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James Mellor QC

 


Year of call: 1986
Year of silk: 2006

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James Mellor QC was called to the Bar in 1986, having emerged from two periods at King's College, Cambridge with a degree in Engineering, a Certificate of Advanced Study in Manufacturing Engineering and a First in Law. As an engineer he worked both in the UK and in many countries abroad.

James specialises in all areas of Intellectual Property law including:

• Patents: electronics, medical devices, biotech, pharmaceuticals, mechanical devices;

• Trade Marks and Passing Off: generally, but especially parallel imports and internet issues; Boards of Appeal at OHIM, Appeals to the General Court and CJEU.

• Copyright: broadcasts, computer software; engineering drawings & designs, literary works, music copyright, database copyright, sui generis database right, rights in performances;

• Confidential Information: chemical formulae, business information, business ideas;

• Arbitrations with IP and/or technical content.
 

Patents

Gemalto* v HTC

Patents relating to SIM cards. 

Rovi v Virgin Media*

Parts 2 and 3 of the Gemstar litigation. A further 4 trials on 8 related patents have been scheduled for 2013/2014.

Smith & Nephew* v Convatec [2012] (HHJ Birss (Ch Div) & CA)

Attempted revocation of a patent for silverising wound dressings.

Gemstar v Virgin Media* [2011] EWCA 302 (Mann J & CA)

Successful revocation of 3 Patents for various aspects of Electronic Programme Guides.

Elmo-Tech* v Guidance [2011] EWHC 98 (Pat) (Lewison J)

Whether French law of secrecy/national defence prevented disclosure or provision of a product description.

KCI v Smith & Nephew* [2010] EWCA 1260 (CA)

Patents for various features of apparatus used for Negative Pressure Wound Therapy.

Wake Forest v Smith & Nephew* [2009] EWCA 848.

Successful (and fastest) revocation of Patent for Negative Pressure Wound Therapy.

Siemens* v Seagate (High Court of Northern Ireland, 2010)

Patent for a Magnetoresistive Sensor asserted against read/write heads used in disk drives. Awaiting Judgment.

Folding Attic Stairs* v The Loft Stairs Co. [2009] EWHC 1211 (Peter Prescott QC)

Successful enforcement of Patent for folding attic stairs. Settled on appeal.

Gore* v Geox (Floyd J. & CA)

Patents for waterproof, breathable shoes

Generics* v Daiichi (Kitchin J)

Attempted revocation of patent for levofloxacin.

Belvac v Carnaud Metalbox* (John Baldwin QC, sitting as Deputy Judge)

Patent for high-speed can machinery. Successfully revoked.

Wobben* v. Vestas (Kitchin J 2007)

3 Patents for control systems of wind turbines and connection to grid.

Ranbaxy* v. Warner-Lambert (Clarke J, 2007)

High Court of Ireland, Atorvastatin.

Ferag* v. Muller Martini (Lewison J. & CA)

Patent concerned with high speed trimming methods in the print industry.

Trade Marks & Passing Off

IPC v Media 10*

Dispute between Ideal Home magazine and Ideal Home Show over associated retailing of homewares on the internet. Awaiting trial in 2013.

Doosan* v Babcock

Dispute concerning scope of a trade mark licence. Awaiting trial in 2013.

Spear v Zynga* (Arnold J.)

Invalidated, on summary judgment [2012] EWHC 3345, a Spear registration which sought to cover all possible variations of a letter and number on a Scrabble type tile. Remainder of dispute proceeding to trial in 2013.

AETN* v Discovery (Peter Smith J.)

Action by the History Channel over the rebrand of Discovery Knowledge to Discovery History. Trial in July 2012, awaiting judgment.

Budweiser (Norris J, CA & CJEU) Trade Marks

Acquiescence. Awaiting CJEU Judgment.

