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James St.Ville

 


Year of call: 1995

James St Ville was called to the Bar in 1995. At Gray's Inn, he was awarded the Bird & Bird Award for Intellectual Property, the Moot Society Prize and the Prince of Wales Award. At St. John's College Cambridge he was a Morton Scholar and awarded 1st Class Honours in Engineering, Sir Joseph Larmor's Plate, the St.John's College Prize and the University IEE Institution Prize.

He is recommended as a Leading Junior in Intellectual Property by Chambers UK and Information Technology by the Legal 500 and is a chartered engineer with substantial commercial experience of electronics, optical communications and engineering.

James appears in patent, registered design, design right, copyright, database right, confidential information, computer contract and IT disputes many of which deal with complex engineering, electronics and software and is an author of Russell-Clarke and Howe on Industrial Designs (9th Edition, 2016) with Martin Howe QC and Ashton Chantrielle. He is regularly instructed in trade mark, passing off, data protection and threats actions, including domain name and internet disputes and appears in the High Court, Patents Court, Technology and Construction Court, Court of Appeal, Intellectual Property Enterprise Court (IPEC), UK IPO, EU IPO (formerly OHIM) and General Court of the EU. He is regularly instructed to appear against leading counsel and with juniors.

He  has expertise in areas of practice such as search orders, Norwich Pharmacal orders, disk imaging orders, delivery up of source code, ex-parte injunctions to identify and deal with computer hackers and other interim injunctions which need to be kept confidential,  third party disclosure, UK Border Agency seizures and disputes over letters of request and the examination of witnesses for the purpose of foreign proceedings.

James represents clients at mediations, advises in relation to IP disputes in other common law jurisdictions such as Singapore and Jersey, and has sat as an examiner in response to overseas letters of request.

His reported cases include Spin Master v. PMS [2017] WLR (principles applied by High Court to achieve proportionate management of registered design cases), Marks & Spencer v. Asda Stores [2017] FSR 11 (principles on which court applies costs management controls in patent and unregistered design right cases), Positec v. Husqvarna [2016] Bus LR 714, [2016] FSR 29 (disclosure on obviousness in patent actions under new CPR 31.5), Procter and Gamble v. Star Global [2016] RPC 19 (community trade mark dispute concerning parallel imports of branded fragrances products with tracking codes removed), VPG Systems v. Air-Weigh Europe [2016] FSR 4 (invalidity of patent for on-board vehicle weighing system), Alfa Laval v. Separator Spares [2013] 1 WLR 1110 (CA) (the leading case on the test for determining whether breach of confidence and copyright claims against former employees are ‘matters relating to individual contracts of employment’ under the Brussels I Regulation), Virgin v. Casey [2011] ETMR 35 (maintaining registration of “Carbon Virgin” for advertising services in the face of Virgin’s appeal), Ancon v. ACS Stainless Steel Fixings [2009] All ER (D) 148 (CA) (patent action and appeal about high strength channels and bolts), M Systems v. Trek [2008] RPC 18 (validity and amendment of the patent for the USB memory stick), Meridian v. IP Enterprises [2008] Info TLR 139 (CA) (implied terms concerning ownership of copyright in source code), Nichia v. Argos [2007] Bus LR 1753 (CA) (principles upon which disclosure should be ordered in patent actions), BSW v. Balltec [2007] FSR 1 (successfully resisting pre-action disclosure regarding equipment used in the offshore oil and gas industry), Quads4kids v. Campbell [2006] Info TLR 338 (illegitimate complaints about products sold on eBay and threats of design right infringement proceedings), IDA v. University of Southampton [2006] RPC 21 (CA) (substantial patent entitlement dispute), Premier League v. Panini [2004] 1 WLR 1147 (CA) (copyright in football club crests), CDW's Trade Mark Application [2003] RPC 30 (trade mark www.standupifyouhatemanu.com contrary to public policy), Collag v. Merck [2003] FSR 263 (confidential information and patent entitlement dispute regarding agrochemical formulations), Rohm & Haas v. Collag [2002] FSR 28 (CA) (agrochemical process patent) and Safari Trade Mark [2002] RPC 23 (alleged non-use negative by use under bare licence).

