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Fiona Clark

 


Year of call: 1982

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Fiona’s practice covers all aspects of intellectual property law including related contractual and EC matters, breach of confidence and trade libel. However, she has a particular interest in copyright, designs (both registered and unregistered) and trade marks and has extensive experience of product branding and in media and entertainment law. She has also advised in connection with a number of comparative advertising disputes involving high street and internet retailers. Fiona's practice commonly involves cases with significant technical content, particularly in the fields of manufacturing, mechanical and construction engineering, computer software, architectural designs, jewellery and textiles.

In addition to appearing in the High Court and the Patents County Court, Fiona also appears regularly in hearings before the Intellectual Property Office and on appeal to the Appointed Person. She also regularly advises in connection with proceedings pending before OHIM and the OHIM Boards of Appeal, has appeared on appeals to the General Court and the Court of Justice of the European Union and has represented clients in numerous IP and related mediations.

Fiona is also the Editor of the Fleet Street Reports and the Reports of Patents, Trade Marks and Design Cases (from 2012) and is a contributor to a number of leading practitioner textbooks (including her roles as co-author of the current edition of Laddie, Prescott & Vitoria, The Modern Law of Copyright and Designs and Senior Editor of The Encyclopaedia of UK and European Patent Law) and was invited to take part in various patent and trade mark workshops and seminars as part of the IPR2 co-operation between the European Patent Office and China in 2009 and 2010.

Trade Marks and Passing Off

Fiona is a very experienced trade mark practitioner and has been an author of Atkins Court Forms “Trade Marks” volume since 2001. She is also an Associate Member of the Institute of Trade Mark Attorneys. A list of some of Fiona’s more recent reported trade mark cases is set out below. However, she also has considerable experience in the preparation of evidence and submissions for use in proceedings before OHIM and in appeals from OHIM decisions, although in many instances her involvement does not become public, such documents being filed by her instructing solicitors or trade mark attorneys. Her clients range from multinational pharmaceutical corporations, national trade associations and high street and internet retailers to premier league football clubs, fashion designers, restaurants and artisan food producers. She also has considerable experience of licensing and franchising disputes. Many of these, although essentially contract cases, involve complicated points of trade mark law.

Recent reported cases include:

Sofaworkshop Ltd v Sofa Works Ltd [2015] ETMR 37, [2016] F.S.R. 3

Acting for the defendant in proceedings for CTM infringement and passing off conducted in the IPEC and raising issues as to the extent of use necessary to maintain a CTM, the registrability of descriptive names, acquired distinctive character, assessment of likelihood of confusion (particularly where arising through the use of internet searches) and the handling of what was effectively survey evidence. The claimant failed on all technical points of trade mark law but was ultimately successful in passing off.

C-294/12 and T-369/10 You-Q BV v OHIM (EU:C:2013:300 and EU:T:2012:177)

Appeal to the General Court in opposition proceedings relating to an application to register BEATLE for goods including wheelchairs based on the earlier mark THE BEATLES under art. 8(5). The issues raised included challenges to the nature and extent of the reputation relied upon, the degree of similarity between the marks, the overall likelihood that a “link” would be established and whether unfair advantage had been properly established. Decision of the Board of Appeal that the opposition had been well founded was upheld. Further appeal to the CJEU failed..

Case C-106/11P Helena Rubinstein SNC v. Allergan Inc [2012] ETMR 40

Appeal to the CJEU in cancellation proceedings relating to the Community trade marks BOTOLIST and BOTOCYL based upon the earlier mark BOTOX under art. 8(5). The issues raised included proof of reputation, the establishment of the necessary “link”, the establishment of detriment, the CJEU on appeal from the General Court, the admissibility of documents which had not been translated and the nature of the requirement that the General Court give reasons for its decisions. Decision of the General Court cancelling both registrations upheld.

