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Recommended by both Chambers UK and L500 as a leading junior, Guy Hollingworth specialises in intellectual property law with particular experience in matters concerning trade marks and passing off. His practice encompasses both contentious and non-contentious work and he regularly appears in the High Court, Court of Appeal, the UK IPO and has twice appeared in the Supreme Court. Guy is also a CEDR accredited mediator.
Guy has a BSc in Industrial Design with a 1st Class Honours from Brunel and his technical expertise includes issues concerning electronics, mechanics, computer programming, neural networks, ergonomics and material sciences.
Comments in Chambers & Partners and Legal 500:
A popular junior among instructing solicitors for his composure, polished courtroom presentation and first-rate knowledge of trade mark matters. He regularly handles infringement and opposition claims, with additional expertise in copyright and design rights disputes. He is also experienced at handling cases concerning contentious licensing agreements. He possesses additional expertise in database right claims.
"He is proactive and very client-friendly – he knows what they want and is not overly legalistic." "Good at reacting to changing circumstances and is prepared to put in a lot of heavy lifting to make sure the case runs smoothly." (Chambers & Partners 2019, Intellectual Property)
‘He is very approachable, bright and pragmatic with a calm and forensic court room approach.’ (Legal 500 2018, Intellectual Property)
One of the most respected and sought-after juniors at the IP Bar. His practice concentrates mainly on trade marks, copyright, breach of confidential information and designs. "He is very good with clients, extremely bright and highly capable, but he doesn't make you feel like you're stupid in comparison." "He is strategically astute, easy to work with, has in-depth knowledge of the case and fully understands the client's aspirations." (Chambers & Partners 2016, Intellectual Property)
‘He is a super-smart, incisive and a very good advocate.’ (Legal 500 2015, Intellectual Property)
Has a wide-ranging IP practice, and concentrates mainly on copyright, trade marks, passing off, data base rights and designs. He is also noted for his understanding of issues adjacent to IP, such as regulatory and competition law. “He combines clear, focused and practical trade mark advice with a friendly and approachable attitude. He consistently delivers work well ahead of deadlines and is impressive on his feet.” (Chambers & Partners 2015, Intellectual Property)
‘He consistently delivers work ahead of deadlines and is impressive on his feet.’ (Legal 500 2014, Intellectual Property)
Has been rated for several years as one of the top soft IP juniors at the Bar, and has particular strength in trade mark matters. Sources comment on his excellent manner with clients and his pragmatism. “He combines a clear, focused and practical approach with a friendly and approachable attitude. He is impressive on his feet.” (Chambers & Partners 2014, Intellectual Property)
Leading junior, ‘hardworking and effective’ (Legal 500 2013, Intellectual Property)
Is someone solicitors “always feel comfortable putting in front of clients,” and is widely admired as a “fantastic trade mark expert who is insightful and very hard-working.” His caseload and client base are spread across an enviable swathe of business sectors, from media through software to retail and pharmaceuticals. (Chambers & Partners 2013, Intellectual Property)
EXAMPLES OF RECENT CASES
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Intellectual property including breach of confidence, copyright, passing off, trade marks, service marks, license agreements, patents, malicious falsehood, misleading advertising, design right
- Merck KGaA v Merck Sharp & Dohme Corp  EWHC 49 (Pat);  EWCA Civ 1834
Acting as junior counsel 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 ( EWHC 428 (Ch)), and heard in October 2014 ( EWHC 3920 (Ch)). In its Judgment delivered in November 2017  EWCA Civ 1834, the Court of Appeal remitted various issues for rehearing at first instance. The retrial was heard in June 2018 and judgment is awaited.
- Starbucks (HK) Ltd v British Sky Broadcasting Group Plc Supreme Court  UKSC 31;  1 W.L.R. 2628
Acting as junior counsel for the successful 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):  EWHC 3074 (Ch);  FSR 29. The Court of Appeal dismissed the appeal:  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  EWHC 17 (Ch);  E.T.M.R. 16
Acting as junior counsel 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 ( EWHC 2498 (Ch), Morgan J;  EWHC 3282 (Ch), Mann J;  EWHC 3169 (Ch), Morgan J).
- SAS Institute Inc. v. World Programming Ltd  EWHC Civ 1482
Acting as junior counsel 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 trial was heard in July 2010 (ArnoldJ)  EWHC 1829 (ch);  RPC 1 and concluded in early 2013 after a number of questions were referred to the Court of Justice of the EU:  EWHC 69 (ch);  PRC 17. The appeal was heard and dismissed by the Court of Appeal in November 2013;  EWCS Civ 1482
- Seven Arts Entertainment Ltd v Content Media Corp Plc Chancery Division  EWHC 588 (Ch)
Acting for the First Defendant in a claim of infringement of copyright and distribution rights in five motion pictures. The case concerned disputes over the ownership of the international rights to the films, against the background of previous litigation in other jurisdictions. The Claimants’ application for summary judgment based upon a Canadian judgment was dismissed in February 2013 by Sales J.