 

Trade Marks and Passing Off

James’ involvement in trade mark cases is wide ranging. His experience extends from a string of cases for Microsoft against counterfeiters and parallel importers to those in quite different sectors such as Procter and Gamble v. Star Global [2016] RPC 19 (a community trade mark dispute concerning parallel imports of branded fragrances products with tracking codes removed), Maclay Murray & Spens v. Sheriff (trade mark infringement and passing off dispute between solicitors), Smoothfield v. Smithfield Foods (trade mark infringement by swamping, against Simon Malynicz QC), Downing Property Management v. Downing College (trade opposition proceedings in UKIPO), Hospital Metalcraft v Optimus British Hospital Metalcraft (interim injunction application to restrain use of long standing business name, wrongly alleged to be descriptive), NOCN v Open College Network Credit4Learning (IPEC trial over right to use term’s OCN and Open College Network), Medichem v. Hillpart (cancellation proceedings in the EU IPO, formerly OHIM, in relation to the trade mark ‘I ♥ MAKEUP’) Sat-Insure v. Big Warranties (extended warranties for satellite television equipment), Evac Chair v. Ferno (evacuation chairs), Kenwood v. Ultimate Products (Kitchen mixers and soup makers), Virgin v. Casey (financial services), Legal and General Group Plc v. Legal and General UK Limited (financial services), Family Planning Association v Dowson (advice centres - politically and religiously motivated protests), PHS Wastetech v Wasteteam (bin liners and industrial waste collection) and Ellerman v. International Lotteries (gambling websites).

       At a European level, he has also advised on a considerable number of trade mark cases including those in front of the Board of Appeal at OHIM (the EU trade mark office and designs registry) and the General Court of the EU. He also has experience of deploying and responding to border control seizures by the UK Borders Agency, dealing with rights that have reverted to the crown in bona vacantia and issues concerning royal arms.

High Court Proceedings and Appeals

Maclay Murray & Spens v. Sheriff (2017).
Trade mark infringement and passing off dispute between solicitors.

Smoothfield v. Smithfield Foods (2017).
Trade mark infringement dispute concerning device mark Smoothfield and alleged infringement by confusion and swamping by Smithfield, appearing against Simon Malynicz QC.

Aljadeed v. Fadaat Media (2016-2017).
High Court trade mark action about the Arabic trade mark ‘Aljdeed’ (‘new’) in Roman and Arabic script for newspapers, television and online publications, appearing against Mark Vanhegan QC.

Procter and Gamble v Star Global [2016] RPC 19.
Community trade mark dispute concerning parallel imports of branded fragrances products with tracking codes removed. Acting for defendant. Summary judgment refused - exhaustion and estoppel defences had reasonable prospects of success - burden of proof in parallel import cases and applicability of BMS conditions to decoded fragrances explained.

Hospital Metalcraft v Optimus British Hospital Metalcraft (2015).
Interim injunction application to restrain use of long standing business name, which was wrongly alleged to be descriptive, and the defendant’s newly coined acronym ‘OPTIMUS-BHM’ based on the claimant’s long standing name.

NOCN v Open College Network Credit4Learning (2015).
IPEC trade mark and passing off trial over right to use term’s OCN and Open College Network for adult education accreditation services - ownership of goodwill - shared goodwill - descriptive marks - alleged bad faith.

Star Global v L’Oreal and Diesel (2014).
Threats action and revocation action in relation to international and UK trade marks for fragrances and alleged parallel import.

Eclectic Bars v. Verghese (2014).
Passing off and community trade mark infringement action and interim injunction application concerning names of events at night clubs.


Sat-Insure v. Big Warranties and Nationwide Satellite Services (2012).
Claim for passing off and breach of confidence in customer databases committed in the course of sales calls made by the defendants in order to sell extended warranties for satellite television equipment.

Evac Chair v. Ferno (2011-2012).
Claim for infringement of UK unregistered design right and passing off in relation to the world’s leading evacuation chair.

De’Longhi v. Omar (2012).
UK Border agency seizure of counterfeit Kenwood juicers. Action for community trade mark infringement.

GRQ v. Incite (2011).
Successfully acted in defence of a claim for alleged infringement of Community Trade Marks by use of the trade names Incite, Incite Out and Incite People.

