Barrister

Date of call: 1996

email: proberts@oeclaw.co.uk

Summary

Philip Roberts undertakes a wide range of intellectual property matters.

His primary areas of practice include the following (in alphabetical order):

Comparative advertising, copyright disputes, data protection, database rights disputes, design right disputes, information technology, intellectual property licensing and franchising, internet domain name disputes, malicious falsehood / trade libel, misuse of confidential information, passing off, patents dispute, registered designs, trade marks – application, opposition and infringement.

Scope of Practice

His primary areas of practice include the following (in alphabetical order):

• comparative advertising
• copyright disputes
• data protection
• database rights disputes
• design right disputes
• information technology
• intellectual property licensing and franchising
• internet domain name disputes
• malicious falsehood/trade libel
• misuse of confidential information
• passing off
• patents dispute
• registered designs
• trade marks - application, opposition and infringement

Experience

Trade Mark/Passing Off

• Acting for Music Choice in an application to the Trade Marks Registry and subsequent High Court appeal concerning the construction of the newly amended Trade Mark Rules: Music Choice Limited -v- Target Brands Inc. [2006] R.P.C. 13
• Acting for PartyGaming Plc and its associated companies in an expedited application for interim relief to restrain parties in and outside the UK jurisdiction from deceptive provision of online gaming services: (1) Partygaming Plc (2) Electraworks Limited (3) Iglobalmedia Marketing UK Limited -v- (1) Eli Dabosh (2) Caviner Limited (3) JD Lucky Skill Limited [2005] EWHC 3090
• Acting for Reed Elsevier, resisting an interim injunction concerning comparative advertising in the field of online seminars for tax professionals: Wolters Kluwer (UK) Ltd (trading as CCH) - v - Reed Elsevier (UK) Ltd (trading as LEXISNEXIS Butterworths) [2005] EWHC 2053 (Ch)
• Acting for Nominet UK, resisting an interim injunction concerning the preservation of a domain name pending the conclusion of a vesting action: Alliance Française de Londres Limited v Her Majesty's Attorney General [2005] EWHC 3049
• Acting for Criminal Clothing in their Trade Mark Registry and subsequent High Court Appeal concerning the CRIMINAL and CRIMINAL DAMAGE trade marks: Criminal Clothing Limited v. Aytan's Manufacturing (UK) Limited [2005] EWHC 1303 and in ongoing parallel appeal proceedings before the Court of First Instance of the European Communities
• Acting for the defendants in a counterclaim for revocation of a trade mark on grounds of non-use: Saft Aktiebolag -v- (1) HBL Nife (UK) Limited (2) HBL Nife Power Systems Limited
• Acting for the claimants at the trial of a preliminary issue relating to the interaction between registered trade mark rights and passing off rights: Inter Lotto (UK) Ltd v. Camelot Group Plc [2003] EWCA Civ 1132; [2004] 1 WLR 95 (CA); and [2003] EWHC 1256; [2003] 3 All ER 191 (High Court).
• Acting for the claimant at the trial of a trade mark infringement action concerning the correct approach to partial revocation for non-use: H Young (Operations) Ltd v. Medici Ltd [2003] EWHC 1589; [2004] FSR 19 (High Court).
• Acting for the claimant at the trial of trade mark infringement and passing off proceedings in relation to a counterfeiting ring, and proceedings resulting in the subsequent committal to prison of one of the defendants for breach of disclosure orders: Coca-Cola Co v. Aytacli (Contempt: Committal) [2003] EWHC 91; [2003] 26(3) IPD 26016; and in a second action concerning the liability of further defendants raising defences of abuse of process: Coca-Cola Co v Ketteridge [2003] EWHC 2488; [2004] FSR 29.

Information Technology/Contract

• Acting for the Defendant setting aside a without notice injunction relating to the sale of pre-pay telephone services: Tele Wise Limited v Primus Telecommunications Limited
• Acting for Primus in a dispute with BT in respect of billing for 0800 services under the Network Charge Control Standard Interconnect Agreement: Primus Telecommunications Limited v British Telecommunications Plc
• Acting for the Defendant at the appeal of the summary judgment hearing in MCI Worldcom International v Primus Telecommunications [2004] EWCA Civ 957; [2004] 2 All E.R. (Comm) 833 (Court of Appeal) concerning breaches of contract and misrepresentation following Worldcom's Chapter 11 bankruptcy.
• Acting for the Claimant in a breach of contract action in the Patents Court concerning the assignment of patents relating to encryption technology: Invisimail Technolgies Ltd v RPK New Zealand Ltd [2003] EWHC 2828.
• Acting for BT Plc in Heathmill Multimedia ASP Ltd v British Telecommunications Plc [2003] EWHC 690, concerning the construction and UCTA 1977 reasonableness of BT’s standard terms and conditions.
• Acting for BT Plc in defence of a breach of contract action relating to toll-free telephone number services: Zone Corporation Ltd v BT Plc
• Acting for an international business process outsourcer in actions concerning payment of state benefits by eletronic transfer and provision of client relationship management systems.
• Acting for a company acting to prevent the removal of proprietary software and know-how by ex-employees, involving extensive use of evidence forensically recovered from computer servers and hard drives.
• Acting for eBay resisting an injunction and disclosure application aimed at preventing its users from re-selling tickets to sporting events: UEFA v eBay International AG
• Acting and advising in a number of contribution proceedings concerning the scope and effect of express and implied contractual intellectual property infringement warranties and indemnities.
• Advising a wide range of clients on contractual repudiation and termination issues relating to defective provision of IT development services.
• Advising e-commerce clients on regulatory compliance of existing Standard Terms and Conditions with e.g. Consumer Protection (Distance Selling Regulations) 2000, The Privacy and Electronic Communications (EC Directive) Regulations 2003 and Data Protection Act 1998.
• Acting in commercial disputes with substantial technical and technological content.

