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Tom Moody-Stuart QC

 


Year of call: 1995
Year of silk: 2016

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.

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.

  • 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