Kenwood Appliances v. Ultimate Products (2011).
Acting for Kenwood and De’Longhi in action to restrain use of the trade mark ‘Soup-a-Chef’ in infringement of Kenwood’s mark, CHEF.

Virgin v. Casey [2011] ETMR 35.
Successfully resisting appeal by Virgin against registration of the trade mark Carbon Virgin for advertising and other services.

Sony v. Dorado (2009).
Acting for Sony Entertainment in trade mark action restraining distribution of counterfeit PSP (Play Station Portable) mobile phones (no PSP phone had yet been launched) - the defendant company and its director were successfully restrained.

Bison Bial v. Toolmex(2009).
Application to vary injunction by third party affected by an interim injunction restraining the sale of a trade mark by administrators.

European Flight Training News v. Transair (UK)(2008).
Passing off and trade mark infringement - High Court action regarding domain names and website content.

Mayfair Trunk Company v. Bolla Bags (2008).
Passing off - injunction application to restrain use of trade mark for hand bags immediately before major trade show - registered trademarks opportunistically acquired by Defendant from crown by way of bona vacantia.

Snoozetime v. McDonald (2006-7).
Interim injunction - passing off and trade mark infringement action concerning microbead pillows.

Lonsdale v. Rekri8 (2006).
Action concerning ownership of the trade mark GoGas after termination of a co-branding agreement and change of ownership of the claimant.

PW Publishing v. Short Wave Magazine(2005).
Interim injunction - passing off, copyright infringement and breach of confidence - domain names - internet news group - magazine titles - logos - names of regular articles.

Snoozetime v. McDonald (2005).
Ex-parte injunction - counterfeit pillows - trade mark infringement - passing off - detention in port - subsequent springboard injunction.

First Choice Holidays v. First Choice Marketing (2005).
Interim injunction application – phoney time share marketing campaign - trade mark infringement - passing off.

Legal and General Group Plc v. Legal and General UK Limited (2005).
Supreme Court Act 1981 section 39 - order for C’s solicitor to execute documents changing D’s name – overcoming difficulties identified in Halifax Plc v. Halifax Repossessions Limited [2004] FSR 45.

Big Box Storage Company v. Safe Box (2004).
Interim injunction - passing off – copyright infringement - deceptive logo, business name and advertising.

PHS Wastetech Limited v. Wasteteam Limited (2004).
Trade mark infringement - passing off - interim injunction - altered copy of name & logo - use of green translucent bags for rubbish.

Interval Travel Inc. v. Interval Travel.uk.com Limited (2003).
Injunction application ex-parte on notice - trade mark infringement - domain name and logo.

Tropical Shipping v. Tropical Shipping Services (2002).
Trade mark infringement – validity.

Grant Barnett v. Brandwell (2002).
Trade mark infringement - validity - passing off.

Bullock v. Addyman (2002).
Passing off - domain names - name of bookshop.

BBC v. Mormorunni (2002).
Domain name - passing off - trade mark infringement.

Family Planning Association v. Dowson (2001).
Passing off - domain names - meta tags – antiabortion organisation using deceptive domain names and meta tags.

Ventcroft v. Morton (2001).
Trade mark infringement - meta tags - internet website.

Ellerman v. Parmi Holdings (2000).
The Ritz Club - trade mark infringement - passing off - internet casinos using ritz-casino.com, ritz-sportsbook.com and similar domain names.

Ellerman v. International Lotteries LLC (2000).
The Ritz Club - trade mark infringement - passing off - internet casinos using ritzcasino.com.

Link House Magazines v. Midsummer Books (1999).
Circumstances in which witnesses of confusion should be interviewed by defendant in passing off action.

TDI Advertising v. Harada (1999).
Debt action by owner of poster sites - counterclaim for passing off - printing and displaying competitor’s posters - same colours and phraseology.

Idom Consulting Limited v. Idom Inc. (1998).
Trade mark infringement - passing off – US company claiming to have offices in the UK - domain names - link to claimant’s website.

Microsoft v. Backslash Distribution (1998).
Copyright in software - trade mark infringement - constructive trust over fruits of copyright and trade mark infringement.

Microsoft v. Staud (1998).
Copyright in software - trade mark infringement - passing off - permission for use of disclosure to aid foreign police.