Specsavers v Asda (on Appeal)

Claims for infringement of Specsavers marks used in Asda advertising

Hotel Cipriani v Cipriani* (Arnold J. & CA)

Dispute over CIPRIANI trade mark. Foreign Goodwill. Own name defence. Bad faith.

Whirlpool* v Kenwood (Hobbs QC, CA)*

Trade Mark for KitchenAid Artisan food mixer.

Enercon

Various cases for this German manufacturer of wind turbines. Appeal to the CJEU from the General Court. Appeal to the Board of Appeal from the Cancellation Division.

INTELMARK, Intel* v CPM (Registry, Patten J, CA & CJEU)

Unfair advantage; detriment to distinctive character.

Anheuser Busch v. Budweiser Budvar*

1998, 2000, cross-oppositions relating to applications for “Budweiser”. Czech Budweiser successful in both High Court and Court of Appeal.

2000, 2001, three attempts by US Budweiser to revoke/invalidate various Czech Budweiser marks, including BUD (TM Regy, High Court and CA)

Honda* v. Neesam & KJM

Lewison J. (Summary Judgment); Park J. (Trial); Floyd J. (Inquiry as to damages – settled during trial).

Oracle (formerly Sun)* v M-Tech Data (Kitchin J., CA)

Parallel imports; Summary Judgment; Euro-defences. (Now on appeal to the Supreme Court).

Allergan* v. Klein-Becker Dispute (UK High Court and OHIM)

Over infringement & validity of the BOTOX trade mark)

Direct Line v. esure* (TM Regy, Blackburne J., CA)

Opposition to application to register mouse on wheels.

Sun Microsystems* v. Amtec. Warren J.

Parallel imports. Summary Judgment.

Hewlett-Packard* v. expansys. Laddie J.

Parallel imports. Summary Judgment.

La Mer* (TM Regy, Jacob J, reference to ECJ, ECJ Order, Blackburne J. CA)

Non-use.
 

Passing Off

In addition to trade mark cases which also involve passing off, discrete claims in passing off include:

Hart v. Relentless Records* (Jacob J.)

De minimis reputation and goodwill.

Build-A-Bear v. Hamleys Plc*, 2001/2002

Passing off and copyright dispute over Hamley’s “Bear Factory” outlets in the UK.

TeleWorks Limited v. TeleWork Group plc*, (Floyd QC)

Successfully resisted the claimant’s passing off action, including claimant’s claim to “future goodwill”.

Alan Clark v. Associated Newspapers* (Lightman J)

Passing off. Spoof Diary published in the Evening Standard. Case settled after appeal launched.

Marks & Spencer, Virgin, Sainsburys, Ladbrokes* v. One in a Million (J. Sumption QC & CA)

Hi-jacked internet domain names. Various cases involving domain names since.

Harrods Ltd. v. Harrods Buenos Aires* (Neuberger J. (1997) & CA (1998))

Implied contract, fiduciary obligations, passing off alleged in every country in South America.
 

Copyright, Design Right, Rights in Performances & Database Right

Newland Homes v New Dawn Homes

Copyright in house designs. Awaiting trial in 2013.


Football Dataco* v Sportradar & Stan James (Floyd J, CA – Database right)

Database right in live data feeds from matches in the UK professional football leagues. Awaiting Judgment from the CA, including on the defendants’ request for a reference to the CJEU on subsistence, abus de droit & freedom of expression.


Football Dataco* v Sportradar (Floyd J, CA & CJEU - Jurisdiction)

Sui Generis Database Right; Reference to CJEU concerned where an internet transmission of infringing data occurs. Obtained successful CJEU judgment.


ITV* v TV Catchup [2010] EWHC 3063 (Kitchin J, Floyd J. Reference to CJEU,

Copyright in broadcasts; liability for on-line streaming. Awaiting judgment from CJEU on interpretation of “communication to the public”.


