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John Baldwin QC

 


Year of call: 1977
Year of silk: 1991

John Baldwin QC commands a towering reputation as a leading silk in intellectual property and media and entertainment. He specialises in every aspect of these areas, including patents, trade marks (including comparative advertising), copyrights, licensing, confidential information, passing off, design rights and malicious falsehood.

Industry-wide, John is considered “as good as it gets” where copyright cases are concerned. He has acted on high profile cases for Dan Brown, JK Rowling, Simon Cowell, Madonna, George Michael, Bjork, Michael Jackson and the Estate of James Joyce. Famed media and entertainment matters have been a permanent feature of John’s practice for the last decade or more, Brian Belo v Lime Pictures, a copyright infringement  and breach of confidence case concerning TOWIE (The only way is Essex) being a recent example, 19 TV v Simon Cowell, a dispute about the rights in  X Factor, being another.

John is extremely experienced in pharmaceutical sector patent disputes, supported by his doctorate in agricultural science. Further, he’s worked in a raft of other patent actions in areas ranging from construction and heavy machinery to bio-fuels and packaging. Recent high-value patent cases include Novozymes v Danisco, an action concerning enzyme stabilisers in animal feed, Ranbaxy v AstraZencea, an action concerning proton pump inhibitors, and Novartis v Johnson & Johnson, an action concerning extended wear contact lenses.

John also sits as a judge of the Chancery Division, the Patents Court, the Intellectual Property Enterprise Court and as an arbitrator. He also acts as a mediator.
 

Trade Marks and Passing Off

John’s cases in this area are no less high profile. Recent examples include A&E TV Networks v Discovery Communications (a dispute about the branding of  the Discovery TV channels), Fage v Chobani ( a case concerning the authenticity of Greek Yoghurt made in the USA), Batsman Trade Mark (an application to register Batsman as a trade mark in the face of opposition from Batman), TWG Tea (a trade mark infringement and passing off case in Hong Kong concerning the luxury tea brand), MaxMara (an application and appeal to the CJEU in respect of the registration of M&Co as a CTM in the face of an opposition based on MAX&Co). Hasbro v Nahrmittel (are play-doh v play dough confusingly similar when used for modelling dough), SIS v High 5 (comparative advertising regarding the merits of specialist sports drinks), Jacobson v Globe (Gola wing flash logo), a rare case in which survey evidence assisted the court, Orange v Easymobile (Orange’s marketing plans came up against those of Stelios), Mars UK v Wagg Foods (another colour case, this time it was yellow), in which questions of unfair competition as well as conventional passing off were raised, and Bouverie v De Vere Hotels, a contract and trade mark dispute concerning the operation of the Belfry hotel and its famous golf course.
 

Tsit Wing Company v TWG Tea

Tsit Wing is a long established supplier of coffee and tea under the Tsit Wing name and TW brand. It took objection to the Singaporean luxury tea supplier TWG Tea opening an exclusive tea shop and supplying exclusive teas to the Hong Kong market.

Fage v Chobani

Fage has been supplying its TOTAL brand of Greek Yoghurt for many years. It claimed that not only did it have a particular consistency and taste, it had a reputation associated with its Greek provenance. Fage claimed that it was unlawful to sell any Yoghurt as Greek Yoghurt unless it was made in Greece. Chobani contended that Greek Yoghurt was a name indicating a type of yoghurt, just as English mustard indicates a type of mustard. It wished to sell its Greek Yoghurt in the UK although it manufactured it in the USA. The case explored the boundaries of the tort of extended passing off.

Batsman Trade Mark

The applicant sought to register Batsman as a trade mark for various specifications of goods, some being related to cricket and some not being related to cricket. Bruce Wayne was not happy and Warner Bros put forward a number of objections which prevailed before the Hearing Officer.

Evegate Publishing v Newsquest

Evegate publishes a farming magazine in Kent, Sussex and neighbouring regions and calls it South East Farmer. It sued for trade mark infringement and passing off when Newsquest launched a newspaper called Southern Farmer. The case explored the rights in descriptive names as well as the evidential value of witnesses selected by means of survey evidence and evidence gathering exercises.

M&Co Trade Mark

Fashion house MaxMara owns the trade mark Max&Co and it used this as a basis for an opposition at OHIM against registration of M&Co. by a UK supplier. The opposition was unsuccessful at first instance and before the second board appeal, and the case has been appealed to the General Court.

Lonsdale v Leofelis

A European wide trade mark licensing dispute concerning the Lonsdale mark and how interstate trade can be affected when additional countries join the European Union.

A&E Television Networks v Discovery Communications

A trade mark infringement and passing off claim arising out of the launch of the Discovery History TV channel. The Claimant contends there will be confusion with History, another channel dedicated to events from the past. There are issues about the use of descriptive names, the value of survey evidence and the identity of the relevant consumer.

Iceland Trade Mark

The Icelandic government took objection to the registration of Iceland as a trade mark for supermarkets and various food goods. The IPO was satisfied that there would be no likelihood of confusion so long as the registration did not extend to fish and similar goods.

Hasbro v Narhmittel

The Defendant launched a childrens product called Yummy Dough and advertised it using the strap line ‘the edible play dough’. Hasbro own the play-doh brand and alleged trade mark infringement, breach of the Comparative Advertising Directive and passing off. The main issue was whether or not the Defendant’s use was descriptive and in accordance with honest practices.