Microsoft v. Carlton Computers (1998).
Copyright in software - trade marks - passing off.

Microsoft v. Taskmaster Computing (1998).
Copyright in software - trade marks - passing off.

Cape Building Products v. Knauf (UK) (1998).
Trade mark infringement – malicious falsehood - comparative advertisements for fire resistant building boards.

Maresfield Services v. Melville Cars (1997).
Minicabs - passing off - breach of contract – injunction.

Revegate Limited v. Dower (1997).
Passing off - interim injunction - ‘Walkley Clogs’ as name of building and tourist attraction - use as name of pre-exiting clog making business at new site.

Microsoft v. Fortune Distribution (1997).
Copyright in software - trade mark infringement.

Microsoft v. Computer Future (1997).
Copyright in software - trade mark infringement.

Microsoft v. Continental Components (1997).
Copyright in software - trade mark infringement.


Trade Marks Registry and EU IPO

Downing Property Management v. Downing College (2017).
Trade opposition proceedings in UKIPO concerning use of name Downing in relation property management and student accommodation.

Medichem v. Hillpart (2015).
Cancellation proceedings in the EU IPO (formerly OHIM) in relation to the trade mark ‘I ♥ MAKEUP’ (containing the heart ideograph verbalized as ‘I love makeup’) for cosmetic kits, perfumes and products sold alongside them.

Joules v Tribeca (2013).
Trade mark opposition concerning Joules’ sitting hare and Tribeca’s leaping rabbit logo for bags and leather goods.

Actis LLP’s CTM Application
(2012)
Appeal concerning registrability of the slogan mark THE POSITIVE POWER OF CAPITAL for financial services.

ESGE  v OHIM (2011).
Acting for Kenwood and De’Longhi in an appeal to General Court from OHIM Board of Appeal regarding Kenwood’s application to register trade mark KMIX in the face of ESGE’s registration BAMIX.

De’Longhi v. Ultimate Products (2011).
Opposition concerning application for the trade mark ‘Soup-a-Chef’ in the face of Kenwood’s famous CHEF mark.

Costcutter v. Copeland (2010).
Instructed on issues of trade mark infringement and opposition in relation to Costcutter’s very well known mark.

Il Ponte Finanziaria SpA v. Chelsea Football Club (2010).
On-going proceedings in front of the Board of Appeal at OHIM concerning Chelsea’s application for the trade mark Stamford Bridge in the face of Il Ponte Finanziaria's registration, Bridge.

Intertek v. Intetech (2010).
Ongoing Community Trade Mark opposition proceedings.

Mitchell’s of Lancaster v. Daniel Thwaites (2010).
Trade mark registry proceedings in relation to the trade mark Lancaster Bomber for beer.

Timken’s Trade Mark Application (2007).
Appointed Person - whether the trade mark ‘Friction Management Solutions’ devoid of distinctive character and/or designated a the kind, quality or other characteristics of services concerning lubricants and machines using bearings.

High Liner Trade Mark (2005-2007).
Appeal to OHIM board of appeal concerning likelihood of confusion of Captain Birdseye logo with image of fish, fisherman and the words ‘High Liner’.

Philosophy Trade Mark (2006).
Opposition - section 5(4)(a): alleged passing off - relevance of limited use and pre-existing rights in neighbouring field - section 3(6): alleged bad faith - width of registration - effect of ‘combined test’ in CHINAWHITE TM [2004] 1 WLR 2577.

Tommy Nutter Trade Mark (2004-2005).
OHIM Board of Appeal - refusal to grant CTM application successfully overturned.

ENRG Trade Mark (2003).
Resisting opposition based on prior registrations of ÉNERGIE and alleged right in passing off - no likelihood of confusion - no misrepresentation.

API Trade Mark No. 2 (2003).
Resisting application for declaration of invalidity of word mark API - alleged earlier right in passing off - relevant date - whether sufficient goodwill in acronym as opposed to applicant’s full company name - no misrepresentation - no damage.

CDW Graphic Design Ltd’s TM Application (‘www.standupifyouhatemanu.com') [2003] RPC 30.
Acting for Manchester United football club - registration refused - contrary to public policy - likely to cause football hooliganism.

