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Lindsay Lane

 


Year of call: 1996

Lindsay Lane read Natural Sciences and Law at Cambridge. She practises in all areas of intellectual property law including patents, trade marks, copyright, database rights, registered designs, design right, passing off and confidential information and in media and entertainment law. She is recommended in the Legal 500 and in Chambers and Partners for both intellectual property and media and entertainment.

Recent notable cases include the patent cases Accord v Medac and Generics v Richter Gedeon; Wade v BSkyB, a television format case; BBC v Eos, in the Copyright Tribunal and numerous cases brought on behalf of the Premier League for copyright infringement.

Other cases of note include Schutz v Werit in the Supreme Court, a patent case about making/repair; Phones 4u v Phone4u.co.uk in the Court of Appeal on trade mark infringement and passing off; Prince of Wales v Associated Newspapers, an action for copyright and breach of confidence relating to the publication of extracts from the Prince's diaries in the Mail on Sunday, and Eddie Irvine v Talksport, which established for the first time in the United Kingdom the right of celebrities to prevent false endorsement under the law of passing off. Lindsay has particular expertise in rights in databases having been instructed in BHB v William Hill and the various cases concerning rights in football-related data brought by Football Dataco.  

Lindsay is also co-author of Laddie, Prescott and Vitoria on The Modern Law of Copyright and Designs.

Trade Marks and Passing Off

Lindsay has appeared in many trade mark and passing off cases, including, most recently, 32Red Plc v WHG (International) Ltd, an inquiry as to damages; A&E Television Networks LLC v Discovery Communications Europe Ltd, a case about television channel names and Numatic v Qualtex, a passing off case about the shape of Henry vacuum cleaners. Other trade mark/passing off matters include UKTV v E! Entertainment (television channel names) and Phones 4u v Phone4u.co.uk (domain names). She acted for the claimant in Eddie Irvine v Talksport Ltd, where the right of celebrities to prevent false endorsement under the law of passing off was established definitively for the first time in the UK. Lindsay was also counsel for Chipie France in the Privy Council case on appeal from the Supreme Court of Mauritius, Sprints Ltd v Comptroller of Customs. She has wide ranging experience of appearing in the trade mark registry of the IPO, as well as advising in relation to OHIM proceedings. 

32Red Plc v WHG (International) Ltd (2013)

Junior Counsel for the defendant  in an inquiry  as to damages arising from trade mark infringement relating to an online casino.

A&E Television Networks LLC v Discovery Communications Europe Ltd  [2013] ETMR 32

Passing off and trade mark infringement trial. Junior counsel for the Claimant.

Numatic International Ltd v Qualtex UK Ltd [2010] RPC 25

Passing off case concerning the shape of Henry vacuum cleaners. Junior Counsel for the Defendant.

FIFA v Jules Rimet Cup Ltd (2009)

Junior counsel for FIFA in committal proceedings for breach of consent order made in a passing off case.

Cofra Holding AG v Alexander Brenninkmeijer (2008)

Application for summary judgment on the issue of bad faith in a dispute over the use of the mark CLEMENS EN AUGUST between C&A and a member of the Brenninkmeijer family. Junior counsel for the respondent.

UKTV Channel Management Ltd v E! Entertaintment Television Inc [2008] FSR 5

Counsel for the claimant in an application for an injunction/speedy trial in a case of trade mark
infringement and passing off involving television channel names.

Phones4U Ltd v Phone4u.co.uk Internet Ltd [2007] RPC 5

Counsel for the respondent in the Court of Appeal (and at trial) in an action for passing off and trade mark infringement brought by Phones4U against the defendant in respect of his registration and use of phone4u.co.uk.

Harrison’s Trade Mark Application (“CHINAWHITE”) [2004] FSR 13

Appeal to the High Court from the Trade Mark Registry on bad faith. Counsel for Teton Valley.

Eddie Irvine v Talksport Ltd [2003] 2 All ER 881

Appeal to the Court of Appeal on quantum awarded after passing off trial (see below). Junior counsel for Eddie Irvine.

Eddie Irvine v Talksport Ltd [2002] 2 All ER 414

Passing off trial relating to the use of a doctored photograph of Eddie Irvine on a leaflet sent to potential advertisers on Talk Radio. The case has established definitively for the first time in the UK the right of celebrities to prevent false endorsement under the law of passing off. Counsel for Eddie Irvine.

Sprints Ltd v Comptroller of Customs [2000] FSR 814

PrivyCouncil case, on appeal from the Supreme Court of Mauritius Trade mark opposition by Chipie France to application for registration of CHIPIE for clothing. Counsel for Chipie France.

  • What the Directories Say
  • "She is an experienced counsel with a comprehensive and detailed knowledge of copyright law." "She has a very clear approach and is good at cutting through to what really matters"
    Chambers & Partners (Intellectual Property) 2017

    "Clever and efficient and delivers pragmatic advice"
    Chambers & Partners (Media and Entertainment) 2017

    "She is good to work with and has an impressive commercial approach."
    Legal 500 (Intellectual property) 2017

    "She really thinks about achieving the clients commercial goals in terms of timing and strategy."
    Legal 500 (Media and entertainment) 2017

    "Known for television copyright matters"
    Legal 500 (Media and entertainment) 2016

    "Very good for IPEC trials"
    Legal 500 (Intellectual property) 2016

    "Her advice was very helpful and very constructive." "She's an effective advocate and can drive the point home when she needs to"
    Chambers & Partners (Media and Entertainment) 2016

    "Composed, confident and practical, she's a persuasive advocate." "Very good under fire and gets the ear of the tribunal"
    Chambers & Partners (Intellectual Property) 2016

    "She has an excellent grasp of procedural and technical issues"
    Legal 500 (Intellectual property) 2015

    "Very smart and very tough. She is persistent in her advocacy, very commercial and great with clients" "She's sharp-witted and highly responsive" 
    Chambers & Partners (Media and Entertainment) 2015

    "Clients are very impressed by her personable manner and commercial outlook"
    Chambers & Partners (Intellectual Property) 2015