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 14th November

12pm - Jonathan Moss, Hogarth Chambers
Issues arising from Waterrower (UK) Limited v Liking Limited (T/A Topiom) relating to copyright and Retained EU law.

Jonathan has been involved in a number of significant cases across the IP spectrum. These include jurisdiction (AMS Neve v Heritage Audio), breach of confidence (Mulsanne v Marshmallow), privacy (Max Clifford v News Group Newspapers), copyright (Lucasfilms v Ainsworth) and designs (Magmatic v PMS).

Since 2016 Jonathan has taught design law at Oxford University on their Diploma in Intellectual Property Law. He also lectures for CIPA on their Basic Litigation Skills Course and on their Patent Attorney Litigation Course.

In 2020 and 2021 he was nominated for Junior IP Barrister of the Year at the Managing IP Awards.

12.45pm - Richard Darby, 3 New Square
Issues arising from service of process on defendants outside the territory of the UK

Richard has been involved with intellectual property law since 2009. He started his career as a patent attorney at a top intellectual property law firm. During this time he regularly represented clients at hearings at the European Patent Office: defending and attacking patents, and convincing EPO examiners to grant applications.

Since transferring to the Bar in 2023, he has gained experience beyond patents across the full range of intellectual property rights, including trade marks, copyright, passing off, designs, supplementary protection certificates, and contractual disputes involving intellectual property.

1.30pm - Michael Silverleaf KC, 11 South Square
Issues arising from the recent decision of Mellor J in Lifestyle Equities v Berkshire Poloclub

Michael specialises in IP, IT, data protection and technical commercial litigation.

He has been a qualified mediator since 2003 and regularly conducts mediations in IP and technical commercial disputes.

He took silk in 1996 and is one of the most senior practitioners at the IP Bar.

During his career, he has appeared in many important and high profile cases including the phone hacking litigation in 2008-13.

He represented the UK government in the Silhouette case in the CJEU and has considerable expertise in the field of exhaustion of rights.

Thursday 21st November

12pm - Becky Knott, Hogarth Chambers
Sky v SkyKick – how matters stand today

Becky is a barrister at Hogarth Chambers, specialising in Intellectual Property. After successful completion of her pupillage, Becky began her tenancy with Hogarth in April 2024.

Prior to qualifying as a barrister, Becky qualified as a Chartered Trade Mark Attorney and Trade Mark Attorney Litigator, although she is now non-practising. She also worked as a Legal Advisor in the Litigation & Licensing team at Potter Clarkson for five months in 2022 – 2023, to gain insight in the world of an IP solicitor.

Becky is a member of CITMA Council and sits on the CITMA Law & Practice Committee and the CITMA Litigation Working Group. She is also a tutor on the Professional Certificate in Trade Mark Practice at Nottingham Law School, Nottingham Trent University and blogged for The IPKat in 2022.

12.45pm - Iona Berkeley, 8 New Square
Trial advocacy in the IPEC

Iona Berkeley has an excellent reputation as a leading Senior Junior in Intellectual Property matters.

She specialises in every aspect of IP, including trade marks, passing off, patents, copyrights, designs, confidential information, and associated areas such as media and entertainment, IP related international arbitrations and, contractual disputes and media and entertainment. She is a co-author of Kerly’s law of Trade Marks (16th and 15th Ed and associated supplements) and Laddie, Prescott and Vitoria, The Modern Law of Copyright (5th and 4th Ed).

The legal directories describe her as: “..very bright, extremely practical, user friendly and commercial” (Legal 500 2022); “..an excellent advocate who has the respect of opponents and the bench (Chambers & Partners 2018); and as having “..a brilliant mind and a wonderful manner with clients. She is enthusiastic and proactive and recognises issues quickly.” (Chambers & Partners 2021)

1.30pm - Denise McFarland, 3 New Square
Transfers between courts, lists and tracks

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: 12pm, Thursday 14th November.