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Martin Howe QC

 


Year of call: 1978
Year of silk: 1996

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Martin Howe’s practice encompasses intellectual property and extends into wider fields of EU law and commercial and public law. He acted for the Secretary of State in the High Court and Court of Appeal in the tobacco standardised packaging case (R (BAT) v Sec of State for Health [2016] EWCA Civ 335), a judicial review case involving issues of intellectual property law, fundamental rights, free movement of goods under EU law, and the interpretation of TRIPS.

He is very experienced in higher courts. He appeared in the Hong Kong Court of Final Appeal in Tsit Wing v TWG Tea, the first trade mark case to reach that court, and in the UK Supreme Court in RFU v Viagogo, which dealt with the balance between the protection of personal data under the EU Charter of Fundamental Rights and the courts' powers to order disclosure of the identities of individuals alleged to have used a website to advertise tickets in breach of the terms and conditions of the ticket issuer.

He has conducted numerous cases in the CJEU, both IP related and relating to wider aspects of EU free movement and regulatory law. These include the first ever case about the so called 'Specific Mechanism' on parallel imports of pharmaceuticals from the EU Accession States (Merck v Sigma), the industry changing group of cases on trans border satellite broadcasting (FAPL v QC Leisure/Karen Murphy), the leading case on whether copyright prevents replication of computer program functionality and computer languages (SAS v WPL), on internet streaming of TV broadcasts (ITV v TVCatchup) on which the CJEU gave judgment on the second reference in March 2017, and the first ever case in the ECJ on circumvention of copy protection (Nintendo v PC Box). He conducts cases in the ECJ on references from the courts of other Member States (as in Nintendo v PC Box, from the Milan court) as well as from the UK.
He appears frequently in the Court of Appeal, as in Glaxo Wellcome UK Ltd v. Sandoz Ltd [2017] EWCA Civ 335 where he upheld a summary judgment by the defendants invalidating Glaxo’s EU Trade Mark based on a representation of its two-tone purple Seretide inhaler, on the ground that the nature of the registered mark was insufficiently clear from its representation to satisfy Article 4 of the EUTM; and in Robyn Rihanna Fenty v Arcadia Group (t/a Topshop) [2015] EWCA Civ 3, where he acted on behalf of the singer Rihanna in establishing a claim of passing off against Topshop for selling T shirts bearing an image of Rihanna.

He has a particular expertise in heavy technological cases, such as the internet, computers and IT, broadcasting and telecommunications technology, and biotech and pharmaceuticals: for details of his cases in these fields, see sections on Patents and on Copyright. 

His wide-ranging EU law practice focusses on free movement of goods and services and EU regulatory law. This has taken him to courts and tribunals outside the usual experience of IP practitioners, such as the Court of Appeal (Criminal Division), the Crown Court and the Admin Court on appeal - see section on EU Law.

He is the lead author of Russell Clarke and Howe on Industrial Designs (now in 9th Ed), and edited Halbury's Laws Title on Trade Marks. He is an Appointed Person to hear designs appeals from the UK IPO under the new appeal system of the Intellectual Property Act 2014.
 

Patents

Martin has a patent practice of enormous range and depth. He has conducted numerous patent cases in the higher courts, including Biogen v Medeva (see below), the first recombinant DNA case to reach the House of Lords. He has done patent/SPC cases in the CJEU, and many cases in the Court of Appeal and before EPO Technical Boards of Appeal at Munich. He relishes heavy technical cases, and has particular expertise in the fields of biotech/recombinant DNA, medical devices, pharmaceuticals and electronics and IT, including telecommunications, mobile phones and the technology of broadcasting.

In addition to appearing frequently as counsel in patent cases, Martin has appeared in court as an expert witness on patent law (Sanofi-Aventis in the High Court of Malaya, see below) and often gives lectures and talks on different aspects of patent law and practice.

Some highlights of Martin’s patent practice:-

Case C-539/23 Merck Canada Inc v Sigma Pharmaceuticals Plc [2015] RPC 30: importation of pharmaceutical parallel imports subject to a Supplementary Protection Certificate in the UK and the operation of the Specific Mechanism in the Act of Accession of the newer Member States. Martin persuaded the Court of Appeal to make a reference in this case (CA judgment reported at [2013] 3 CMLR 17; [2013] RPC 35), and succeeded in obtaining a ruling from the CJEU that if a patentee fails to respond to a Specific Mechanism notice given by a parallel importer then the parallel importation will not infringe the SPC for so long as the patentee does not indicate its intention to invoke the Specific Mechanism against the importation.

Sudarshan Chemical Industries Ltd v Clariant Produkte (Deutschland) GmbH [2013] EWCA Civ 919; [2014] RPC 6. Patent for a particular crystal form (polymorph) of a yellow pigment. After expiry of Clariant’s earlier patent which covered the pigment as such, Sudarshan began importing the pigment made according to the teachings of Clariant’s expired patent, but Clariant alleged that Sudarshan's product infringed its crystal form patent, and wrote a letter threatening to sue Sudarshan and its customers for infringement. In the Court of Appeal, Martin upheld the first instance decision that the patent was invalid, and that the threat made to Sudarshan to sue its customers was an actionable threat.

Smith & Nephew Plc v Convatec Technologies Inc [2013] EWHC (Pat). Patent action concerning antimicrobial wound dressings, where the court granted limited pre-action disclosure in relation to other patents of information disclosed confidentially for the purpose of determining whether there was infringement of the patent in suit in the main action.