FAPL* v QC Leisure (Kitchin J & CJEU, Kitchin LJ, CA)

Protection for live broadcasts of Premiership football; conditional access devices, copyright (reproduction, communication to the public); use of foreign domestic decoder cards in commercial premises. Succeeded in claim for infringement of copyright by communication to the public of artistic works included in broadcasts. Related appeal to the CA concerning the interpretation of s.72 CDPA and its incompatibility with the InfoSoc Directive [2012] EWCA 1708, 20 Dec 2012.


PRS v B4U* (Vos J, on appeal)

Dispute concerning effect of PRS standard terms on music composed for Bollywood films. Appeal to be heard in 2013.


Football Dataco* v Yahoo & Stan James (CA & CJEU)

Database Copyright in Football fixtures lists; Reference to CJEU concerned “selection/arrangement” and “author’s own intellectual creation”. No protection for fixtures lists, despite involving AOIC.


MPS* v Murphy (Divisional Court & CJEU, plus further hearings in Div Court)

Protection for live broadcasts of Premiership football; s297.


PeerMusic v. Termidor & Editora Musical de Cuba*, (Neuberger J, 2002, CA 2003, Lindsay J, (2005-2006, including a hearing in Cuba in September 2005), CA (costs).

Dispute (arising out of the success of Cuban music following Buena Vista Social Club) over rights to the compositions of various Cuban composers. Acted for the successful Part 20 Defendant, EMC.


IPC v Highbury Publishing* (Ideal Home vs Home) (Laddie J, 2004)

Copyright case over design of consumer magazines. Acted for successful defendants.


Sony* v. Ball* (2004, Laddie J – summary judgment, Blackburne J – contempt)

Devices to circumvent copy-protection on PlayStation 2.


Consignia (Royal Mail) v. i-CD Publishing* (2004, Lloyd J.)

Dispute over use of PAF data. Acted for successful defendant.


Paddy Ashdown v. Telegraph Group Plc* (HCt & CA)

Copyright, fair dealing, public interest.


Cantor Fitzgerald Int & Anr v. Tradition UK Ltd. & Ors*, 1998/9

Copyright in a real-time bond dealing system, computer software. Pumfrey J & CA.


Mother Bertha Music* v. Bourne Music1997

Music copyright, Phil Spector song.


   

Arbitration

ICC Arbitrations

For Force India concerning alleged breaches of the Formula One Concorde Agreement

ICC Arbitration (London)

Termination of trade mark licence for a clothing mark.

ICC Arbitration (Paris)

Trade Mark Assignment and licence over a clothing mark.

Major ICC Arbitration (Paris)

Trade mark licence. First hearing on liability (2004). Second hearing on quantum (2006).
 

Chairman of the Second Appeal Panel of the Vintage Car Club of Great Britain

Additional Information

Education 

1974 – 78 Rugby School
Maths, Physics and Chemistry "A" (all grade A) and "S" levels (both grade 1)

1979 - 83 King’s College, Cambridge, M.A. Engineering and Production Engineering 2:1
Certificate of Advanced Study in Manufacturing Engineering

1984 – 85 King's College Cambridge, First in Law

1985 – 86 Inns of Court School of Law, Bar Vocational Course

Middle Temple
Jules Thorn Scholar
Harmsworth Entrance Exhibition

Previous Work Experience

Industrial sponsorship from IMI Plc. Work in a variety of engineering disciplines in the following countries: U.K. (13 months), France (6 months), Germany (7 weeks), Somalia (10 weeks), the Congo (7 weeks) and Iraq (3 weeks).

Publications

Co-author of the 14th (2005) & 13th (2001) Editions of Kerly on Trade Marks

Co-author with (David Kitchin Q.C.) of “The Trade Marks Act 1994 - Text & Commentary”

Co-editor of the Intellectual Property sections of Bullen Leake and Jacob's Precedents of Pleading (15th Edition (2004), 14th Edition (2001) & 13th Edition (1990)

Memberships

Middle Temple, Lincoln’s Inn, IP Bar Association, Chancery Bar Association (Committee Member 1998-9), Disability Panel of the Bar Council (90s-2005).

