8 NEW SQUARE

020 7405 4321

Michael Tappin QC

 


Year of call: 1991
Year of silk: 2009

Michael Tappin QC is probably best known for his work on many of the leading patent cases of the last decade. Chambers & Partners 2016 said that he is “Widely acclaimed as one of the leading silks for biotech and pharmaceuticals patent cases, although he is also a powerful performer in telecoms disputes. He is noted for his sparkling intelligence, capacity for hard work and the collegiate approach he takes to working with instructing solicitors.” However, he has experience across the range of IP and has been involved in a series of trade mark and SPC references to the Court of Justice of the European Union. He has also conducted two trials in the High Court of Ireland and was responsible for handling the clinical evidence at a major international arbitration in The Hague.

Chambers & Partners 2018 says that "He has a great command of the law, and his analysis is exceptional both technically and legally" and that "He is very bright, very creative, very thorough and doesn't miss a trick." In previous years, he has been described in Chambers & Partners as being “a highly effective and persuasive advocate with a no-nonsense but user-friendly attitude”, “a very clear and effective advocate, who is calm, thoughtful and confident”, as having “great intellect, exceptional advocacy skills and impressive paperwork” and as being “a thorough thinker, technically brilliant and a purveyor of sound advice”. It was also said that he “always does a first-class job: he runs cases in a calm, efficient manner and is fully engaged with the litigation process”, that he “offers a strong mix of technical brilliance and practical advice, and is equally outstanding on his feet and on paper” and that “his advocacy style is fantastic”.

Michael obtained a first class degree in chemistry and a doctorate in biochemistry from the University of Oxford and was called to the Bar in 1991. Between 2003 and 2008 he was Standing Counsel to the Comptroller General of Patents, Designs and Trade Marks and in 2008 he was named Chambers & Partners’ Intellectual Property Junior of the Year. Michael took silk in 2009. He is a co-author of the 4th edition of Laddie, Prescott and Vitoria’s Modern Law of Copyright and Designs, published in 2011.

Trade Marks and Passing Off

Michael has appeared in a string of significant trade mark cases in the Court of Justice of the European Union, including Céline (business names), Dyson (what constitutes a sign) Nestlé (acquired distinctiveness), Linde (shape marks), Libertel (colour marks), LTJ Diffusion (identity of marks), Davidoff v Gofkid and Adidas v Fitnessworld (Article 5(2)). Michael has also had a number of successes in the UK courts, including Roche v Kent in the Court of Appeal (parallel imports) and numerous parallel imports / anti-counterfeiting cases for Microsoft.

Céline v Céline [2007] ETMR 80 (ECJ)

Appeared for UK Government on reference concerning conflicts between registered marks and business names.

Dyson v Registrar of Trade Marks [2007] RPC 27 (ECJ)

Appeared for Registrar on reference from the High Court (see below), judgment concerned whether “clear bin” of vacuum cleaner is a “sign” within the meaning of Art. 2 of the Directive.

Roche v Kent [2007] ETMR 27 (Court of Appeal), [2006] ETMR 81 (Lewison J)

Successful application for summary judgment, upheld on appeal, in a parallel imports case where the defence rested on the application of the CE mark to the goods.

Morton’s of Chicago v Mortons the Restaurant & Mortons Club (2006)

Attempt by owner of CTM to prevent operation of club in existence since mid 1970s. Defence and claim for invalidity based on earlier right. Claimant conceded defeat and consented to relief sought shortly before trial.

Elizabeth Emanuel [2006] ETMR 56 (ECJ)

Drafted the UK Government’s submissions on reference addressing the question of whether a trade mark consisting of the name of an individual becomes deceptive once that individual ceases to be involved in the design or creation of goods to which the mark is applied.

Nestlé v Mars [2006] FSR 2 (ECJ)

Appeared for UK Government on reference relating to Nestlé’s application to register ‘Have a break’, raising the question of whether a sign could acquire distinctiveness through use as part of a larger sign.

Praktiker Bau- und Heimwerkermärkte [2005] ETMR 88 (ECJ)

Appeared on behalf of the UK Government on a reference establishing the registrability of marks for retail services and concerning the degree of specificity required in an application for registration of such services.

Lowden Trade Mark [2005] RPC 18 (Patten J)

Appeared on behalf of the Registrar intervening on an appeal considering discretion under rule 31 of the Trade Marks Rules.

Gillette v LA-Laboratories [2005] FSR 37 (ECJ)

Drafted UK Government’s submissions on a reference concerning the scope of Article 6(1)(c) of the Directive (use in relation to spare parts, accessories etc.).

Erpo v. OHIM [2005] ETMR 58 (ECJ)

Appeared for the UK Government in reference relating to registrability of slogans.

Adidas v Fitnessworld [2004] FSR 21 (ECJ)

Appeared for the UK Government in a case concerning whether, following Davidoff v Gofkid, member states have an option to provide only the protection expressly set out in Article 5(2); it also
considered how similarity of marks is to be assessed for the purposes of Article 5(2).

Dyson v Registrar of Trade Marks [2003] RPC 47 (Patten J)

Appeared on behalf of the Registrar on an appeal by Dyson against the Registry’s refusal to register a sign consisting of a transparent dust collection bin for vacuum cleaners. This case was referred to the ECJ (see above).

Linde; Winward; Rado Uhren [2003] RPC 45 (ECJ)

Appeared for the UK Government in a case raising questions concerning the registrability of shape marks.

Libertel v Benelux Merkenbureau [2004] FSR 4 (ECJ)

Appeared for the UK Government in a case raising questions concerning the registrability of single colour marks.

Davidoff v Gofkid [2003] FSR 28 (ECJ)

Appeared on behalf of the UK Government in a case raising the question of whether Article 5(2) of the Directive entitled member states to provide protection for marks with a reputation against use of signs on identical or similar goods or services.

LTJ Diffusion v Sadas Vertbaudet [2003] FSR 34 (ECJ)

Appeared on behalf of the UK Government in a case concerning the meaning of the phrase “sign which is identical with the trade mark” in Art. 5(1)(a) of the Trade Marks Directive.

Unilever v General Housewares (2000)

Passing off and trade mark infringement case concerning the use of the mark OXO on kitchen utensils and other domestic items. Settled immediately before trial.

Microsoft v Plato [1999] FSR 834

Appropriate scope of relief against trader who dealt innocently in small quantities of counterfeit software.

Microsoft v Backslash (1999)

Summary judgment application in relation to very substantial quantities of alleged counterfeit software and imported software which had been de-packaged and re-packaged. The defendants submitted to the orders sought on the second day of the hearing.

Microsoft v Computer Future [1998] ETMR 597

Summary judgment granted against trader dealing in imported software which had been de packaged, on the grounds of copyright and trade mark infringement.

 

  • What the Directories Say
  • "He is the complete package. He gets all over the detail and is really accessible." "His advocacy style is fantastic. It strikes the balance between confident and friendly, and judges respond well to the delivery"
    Chambers & Partners (Intellectual Property) 2017

    "He is technically excellent and a fine advocate."
    Legal 500 (Intellectual Property) 2017

    "An excellent advocate with super-effective court skills"
    Legal 500 (Intellectual Property) 2016

    "A formidable life sciences expert whose scientific skills win cases"
    Chambers & Partners (Intellectual Property) 2016

    "Always prepared to roll his sleeves up and get stuck into a case"
    Legal 500 (Intellectual Property) 2015

    "He offers a strong mix of technical brilliance and practical advice, and is equally outstanding on his feet and on paper" " A very clear and effective advocate, who is calm and thoughtful"
    Chambers & Partners (Intellectual Property) 2015