Environmental Recycling Technologies Plc v Upcycle Holdings Ltd [2013] EWPCC 4. Martin acted for the defendant in successfully resisting an application to revoke a patent relating to a process for moulding plastic articles with a sandwich type construction of solid plastic outer surfaces and a foamable plastic core, and resisted an “added matter” attack on a validating amendment to the claims.

Case C-427/09 Generics (UK) Ltd v Synaptech Inc [2012] 1 CMLR 4; [2012] RPC 4. Supplementary protection certificate for galantamine for its second medical use for the treatment of Alzheimer’s. Galantamine had been placed on the market in certain Member States before the Medicinal Products Directive 65/65/EEC had become effective, and the Court ruled that this precluded a grant on an SPC relating to it.

MMI Research Ltd v Cellxion Ltd [2012] EWCA Civ 7. Patent for method of intercepting mobile telephone calls and identifying mobile phones on GSM and other digital cellular networks.

Sanofi Aventis (Malaysia) Sdn Bhd v Fresenius Kabi (Malaysia) Sdn Bhd (High Court of Malaya, 2011) Martin gave evidence as an expert witness on patent law in this pharmaceutical patent case heard in Kuala Lumpur.

Occlutech GmbH v AGA Medical Corp [2010] EWCA Civ 702. A medical device case about implantable occlusion devices for atrial septal defects. The Court of Appeal ruled on the purposive construction of the claims in comparison with the approach of the German courts to the German designation of the European Patent in suit.

Sec of State for Education and Skills v Frontline Technology Ltd [2005] EWHC 37. The Department of Education sought to revoke a patent for a system of radio networking which allowed attendance registration in schools from handheld tablet devices. The patent was upheld in part.

Cintec International Ltd v Parkes (t/a Dell Explosives) [2003] EWHC 2328 (Ch). A patent relating to dampening the effects of bomb blasts using water filled semi-rigid “inflatable” devices. Issues concerning jurisdiction between Scotland and England arose, as well as the impact of Brussels Convention rules.

Appeal by Professor D Fray (Cambridge University Technology Appeal Tribunal, 22 June 2007) Adjudication on intellectual property rights between university and staff Management of patent rights Process for electro deoxidation of titanium and other metals. Cambrige University's Technology Appeal Tribunal was established to adjudicate upon disputes regarding the exploitation of intellectual property rights in inventions made by the university's academic staff. In this first decision by the Tribunal, it laid down general guidelines on the conduct of appeals and on the duties of staff members and Cambridge Enterprise towards each other.

Joined Cases C-267 & 268/95 Merck v Primecrown Ltd [1996] I-ECR 6285; [1997] 1 CMLR 83; [1997] FSR 237: the leading case in the ECJ on the parallel importation of patented products between Member States.

Celltech Therapeutics, opponent Eli Lilly Case T400/97 EPO Technical Board of Appeals, 26 May 2000. Patent for recombinant DNA technology hybrid (human/non human) antibodies. The validity of the patent was challenged on the grounds of prior public disclosure at a lecture and insufficiency. The Board rejected the attacks based on prior public disclosure but greatly restricted the claims on the insufficiency grounds.

Pertussis antigen/Evans Medical Ltd Case T780/95, European Patent Office Technical Board of Appeals, 11 March 1998. Patent for Recombinant DNA technology Pertussis (whooping cough) antigens. A biotechnology case concerning the validity of a patent for an antigen of the pertussis bacterium used in whooping cough vaccine. The Board held the patent to be insufficient. Also appeared in the trial on the same patent in the English Patents Court: Evans Medical Ltd's Patent [1998] RPC 517.

Biogen Inc v Medeva PLC [1997] RPC 1. House of Lords. Patent for recombinant DNA technology the expression of Hepatitis B virus surface antigen for use in vaccines. The patent was held valid at first instance, but held invalid in the Court of Appeal and the House of Lords. The case established the principles applicable to the patentability of inventions in the genetic engineering field. (Proceedings in the lower courts reported at [1995] RPC 25).

Pioneer Electronics v Warner Music Mfg [1997] RPC 757, Court of Appeal. Patent infringement by importing product of process CDs made from mould not 'direct products' of process for making mould. The defendants imported and sold compact discs which were alleged to be the direct products of a patented process, so infringing contrary to section 60(1)(c) of the Patents Act 1977. The last step of the process set out in the claim was the production of a stamper for moulding the CDs. The CDs were in turn made by using the stamper. The Court held that the CDs could not be considered to be a "direct" product of the process within section 60(1)(c). Also at first instance at [1995] RPC 487.

Xylum Corporation v Gorog July 1997, Laddie J. Exclusive licence under patent Thrombosis diagnostic equipment Scope of improvements clause New patent taken out by relative of inventor. A case concerning apparatus for measuring the susceptibility of human blood to thrombosis. The defendant inventors had entered into an exclusive licence agreement with the plaintiff licensees. The agreement gave the plaintiff licensees certain rights in respect of improvements to the original invention. The court held that an apparatus patented in the name of the inventors' daughter amounted to an improvement to the original invention falling within the scope of the agreement.

Hepatitis B virus/Biogen Inc Case T886/91, European Patent Office Technical Board of Appeals, 16 June 1994. Parallel proceedings to those in the House of Lords concerning the same patent: see above.

