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James Abrahams QC

 


Year of call: 1997
Year of silk: 2016

James Abrahams read Law at St Anne's College, Oxford where he obtained a BA and BCL. He was also a scholar of St Anne's and twice winner of the Law Prize. He was called to the Bar in 1997 as a scholar of Gray's Inn. James became a member of Chambers in 1999.

James specialises in all aspects of IP, including patents, copyright, design rights, moral rights, database and related rights, registered designs, trade marks, passing off and breach of confidence. He is particularly well-known for his work in high-technology, complex patent cases, having appeared in the large majority of the major electronics, telecommunications and smartphone patent cases of the last few years.

Major patent cases include:

• Rovi v Virgin Media and TiVo (EPG and set top box functionality)
• Microsoft v Motorola (email protocols)
• Ericsson v ZTE (mobile telecommunications)
• Xena v Cantideck (damages inquiry in respect of rolling loading platforms)
• Liversidge v Owen Mumford and Abbott (medical auto-injector devices)
• HTC v Apple (smartphone interfaces)
• HTC v IPCom (mobile telecommunications)
• Nokia v IPCom (mobile telecommunications)
• LG v Sony (Blu-ray players)
• Apple v Nokia (mobile telecommunications)
• Motorola v RIM (mobile telecommunications)
• Wake Forest v Smith & Nephew and Mölnlycke v Wake Forest (wound dressings)
• Phillips v Harvard (video coders/decoders)
• Halliburton v Smith (oil well drill bits)
• Nokia v InterDigital (mobile telecommunications)
• Ferag v Muller Martini (print finishing machines)
• Glaxo’s Patent (Seretide® inhalers)
• Intel v VIA (microprocessors and chipsets)

Other major cases include:

• IPC Media v Media 10 (trade marks)
• Total v You View (trade marks)
• Coward v Phaestos (automated hedge fund software copyright)
• PRS v B4U (copyright in Bollywood musical songs)
• The Da Vinci code copyright case, Baigent v Random House
• 19TV v Freemantle (copyright in the format of ‘Pop Idol’)
• IPC Media v Highbury (copyright in magazine covers)
• Honda v Neesam and others (parallel imports of Honda motorbikes)
• British Horseracing Board v William Hill (the first case in which the UK and European courts had to deal with the database right created by EC Directive 96/9).

 

Trade Marks and Passing Off

Major trade mark cases include Total v YouView, which raised issues of clarity of specifications, Honda v Neesam and others, concerning parallel imports of Honda motorbikes from Australia and elsewhere; Thomson Holidays v Norwegian Cruise Line, the leading Court of Appeal case on partial revocation for non-use; and  Euromarket Designs v Peters (the CRATE & BARREL case). Further trade mark cases in which James has acted have covered areas as diverse as magazines and exhibitions (IPC Media v Media 10) pharmaceuticals (Ratiopharm GmbH's Trade Mark Application), luggage (Premier Luggage v The Premier Company) dentistry (Harding v. Smilecare), the Internet (1-800 Flowers Inc v. Phonenames) and kitchenware (Premier Brands v. Typhoon Europe). Major passing off cases including thre "Henry" vacuum cleaner cases, and acting for Midland Bank in the HSBC case, a dispute with HFC Bank.

IPC Media v Media 10 [2014] EWCA Civ 1439

This was an action for infringement of the IDEAL HOME trade mark as applied to online retail services. The judgement of the Court of Appeal addresses the question of when honest concurrent can provide a defence to trade mark infringement.

Total vYouView [2014] EWHC 1963 (Ch)

This action concerned the use of the trade mark YOUVIEW on set-top boxes. The case raised interesting issues concerning the clarity of trade mark specifications, and whether lack of clarity is a ground of invalidity; and bad faith.

Honda v David Silver [2010] FSR 40

A case concerning parallel imports of spare parts, and in particular what needs to be pleaded to get such a case off the ground.

Numatic v Qualtex [2010] EWHC 1237 (Ch)

Passing off case concerning the shape of the iconic ‘Henry’ vacuum cleaner.

Honda v Neesam and others [2008] EWHC 338 (Ch)

Parallel imports of Honda motorbikes from Australia and elsewhere. The inquiry as to damages is currently continuing (see [2009] EWHC 1213 (Pat) for a judgment concerning the conduct of that inquiry).

