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Tom Moody-Stuart QC

 


Year of call: 1995
Year of silk: 2016

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Tom Moody-Stuart was called to the bar in 1995. A member of Middle Temple, he was awarded a Queen Mother Fund Scholarship in 1994. He took a first class degree in Natural Sciences from Cambridge University specialising in microbiology, genetics and the history and philosophy of science and is a scholar of Gonville & Caius College.

Practice:

Tom's practice covers all aspects of Intellectual Property, Media and Entertainment and Information Technology law. He is co-author of The Encyclopaedia of United Kingdom and European Patent Law and Kerly's Law of Trade Marks and Trade Names. Comments in Chambers UK 2015 refer to a “magisterial command of trade mark and patent law, who has expertise on copyright and parallel trade issues.” and say that he “offers commercial and pragmatic advice, and has a good rapport with clients."


Example cases/Recent experience:

Tom recently represented Gilead as junior counsel in the dispute with Idenix concerning the launch of Sovaldi®, Gilead’s ground breaking hepatitis C treatment. An expedited trial brought to court in October 2014 after only 7 months, Gilead successfully invalidated the patent in suit and on grounds of insufficiency (on both classical and “plausibility” bases) and “AgrEvo” obviousness, as well as an anticipation attack which required resolution of complex chain of title issues under US law for the purposes of determining Gilead’s entitlement to priority in the prior art relied upon.The appeal was heard in the Court of Appeal in July 2016; judgment awaited.

Tom represented the Hearst Corporation and Fleischer Studios in their dispute with Avela Inc, successfully protecting the former’s merchandising and licensing trade in respect of the character Betty Boop, relying on trade mark and passing off rights rather than copyright in the character.

Tom acted for Vestergaard Frandsen in the landmark confidential information case Vestergaard Frandsen v Bestnet both in respect of the liability trial and appeals and in the recent inquiry as to damages.


Tom has acted in numerous cases concerning Norwich Pharmacal relief including RFU v Viagogo in the Supreme Court. He advises both ISPs and content providers, and is regularly consulted by film companies

Tom has appeared before the CJEU and General Court in trade mark matters.

Patents

Tom is co-author of The Encyclopaedia of United Kingdom and European Patent Law. Cases include:

Idenix v Gilead July 2016 Court of Appeal, trial July 2014

Tom represented Gilead as junior counsel in the dispute with Idenix concerning the launch of Sovaldi®, Gilead’s ground breaking hepatitis C treatment. An expedited trial brought to court in October 2014 after only 7 months, the case focussed primarily on the invalidity attack on Idenix patent on grounds of insufficiency (on both classical and “plausibility” bases) and “AgrEvo” obviousness, as well as an anticipation attack which required resolution of complex chain of title issues under US law for the purposes of determining Gilead’s entitlement to priority in the prior art relied upon.

Quadrant Holdings v Quadrant Bio Resources and Roser

Biotechnology patent concerning the storage of sensitive molecules through the use of sugar. Dispute as to consequences of Development agreement between defendant and claimant. Issues of passing off, patent validity (and infringement) and breach of contract. Junior Counsel for the defendant, responsible for all patent aspects of case.

Gore v Geox

Acted for the defendant, in respect of an unsuccessful invalidity claim by Gore and a claim for decelerations of non-infringement in respect of 2 product descriptions, on of which was granted.

Tamglass v Louyang

Patent action concerning glass bending and tempering equipment. Considerations of scope of relief, costs orders as against parties playing dormant role in litigation, availability of damages. Counsel for Defendant.

Stanelco v Bioprogress

Patent entitlement and misuse of confidential information claim. Junior counsel for claimant.

SEB v Delonghi

Patent action concerning deep fat fryers. Junior counsel for the Claimant.

CIL v Vitrashop

Patent action concerning merchandising and shelving systems. Junior counsel for Defendant. Prior use by third party relied on in counterclaim. Difficult issues of proof of prior user. Threats counterclaim.