Genentech's Patent [1989] RPC 147, Court of Appeal. Patent for recombinant DNA technology. Validity of a patent for the production of human tissue plasminogen activator by recombinant DNA technology. The patent was held invalid on the grounds of obviousness and because the claims were too broad. Judgment of the Patents Court at [1987] RPC 553.
 

Copyright, Database Rights and Design Rights

Martin’s copyright practice spans the hi-tech areas of IT and computer software, the internet, and telecommunications and broadcasting, as well as more traditional areas such as architectural copyright, magazine publishing and musical compilations.

Computer software and IT copyright (including video games)

Martin acted for the successful defendants in the ground-breaking software copyright dispute, Case C 406/10 SAS Institute Inc v World Programming Ltd [2012] 3 CMLR 4; [2012] RPC 31, where the CJEU sitting in Grand Chamber ruled that copyright in computer programs under the Software Directive 2009/24/EC does not prevent a competitor from replicating the functions of a program by observing its external behaviour, as well as ruling on the scope of the defence in Article 5(3) of the Directive which permits a lawful user of a program to investigate it to determine the ideas and principles which underlie it. He successfully carried through the implementation of the CJEU judgment in further stages of the proceedings which went to the Court of Appeal at [2013] EWCA Civ 1482; [2015] ECDR17; [2014] RPC 8.

Martin has acted in the only case so far to reach the CJEU on circumvention of technological copy-protection measures (‘TPMs’) Case C-355/12 Nintendo Co Ltd v PC Box SRL [2014] ECDR 6, where the Court ruled that protectable TPMs under Article 6 of Directive 2001/29 need not be located on the game chip itself but can be on the game console. He previously acted in proceedings in the UK where summary judgment was obtained against the sale of circumvention devices contrary to s. 296ZD and s. 296 of the CDPA 1988: Nintendo Co Ltd v Playables Ltd [2010] EWHC 1932 (Ch); [2010] ECDR 14; [2010] FSR 36.

He also acts in the protection of copyrights in video games, as in Nova Productions Ltd v Bell Fruit Games Ltd [2007] EWCA Civ 219; [2007] EMLR 14; [2007] RPC 25, where the Court of Appeal in a decision of wide ranging importance ruled on copyright in video games, including program code and artistic copyrights in generated images.

Having spent time working for IBM and as a software programmer, he is fully on top of preparation of highly technical evidence and can undertake detailed technical cross examination on program code, as in Ibcos Computers Ltd v Barclays Mercantile [1994] FSR 275, Jacob J.

Copyright etc in broadcasting and telecommunications

Martin has a pre-eminent practice in the field of copyright, and other rights such as conditional access (decoder card) rights, relating to broadcasting by satellite and the internet. In recent years five of his cases in this field have gone to the CJEU, as well as many cases in the Court of Appeal and the High Court.

Case C-275/15 ITV Broadcasting Ltd v TVCatchup Ltd (Judgment 1 March 2017), concerned the retransmission via the internet of free-to-air terrestrial broadcasts. In the same case there was a previous preliminary reference Case C-607/11 reported at [2013] 3 CMLR 1 on the interpretation of “communication to the public” in Article 3 of Directive 2001/29, and proceedings in the High Court and the Court of Appeal reported at [2015] EWCA Civ 204; [2015] ECDR 16; [2015] FSR 28. As well as dealing with “communication to the public”, the case also clarified the circumstances in which infringement can occur through the making of transient copies of broadcasts or of copyright works included in broadcasts in the course of buffering and retransmission.

Martin acted in a linked series of cases about his clients' use of imported satellite decoder cards in pubs in the UK to give access to satellite broadcasts of Premier League matches carried on foreign satellite channels, which involved a conflict between the freedom to receive services across frontiers in the EU single market and the attempted use of copyright law and national criminal laws to prevent the showing of match content outside national territorial zones allocated to licensees of FAPL. This led to one of the most important judgments to affect broadcasting in Europe in the last quarter century, Joined Cases C 403/08 and C 429/08 Football Association Premier League v QC Leisure and Karen Murphy v. Media Protection Services Limited [2011] ECR I-9083, resulting in the quashing of the criminal conviction of his client, Portsmouth landlady Karen Murphy and the dismissal of most of the civil claims against the importers of decoder cards and end user publicans.

These cases involved issues of copyright law as well as the very specialist but important law on dealings in unauthorised decoders which give access to broadcasts under section 298 of the Copyright Designs and Patents Act 1988 and the Conditional Access Directive 98/84/EC. They covered a wide range of copyright issues, including the impact of the Satellites and Copyright Directive 93/83/EEC on the cross border reception of satellite broadcasts, the impact of Article 5 of Directive 2001/29/EC on transient copies created inside decoder circuitry and on TV screens, and the meaning of “communication to the public” in Article 3 of Directive 2001/29/EC. As well as IP rights, the cases involved important issues of free movement of goods and services under the TFEU and under competition law - see EU Law section.

Since the FAPL v QC Leisure judgment in Luxembourg, Martin has conducted several related cases in the Court of Appeal and in the QB Divisional Court:

FAPL v Luxton [2016] EWCA Civ 1097, about whether a defendant who uses a domestic decoder card obtained from another Member State can have a defence to copyright infringement if he was prevented from obtaining a commercial grade card as a result of an unlawful agreement to partition markets contrary to Article 101 TFEU;

R (Vuciterni) v Brent Magistrates Court [2012] EWHC 2140 (Admin); (2012) 176 JP 705; [2012] CTLC 171; [2013] LLR 138; Martin acted for an applicant to quash a search warrant under which foreign satellite decoder cards had been seized. The Divisional Court held that the warrant had been obtained by the Trading Standard Department as a result of material non-disclosure of the fact that foreign decoder cards were not intrinsically unlawful, and quashed the warrant.

