring a chapter for the 45^th release of the CITMA and CIPA European Union Trade Mark Handbook.

Prior to starting at Hogarth, Becky sat in the ‘Litigation and Licensing’ team at Potter Clarkson to gain exposure to patents, was awarded a distinction in her GDL, and completed the Bar Transfer Test as a Transferring Qualified Lawyer.

1.30pm - Denise McFarland, 3 New Square
Mediation

Denise has huge advocacy experience acting for parties before the UK Courts and in EU Courts and tribunals, including; the High Court of England and Wales (Court of Appeal and Supreme Court) the Intellectual Property Enterprise Court, or IPEC, the UK Intellectual Property Office, the Company Names Tribunal, the EU Intellectual Property Office, the EU Patent Office and the General Court of the European Union (Luxembourg) and appeals to the Court of Justice. She has also appeared before both the legal and technical Boards of Appeal and the Opposition Division of the EPO.

Delegate fees

• £175 member rate (VAT exempt)
• £215 standard rate (VAT exempt)

When you purchase a ticket, you will gain access to both afternoons of the seminar and exclusive rights to the event recording once the seminar has finished - giving you the flexibility you need to take part in our annual Seminar for Litigators. 

• Payment online via debit or credit card only; proforma invoices are not available.
• Full terms and conditions apply.
• Closing date: 10am, Thursday 2nd November.