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Practice Summary

Geoffrey Hobbs QC is an advocate and advisor specialising in intellectual property law and related aspects of competition and commercial law. Winner of the IP/IT Silk of The Year 2012 Award at the Chambers Bar Awards, he is recommended as a Leading Silk by both Chambers UK (IP) and The Legal 500 (IP, Information Technology and Media, Entertainment & Sport).  He is the senior Appointed Person hearing Appeals from the UK Registrar of Trade Marks under s76 Trade Marks Act 1994.  He has acted as Arbitrator in both ICC and LCIA proceedings.

Comments in Chambers & Partners and Legal 500:

An exceptionally talented IP litigator, particularly highly thought of for his work in trade mark disputes. His recent activity includes advising on judicial reviews, online advertising and multi-jurisdictional infringement claims. He also practises in patent cases and has experience acting for pharmaceutical companies in matters arising from the marketing of 'skinny label' products.
"... There is nothing he doesn't know about trade marks. He is the man for a case where points of law are unsettled, particularly if there is a digital slant to it." "A strong lateral thinker." 
(Chambers & Partners 2019, Intellectual Property )

‘He is a master advocate on points of black letter law and EU interpretation.’  (Legal 500 2018, Intellectual Property)

At the very summit of excellence and experience with regard to trade mark law. He is a lawyer with a keen eye for strategy and a truly original mind, who is often the first port of call for solicitors who have complex and potentially market-changing brands disputes. "Fluent, urbane and charming with clients." (Chambers & Partners 2016, Intellectual Property)

An experienced IP practitioner who is regularly instructed in trade mark issues which overlap with media and entertainment matters. He was recently involved in the highly publicised case of Rihanna v Topshop. "He is one of the best trade mark lawyers in England. Allied to that he's an overall brilliant lawyer and forceful advocate." (Chambers & Partners 2016, Media & Entertainment)

A walking legal lexicon on trade mark law; he knows the law inside out and upside down.’ (Legal 500 2015, Intellectual Property)

Variously lauded for his “stellar” and “encyclopaedic” knowledge of trade mark law, and also its application to the internet. He is particularly sought after for representation before the higher courts. “Provides strategically focused advice and has a very high technical understanding of the issues as well as outstanding advocacy skills.” “Fluent, urbane and charming with clients.” (Chamber & Partners 2015, Intellectual Property)

‘Unparalleled knowledge of trade mark case law’ (Legal 500 2014, Intellectual Property)

‘Even judges defer to his knowledge of the law.’ (Legal 500 2014, Media and Entertainment)

‘His IT practice benefits from his market-leading expertise in soft IP matters.’ (Legal 500 2014, IT and Telecoms)

Remains one of the top go-to-barristers at the IP Bar for complex trade mark and passing-off work, and has a wealth of experience and a mastery of the area that few can match. Outstanding advocacy and strategic advice are guaranteed with him, according to sources. “The absolute first choice for the most difficult trade mark cases.” “Imperious when presented with difficult facts and law” (Chambers & Partners 2014, Intellectual Property)

Hailed as ‘the trade mark guru’. (Legal 500 2013, Intellectual Property)

‘exceptionally talented’ (Legal 500 2013, Media, Entertainment and Sport)

Is variously described as being “stunning” at, and a “world authority” on, trade mark law. He is commended for being “very good with clients” and for his “fantastic all-round knowledge.” It is therefore unsurprising that he is instructed in the most prominent trade mark actions of the day. (Chambers & Partners 2013, Intellectual Property)

An expert in IP and particularly trade mark disputes. He is known for his “bullish advocacy style that really gets results.” “He always has such a clear understanding of the law, and even the judges seem to defer to him in their judgments, such is his depth of knowledge.” (Chambers & Partners 2012, Intellectual Property)