FAPL v QC Leisure [2012] EWCA Civ 1708; [2013] FSR 20 where the Court of Appeal held that the defence under section 72 of the CDPA 1988 applied because the intention of Parliament was clear even if that produced a conflict with Directive 2001/29/EC as interpreted by the Luxembourg Court.

Turner v Stafford Crown Court [2011] EWHC 490 (Admin): conviction for using an imported satellite decoder card quashed by the Divisional Court because of failure by the Crown Court to consider the EU law defences.

His coverage of the internet includes advising on the defences under the E Commerce Directive (2000/31/EC), where ISPs and other entities host online materials uploaded by others, and jurisdictional issues, including exposure to US law under the Digital Millennium Copyright Act (DMCA).

Non-technical copyrights

In addition to his practice on the application of copyright law in these highly technical areas, Martin has extensive experience of copyright in more traditional non-technical subject areas. Some highlights of his practice are:

IPC Media v Highbury Leisure Publishing [2005] FSR 20 p434.Copyright in magazine designs, and alleged copying of the 'format' (appearance and design) of Ideal Home magazine by a competitor magazine called 'Home'.

Pro Sieben Media AG v Carlton UK Television Ltd [1999] FSR 610, Ct of Appeal. Copyright in television broadcasts and fair dealing defences, where short segment of film from one broadcaster incorporated in a TV programme on the subject of "chequebook journalism".

Robin Ray v Classic FM PLC [1998] FSR 622, Ch D (Lightman J). Copyright in master catalogue of musical tracks prepared by Robin Ray as consultant to Classic FM. Classic FM licensed its "format" including a playlist based on the catalogue to certain radio stations overseas. The Court rejected arguments that the catalogue was a work of joint authorship and that Mr Ray was acting as an employee rather than a self employed consultant, and held that Classic FM's implied licence under Mr Ray's copyright to use the catalogue compiled by him did not extend to making copies for the use of the overseas stations.

Cala Homes Ltd v McAlpine [1995] FSR 818, Laddie J. Copyright in architectural drawings for Cala's range of standard house types. The Court held that Cala's employed director who had supervised and directed the creation of the drawings was a joint author together with the outside architects who had actually drawn them under his supervision; hence Cala could sue for infringement when the drawings were later substantially copied by the architects for the use of a competing housebuilder.

Designs

Martin is the main author of Russell-Clarke and Howe on Industrial Designs (Sweet & Maxwell), the leading practitioner textbook on the protection of industrial designs via registered and unregistered design rights and artistic copyright, which still has significant application to the protection of industrial designs. Having produced the 6th to 8th Editions of Russell-Clarke on his own, Martin is assisted in the 2016 9th Edition by two other members of chambers, James St Ville and Ashton Chantrielle. Martin also has a part-time judicial role relating to designs, having been made an Appointed Person to hear designs appeals from the UK IPO under the new designs appellate jurisdiction created by the Intellectual Property Act 2014.

As a practitioner he will undertake designs cases of all kinds, including cases in IPEC, which is now the forum of choice for the economical disposal of all but the highest value or most complex designs cases. He has undertaking design cases relating to extremely varied areas of technology, from shaped charge warheads to fruit punnets, carpets, laminating machines, lamps and lighting, and garments.

Some examples of his varied designs practice are:

Sealed Air Ltd v Sharp Interpack Ltd [2013] EWPCC 23. A registered and unregistered design case relating to fruit punnets. At Martin’s suggestion and in order to speed up the proceedings and reduce the costs of this fairly simple case, cross-examination of the expert witnesses was dispensed with and the judge relied on his own comparison of the features of the parties’ punnets and the prior art.

Alfa Laval Tumba AB v Separator Spares International Ltd [2012] EWCA Civ 1569; [2013] FSR 22. Design rights relating to marine separator machines; this appeal involved arguments on jurisdiction under the Brussels Regulation - see page on EU Law.

Societa Esplosivi Industriali SpA v Ordnance Technologies (UK) Ltd [2007] EWHC 2875 (Ch); [2008] RPC 12; previous proceedings reported at [2004] 1 All E.R. (Comm) 619. Shaped charge designs for multiple warhead missiles The parties had been involved in joint projects involving the design and testing of multiple warhead systems including shaped charges for 'bunker busting' cruise missiles. The case involved the court ruling on the correct procedures to be followed when disclosure documents fall within the Official Secrets Act, and on the liability for joint tortfeasance of a director.

Stoddard Intnl Ltd v Wm Lomas Carpets Ltd [2001] FSR 848. Carpet designs.

Billhöfer Maschinenfabriek GmbH v TH Dixons [1990] FSR105. Design drawings for laminating machinery Issues of eye appeal and substantial part.

 

Data Protection

There are comparatively few cases in the data protection field which go to the higher courts. Martin Howe has appeared in one in the Supreme Court and in another in the Court of Appeal (see below). He has a significant advisory practice on data protection law (including the Privacy and Electronic Communications (EC Directive) Regulations 2003), particularly on issues which involve difficult points of principle.

