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Martin Howe QC

 


Year of call: 1978
Year of silk: 1996

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.
 

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.
 

  • 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