Plentyoffish Media Inc v. Plenty More LLP [2012] RPC 5

Appeal to the High Court in invalidation proceedings under s 47 of the Trade Marks Act 1994. The Opponent asserted goodwill based upon visitors to a website situation abroad. The issue was whether any UK goodwill had been generated which could be relied upon as an earlier mark. Appeal dismissed and decision of the hearing officer upheld – no UK goodwill established.
 
Georgio Armani SpA v Sunrich Clothing Ltd [2011] ETMR 13, [2011] RPC 15

Appeal to the High Court against a decision in opposition proceedings under section 5(2) of the Trade Marks Act 1994 in respect of an application to register the two letter mark AX in relation to clothing. The opposition had succeeded below and the decision was maintained as to clothing for men and boys. The appeal raised issues as to the comparison of 2 and 3 letter marks and as to the procedure when seeking to limit the specification of goods on opposition.

Cowshed Products Ltd v Island Origins Ltd [2010] EWHC 3357

Application for interim injunctive relief in an infringement of registered trade mark and passing off case. The case related to bath and body products and other gift items likely to be in particular demand in the immediate run up to Christmas. Application successfully resisted and directions given for expedited trial.

Starfire Publishing Limited v. Ordo Templi Orientis [2009] RPC 14

Appeal to the Appointed Person against a decision in opposition proceedings under sections 3(1)(b), (c) and (d) of the Trade Marks Act 1994 in respect of an application to register the letters OTO in relation, inter alia, to printed publications, printed matter and instruction services relating to religion and religious matters. Arguments raised included whether the letters OTO indicated a particular religion or belief system. The opposition had succeeded but was successfully overturned on appeal. The appeal raised issues both as to the identity and attributes of the average consumer and as to the extent to which a registrable mark must serve to indicate the goods and services of the applicant and none other as at the date of the application for registration.

Digipos Store Solutions Group Limited v. Digi International Inc. [2008] RPC 591

Appeal to the High Court in opposition proceedings under sections 5(2) and 5(4) of the Trade Marks Act 1994 in respect of an application to register DIGIPOS and device. The Opponent was the registered proprietor of DIGI and device in respect of goods which clearly overlapped with the specification sought. The Applicant (who had failed below) contended, inter alia, that the DIGI element of the Opponent’s mark was common and had been given too much weight by the hearing officer below. Appeal dismissed and decision of the hearing officer upheld – no sufficient basis for interfering with the decision below.

Kitfix v Great Gizmos [2008] EWHC 2723

Community trade mark infringement and passing off action in relation to the mark SEQUINART with counterclaim that the mark was invalid on grounds that it was descriptive of artwork and handicrafts decorated in sequins. The trial involved extensive cross-examination on distinctiveness, and numerous factual issues.

Fenchurch Environmental Group v. Ad-Tec Holdings (Bactiguard TM) [2007] RPC 31

Revocation proceedings in the Trade Marks Registry on grounds of non-use and raising issues of the construction and enforceability of a trade mark delimitation agreement between the parties in settlement of an earlier dispute. Preliminary issue as to whether the proceedings should be struck out on the basis of that agreement failed both below and on appeal to the Appointed Person. Registration successfully revoked following main hearing in the Registry. Later appeal to the Appointed Person settled.

Other noteable cases:

Professional Golf Association v. Ladies Professional Golf Association [2006] BL O/214/06

Acted for the LPGA before the IPO Trade Marks Registry in relation to the LPGA device mark registration in relation to golf clubs, golf balls and related goods under section 5(4) of the Trade Marks Act 1994 on the basis of the applicant’s reputation in the acronym PGA. The registration had been on the register for many years giving rise, inter alia, to issues in relation to the relevant date for assessing likelihood of confusion. The evidence filed by both parties was extensive. Validity successfully upheld.

Dewhurst and Debenhams’ Applications (Regy, 2000)

Involved in both the preparation and arguing of the test cases in relation to the registrability of retail service marks under the 1994 Act on behalf of the British Retail Consortium. This resulted in the change of practice before the UK Trade Marks Registry as reflected in Practice Note reported at [2001] RPC 33

Red Bull v. Mean Fiddler Music Group Plc et al [2004] EWHC 991

Application for interim injunctive relief in an action for passing off and infringement of registered trade mark relating to the get-up of an energy drink and alleged switch-selling at music festivals. Interim undertakings offered in relation to switch-selling. Interim injunctive relief in respect of the get-up of the drinks cans refused.