Rugby Football Union v CIS Ltd (formerly Viagogo Ltd) [2012] UKSC 55; [2012] 1 WLR. 3333; [2013] 1 All ER 928; [2013] 1 CMLR 56; [2013] EMLR 25; [2013] HRLR 8; [2013] FSR 23, in which Martin acted for the appellants, was the first ever application of the EU Charter of Fundamental Rights at UK Supreme Court level in the balancing of rights of individuals to protect their personal data against the claims of rights owners for disclosure under Norwich Pharmacal in order that they could pursue actions.

Johnson v Medical Defence Union Ltd [2007] EWCA Civ 262; [2007] 3 CMLR 9: the claimant, a surgeon and long standing member of the MDU, was removed from membership without warning under an internal 'risk assessment' procedure, despite the fact that no claims for negligence had been made against him in the course of his career. He applied for and obtained copies of the files relating to this procedure under the Data Protection Act 1998. He brought this action to challenge the fairness of the way the MDU had processed his personal data and their failure to give advance notice to him that his personal data would be used in this procedure. The trial judge (Rimer J) held that the use of information about him in the risk assessment procedure was 'processing' under the Act, and that the MDU was in breach of the Act by failing to notify him that certain data obtained from third parties would be used in considering his case. However, the MDU were held entitled to operate a policy under which they considered simply the existence of allegations or complaints in assessing risk and did not pay regard to their merits, and it was held that the Act did not entitle a data subject to question the fairness of that commercial policy. The Court of Appeal decided by a majority (Buxton and Longmore LJJ, Arden LJ dissenting) that the relevant step of the risk assessment procedure was not "processing" under the Act since it was performed by human mental processes rather than by machine.
 

EU Law

Martin Howe's practice is unusual for an IP practitioner in that it has a very strong EU law and public law component, extending outside the field of intellectual property into other areas of EU law and public law.

R (BAT) v Sec of State for Health [2016] EWCA Civ 1182; [2017] ETMR 9 was a judicial review brought by the tobacco companies against the standardised packaging regulations, largely based on the argument that the regulations would effectively deprive them of their property rights in their trade marks by preventing use of their marks on cigarette packs. Martin presented the trade mark and intellectual property aspects of the Secretary of State’s case, and the tobacco companies’ challenge was rejected in the High Court and Court of Appeal. The case involved a wide range of arguments, including the application of Article 1 of the ECHR First Protocol, and arguments on the justiciability of and interpretation of TRIPS (the WTO Agreement on Trade-Related Aspects of Intellectual Property).

Rugby Football Union v CIS Ltd (formerly Viagogo Ltd) [2012] UKSC 55; [2012] 1 WLR. 3333; [2013] 1 All ER 928; [2013] 1 CMLR 56; [2013] EMLR 25; [2013] HRLR 8; [2013] FSR 23, in which Martin acted for the appellants, was the first ever application of the EU Charter of Fundamental Rights at UK Supreme Court level in the balancing of rights of individuals to protect their personal data against the claims of rights owners for disclosure under Norwich Pharmacal in order that they could pursue actions.

A very strong strand of Martin’s practice has been cases on the free movement of goods and services between Member States, where the free movement rules of the TFEU and competition law interact with intellectual property rights or with regulatory law. These cases have frequently taken Martin to Luxembourg on preliminary references.

He conducted the first ever case in the CJEU about the so called 'Specific Mechanism' on patent and SPC protection in relation to parallel imports of pharmaceuticals from the EU Accession States (Merck v Sigma - see Patents section for details). His involvement in free movement rules and patents goes back to Joined Cases C-267 & 268/95 Merck v Primecrown Ltd [1996] I-ECR 6285; [1997] 1 CMLR 83; [1997] FSR 237, the leading ECJ case on the parallel importation of patented products between Member States.

He acted in two cases in the Court of Appeal on the relationship between trade mark law and free movement rules under the Treaty (Flynn Pharma v Drugsrus Ltd and SEP v Doncaster - see Trade Marks and Passing Off section).

He led in the industry changing group of cases on trans border satellite broadcasting (FAPL v QC Leisure/Karen Murphy - for details of this and following cases see Copyright section) in the High Court, CJEU, Court of Appeal and Administrative Court which established the rights of people to receive broadcasts from other Member States using imported satellite decoder cards, and found that territorial restrictions on the cross border distribution of decoder cards were in breach of Article 101 TFEU.

He conducted the leading case in the CJEU on whether copyright prevents replication of computer program functionality and computer languages (SAS v WPL). He also appeared in the leading case on internet streaming of TV broadcasts (ITV v TVCatchup) which twice went to the CJEU, and the first ever case in the CJEU on circumvention of TPMs - copy protection measures (Nintendo v PC Box). He conducts cases in the ECJ on references from the courts of other Member States (as in Nintendo v PC Box, which was from the court of Milan) as well as from UK courts. He also conducts cases in the EU General Court, such as Max Mara v OHIM, a trade mark appeal from an OHIM Board of Appeal (for details see Trade Marks and Passing Off section).

He frequently appears in EU law related cases in the High Court and Court of Appeal, such as Alfa Laval v Separator Spares (for details see Designs section), a leading case on jurisdiction under the Brussels (Judgments) Regulation in which the Court of Appeal set aside service of a claim against his clients in England, on the ground that the claims arose out of their individual contracts of employment and should therefore have been brought in Poland.