JR Crompton Ltd v Papierfabrik Schoeller & Hoesch Gmbh & Co KG

EPO Opposition hearing, acting for the applicant, in respect of a patent application for multi-ply tea bag paper.

Auchincloss v Animal Veterinary Supplies*

Patent action concerning virucidal disinfectant for agricultural purposes. Chemical composition patent, dispute as to effect of numerical limits in claimed composition. Junior counsel for defendants. (First instance & Court of Appeal).


Horne v Reliance*

Patent action concerning thermostatic mixer valves. Junior counsel for the defendant. Issues of insufficiency and obviousness. Defendant successfully argued that the claimed invention was both obvious and insufficiently described in the patent specification.

Xylum v Gorog

Action relating to medical diagnostic patent licence agreement. Junior counsel for the Claimant. Question as to whether improvements and modifications of licensed products were invented by the first and second defendants or their daughter (also a defendant). Serious allegations of fraud and deceit made and proved against all defendants.

Boegli-Gravures SA v Darsail-ASP Ltd 

Pat Test purchases. The liability of directors. Locations to which websites are directed where no specific country is indicated. Acted for the defendants.

 

 

Trade Marks and Passing Off

Whirlpool v Kenwood*

Trade mark infringement, shape marks, article 9(1)(c) of the CTMR, counsel for the Claimant.

BskyB v Sky Home Services*

Passing off claim in respect of telemarketing. Counsel for successful Claimant.

Autopaint v Anglo-Dutch Paint & others

Acted for Defendants in passing off, trade mark infringement, breach of contract, copyright infringement, conspiracy to injure by lawful / unlawful means and intentional infliction of economic harm claim at first instance and appeal.

L’Oreal v Bellure*

Trade mark infringement, passing off and alleged unfair competition in respect of “smell alike” perfumes. Counsel for the successful Defendants. An ECJ judgement has since followed.

Electrocoin Auomatics v Coinworld*

Trade mark infringement claim in respect of symbols on slot machine reels. Junior counsel for the Claimant.

Antoni Fields v Klaus Kobec

Passing off and trade mark infringement claim. Counsel for Claimant. Scope of own name defence considered.

TeleWorks Limited v TeleWorks Group plc*

Passing off action, junior counsel for the Defendant. Claimant and Defendant involved in the supply of computer network infrastructure and sophisticated applications software respectively. Issues as to the descriptive nature of the names, lack of relevant confusion (as opposed to administrative error) and the extent of goodwill generated by a small Claimant.

Decon v Veltek*

Trade mark and CTM infringement action. Counsel for Claimant. Validity of trade mark and CTM put in issue by on grounds of non-use and (since the CTM was less than 5 years old) bad faith. Revocation of CTM successfully resisted on basis that lack of intention to use does not constitute bad faith in relation to a Community trade mark.

Artistic Upholstery and others v Art forma*

Passing off action. Counsel for claimants. Claimant a member of an unincorporated trade association. Dispute as to rights of defendant to register trade mark owned by trade association of which it was formerly a member. Issue arose as to capacity of members of an unincorporated association to sue for passing off and seek revocation of a trade mark registration. Summary judgment application.

United Biscuits v ASDA Stores*

Penguin and Puffin lookalike brands case. Passing off and trade mark infringement action. Junior counsel for United Biscuits. Issues as to validity and effect of survey evidence and the effect on a defendant in a passing off action of knowingly adopting packaging as similar as possible to that of the claimant.

Avnet v Isoact*

Early Internet domain name trade mark dispute. Counsel for the Defendant. Defendant adopted a domain name identical to the claimant’s trademark (registered for advertising services) and offered Internet portal services. Claimant alleged that the offer by the defendant to host web sites from which client could advertise their products constituted the offer of advertising services. Summary judgment application.

Beds Direct v Beds Direct Nationwide Limited

Passing off action, counsel for Defendant. Both claimant and Defendant involved in sale of beds under mark BEDS DIRECT. Defendant sold nation wide, Claimant had limited goodwill in South Wales. Descriptive nature of mark, scope of injunction.

