Learn and challenge yourself on key practice points when handling claims before the IPEC and High Court from experienced litigators.

If you conduct litigation or this is an area you want to explore further, this in-depth seminar is for you.

This seminar will take place online on Wednesday 3rd and 10th November between 12pm and 2.15pm.

Meet your speakers

Wednesday 3rd November

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

Jacqueline practices in all areas of IP and in IT law. In recent years she has become sought after for her expertise in the areas of trade marks, data protection and confidential information and often advises high profile clients in these areas. She has an equally impressive reputation for her work in the areas of design right and copyright cases.

Jacqueline has built up longstanding relationships with well known beauty and fashion brands and is regularly instructed by them to appear in court and to advise more generally. Jacqueline is the Chair of the Bar Council IT Panel and plays an active role in deciding on key issues affecting the profession and the wider community in relation to the implementation of IT developments and how this will affect the Bar and the Bar Council.

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

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.

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

Maxwell specialises in all areas of intellectual property law including patents, trade marks, copyright and designs.

Maxwell was called to the Bar in 2013 and joined Chambers as a tenant in September 2014 upon successful completion of pupillageMaxwell appears regularly in proceedings before the High Court (including the Patents Court and general Chancery Division, Court of Appeal, IPEC (including the IPEC small claims track) and the IPO. In 2015 Maxwell completed a secondment at a leading solicitors’ firm during which he worked on a variety of cases, particularly patent actions in the field of telecommunications. Maxwell is qualified to accept instructions directly under the Bar’s Public Access scheme.

Maxwell holds a BA in Physics from Wadham College, Oxford University, and an MSc in Physics from University College London.

Wednesday 10th November

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

Daniel is recognised as a “Rising Star” for Intellectual Property Law in The Legal 500. He is also ranked in Chambers and Partners as an “Up and Coming” junior for Intellectual Property Law. He practices in all areas of intellectual property law, including patents, trade marks, passing off, copyright, registered designs and design rights and confidential information and commercial disputes involving the same. Daniel is a contributing author to Terrell on the Law of Patents (19th edition, 2020), the leading practitioner textbook on UK patent law.

12.45pm - Witness statements 
Geoffrey Pritchard, 3 New Square

Geoffrey is a highly regarded senior junior with a practice covering all aspects of intellectual property and information technology. He has a first class degree in physics and PhD in theoretical geophysics. His practice is split 50:50 between high-tech cases (e.g. patents, confidential information and technically related contracts) and “soft” IP cases (e.g. trade marks, passing-off, copyright and designs). Geoffrey appears in the Court of Appeal, High Court/Patents Court, Intellectual Property Enterprise Court, the General Court, the patent offices, arbitrations and mediations. In recent years he has often appeared without a leader and has extensive experience of conducting trials, cross-examination (particularly of expert witnesses) and applications for urgent interim relief.

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

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.

Programme

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

Key discussion areas will include:

  • Estoppel and abuse of process in IP litigation.
  • The new Business and Property Court trial witness statement regime, PD57AC.
  • The uses of “further information” under CPR Part 18.
  • IP issues relating to parallel importation and repackaging post-Brexit and how to frame corresponding claims. 
  • IP issues relating to comparative advertising and business protection claims post-Brexit and how to frame corresponding claims.
  • Procedures for ending litigation.

The seminar is pitched at those with all levels of litigation experience. There will be ample opportunity for interaction and questions throughout the seminar.

Learning outcomes:

  • Uncover the post-Brexit position regarding exhaustion.
  • Understand the importance of comparative advertising and when it is actionable.
  • Ensure you know how to end litigation before judgment and final order.
  • Be up to date on the new Business and Property Courts trial witness statement regime PD57AC.
  • Understand the importance of related UK IPO (or older EUIPO) proceedings to court.
  • Know when to request “further information” under Part 18.

This webinar supports skill set 2: IP litigation and enforcement of the Advanced Competency Framework.

Cost

CITMA member - £165
Standard - £205

To note

  • Payment online via debit or credit card only; proforma invoices are not available.
  • Full terms and conditions apply.
  • Closing date: 9am, Wednesday 3rd November