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Fiona Clark

 


Year of call: 1982

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.
 

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

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