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James Mellor QC

 


Year of call: 1986
Year of silk: 2006
Position: Head of Chambers

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.
 

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.
 

  • 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