Design Rights

Dyson v Qualtex*

One of the most important Court of Appeal authorities on design right of recent years. Manufacture of copy spare parts for vacuum cleaners. Junior counsel for the defendant

Baby Dan v Brevi*

One of the earlier design right actions. Design right in gates for preventing babies from falling down stairs. Detailed argument as to extent of must fit/must match exclusion in design right actions, in particular in relation to the interface between articles which form part of a larger article. Junior Counsel for the defendant.

Frayling Furniture Ltd v Premier Upholstery Ltd

Design right action concerning copied furniture designs. Dispute between furniture manufacturers, with the designer of the infringing designs joined as a third party. Junior counsel for the Third Party. Issues as to knowledge of copying and must fit/must match exclusion. Issues as to consequence of warrantees to be implied into licence granted to manufacturer by designer.

Additional Information

Education and Awards

1990-1993: Gonville & Caius College, Cambridge, BA (Hons) Natural Sciences Tripos (Double First)
Subjects studied: genetics, molecular cell biology, chemistry, geology, history and philosophy of science.
Scholar, Gonville & Caius College, Cambridge

1993-1994: College of Law, Store Street, London, CPE (Commendation)

1994-1995: Inns of Court School of Law, London
MiddleTemple Queen Mother’s Scholarship
 

Publications

Kerly's Law of Trade Marks and Trade Names. Co-author.

The Encyclopedia of United Kingdom and European Patent Law. Co-author.

Other

Chairman of TVI (“The Violence Initiative”), a registered charity dedicated to self help and rehabilitation of violent offenders.

Professional Memberships: Intellectual Property Bar Association, The Intellectual Property Lawyers Organisation.

 

 

Other

Confidential Information

Vestergaard Frandsen v Bestnet

Counsel for the successful Claimants in a complex trade secrets case heard over 14 days concerning the manufacture of insecticidal mosquito nets.


 Coleman v GoGas & Oakes*

Junior Counsel for the Defendant. Alleged misuse of confidential information and breach of fiduciary duties by former director of the Claimant. At trial, only the person defendant (the director) remained, the corporate defendant having entered administrative receivership. Further evidence introduced by Claimant between trial and judgment.

Inquiries as to Damages/Accounts of Profits

Pakistan TV v Asia TV

Copyright inquiry as to damages. Royalty rates and licence terms in Asian serials and films shown on pay channels in the UK and globally.

Coleman v Oakes

Accounts of profits and inquiries as to damages in breach of fiduciary duty claim. Setting up in competition while still a director of company.

Miscellaneous

BSW v Balltec *

Pre Action disclosure application concerning oil industry equipment.

Lawson & News America v Hill

Counsel for claimants. Civil action under the Protection from Harassment act 1997 relating to the sending of “flame” emails (containing death threats) and computer viruses from UK to the United States. Found to be actionable in the UK. Further relied upon the moral right not to be misidentified as the author of another’s work to prevent the defendant from impersonating the claimant in Internet chat rooms and provoking others to send viruses to the claimant.

Viskase Ltd & anr v Paul Kiefel GmbH*

Counsel for claimant. Manufacturing/supply agreement between German manufacturer and UK customer. Machines not fit for purpose stated. Issue as to whether German defendant entitled to be sued in Germany and as to the place of performance of the obligation to supply machines fit for purpose. Questions as to jurisdiction pursuant to Brussels Convention Art 5(1).