API Trade Mark No. 1 (2003).
Opposing application to register device mark consisting of client's company name, API - whether word and device identical - similarity of marks - likelihood of confusion.

Safari Trade Mark [2002] RPC 23.
Revocation of trade mark for non-use - grant of bare license - sufficient use of trade mark to prevent revocation.

EPX Trade Mark (2002).
Whether APX and EPX similar trade marks - similarity of services - likelihood of confusion - significance of use of PX to denote power exchange.

Poirot Trade Mark (2002).
Trade mark “Poirot” for alcoholic beverages - heirs to copyright in Agatha Christie’s works - earlier trade mark - whether reputation in relation to books – unfair advantage or detriment - no trade mark use - descriptive of fictional character - no reputation.

Camoris Trade Mark (2002).
Appeal to Appointed Person - likelihood of confusion - Avon Comores - significance of house mark - whether Comores descriptive of perfume islands.

Golddigga Trade Mark (2002).
Application for declaration of invalidity - earlier rights - bad faith - earlier mark “Hussey Goldiggers”.

Titanic Trade Mark (2002).
Acting for Harland & Wolff - “Titanic” for provision of food - application for invalidity by sandwich bar in Manchester - no evidence of current reputation.

Mr Bean’s Trade Mark (2002).
Application for trade mark “Mr Bean’s” for foods - opposed by proprietors of fictional character - earlier trade marks - bad faith - no trade mark use on foods.

King Cole Trade Mark (2001).
Application for “King Cole” by Joe Cole - opposed by Andrew Cole - referred to on terraces and in the newspapers as “King Cole”.

Camoris Trade Mark (2001).
Opposition - prior registration of Avon Comores – whether likelihood of confusion - whether Comores descriptive of perfume islands.

Vitasorb Trade Mark (2000).
Application to revoke for non use - whether use in relation to all goods for which trade mark registered.

Philosophy Trade Mark [2000] IPD 23064.
Appeal to Appointed Person - discovery – further information - all sought for collateral purpose - application dismissed.

Facchino Trade Mark (2000).
Invalidity - earlier right in passing off.

Geobank Trade Mark [1999] RPC 682.
Registry practice - pleading material facts relating to allegation of invalidity - particulars ordered under rule 51.

Camoris Trade Mark (1999). 
Ex-parte appeal to the Appointed Person - Camoris not too close to Avon Comores - Avon distinctive part - Camores descriptive of perfume islands.

Audi-Med Trade Mark [1998] RPC 863, [1999] ETMR 1010. 
Opposition – dilution.

Global One Trade Mark (1998).
Opposition - whether mark descriptive of telecommunications.
 

  • What the Directories Say
  • "He is an absolute perfectionist with a real eye for detail, which is really useful for trade mark infringement cases." "He is extremely thorough and leaves no stone unturned. His preparation on every case is superb and detailed, and he has first-class drafting"
    Chambers & Partners (Intellectual Property) 2017

    "Especially noted for his skill in handling cases with dominant mathematical and technical elements" 
    Chambers & Partners (Information technology) 2017

    "He has excellent knowledge of technology and a keen eye for detail."
    Legal 500 (IT and Telecoms) 2017

    "His calm, forensic approach is absolutely invaluable"
    Legal 500 (IT and Telecoms) 2016

    "He has a keen eye for detail and is very thorough"  
    Chambers & Partners (Intellectual Property) 2016

    "A user-friendly and very experienced junior"
    Chambers & Partners (Information technology) 2016 

    "Excellent in advising on matters with an IP or contractual dimension"
    Legal 500 (IT and Telecoms) 2015

    "Displays incredible attention to detail, is very responsive, gives sound commercial advice and has excellent IT industry knowledge" 
    Chambers & Partners (Information technology) 2015

    "He leaves no stone unturned- he offers superb detailed preparation on every case and first-class editing"
     Chambers & Partners (Intellectual Property) 2015

    "Expertise in IT disputes involving engineering, electronics and software"
    Legal 500 (IT and Telecoms) 2014

    "Technically strong," he is "hard-working and on top of the detail"
    Chambers & Partners (Intellectual Property) 2014

    "He is very good on the technical side"
    Chambers & Partners (Information Technology) 2014