As well as civil cases, he has also appeared in the Criminal Division of the Court of Appeal: in R v Hitendra Patel [2009] EWCA Crim 2311; [2010] 1 WLR 1011; [2010] 1 CMLR 37; [2010] Eu. L.R. 297 he appeared on appeal to argue the EU law points for a client who had been convicted of a strict liability regulatory offence based on the Medicinal Products Directive, after having unwittingly dealt in consignments of counterfeit Viagra. The appeal was allowed. He has appeared in EU law based criminal matters in the Administrative Court both on appeal from the Crown Court (Murphy v MPS), and on successful judicial reviews to set aside a search warrant on the basis of failure by Trading Standards to disclose material information to the district judge when applying for the warrant (R (Vuciterni) v Brent Magistrates), and for failure of a Crown Court to consider EU law arguments which were presented to them by the defence (Turner v Stafford Crown Court) - for details of these cases see Copyright section.

His EU law practice covers regulatory law in many fields including pharmaceuticals, agrochemicals, and food.

Case C-306/98 R v MAFF ex parte Monsanto PLC [2001] ECR I 3279: a case in the ECJ on the validity of the grant of a generic agrochemical product licence under Directive 91/414/EEC.
Case C-201/94 R. v Medicines Control Agency ex parte Smith & Nephew [1996] ECR I-5819; [1997] 1 CMLR 812: ECJ and subsequent national proceedings on the validity of a parallel import licence granted by the Agency.

Seahawk Marine Foods v Southampton Port Health Authority [2002] EHLR 306, a Court of Appeal case on the interpretation of rules on the microbiological testing of seafoods imported into a Member State.

Antonio Muñoz y Cia SA v Frumar Ltd: a case in the High Court [1999] 3 C.M.L.R. 684; [1999] F.S.R. 872; and the ECJ (Case C-253/00 [2002] ECR I 7289) brought under common agricultural policy regulations, which established through DNA testing that the defendants had applied a false variety name to their grapes and that this breach of the regulations was actionable on the part of a competitor.
 

Trade Marks and Passing Off

Martin Howe has a huge knowledge of trade mark and passing off law and practice. He edited (jointly with with Sir Robin Jacob) the Trade Marks title of Halsbury's Laws of England, and re wrote from scratch the whole of the section on passing off.

His practice in trade marks and passing off involves major cases in the Court of Appeal, the EU General Court, and other high-level courts such as the Hong Kong Court of Final Appeal. Highlights have been:-

Glaxo Wellcome UK Ltd v. Sandoz Ltd [2017] EWCA Civ 335: he upheld in the Court of Appeal a summary judgment by the defendants invalidating Glaxo’s EU Trade Mark based on a representation of its two-tone purple Seretide inhaler, on the ground that the nature of the registered mark was insufficiently clear from its representation to satisfy Article 4 of the EUTMR.

Robyn Rihanna Fenty v Arcadia Group (t/a Topshop) [2015] EWCA Civ 3; [2015] 1 WLR 3291; [2015] FSR 14; [2015] EMLR 12, where he acted on behalf of the singer Rihanna in establishing a claim of passing off against Topshop for selling T shirts bearing an image of Rihanna. The court held these would be taken by a substantial number of Topshop customers as indicating that the T shirts were authorised or approved by Rihanna.

Tsit Wing v TWG Tea (Hong Kong Court of Final Appeal, 29 Jan 2016). The first case on registered trade mark infringement to reach the Court of Final Appeal in Hong Kong, where Martin acted for the appellants. The leading judgment was given by Non-Permanent Justice Gummow, a retired Justice of the High Court of Australia.

R (BAT) v Sec of State for Health [2016] EWCA Civ 1182; [2017] ETMR 9. This case was a judicial review brought by the tobacco companies against the standardised packaging regulations, largely based on the argument that the regulations would effectively deprive them of their property rights in their trade marks by preventing use of the marks on cigarette packs. Martin presented the trade mark and intellectual property aspects of the Secretary of State’s case, and the tobacco companies’ challenge was rejected in the High Court and Court of Appeal.

Case T 272/13 Max Mara Fashion Group v OHIM (3 Dec 2014) in the EU General Court on appeal from an OHIM Board of Appeal, where he resisted a claim that his client's trade mark was confusingly similar to Max Mara's registered trade mark.

Flynn Pharma Ltd v Drugsrus Ltd [2017] EWCA Civ 226, and SEP v Doncaster Pharmaceuticals [2015] EWCA Civ 54; [2015] RPC 20; [2015] ETMR 19: two cases in the Court of Appeal about the extent of the right of parallel importers to “re-brand” goods on importation from other Member States: for more details, see section on EU Law.

Martin is also happy to conduct smaller trade mark and passing off cases in IPEC: Gama Healthcare Ltd v PAL International Ltd [2016] EWHC 75 (IPEC) - alleged passing off by imitating get-up of clinical wipe packaging.

One area where he has particular expertise is the use of trade marks in internet contexts, where he has an ability to marry together a deep technical understanding of how trade marks are used on the internet in ways which are both visible and invisible to the end user (such as metadata), with a profound knowledge of the relevant legal principles.

He acted for the successful appellant in the first case on this subject in the Court of Appeal: Reed Executive v Reed Business Information [2004] EWCA Civ 159; [2004] ETMR 56; [2004] R.P.C. 40. This was a dispute between the well known high street employment agency business and the well known Reed Elsevier publishing group about the use of the trade mark REED on the internet primarily in recruitment and job advertising contexts. The Court of Appeal (Jacob LJ) gave important guidance on the law of trade mark infringement and the internet, particularly on "invisible" uses of trade marks such as in "metadata" and on the use of competitors' trade marks in search engines and as keywords to trigger advertisements. The appeal was successful in reversing findings of infringement and passing off against Reed Elsevier on all matters on which they appealed.
 