EXAMPLES OF RECENT CASES

  • intellectual property

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    • Starbucks (HK) Ltd v British Sky Broadcasting Group Plc Supreme Court [2015] UKSC 31; [2015] 1 W.L.R. 2628
      Acting for the Defendants/Respondents in proceedings concerning their NOW TV service.  The claims in passing off and trade mark infringement were dismissed in November 2012 (Arnold J): [2012] EWHC 3074 (Ch); [2013] FSR 29.  The Court of Appeal dismissed the appeal: [2013] EWCA Civ 1482.  The Supreme Court granted permission to appeal in respect of passing off but dismissed the appeal on the basis that the Claimants did not have protectable goodwill within the jurisdiction.
    • Enterprise Holdings Inc v Europcar Group UK Ltd [2015] EWHC 17 (Ch); [2015] E.T.M.R. 16
      Acting  for the Defendant in a claim for trade mark infringement and passing off concerning the use of an ‘e’ device mark.  Guy also represented Europcar at a number of contested interim hearings concerning survey evidence, disclosure and amendments ([2014] EWHC 2498 (Ch), Morgan J; [2014] EWHC 3282 (Ch), Mann J; [2014] EWHC 3169 (Ch), Morgan J). 
    • Merck KGaA v Merck Sharp & Dohme Corp Chancery Division, April 2015
      Acting for the Defendant in a claim concerning breach of a co-existence agreement and trade mark infringement arising from the use of the name Merck by both parties.  A preliminary issue was ordered by Nugee J in February 2014 ([2014] EWHC 428 (Ch)), and heard in October 2014 ([2014] EWHC 3920 (Ch)).  The trial was heard in April 2015. [2016] EWHC 49 (Pat)
    • Acting for Marks and Spencer plc in Interflora Inc v. Marks and Spencer plc in an action for trade mark infringement relating to keyword advertising. An Order for reference to the European Court of Justice was made [2009] RPC 22 and [2010] EWHC 925 (Ch) which resulted in a Judgment of the CJEU in Case C-323/09 Interflora Inc v. Marks and Spencer plc [2012] FSR 3.   The trial of the action took place in April 2013 resulting in a number of Judgments: [2013] EWHC 936 (Ch) (admissibility of evidence); [2013] FSR 33 (main judgment on liability); [2013] EWHC 1484 (Ch) (costs); [2014] F.S.R. 2 (additional judgment on liability and injunctions) [2013] EWHC 1683 (Ch), [2014] FSR 3 (injunctions, stay of proceedings). The Court of Appeal delivered judgment on the Appeal in November 2014 [2014] EWCA Civ 1448 (Interflora (CA III)) and subsequently on the Form of Order [2014] EWCA Civ 1448. The Court of Appeal allowed the appeal and ordered a re-trial. 
    • SAS Institute Inc. v. World Programming Ltd [2013] EWCA Civ 1482
      Acting for the Claimant in a claim concerning its SAS analytical software. The Claimant alleged that the Defendant had infringed its copyright and acted in breach of contract in developing its WPS software. The appeal was heard and dismissed by the Court of Appeal in November 2013: [2013] EWCA Civ 1482. 
    • Oracle America v M-Tech Ltd [2012] UKSC 27; [2012] 1 W.L.R. 2026;
      Acting for the Claimant/Appellant in its appeal to the Supreme Court seeking summary judgment for trade mark infringement as a result of the Defendant’s parallel importation of computer hardware.   The Supreme Court rejected the Defendant’s so-called “Euro-Defences”. 
    • Acamar Films Ltd v. Microsoft Corp (2012)
      Acting for Microsoft in a High Court trade mark infringement action and associated UK and European trade mark registry proceedings. Dispute with Acamar who owned registered trade mark rights in the word BING arising out of a series of childrens’ books featuring a character called BING. Acamar sued following Microsoft’s launch and provision of internet search engine services under and by reference to the mark BING.
      Trial started on 3rd October 2012 before Arnold J but settled shortly after the determination in Microsoft’s favour of an application on the first day of trial – reported at [2012] EWHC 2682 (Pat).