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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.
 

 

Copyright & Design Rights

Iona acts regularly for the Football Association Premier League in cases brought against publicans and suppliers of IPTV boxes for infringement of the Football Association Premier League’s copyright by the communication of the premier league logos to the public via Television screens.

A recent design right case of Iona’s is DKH Retail Ltd v H Young Operations Ltd. The subject matter of the case was UK Unregistered Design rights and Community Unregistered Design rights concerning fashion garments, specifically a gilet. The Claimant, DKH Retail, which trades as the brand Superdry, alleged UK and Community Design right infringement by the Defendant, H Young Operations, which trades as the brand Animal in relation to the Animal Glaisdale gilet which was said to infringe the Claimant’s design rights in the Superdry Academy gilet. HHJ Hacon in the Intellectual Property Enterprise Court gave judgment for the Claimant and dismissed all the Defendant’s arguments on invalidity, finding the UK and Community Design Rights relied upon valid. Further the Judge found the Claimant was successful in proving infringement of both its Community and UK Unregistered Design rights in ithe Superdry Academy gilet. The Claimant was granted an injunction, an inquiry as to damages and associated relief. Iona was counsel for the Claimant, Superdry (DKH Retail Ltd).

An important case Iona is involved in is Coward v Phaestos (High Court). This case concerned software for automated hedge fund trading. The dispute was between a hedge fund and a former director, and raised issues over who owned the software (which in turn raised complex issues of partnership, contract and company law), what rights each party had to use the software, copying, and reproduction of a substantial part.

Another important case Iona was involved in is The Football Association Premier League Ltd and others v Panini UK Ltd (Court of Appeal, High Court). This summary judgment/ interim injunction case concerned a claim for copyright infringement regarding football sticker albums and the defence of incidental inclusion.

Sample and Significant Cases

DKH Retail Ltd* v H Young Operations Ltd [2014] EWHC 4034 (IPEC)

http://www.bailii.org/ew/cases/EWHC/IPEC/2014/4034.html

The subject matter of the case was UK Unregistered Design rights and Community Unregistered Design rights concerning fashion garments, specifically a gilet. The Claimant, DKH Retail, which trades as the brand Superdry, alleged UK and Community Design right infringement by the Defendant, H Young Operations, which trades as the brand Animal in relation to the Animal Glaisdale gilet which was said to infringe the Claimant’s design rights in the Superdry Academy gilet. The Defendant argued that it did not infringe both sets of design rights and said that the Claimant’s asserted rights were invalid on many grounds including with regards UK Design Right, the must fit exception, the method or principle of construction exception and that the designs were commonplace. With regards the Community Design Right the Defendant alleged invalidity on grounds which included the features relied upon were excluded as they were solely dictated by technical function, the spare parts exception, the complex products exception and that the designs had no novelty or individual character. The case also considered the newly amended Section 213 of the Copyright Designs and Patents Act 1988 (the new definition of a design). There was a two day trial in Intellectual Property Enterprise Court in October 2014.
HHJ Hacon in the Intellectual Property Enterprise Court gave judgment for the Claimant and dismissed all the Defendant’s arguments on invalidity, finding the UK and Community Design Rights relied upon valid. Further the Judge found that the Claimant was successful in proving infringement of both its Community and UK Unregistered Design rights in its Academy gilet. The Claimant was granted an injunction, an inquiry as to damages and associated relief. Iona was counsel for the Claimant.

Coward v Phaestos*

Software for automated hedge fund trading. The dispute was between a hedge fund and a former director, and raised issues over who owned the software (which in turn raised complex issues of partnership, contract and company law), what rights each party had to use the software, copying and reproduction of substantial part. Iona was junior counsel for the Defendants.

DKH Retail Ltd* v Sports Direct.com Retail Limited and Others (Intellectual Property Enterprise Court)

A community registered design action. DKH Retail Ltd, trading under the well- known brand ‘Superdry’ have alleged that Sports Direct.com Retail Limited and others have infringed Superdry’s Community Registered design for a Jacket. The action was settled before trial. Iona has represented the Claimant.

Lacoste SA and ors v Integrix and anr* (High Court)

A design right infringement action. Lacoste alleged that the Defendants by their import and making available to the public of two Fila shoe designs were infringing Lacoste’s UK and Community unregistered design rights in two Lacoste shoe designs. The action settled shortly before trial. Iona was junior counsel for the Defendants.

FanFan Music Liechti & Cie v (1) Divorce Production Ltd and (2) Merchant Ivory Productions Ltd* (High Court)

A music copyright infringement action concerning the film ‘Le Divorce’. The action settled before trial. Iona was counsel for the Defendants.

PRS v Amplefuture* (High Court)

A dispute concerning the royalties payable in relation to the supply of mobile phone ringtones. Case settled before trial. Iona was junior counsel for the Defendant.

The Football Association Premier League Ltd and others v Panini UK Ltd* (Court of Appeal, High Court)

This case concerned a claim for copyright infringement by the Football Association Premier League and various individual premier league football clubs against Panini, the well- known sticker album producer. It was claimed that Panini, by publishing photographs in its unofficial football sticker album of action shots of premier league players in their club kits had infringed the copyright in the premier league club crests (such as those of Manchester United and Arsenal) and the FAPL crest. Panini ran the defence of incidental inclusion. At the interim injunction hearing the matter was finally decided on a summary judgment basis, with the FAPL being successful on their claim. The matter was appealed and the Court of Appeal dismissed the Appeal. Iona was junior counsel for the Defendant/Appellant.

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.

John Lewis Plc* v Peacocks (High Court)

Copyright Claim concerning duvet cover designs. Claim settled before trial. Iona was junior counsel for the Claimant.

(* 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