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Daniel Alexander QC

 


Year of call: 1988
Year of silk: 2003

With over 25 years’ experience of litigation, Daniel has a wide practice focussing on intellectual property law but extending to other areas, including IT and media/entertainment law and a range of international disputes.

Patent work includes most areas of technology. Cases have involved medical and plant biotechnology (including SPCs), pharmaceuticals, chemical process design, telecommunications and mobile phones, medical and analytic equipment, electronics, petroleum engineering apparatus, data transmission and systems design, hydraulic equipment, consumer and household products.

Practice includes EPO, UK Patent Office and CJEU cases as well as appeals to the Court of Appeal and Supreme Court.

Media/copyright work includes rights licensing, copyright infringement and internet related cases in all areas, including music, visual arts, print and electronic media. Work includes cases for most major broadcasters.

Prominent trade mark work includes the leading ECJ cases Canon, BMW/Deenik Nichols, Gerolsteiner, Doublemint, Philips/Remington, Davidoff/Levis and Celltech, ASOS/Assos, Fage/Chobani.

His practice encompasses experience in arbitration in a range of tribunals and covering a diverse range of subjects in private and public international law extending to one of the leading cases on interim relief in public international law of recent years.

UK and ECJ, CFI Trade Marks and Passing Off

Maier v. ASOS (2013-2015)

Leading case on infringement and own name defence – High Court and Court of Appeal.

Fage v. Chobani (2013)

Leading case on extended passing off (High Court and Court of Appeal).

Iliffe v HMRC (2011)


Leading case on assignment of unregistered marks in tax context.

Donvand* v Altun (2010)

Trade marks and passing off for online travel business.

Bambino Mio* (2009)

Trade mark infringement in diaper marks.

McKinlay* (2009)

General Court.

Target Brands* v Music Choice (2006-7)

TM opposition.

Easy.Com TMs (2006)

Opposition relating to “easy” marks.

Apple Corps* v Apple Computer (2006)

High Court claim relating to TM delimitation agreement.

Celltech* TM (2005)

A leading ECJ case on distinctiveness of composite marks.

Incos*  v L’Oreal (2004-5)

Passing off and TM action relating to fragrances.

Bongrain’s TM application (2004)

Registrability of shape mark.

Wagg* v Nestle Purina (2004)

Alleged passing off in respect of pet food products.

OHIM v Wrigley (2004)

ECJ case concerning registration of “Doublemint” as a trade mark. Acted for the UK Government in the ECJ.

Gerolsteiner TM (2004)

ECJ case concerning scope of descriptiveness defence. Acted for UK Government.

Shield TM (2004)

ECJ case concerning registrability of sound trade marks. Acted for UK Government.

Nichols’ TM application (2003)

ECJ case concerning requirement of distinctiveness. Acted for Registrar.

Travelex* v European Commission (2003)

Claim before the Court of First Instance for non-contractual damages in respect of adoption of Euro symbol.

Philips v Remington (2003)

ECJ case on registrability and infringement of shape marks. Acted for the UK Government.

Linde/Winward/Rado TMs [2003] RPC 803

ECJ case relating to registration of shape marks. Acted for UK Government.

Sieckmann v DPA [2003] RPC 685

ECJ case on the registration of smell marks and the meaning of capable of being represented graphically. Acted for UK Government.

Tommy Hilfiger v Branded Stocks* (2001-2)

Claim concerning import of allegedly counterfeit clothing the subject of a settlement agreement.

Altecnic v Reliance (2002)

CA case concerning interpretation of trade mark specification in the light of the identified class. Acted for the Registrar.

Ghazillian TM (2002)

Case concerning the morality/public policy provisions of the Trade Marks Act.

Levis v Tesco* (2002)

Leading case on parallel imports from outside the EC. Acted for Levis and Costco.

Spectron v GFI* (2000)

Alleged passing off by get up of dealing screens.

Yakult (2001)

Shape of container.

LTJ Diffussion v Verbautdet (2001)

ECJ case concerning the meaning of “identical” marks in the Trade Marks Directive. Acted for the UK Government.

Merz & Krell v DPA (2000)

ECJ case concerning the registration of laudatory terms under the Trade Marks Directive. Acted for the UK Government.