Recent Activity

» W3 Ltd v easyGroup Ltd
» Idenix Pharmaceuticals Inc. (Claimant) v (1) Gilead Sciences Iin. (2) Gilead Sciences Ltd. (3) Centre Nationale De La Recherches Scientifique (4) Universita Degli Studi Di Cagliari (5) L'UNIVERSITE MONTPELLIER II (Defendants) (2016)
» Idenix Pharmaceuticals Inc. v Gilead Sciences, Court of Appeal - Awaiting Judgment
» Novartis AG & Ors v Focus Pharmaceuticals Ltd & Ors [2015] EWHC 1068 (Pat) (27 April 2015)
» Vestergaard Frandsen A/S (now Called MVF 3Aps) v Bestnet Europe Ltd & Ors [2014] EWHC 3159 (Ch)
» 32Red v WHG

What the Directories Say

"He is very quick on the uptake, able to provide very comprehensive advice and makes great suggestions on how to proceed." "He is very good on the strategy. He's a street fighter and is good for bad-tempered squabbles."
Chambers & Partners (Intellectual Property) 2017

"He has an impressive grasp of the detail in a case"
Chambers & Partners (Information technology)) 2017

"He is very good and definitely dereved to take silk"
Chambers & Partners (Media & Entertainment) 2017

"He has exceptional technical skills and is a master strategist."
Legal 500 (Intellectual Property) 2017

"Very knowledgeable on trade mark and copyright matters"
Legal 500 (Intellectual Property) 2016

"He's impressive, has good manners and a good logical mind." "He is intelligent, charming, easy to work with and knows his stuff"
Chambers & Partners (Media & Entertainment) 2016

"He is great to work with, as he rolls his sleeves up and gets on with it. He also gets on very well with the clients"
Chambers & Partners (Information technology)) 2016

"If you can get him, he is first-rate. He's technically excellent but also very commercial" "He's really quite impressive and a thoroughly nice guy"
Chambers & Partners (Intellectual Property) 2016

"A good team player who provides sound, no-nonsense advice"
Legal 500 (Intellectual Property) 2015

"Offers commercial and pragmatic advice, and has a good rapport with clients" " He's very impressive and very enthusiastic in the way he goes about his work" 
Chambers & Partners (Media & Entertainment) 2015

" An effective, very thorough advocate who is able to grasp the main points in a case" " Very calm and considered, he is not prone to hyperbole or overstating his points and is popular with clients and judges" 
Chambers & Partners (Information technology)) 2015

" He's very bright and has an excellent hands-on style" 
Chambers & Partners (Intellectual Property) 2015

 


 

  • What the Directories Say
  • "He is very quick on the uptake, able to provide very comprehensive advice and makes great suggestions on how to proceed." "He is very good on the strategy. He's a street fighter and is good for bad-tempered squabbles."
    Chambers & Partners (Intellectual Property) 2017

    "He has an impressive grasp of the detail in a case"
    Chambers & Partners (Information technology)) 2017

    "He is very good and definitely dereved to take silk"
    Chambers & Partners (Media & Entertainment) 2017

    "He has exceptional technical skills and is a master strategist."
    Legal 500 (Intellectual Property) 2017

    "Very knowledgeable on trade mark and copyright matters"
    Legal 500 (Intellectual Property) 2016

    "He's impressive, has good manners and a good logical mind." "He is intelligent, charming, easy to work with and knows his stuff"
    Chambers & Partners (Media & Entertainment) 2016

    "He is great to work with, as he rolls his sleeves up and gets on with it. He also gets on very well with the clients"
    Chambers & Partners (Information technology)) 2016

    "If you can get him, he is first-rate. He's technically excellent but also very commercial" "He's really quite impressive and a thoroughly nice guy"
    Chambers & Partners (Intellectual Property) 2016

    "A good team player who provides sound, no-nonsense advice"
    Legal 500 (Intellectual Property) 2015

    "Offers commercial and pragmatic advice, and has a good rapport with clients" " He's very impressive and very enthusiastic in the way he goes about his work" 
    Chambers & Partners (Media & Entertainment) 2015

    " An effective, very thorough advocate who is able to grasp the main points in a case" " Very calm and considered, he is not prone to hyperbole or overstating his points and is popular with clients and judges" 
    Chambers & Partners (Information technology)) 2015

    " He's very bright and has an excellent hands-on style" 
    Chambers & Partners (Intellectual Property) 2015