Claessens v Claessens (2009-2010)

Allegations of passing off and trade mark infringement between two branding companies formerly part of the same corporate group. 


Ratiopharm GmbH's Trade Mark Application [2007] RPC 28 (Appointed Person)

Appeal from the Registrar of Trade Marks, raising a number of issues concerning the proper application of section 5(2) of the Trade Marks Act 1994.

Premier Luggage & Bags v The Premier Company [2001] FSR 461, [2001] ETMR 49 (High Court) [2003] FSR 69, [2002] ETMR 69 (Court of Appeal)

Trade mark infringement and passing off, wholesale luggage and bags.

Thomson Holidays v Norwegian Cruise Line [2003] RPC 586 (Court of Appeal)

Infringement of two registered trade marks. This was the first judgment of the Court of Appeal to consider the question whether, and if so how, a trade mark specification should be “cut down” under s. 46 of the Trade Marks Act (revocation for non-use), to reflect the actual use of the mark
made by the proprietor.

Harding v Smilecare [2002] FSR 589

Trade mark infringement and passing off in the field of dentistry.

800-FLOWERS trade mark (1-800 Flowers Inc v Phonenames) [2001] IP&T 839, [2002] FSR 12 (Court of Appeal)

A leading case in the Court of Appeal in relation to what circumstances use of a trade mark on a foreign Internet site amounts to use of that trade mark in this jurisdiction, and also gave guidance on how summary costs are to be assessed.

Cleopatra Seafoods v Khera and others [2002] EWCA Civ 1260 (Court of Appeal)

A trial of a preliminary issue in a passing off case; followed by an appeal to the Court of Appeal. The decision of Judge Fysh QC – that the claimant’s claim had been compromised by the giving of undertakings before the action commenced – was upheld by a majority of the Court of Appeal

Primark v Lollypop [2001] FSR 637, [2001] ETMR 30

Passing off and trade mark infringement by the claimant’s supplier selling goods “out the back door”. The judgment on the claimant’s successful application for summary judgment explains the
circumstances in which goods become “goods of the proprietor” for the purposes of s. 10(6) of the Trade Marks Act 1994, and for the equivalent concept in the law of passing off.

Euromarket Designs v Peters (the CRATE & BARREL case) [2001] FSR 288, [2000] ETMR 1025, [2000] IP&T 1290

The judgment of Jacob J laid down a number of principles relating to cross-border dimensions of use and infringement of trade marks; including a discussion of when use of a mark on the Internet will infringe a registered trade mark.

Premier Brands v Typhoon Europe [2000] FSR 767, [2000] ETMR 1071, [2000] IP&T 218

The first contested English trial of an action under section 10(3) of the Trade Marks Act 1994, in
which the makers of TYPHOO tea complained of the use of the mark TYPHOON in relation to kitchenware such as woks.

HFC Bank v Midland Bank (the HSBC case) [2000] FSR 176

A passing off action by HFC Bank relating to Midland Bank’s new name: HSBC. The first instance judgment emphasised the difference between deception and mere confusion; the case settled after an appeal to the Court of Appeal had been heard.

  • What the Directories Say
  • He is incredibly intelligent. He is a street fighter advocate who gets down to the nitty gritty and rolls his sleeves up. He always puts in the effort and is unafraid of the difficult cases- he gets the best out of them." "He is fantastic on paper and a very logical thinker. He is extremely hard working, has never let me down and makes it an easy working relationship"
    Chambers & Partners (Intellectual Property) 2017

    "A very clever barrister and a sharp opponent."
    Legal 500 (Intellectual Property) 2017

    "A tenancioius advocate and someone you want on your side"
    Legal 500 (Intellectual Property) 2016

    "A very astute and commercail senior junior, he's someone with excellent written and oral skills"
    Chambers & Partners (Intellectual Property) 2016

    "A very able and commercial barrister who produces quality pleadings"
    Legal 500 (Intellectual Property) 2015

    "He's astute and tactically excellent, and has great drafting skills" 
    Chambers & Partners (Intellectual Property) 2015

    "Confident, clear, tenacious and pragmatic, he has excellent written and oral skills."
    Chambers & Partners (Intellectual Property) 2014

    "Produces quality pleadings"
    Legal 500 (Intellectual Property) 2014