Gillette v Jayish* (1999)

Trade mark, passing of and breach of contract claim concerning allegedly unlawful parallel import of consumer products by distributor.

Proctor & Gamble's Trade Marks (1999)

The leading UK CA case on the registrability of shape/colour trade marks. Acted for the Registrar.

Linea v House of Fraser* (1999)

Action in passing off in respect of use of “LINEA” brand for clothing.

Canon v MGM (1999)

The leading ECJ case concerning the interpretation of the Trade Marks Directive on the requirement of distinctiveness in case concerning registrability of trade marks. Acting for UK.

Wild Child (1998)

Scope of section 5(4) of Trade Marks Act.

Upjohn v Paranova (1998)

ECJ case on the principles governing the rights to use a modified mark in the course of parallel importing. Acted for the UK.

BMW v Deenik (1998)

Leading ECJ case concerning the ability of a trader to use a mark to indicate suitability of goods or service. Acting for the UK

Taylor Made* v Rata & Rata (1996)

Anton Piller order/contempt of court in trade mark case concerning golf clubs.

Harrods* v Harrods (Buenos Aires) (1996)

Major litigation seeking to restrain use by defendants of Harrods mark on the basis of fiduciary relationship and breach of contract causes of action.

IBM v Phoenix* (1992-94)

Trade mark infringement action involving Article 86/EC counterclaim and a reported aspect on the extent to which use could be made of wrongly disclosed discovery documents.

Harrods* v Harrodian School (1994-96)

Passing off action which became leading authority in the Court of Appeal on the requirements for a successful passing off action.*

(* indicates client)

  • What the Directories Say
  • "He has got an incredible mind, he is wonderfully articulate and he is incredibly accessible" "A smooth-as-silk silk who is willing and able to take a difficult case and find winning points in it. He sees the bigger picture, and clients like him because he's a great cross-examiner with a very delicate touch"
    Chambers & Partners (Intellectual Property) 2017

    "A very strong practitioner who is very fluent, thoughtful and strategic." "He's excellent both on a personal level and in terms of his advocacy and legal insight"
    Chambers & Partners (Information Technology) 2017

    "A barrister with a great mind who is very friendly"
    Chambers & Partners (Media & Entertainment) 2017

    "He provides clear, well-thought-through and commercial advice"
    Legal 500 (IT and Telecoms) 2017
     
    "An exceptional silk, who is able to look at matters from a judge's, advocates's and client's perspective"
    Legal 500 (Intellectual Property) 2017

    "He works extremely well in teams and approaches work with good humour and a positive attitude."
    Legal 500 (Media and entertainment) 2017

     "An excellent advocate and very capable adviser"
    Legal 500 (Intellectual Property) 2016

    "He has a good sense of how judges will be thinking"
    Legal 500 (Media and entertainment) 2016

    "He has a good demeanour and interaction style with solicitors and clients"
    Legal 500 (IT and Telecoms) 2016

    "He is a polished, accomplished advocate." "You always turn to Daniel Alexander for any knotty issues on the copyright side."
    Chambers & Partners (Media & Entertainment) 2016

    "Very good indeed - he is sensible, knowledgeable and a vey fine opponent"
    Chambers & Partners (Information Technology) 2016

    "Brilliant at handling complex cases that others make seem convoluted. He identifies the key issues and pares them down with apparent effortlessness" "Charismatic and great with clients"
    Chambers & Partners (Intellectual Property) 2016

    "Recommended for handling complex technological patent disputes"
    Legal 500 (IT and Telecoms) 2015

    "He knows his cases inside out, no stones are left unturned in his preparation"
    Legal 500 (Media and entertainment) 2015

    "Has enjoyed a career in IP few silks can match, and has appeared in many of the most significant patent, trade mark and copyright actions of the past 20 years"
    Chambers & Partners (Intellectual Property) 2015

    "Extremely well regarded and an absolutely superb advocate" "He understands how judges' minds work, so knows how to manage the court really well"
    Chambers & Partners (Information Technology) 2015

    "Admired for his his work in digital technology cases. Judges trust him because he only runs the best points"
    Chambers & Partners (Media & Entertainment) 2015

    "He is quite simply superb, and one of the very best at the patent bar"
    Legal 500 (Intellectual Property) 2015