Silver Spring Mineral Water Co. Ltd’s Trade Mark Application (No.1) [2003] RPC 21 (Appointed Person) Appeal against opposition decision on grounds of procedural irregularity. Case remitted to the Registry for re-hearing by a different hearing officer.

Silver Spring Mineral Water Co. Ltd’s Trade Mark Application (No.2) [2004] RPC 13

Remitted opposition by President’s Choice to registration of PC CLEAR for mineral water on the basis of a device mark comprising the handwritten letters “PC”.

I Can't Believe Its Yoghurt TM (Appointed Person)

The first successful appeal from a decision of the Registry refusing registration of a slogan

Dawnay Day v. Cantor Fitzgerald [2000] RPC 669 (CA)

Passing off action concerning the name of group of companies involving complex issues as to ownership of goodwill and assessment of the relevance of lack of evidence of actual confusion

Financial Systems Software (UK) Ltd’s Application [2001] RPC 41 (CA)

1938 Act opposition in relation to the three letter mark FSS in the field of financial services.

FSS Trade Mark [2001] RPC 40 (Appointed Person)

1994 Act opposition in relation to essentially the same mark but involving the additional issue of bad faith.

React TM [2000] RPC 285 (Appointed Person)

Opposition proceedings, device mark, clothing, importance of visual comparison.

Consorzio del Prosciutto di Parma v. Marks & Spencer Plc [1991] RPC 351 (CA)

Passing off claim in relation to sale by Marks & Spencer of ham which, although produced in the Parma region and put on the market as Parma ham, had been sliced and packed in the UK rather than in the Parma region as required under Italian law.


Other recent cases before the IPO and on appeal to the Appointed Person have included

 

Azzaro (BL O/375/15 and O/376/15)

Tobacco products; applications for revocation on grounds of non-use; proof of use; proper reasons for non-use; whether ongoing trade mark proceedings abroad proper reason.


OCN London (BL O/271/15)

Educational services; composite marks; comparison of marks; ownership of goodwill; consent by registered proprietor.

The Jockey Club (BL O/553/14)

Fashion brands; opposition under ss. 5(2)(b), 5(3) and 5(4); comparison of marks; comparison of goods and services; proof of use.

THE DOGS (BL O/271/13 – Appointed Person)
Toiletries; opposition under s. 5(2)(b); average consumer; comparison of marks; comparison of goods; assessment of likelihood of confusion.

Mediagility (BL O/483/13 – Appointed Person)
Computer software; application for revocation; non-use; proof of use; clarity and scope of specification.


Lyst (BL O/466/12)

Fashion brands; opposition under ss. 5(2)(b) and 5(3); comparison of marks; comparison of goods and services; goods vs. retail services; proof of use.

CISI (BL O/021/12)


Financial services; opposition under ss.5(2) and 5(3); comparison of marks; comparison of services.

EN+(BL O/271/12)

Mining , metals and petroleum products and related services; Opposition under ss.5(1), (2) and (3); comparison of marks; comparison of goods and services; wording of CTM relied upon same as class headings; proof of use.
 

PlentymoreFish (BL O/029/11)

Internet dating agencies; opposition under s. 5(4); applicant based abroad, whether any relevant goodwill.

Tau Capital (BL O/010/11)

Financial institutions; opposition under s. 5(2),(3) and (4); comparison of marks.

Tao Asian Bistro (Appointed Person) BL O/004/11

Nightclub and restaurant services; opposition under ss. 5(2), (3) and (4); comparison of services; subsistence and ownership of goodwill.

Extreme (Appointed Person) BL O/217/10

Fishing tackle; revocation on grounds of non-use; use show on fishing rods; extent to which specification could be maintained.