Patents

• Acting for B&Q plc, a co-defendant in a patent infringement action involving points of construction and priority, in the Patents County Court and subsequently in the Court of Appeal: Unilin Beheer BV v Berry Floor NV [2004] F.S.R. 14 (PCC); [2004] EWCA (Civ) 1021; [2005] F.S.R. 6 (CA); and in hearing in 2006 concerning interaction between res judicata and the European Patent Convention.
• Acting for the Claimant in a breach of contract action in the Patents Court concerning the assignment of patents relating to encryption technology: Invisimail Technologies Ltd v RPK New Zealand Ltd [2003] EWHC 2828.
• Acting for a defendant in a patent infringement action in the Patents County Court involving estoppels arising out of previous litigation on the same patent between related parties.
• Acting for Defendants in UK satellite proceedings relating to US patent infringement proceedings, resisting and varying an Order for disclosure and examination before an examiner in the UK.
• Acting for a US corporation in arbitration proceedings concerning trans-Atlantic patent and know-how licensing.

Copyright/Confidential Information

• Acting for the claimant in obtaining an injunction to prevent database right infringement, copyright infringement and removal of confidential information by current and former employees: E-Testing Consultancy Limited -v- (1) David Rai (2) Jacqueline Denton (3) Tim Straton
• Acting for defendants in two related actions concerning the validity, under US law, of copyright licences relating to recordings of the Tom Jones Show: Charly Aquisitions Ltd -v- (1) Paul Smith (2) Smith & Co Sound and Vision and Same v (1) Warren Goldberg (2) Realman Limited (3) C/F International Inc [Trial listed June 2006]
• Acting for the Defendants at the trial of a preliminary issue relating to representative actions in the context of a copyright infringement action: Independiente Ltd v. Music Trading On-Line (HK) Ltd [2003] EWHC 470.
• Acting for the claimant and advising in proceedings against ex-employees for copyright infringement and breach of contract and confidence.
• Acting for the Motion Picture Association of America in an infringement action concerning DVD decryption and copying software.
• Advising and acting for defendants and Part 20 defendants in relation to contractual warranties and indemnities concerning infringement of copyright owned by third parties.
• Advising and acting for software developers whose work has been appropriated and exploited by unauthorised third parties.
• Advising on the impact of The Duration of Copyright and Rights in Performances Regulations 1995 and The Copyright and Related Rights Regulations 1996 on the extent and duration of rights subsisting in old and unpublished copyright works.
• Acting for journalists, photographers and designers in copyright infringement actions against companies who have exploited their work without authorisation.
• Acting for multinational oil company in defence of a breach of confidence action brought in relation to smart card echnology.

Database Right Infringement

• Acting for the Claimant Yell Limited in a series of database right infringement actions arising out of the unauthorised use and exploitation of Yell.co.uk and Yellow Pages directory data
• Acting for the defendant in an action concerning provision of race day data: BHB Enterprises Plc -v- Victor Chandler (International) Ltd
• Acting for the defendant in a case concerning alleged database rights in mobile telephone top-up PIN codes: One2One v Rok Communications

General

• Acting for a major software company in litigation seeking to restrain the transmission of unsolicited ‘spam’ email.
• Advising a major record label on construction and enforcement of recording agreements with significant recording artist.
• Obtaining and resisting Anton Pillar search orders, Mareva freezing injunctions, Norwich Pharmacal orders and other High Court interim relief.
• Advising and acting in disputes concerning the scope and effect of Letters of Request under the Hague Evidence Convention and the Evidence (Proceedings in Other Jurisdictions) Act 1975.
• Settling complaints for use in the World Intellectual Property Organisation ICANN domain name dispute procedure.
• Settling complaints for submission to the Advertising Standards Authority in cases involving comparative advertising and misleading technical claims.