CITMA Seminar for Litigators

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.

Wednesday 3rd November

12pm - How to end litigation before judgement and final order
Jacqueline Reid, 11 South Square

• Submitting to judgment
• Discontinuance
• Tomlin orders
• Striking out

12.45pm - Parallel imports and repackaging post Brexit
Denise McFarland, 3 New Square

• What is the post-Brexit position on exhaustion
• Exports from UK to EEA
• Imports from EEA to the UK
• Will the UK and EEA begin to diverge on necessary conditions for exhaustion, eg. concept of consent
• Which party has the burden in the relevant elements
• What about repackaging/relabelling into and from the UK/EEA
• Is Northern Ireland differently treated

1.30pm - Comparative advertising and business protection from unfair advertising regulations 2008 
Maxwell Keay, 8 New Square

•    What is comparative advertising and when it is actionable per se and under the TMA.
•    Look-alikes and smell-alikes – what is an imitation or replica.
•    What are the defences
•    How to plead (and plead against) a comparative advertising claim. 

Wednesday 10th November

12pm - Further and better particulars
Daniel Selmi, 3 New Square

• When to request “further information” under Part 18
• How to make requests for further information
• How to react to requests for further information
• Remedies if the further information is refused or inadequate

12.45pm - Witness statements 
Geoffrey Pritchard, 3 New Square

• New Business and Property Court trial witness statement regime PD57AC
• Witness memory and witness prompting, including via documents 
• Drafting of witness statements generally
• Not applicable to non-trial statements, eg interim applications, IPEC or UK IPO, but potential effect of  PD57AC on such statements and potential for increased scrutiny 

1.30pm - Estoppel and abuse
Andrew Lomas, One Essex Court

• Res judicata
• Varieties of estoppel
• Rule in Henderson and Henderson
• Abuse of process generally
• Relevance of related UK IPO (or older EUIPO) proceedings to court proceedings – oppositions and invalidations