Star Device BL O/161/09

Clothing and footwear; opposition under ss. 5(2), (3) and (4); comparison of marks.


Comparative Advertising

Fiona has advised in numerous cases where a trade mark (registered or unregistered) has been used by competitors in comparative advertising, most of which have ultimately been the subject of settlement short of trial. In some instances proceedings have been commenced for infringement of registered trade mark and in others, for malicious falsehood. In particular, Fiona (together with James Price Q.C.) represented Argos in two sets of proceedings against DSG Retail (Currys) in relation to comparative advertisements on the internet for televisions which featured price comparisons in 2008. The action settled a matter of days before the trial was due to be heard. Fiona had earlier acted (together with Andrew Caldecott Q.C.) for DSG Retail in its own comparative advertising dispute with Comet. The interim injunction application in this case is reported as DSG Retail (trading as Currys) v. Comet [2002] FSR 38.

Parallel Imports

Fiona has also been instructed in many cases concerning both counterfeit and grey market goods and has acted for both claimants and for defendants. The products involved have included pharmaceuticals, drinks products, leisurewear, play station controllers and computer software and peripherals. Such cases often involve applications for interim injunctive relief, including disclosure to enable the source of the counterfeit or grey market goods to be identified. Fiona has also acted for brand owners whose goods have been seized by customs officers and where applications have had to be made to the Court to ensure that those goods are not released to the consignee pending trial.
 

Copyright and Designs

Fiona is a very experienced copyright and designs practitioner and is a co-author of the forthcoming edition of The Modern Law of Copyright and Designs. The preparation of this edition has involved considerable research in relation to the extensive and ongoing changes in the area of design law in particular. Fiona’s design practice covers everything from high-end fashion to designs for articles such as tents, plastic chairs, cigarette bins and airport trolleys. She also has an extensive copyright practice, having a wealth of experience advising not only on issues arising in relation to works created since the coming into force of the Copyright, Designs and Patents Act 1988 in 1989, but also in relation to older works where the 1911 and/or 1956 Acts may be of relevance. Fiona’s copyright clients range from the estates of literary giants, film companies and music publishers to mapmakers, architects and software suppliers.
 

Reported cases include:

Pendle Metalwares Ltd v Walter Page (Safeways) Ltd [2014] EWHC 1140, [2014] EWHC 1144, [2014] EWHC 1145 and [2012](Chancery Division)

Trial of an action for infringement of UK unregistered design right and Community unregistered designs relating to cigarette bins for outdoor use. The trial raised issues of both subsistence and infringement in a series of overlapping rights for different cigarette bin models in addition to extensive areas of factual dispute requiring extensive cross-examination. Infringement having been established, an inquiry as to damages then took place. The legal issues arising included the proper basis of assessment of damages and the extent of any additional damages in the light of the terms of the Enforcement Directive.
 

Oakley Inc. v. Animal Limited et al. [2006] RPC 9 (CA)

Preliminary issue in an action for infringement of registered designs as to the vires of the Registered Designs Regulations 2001 and the law applicable when assessing the validity of designs registered or applied for prior to the coming into force of those Regulations. Preliminary issue determined in the Defendant’s favour subject to a reference to the ECJ on proper construction of Directive 98/71/EC of 13 October 1998 on the legal protection of designs. (The Secretary of State intervened as an interested party). The parties later settled and no ECJ decision issued.

Scott v. Waterfall and TDK [2004] (Patents Court County)

Action for breach of contract, infringement of copyright and infringement of performers’ rights in relation to the use of early pop videos of The Sweet on DVD. Injunctive relief granted and damages and costs awarded.

Charly v. Immediate Records and Oldham [2002]

The Second Defendant (who represented himself at trial and was unsuccessful) was faced with applications for consequential relief. Applications for worldwide freezing orders and the delivery up of the masters of sound recordings held outside of the jurisdiction successfully resisted.