Broadcasting, Telecommunications and Internet

Martin Howe has unparalleled expertise in the field of broadcasting, telecommunications and the internet, particularly in cases involving cross border and international issues and the interfaces between intellectual property law and EU law on free movement and competition.

He acted in a linked series of cases about his clients' use of imported satellite decoder cards in pubs in the UK to give access to satellite broadcasts of Premier League matches carried on foreign satellite channels, which involved a conflict between the freedom to receive services across frontiers in the EU single market and the attempted use of copyright law and national criminal laws to prevent the showing of match content outside national territorial zones allocated to licensees of FAPL. This led to one of the most important judgments to affect broadcasting in Europe in the last quarter century, FAPL v QC Leisure (for details see Copyright section), resulting in the quashing of the criminal conviction of his client, Portsmouth landlady Karen Murphy (Murphy v MPS - see Copyright section) and the dismissal of most of the civil claims against the importers of decoder cards and end user publicans.

He also acted in the ITV v TV Catchup litigation (for details see Copyright section) about the retransmission of free-to-air TV programmes via the internet, a case which went to the Court of Appeal and twice to the CJEU.

He also deals extensively with other aspects of the law relating to telecommunications and the internet. He has dealt with the technical intricacies of mobile phone transmissions between phones and masts and how mobiles are handed from cell to cell in a major patent case relating to interception equipment (MMI v Cellxion - see Patents section), as well as with wifi and private network communication in Secretary of State for Education and Skills v Frontline Technology Ltd - see Patents section.

He handles cases under the Electronic Communications Code (formerly the Telecommunications Code) concerning mast sites, which can involve highly technical issues about signal strengths and coverage.

His coverage of the internet includes advising on the defences under the E Commerce Directive (2000/31/EC), where ISPs and other entities host online materials uploaded by others, and jurisdictional issues, including exposure to US law under the Digital Millennium Copyright Act (DMCA). He acted in one of the leading cases on trade mark infringement and the internet (Reed Executive v Reed Business Information - see Trade Marks section) and in the only case which has so far reached the Supreme Court on the liability of website operators to disclose information about their customers under a Norwich Pharmacal order: RFU v Viagogo - see EU Law section.
 

Information Technology and Computers

Martin Howe has a keen interest in computers and information technology. He worked as a computer systems engineer and software programmer for IBM and for commercial software houses before coming to the Bar and has kept up to date with the technology ever since.

He acted for the successful defendant in the seminal case in the ECJ on the extent to which computer program copyright can be used to prevent the replication of the functions performed by a computer program as distinct from the source code itself [See SAS in the ECJ and at the judgment of Mr Justice Arnold].

This follows his consistent involvement in the leading cases on copyright and computer software, such as Nova Productions Ltd v. Bell Fruit Games Ltd [2007] EWCA Civ 219 on video games software, and Ibcos Computers Ltd v Barclays Mercantile [1994] FSR 275.

He is one of the few practitioners with courtroom experience on the law relating to technological protection measures (TPMs) having successfully obtained summary judgment in [see Nintendo v Playables]. He is currently acting in a reference to the ECJ from the Court of Milan on the interpretation of Article 6 of Directive 2001/29/EC
 

Additional Information

Judicial Appointment (part-time)

Appointed Person to hear appeals from the UK IPO under the Registered Designs Act 1949 (as amended) (2015- current).

Publications

Russell Clarke and Howe on Industrial Designs (published Sweet & Maxwell, 1998); sole author of 6th Ed (1999), 7th Ed (2005) and 8th Ed (2010), and joint author (with James St Ville and Ashton Chantrielle) of 9th Ed (2016).

Halsbury's Laws of England title on Trade Marks and Trade Names (1984 and 1995 editions) Joint editor with Mr Justice Jacob; (2000 edition) Joint editor with James Abrahams.

Lectures and Seminars (sample only)

Symposium on the Judicial Protection of Copyrights on the Internet: Shanghai, hosted by the Supreme People's Court of the People's Republic of China and the East China University of Political Science and Law, April 2009.

"Litigating Biotech Patents" CIPA Annual Biotechnology Conference, Nottingham, November 2008.

Electronic Evidence and Electronic Signatures: Admissibility and Law. Lecture to the Chancery Bar Association, Lincoln's Inn Old Hall, April 2005.

Education and Awards

1973 1977: Trinity Hall, Cambridge BA (Hons) Engineering and Law; MA 1979. Entrance scholarship to Cambridge 1973; renewed scholarship 1975; Baker Prize for Engineering 1974 (first on Cambridge University examination list, Engineering Preliminary Exams).

1977 1978: Bar Exams course Everard ver Heyden Foundation Prize 1978 (for Bar Exams course advocacy skills); Harmsworth Exhibition 1976; Astbury Law Scholarship 1979.

Professional Memberships

Intellectual Property Bar Association (IPBA); Bar European Group (BEG); The Intellectual Property Lawyers Organisation (TIPLO).

Previous Employment (before practising at the Bar)

Computer systems engineer and at IBM UK Limited and contract programmer for software houses.
 