Jacobson v Globe

A trade mark infringement and passing off action to protect the well known Gola wing flash logo. Globe alleged its use of a similar design on the sides of its skate and surf leisure footwear was mere decoration. This was one of those rare cases where survey evidence assisted the court.

Mars UK v Wagg Foods

A dispute about the get up of Pedigree dog food which raised questions of unfair competition as well as conventional passing off.

Bouverie v De Vere Hotels

A contract and trade mark dispute concerning the operation of the Belfry hotel and its famous golf course.

Orange Personal Communications Services Limited v Easymobile Limited

A trade mark infringement and passing off action arising out of the use by the Easy Group of the colour orange in relation to the promotion of its mobile phone service.

Electrocoin Automatics Ltd v Coinworld Ltd

A trade mark infringement and passing off action relating to the use of certain symbols (BAR, X and O) on the reels and win lines of fruit machines. The Defendant asserted that these symbols were commonplace in the gaming industry whereas the Claimant relied on their trade mark registrations.

Intersnack Gmbh v Kambly SA

An appeal in trade mark proceedings regarding the rights to the Goldfish mark used in connection with snack biscuits. Many years ago the parties had traded together pursuant to a pan-European agreement. After a fall out there was a dispute as to who had the rights to use the mark in the UK.

Bargain Pages Ltd v Midland Newspapers Ltd

A dispute between two publishers of free advertisement newspapers. The Claimant sued in passing off and also alleged breach of a settlement agreement made between two parties which were previously unconnected but which had now come into common ownership.

Dowluck Limited v Wicked Clothing

A trade mark infringement and passing off claim concerning allegedly counterfeit Evisu high fashion jeans. The Defendants claimed the goods were genuine substandard items which they had legitimately imported from Italy.

LRC Products Ltd v Pasante Healthcare Ltd

A passing off action in which LRC sought to protect the get up of their Durex condoms. Pasante were new to the market and had introduced their condoms in similar packaging to that used by
Durex but bearing the Pasante logo.

Build-a-Bear Workshop v Hamleys Plc

A passing off action in which Build-a-Bear complained about Hamleys’ operation of The Bear Factory. It alleged copying of its American operation and consumer confusion arising out of a method of selling soft toys whereby a purchaser selects a skin and then stuffs it stitches it fluffs it and takes it home.

Thomson’s Holidays v Norwegian Cruise Line

A case concerning the proper approach to revocation of trade marks for non-use and to infringement when the marks were the same but the services for which they were used were different.

Premier Luggage and Bags Ltd v The Premier Company (UK) Ltd

A case illustrating the different tests for confusion in passing off and trade mark infringement. It related to the use of the word Premier in relation to luggage bags and the conflicting rights of rival
traders to use of the Premier name.

Estate of James Joyce v Macmillan Publishers Limited

An action for infringement of copyright and passing off. Macmillan had published an edition of Ulysses prepared from Joyce’s working papers and manuscripts and which had been edited to reflect a late rather than early twentieth century style. The matter was complicated by the fact that Ulysses went out of copyright in 1992 but was subsequently revived.

Unilever v General Housewares

A case of passing off and trade mark infringement arising from the use by General Housewares of the Oxo trade mark in relation to kitchen utensils and garden furniture. The kitchen utensils were sold under the Good Grips mark but also carried the Oxo mark.

Valucci Designs v IPC Magazines Ltd

An application to the Appointed Person in relation to the trade mark Loaded. IPC publish the popular Loaded magazine and were concerned as Valucci had registered Loaded as a trade mark for clothing.

Guardian Media Plc and Manchester Morning News Ltd v Associated Newspapers Ltd

A case in passing off relating to the use of the word Metro for a free morning newspaper. Associated Newspapers publish the well known Metro paper in London and wished to expand into different parts of the UK. They ran into a problem in the North West because of a free weekly which was being distributed under the Metro name.
 

  • What the Directories Say
  • "In court he is a very prepared, determined and persuasive advocate. It is lovely to hear him talk as he puts arguments together very well" "He is a senior operator who brings experience and intelligence to bear on cases"
    Chambers & Partners (Intellectual property) 2017

    "He is an excelent heavyweight QC"
    Chambers & Partners (Media & Entertainment) 2017

    "A very persuasive and tenacious advocate"
    Legal 500 (Intellectual property) 2017

    "A real fighter in court."
    Legal 500 (Media and entertainment) 2017

    "His passion and hard work always impresses"
    Legal 500 (Media and entertainment) 2016

    "A terrific fighter and persuasive advocate"
    Legal 500 (Intellectual property) 2016

    "He's terribly clever and sensible." "He is excellent technically and is a very robust advocate"
    Chambers & Partners (Media & Entertainment) 2016

    "A brilliant advocate" who is "Very strategic and commercial"
    Chambers & Partners (Intellectual property) 2016

    "Very hard working and commercially robust"
    Legal 500 (Intellectual property) 2015

    "An esteemed IP expert with a celebrated reputation for handling media cases with especially technical copyright components."
    Chambers & Partners (Media & Entertainment) 2015

    "A superb cross-examiner. He's a real bulldog in court when the fight is on" " He has an excellent nose for a case"
    Chambers & Partners (Intellectual Property) 2015