Sweeney (Trustee of Estate of James Joyce) v Macmillan Publishers Limited [2002] RPC 35

The Defendants published an edition of Ulysses prepared from Joyce’s working papers and manuscripts and edited to reflect a late rather than early twentieth century style. The matter was complicated by the fact that Ulysses went out of copyright in 1992 but came back in as a result of an EC Directive. The Defendants claimed that their work had been produced whilst Ulysses was in the public domain. The action was for infringement of copyright and passing off. The claim for copyright infringement succeeded and injunctive relief was granted.

Other noteable cases:

Norowzian v. Arks (No.1) (Ch D) [1998] FSR 394

Advertisement for a well known Irish stout was alleged to infringe the copyright in a both a film and a dramatic work in which the Claimant asserted copyright. Application to strike out the allegation of infringement of copyright in the film successful.

Azrak-Hamway International Inc.'s Application (Patent Office) [1997] RPC 134

Preliminary issue as to whether the licence of right provisions relating to copyright and design rights were void and of no effect as contrary to the Agreement on Trade-Related Aspects of Intellectual Property Rights (“TRIPs”) as part of Community law.

Ironside v. Attorney General (Ch D) [1988] RPC 197

Dispute arising from the exploitation of the decimal coinage designs by the Royal Mint. The main issue arising was whether the designs were the subject of Crown copyright.

Patents

Fiona has been the Senior Editor of the Encyclopedia of UK and European Patent Law since 2000 and has experience of patent litigation in various fields. For the most part her patent practice has focussed on mechanical devices and manufacturing processes and her clients have often, although not exclusively, been SMEs. Most such actions have settled short of trial and accordingly, few are the subject of reported decisions. Fiona has also been brought in as a senior junior in patent actions in other areas where there have been new or complicated points of law and/or significant factual issues likely to require cross-examination. Fiona enjoys working as part of a team.

Reported cases include:

Virgin Atlantic Airways Ltd v. Jet Airways (India) Ltd [2014] R.P.C. 18 and [2013] R.P.C. 10

Appeared for the Comptroller in infringement action and on an appeal from a decision of the Patent Office under Rule 50. The Rule 50 appeal and the defendants’ counterclaim for invalidity raised issues as to whether the EPO and/or the Comptroller had acted ultra vires, it being contended that the UK designation of the patent in suit was a nullity, and as to the scope of the issues which could properly be raised on an application to the Patent Office under Rule 50. In the subsequent appeal to the Court of Appeal, where the issues arising extended to whether the existing system for challenging administrative decision in such cases complied with the right to a fair trial and whether the relevant jurisdictional threshold had been established in this case in any event.

Davies v. Helix Limited [2007] EWHC 3131

Application for interim injunctive relief. The patent was for a device for use as the making of envelopes and a method of folding paper to make envelopes using that device. The Defendant sold a multi-tool craft system which included an allegedly infringing device. The television launch of the Defendant’s craft system was imminent. Application successfully resisted and directions given for expedited trial.

Knight v. Her Majesty’s Comptroller-General of Patents, Trade Marks and Designs [2007] EWHC 2264.

Appearing for the Comptroller in proceedings for the judicial review of the decision of the Office to refuse to accord a filing date to a PCT application on grounds that it did not comply with Article 11 of the PCT on grounds that there were no claims.The Claimant asserted that the abstract and/or a part of the description which included a numbered list should be treated as its claims for this purpose. There was extensive argument as to the role of the Office in receipt of a patent application and the nature and extent of any obligation imposed upon it under the Patent Cooperation Treaty. Decision of the Patent Office upheld.

Department for Education and Skills v. Frontline Technology Limited [2004] EWHC 1487

Action for the revocation of a patent relating to a wifi schools attendance registration system involving issues relating to identity of the person or persons skilled in the art and the nature and relevance of alleged prior use by the patentee. Patent held partially valid. Subsequent application to amend after trial failed at first instance. Appeal proceedings settled shortly before hearing. Revised form of amendment subsequently granted.