Recent Activity

» Glaxo Wellcome UK Ltd v. Sandoz Ltd [2017] EWCA Civ 335
» Glaxo Wellcome UK Limited (T/A Allen & Hanburys), Glaxo Group Limited v Sandoz Limited, Sandoz International GMBH [2017] EWCA Civ 227
» R (On the Application Of) British American Tobacco UK Limited & Others v The Secretary of State for Health [2016] EWCA Civ 1182
» FAPL v Luxton
» Glaxo Wellcome Uk Ltd (t/a Allen & Hanburys) v Sandoz Ltd (High Court) [2016] EWHC 1537 (Ch)
» Tsit Wing v TWG Tea
» Gama Healthcare Limited v Pal International Limited [2016] EWHC 75 (IPEC)
» Flynn Pharma Limited v DrugsRUs Limited and Tenolol Limited [2015] EWHC 2759 (Ch)
» ITV v TVCatchup [2015] EWCA Civ 204
» Merck Canada Inc v Sigma Pharmaceuticals PLC Case C-539/13
» Speciality European Pharma Ltd v (1) Doncaster Pharmaceuticals Group Ltd & (2) Madaus GmbH [2015] EWCA Civ 54
» Robyn Rihanna Fenty v Arcadia t/a Topshop
» Max Mara Fashion Group Srl v OHIM
» Nintendo Co Ltd v PC Box SRL Case C-355/12

What the Directories Say

"He always does a good job and is very effective in court. He is highly persuasive and always clear and rational" "he is really user-friendly and judges respect him. He is a bright, enthusiastic and committed barrister"
Chambers & Partners (Intellectual Property) 2017

"As well as being a leader in the field generally, he has a detailed technical grasp of computing and digital technology"
Chambers & Partners (Information Technology) 2017

"He has in-depth knowledge of copyright in broadcasts, EU copyright law and great commercial understanding of the client's objectives. He provides clear strategic advice"
Chambers & Partners (Media and Entertainment) 2017

"A specialist in the IP field with particular expertise in EU law."
Legal 500 (Intellectual Property) 2017

"A very good advocate"
Legal 500 (IT and Telecoms) 2017

"Recommended for IP work with EU elements"
Legal 500 (Intellectual Property) 2016

"Experienced in technical IT disputes"
Legal 500 (IT and Telecoms) 2016

"Highly regarded for media disputes with an EU element"
Legal 500 (Media and entertainment) 2016

"He has an excellent reputation as one of the senior silks in this area"
Chambers & Partners (Media and Entertainment) 2016

"He's a very safe pair of hands who's good on complex scientific cases"
Chambers & Partners (Information Technology) 2016

"Has market-leading knowledge on broadcast copyright and is a first port of call for this type of work" "He has great commercial understanding of the client's objectives and provides clear, strategic advice"
Chambers & Partners (Intellectual Property) 2016

"An experienced silk on big technical issues"
Legal 500 (IT and Telecoms) 2015

"He is very bright and industry-aware"
Legal 500 (Media and entertainment) 2015

"A team player who is thoughtful, cerebral and respected by the judiciary"
Legal 500 (Intellectual Property) 2015

"A precise, detail-oriented authority on EU law, with a software programming background he uses to outstanding effect in tech-based IP cases"
Chambers & Partners (Information Technology) 2015

" A cerebral lawyer, who is also accessible and a pleasant person to have on the team"
Chambers & Partners (Media & Entertainment) 2015

 

 

  • What the Directories Say
  • "He always does a good job and is very effective in court. He is highly persuasive and always clear and rational" "he is really user-friendly and judges respect him. He is a bright, enthusiastic and committed barrister"
    Chambers & Partners (Intellectual Property) 2017

    "As well as being a leader in the field generally, he has a detailed technical grasp of computing and digital technology"
    Chambers & Partners (Information Technology) 2017

    "He has in-depth knowledge of copyright in broadcasts, EU copyright law and great commercial understanding of the client's objectives. He provides clear strategic advice"
    Chambers & Partners (Media and Entertainment) 2017

    "A specialist in the IP field with particular expertise in EU law."
    Legal 500 (Intellectual Property) 2017

    "A very good advocate"
    Legal 500 (IT and Telecoms) 2017

    "Recommended for IP work with EU elements"
    Legal 500 (Intellectual Property) 2016

    "Experienced in technical IT disputes"
    Legal 500 (IT and Telecoms) 2016

    "Highly regarded for media disputes with an EU element"
    Legal 500 (Media and entertainment) 2016

    "He has an excellent reputation as one of the senior silks in this area"
    Chambers & Partners (Media and Entertainment) 2016

    "He's a very safe pair of hands who's good on complex scientific cases"
    Chambers & Partners (Information Technology) 2016

    "Has market-leading knowledge on broadcast copyright and is a first port of call for this type of work" "He has great commercial understanding of the client's objectives and provides clear, strategic advice"
    Chambers & Partners (Intellectual Property) 2016

    "An experienced silk on big technical issues"
    Legal 500 (IT and Telecoms) 2015

    "He is very bright and industry-aware"
    Legal 500 (Media and entertainment) 2015

    "A team player who is thoughtful, cerebral and respected by the judiciary"
    Legal 500 (Intellectual Property) 2015

    "A precise, detail-oriented authority on EU law, with a software programming background he uses to outstanding effect in tech-based IP cases"
    Chambers & Partners (Information Technology) 2015

    " A cerebral lawyer, who is also accessible and a pleasant person to have on the team"
    Chambers & Partners (Media & Entertainment) 2015