Leisure

Windsurfing, some Kitesurfing, Downhill Mountain Biking, SUPing, Cycling, Music (Bass), my family.

 

 

Recent Activity

» Astex Therapeutics Ltd -v- Astrazeneca Ab [2017] EWHC 1442 (Ch)
» Thoratec Europe Ltd v AIS GMBH Aachen Innovative Solutions (2016)
» Smith & Nephew Plc v Convatec Technologies Inc [2015] EWCA Civ 607 (24 June 2015)
» ITV v TVCatchup [2015] EWCA Civ 204
» IPC Media Ltd v Media 10 Ltd [2014] EWCA Civ 1439
» HTC Corporation v Gemalto SA [2014] EWCA Civ 1335 (22 October 2014)
» Specsavers International Healthcare Ltd & Ors v Asda Stores Ltd (Rev 1) [2014] EWCA Civ 1294
» Rovi Solutions Corporation & Anor v Virgin Media Ltd & Ors [2014] EWHC 2301 (Pat)
» Rovi Solutions Corporation & Anor v Virgin Media Ltd & Ors [2014] EWHC 1559 (Pat)
» Smith & Nephew PLC (Claimant) v Convatec Technologies Inc (Defendant) & (1) T.J. Smith & Nephew Limited & (2) Smith & Nephew Medical Limited (Third Parties) [2013] EWHC 3955 (Pat)

What the Directories Say

"He is very bright, user-friendly, practical and provides well-analysed advice." "He is experienced and unflappable. A go-to QC for telecommunications and electronics cases"
Chambers & Partners (Intellectual Property) 2017

"He is excellent for trade mark and passing off"
Chambers & Partners (Media & Entertainment) 2017

"An unflappable advocate"
Legal 500 (Intellectual Property) 2017

"He is unflappable, and his advice is received with confidence and respect"
Legal 500 (Intellectual Property) 2016

"He has the ear of the court." "He is extremely calm under pressure"
Chambers & Partners (Media & Entertainment) 2016

"One of the IP elite but incredibly approachable and easy to work with"
Chambers & Partners (Intellectual Property) 2016

"A formidable presence who is perfect if you want a heavyweight silk" "He's someone you want on board for a trade mark case- especially since you want to deprive the other side of getting him first"
Chambers & Partners (Intellectual Property) 2015

"He has a very good manner and works well as part of the team. He's very informal and great with clients." " His cross-examination, his advocacy and his thought processes are all very impressive"
Chambers & Partners (Media & Entertainment) 2015

"An incredible fighter, he is someone you want on your side"
Legal 500 (Intellectual Property) 2015


 

 

  • What the Directories Say
  • "He is very bright, user-friendly, practical and provides well-analysed advice." "He is experienced and unflappable. A go-to QC for telecommunications and electronics cases"
    Chambers & Partners (Intellectual Property) 2017

    "He is excellent for trade mark and passing off"
    Chambers & Partners (Media & Entertainment) 2017

    "An unflappable advocate"
    Legal 500 (Intellectual Property) 2017

    "He is unflappable, and his advice is received with confidence and respect"
    Legal 500 (Intellectual Property) 2016

    "He has the ear of the court." "He is extremely calm under pressure"
    Chambers & Partners (Media & Entertainment) 2016

    "One of the IP elite but incredibly approachable and easy to work with"
    Chambers & Partners (Intellectual Property) 2016

    "A formidable presence who is perfect if you want a heavyweight silk" "He's someone you want on board for a trade mark case- especially since you want to deprive the other side of getting him first"
    Chambers & Partners (Intellectual Property) 2015

    "He has a very good manner and works well as part of the team. He's very informal and great with clients." " His cross-examination, his advocacy and his thought processes are all very impressive"
    Chambers & Partners (Media & Entertainment) 2015

    "An incredible fighter, he is someone you want on your side"
    Legal 500 (Intellectual Property) 2015