8 NEW SQUARE

020 7405 4321

Iona Berkeley

 


Year of call: 1999

Iona read Biological Sciences at Trinity College Oxford. During her CPE and BVC courses she was awarded a Diplock and a Queen Mother Scholarship by Middle Temple. Iona’s practice covers all areas of intellectual property law and associated areas such as IP related international arbitration, contractual disputes and media and entertainment. Iona is also co-author of the recently released 16th Edition of Kerly’s law of Trade Marks and Trade Names, the 15th Edition and the Supplement to it. She is also a co-author of Laddie Prescott and Vitoria on the Modern Law of Copyright and Designs (4th Ed).

Iona has been recommended as a leading IP Junior in Chambers Directory for several years. For example in Chambers 2017 Iona is described as thorough and very accomplished and in Chambers UK 2015 Iona was noted as being very responsive with solid experience. In Chambers UK 2014 it was said that Iona “has very good empathy with instructing solicitors and understands the difficulties they face. She always provides clear instructions" and in Chambers UK 2012 Iona was said to be “known for providing an excellent service to clients, and impresses due to the fact that she has ‘a terrific commercial brain as well as a first-rate legal brain’”. It was also said she was “excellent in court.” Iona has also been described in The Legal 500 Directory as a barrister that 'solicitors whole heartedly recommend'. Highlights include:

• Glaxo Wellcome UK Ltd (t/a Allen and Hanburys) v Sandoz Ltd (High Court); [2017] EWHC 3196 (Ch) (Asthma Inhalers/pharmaceuticals, passing off, application to adduce survey evidence in High Court proceedings for passing off).

• Glaxo Wellcome UK Ltd (t/a Allen and Hanburys) v Sandoz Ltd (CA, High Court); [2017] EWCA Civ 335 (trade mark infringement and passing off, Colour per se trade marks, Asthma Inhalers/pharmaceuticals, trade mark declared invalid on Summary Judgment)

• Glaxo Wellcome UK Ltd (t/a Allen and Hanburys) v Sandoz Ltd (CA, High Court); [2017] EWCA Civ 227 (Asthma Inhalers/pharmaceuticals, Passing off, Joint tortfeasorship, Joinder of possible defendants, asthma inhalers)

• Speciality European Pharma v Doncaster Pharmaceuticals (CA, High Court) (Pharmaceutical parallel importation/trade mark infringement case concerning trospium chloride pharmaceutical products and the necessity to rebrand)

• Several major long running ICC and Ad Hoc International Arbitrations, on various issues including long term international licence agreements, settlement and co-existence agreements concerning trade marks and confidential information. 

• DKH Retail Ltd v H Young Operations Ltd (IPEC). (This case concerned infringement of UK and Community Unregistered Design Rights in a Superdry gilet.)

• Coward v Phaestos (Copyright infringement and ownership issues. The case concerned automated hedge fund software copyright)

• Whirlpool Corp v Kenwood (3D trade mark infringement and passing off. The case concerned Kitchen Aid and Kenwood food mixers)

• Statoil v The University of Southampton (Patent Entitlement dispute concerning electromagnetic mapping for oil exploration).

• Bambino Mio v Cazitex (Trade mark infringement case concerning nappies)

• EPI v Symphony (Confidential information, passing off, contract. The case concerned degradable plastics)

• The Football Association Premier League v Panini (Copyright infringement case concerning Football player sticker albums)

• Kirin-Amgen Inc v Roche and TKT (Patent case concerning recombinant DNA technology and the protein Erythropoietin)

Iona appears regularly in the Court of Appeal, High Court and the Intellectual Property Enterprise Court. Further she appears regularly in front of the Appointed Person, and at the IPO in Trade Mark Registry and Patent Office proceedings. Iona also has appeared as counsel in several long running International Arbitrations with hearings in London, Paris and Singapore and has considerable experience of this area. She is also experienced in representing clients at mediations. Past and present clients include: Alpharma, Allergan, Diageo, Doncaster Pharmaceuticals, Football Association Premier League, Filofax, Hermès, HTC, Intel, John Lewis Plc, Kenwood, L’Oréal, Nestlé Purina, Panini, Primark, Roche, Russell and Bromley, Sandoz, Sky, Superdry (DKH Retail), Umbro, Xtratherm, University of Southampton, and Waitrose Limited. However Iona is very experienced with working with SMEs, creative individuals as well as large organisations.
The cases Iona has worked on have given her experience relating to a wide range of sectors such as pharmaceuticals, chemicals and plastics, biotechnology, medical devices and products, oil and gas, consumer household products, cosmetics and fragrances, fashion and footwear, financial services, textiles, the film and television industry, advertising, building materials, and publishing including internet work.
 

 

Confidential Information, Breach of Confidence and Contract

A highlight here is EPI Environmental Technologies Inc v Symphony Plastic Technologies Plc (Court of Appeal, High Court). The action concerned degradable plastic technology. The Defendants, whom Iona represented as junior counsel, were largely successful at first instance and in the Court of Appeal.

Sample and Significant Cases 

Adelphi Masterfil Limited v Brian Potiphar and Filling and Capping Machines Limited (High Court):

Action for breach of a settlement agreement. The six day High Court trial concerned potential breaches of settlement agreement by the alleged misuse of technical design drawings for filling and capping machines used for the production of consumer products such as shampoos and the like. There was also a minor claim to copyright infringement. The case involved interpretation of various clauses of the settlement agreement and significant cross examination of technical witnesses. The Judge found for the Claimant with regards the copyright infringement but found misuse of only a limited number of drawings by the Defendants. Iona was counsel for the Defendants.

EPI Environmental Technologies Inc v Symphony Plastic Technologies Plc* (Court of Appeal, High Court)

Action for breach of confidence, breach of contract and passing off. The trial was before Peter Smith J. and was held in private for three weeks. The action concerned degradable plastic technology. Symphony was largely successful, the Claimants’ action for passing off, breach of confidence and the majority of their breach of contract claims being dismissed. The first instance public judgment was reported at [2005] FSR 22. The Claimants appealed. The Court of Appeal dismissed the Appeal after a four day appeal (see [2006] EWCA Civ 3, 1 WLR 495 (Note). Iona was junior counsel for the Defendants/Respondents.

Union Textiles de Torcoing Industries SA* v Macart Limited and another (High Court)

This was a breach of confidence and design right action relating to spinning and yarn technology. The case settled before trial. Iona was junior counsel for the Claimants.

(* denotes client)

  • What the Directories Say
  • "She is very thorough and accomplished"
    Chambers & Partners (Intellectual Property) 2017

    " She has solid expertise and is very responsive"
    Chambers & Partners (Intellectual Property) 2015

    "She has very good empathy with instructing solicitors and understands the difficulties they face. She always provides clear instructions."
    Chambers & Partners (Intellectual Property) 2014

    Iona Berkeley is a published authority on copyright, design rights, trade marks and trade names. She also has extensive experience at litigating patents cases, and has represented clients large and small from across the industrial landscape.
    Chambers & Partners (Intellectual Property) 2013

    Iona Berkeley is a personable and knowledgeable barrister with a broad spread of experience. She is known for providing an excellent service to clients, and impresses due to the fact that she has "a terrific commercial brain as well as a first-rate legal brain. Sources say she is responsive and thorough on the details of cases and excellent in court.”
    Chambers & Partners (Intellectual Property) 2012