Penife International v. Her Majesty’s Comptroller-General of Patents, Trade Marks and Designs [2004] RPC 37

Appearing for the Comprtoller in proceedings for the judicial review of the decision of the Patent Office to refuse to accord a filing date to a PCT application on grounds that it did not comply with Article 11 of the PCT on grounds that there were no claims. The “consistory clause” was asserted by the applicant to be adequate for this purpose. Decision of the Patent Office upheld.


Other noteable cases:

Coin Controls v Suzo [1997] FSR 660

Preliminary issue in an action relation to coin dispensing mechanisms. The Defendants applied to strike out part of the claim on grounds of jurisdiction, claims having been included in respect of acts committed out of the jurisdiction by group companies incorporated abroad. Application successful.

McDonald v Graham [1994] RPC 407 (CA)

Interim relief, including freezing orders, in a patent action before the Patents County Court involving issues of the jurisdiction of the Patents County Court and the grant of freezing orders generally, particularly whether a maximum amount should be frozen and the relevance of the subsequent bankruptcy of the Defendant.
 

Other

Over the years, Fiona has also been involved in many cases which are essentially contractual in nature but involve intellectual property rights. These include disputes concerning assignments and agreements to assign, trade mark licences, franchise agreements, book and music publishing agreements, recording contracts and patent licences. Reported cases include Fraser. v. Oystertec Plc [2004] FSR 22.

Fiona has also been instructed both for claimants and defendants in numerous actions against ex-employees, sometimes working as part of a team with employment counsel. For the most part these have been actions in which the principal cause of action has been breach of confidence, although many have also involved allegations of infringement of copyright and/or database right. These cases have ranged in subject matter from the technical specifications of fire ducting and software for monitoring power stations to and tax saving schemes and fashion designs.
 

Lectures and Seminars

 These have included

         • Webinar on the Interflora litigation for ITMA in February 2012
         • Participation in the King & Wood Mallesons 2013 and 2014 “Year in Review” trade mark,                  design and copyright seminars

  • “Enforcement and Litigation” at the Law Society Commerce and Industry Group’s Effective Branding Conference and for Simmons & Simmons,
  • “Similar Goods and Services” and “Trade Mark Litigation” for the Queen Mary Intellectual Property Research Institute,
  • “Recent Decisions of the Appointed Person and Appeals from the Trade Marks Registry” at ITMA’s 2005 Autumn Conference,
  • “Case Management in the High Court and UKIPO – Counsels’ Perspective” at ITMA’s Autumn 2008 seminar on case management.
  • Seminars in Shanghai and Fuzhou on Patent Enforcement organised by the EPO and SIPO as part of the IPR2 project
  • Various seminars and participation in a workshop on trade mark law reform in Hohhot (Inner Mongolia) organised by the EPO and SIPO as part of the IPR2 project in July 2010.

 

Additional Information

Education

Cambridge University (Trinity College) 1978 – 1981
Law; B.A., M.A

Publications

Editor of the Fleet Street Reports and Reports of Patent Cases (since 2012)

Co-Author of Laddie, Prescott & Vitoria “The Modern Law of Copyright” (4th Edition, 2011)

Co-Author of Atkin’s Court Forms, Trade Marks and Trade Names (2002, 2005 and 2011 Editions), Author of Atkin’s Court Forms, Copyright (2009 Edition)

Senior Editor of the Encyclopedia of United Kingdom and European Patent Law (Loose-leaf)

Member of the Editorial Board of the European Intellectual Property Review

 

Membership of Professional Bodies and Other Interests

Member of the I.P. Bar Association and Chancery Bar Association
Associate Member of the Institute of Trade Mark Attorneys

Conversational French and German

Recent Activity

» The Sofa Workshop Ltd v Sofaworks Ltd [2015] EWHC 1773 (IPEC) (29 June 2015)

What the Directories Say

"Very knowledegable"
Legal 500 (Intellectual property) 2015

"Insightful, dedicated and responsive"
Legal 500 (Intellectual property) 2014

 

  • What the Directories Say
  • "Very knowledegable"
    Legal 500 (Intellectual property) 2015

    "Insightful, dedicated and responsive"
    Legal 500 (Intellectual property) 2014