- Smithkline Beecham Ltd & Glaxo Group v GSKine Ltd & Lloyd Hamilton  EWHC 169 (Ch)
Acting for the Claimant in its claim for trade mark infringement and passing off. Summary Judgment was granted against the Defendants where, in the absence of any explanation, the inference was that their company name had been chosen to refer to the Claimant group of companies.
- Oracle America v M-Tech Ltd  UKSC 27;  1 W.L.R. 2026;
Acting as junior counsel for the successful 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
- Football Dataco Ltd & ors v Stan James & ors  EWHC 1414 (Ch)
Acting for the Stan James Defendants at hearings to determine how a number of parallel claims for infringement of database right would be dealt with, pending references to the Court of Justice and undertakings by other defendants to be bound by the outcomes in other proceedings.
- Och-Ziff Management Europe Limited & ors v OCH Capital LLP & ors  EWHC 2599 (Ch);  FSR 11
Acting for the Claimants at trial in their successful claim for trade mark infringement and passing off against OCH Capital LLP and its director.
- esure Insurance Ltd v. Direct Line plc  RPC 5;  RPC 6;  EWCA Civ 842
Acting as junior counsel for Direct Line before the TMR, High Court and Court of Appeal in their opposition to esure's application to register a mouse on wheels, relying upon rights in Direct Line's telephone on wheels.
- World Wide Fund for Nature & Anr v. World Wrestling Federation Entertainment Inc  FSR 38;  1 WLR 445
Acting as junior counsel, including advising and appearing in connection with a damages inquiry before the High Court and subsequently before the Court of Appeal. Also appeared in the Court of Appeal in a breach of injunction/contempt of court appeal  FSR 10.
- Anglia Autoflow Ltd v. Wrightfield Ltd (Patents County Court, 2008)
Acting for the claimant in the trial of an action for infringement of copyright in software.
- Glaxo Group Ltd v Dowelhurst Ltd  EWCA Civ 290;  E.T.M.R. 104
Acting for the Claimants in a claim for trade mark infringement in respect of parallel importation of pharmaceutical products.
- Appearing in the UK IPO, both at first instance hearings and in appeals to the Appointed Person. Recent appeals include: O-004-18 Business Insider (as to whether one Appointed Person may appear before another); L&D SA's ‘Magic Tree’ Registration (April 2015); Thompson Hotels LLC Trade Mark Application (October 2014); Euro Car Parts Ltd v Renault SAS (February 2014); MIP Metro Group Intellectual Property GmbH & Co KG v Hackett Ltd (May 2013); Unite Group Plc v Unite the Union (May 2013)  R.P.C. 14
- Advising and appearing (in both the High Court and Trade Marks Registry) for easyGroup IP Licensing Limited in relation to the protection of their 'easy' brand, including 'easy.com' Easynet Group Plc v Easygroup IP Licensing Ltd  EWHC 1872 (Pat);  R.P.C. 6; and 'easyTelecom' (O/073/06). Guy was junior counsel in easyGroup's dispute with Orange concerning use of the colour orange in relation to mobile telephone communications.
- Advising and acting in a range of proceedings in the Community Trade Marks Office (OHIM) and on appeal to the Court of First Instance/General Court.
- Acting for Pepsi in their dispute in the Trade Marks Registry with Coca-Cola in relation to Coca Cola's application to register 'IPSEI'.
- Acting in a trade mark infringement action concerning use of the sign 'BOTOX' in the slogan ‘Better than Botox?’.
- Advising and acting in proceedings for infringement of unregistered UK and Community design rights.
- Obtaining interim injunctions on behalf of cosmetics, electronics, pharmaceutical and motor companies to prevent parallel importation of their products.
- Acting for Applicants and Respondents in a wide range of interim applications, including interim injunctions, Search Orders and Norwich Pharmacal Orders.
- Acting and advising in applications for contempt of Court/enforcement of judgments.
- Advising and acting for Nokia in a range of matters concerning counterfeit mobile phones and accessories.
- Advice, both written and in conference, in a wide range of intellectual property matters, including: parallel importation; validity and infringement of trade marks (including colour marks); domain name and company name disputes; issues of ownership and infringement of copyright; data protection; database rights and design right; licence agreements; secondary liability and joint tortfeasance.
IT and Telecommunications
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- Acting as junior counsel in a trial in the Technology and Construction Court in a contractual IT case concerning the provision of fibre optic capacity.
- Advisory work in commercial and IT disputes, including contracts for the provision of telecommunications services and breach of warranty claims in a share sale agreement.
- Advising in connection with intellectual property issues arising in IT matters, including copyright in software programmes and infringement of trade marks in invisible computer code (such as metatags and advertising keywords).
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Recommended by both Chambers UK and L500, Guy Hollingworth has recent experience relevant to 'ambush marketing' and the London Olympics Association right created by Schedule 4 LOGAPGA 2006. Guy routinely advises and acts in claims concerning branding and advertising in which issues of liability as a result of association with a brand owner (cf. paras 1(1) and 2 Schedule 4), defences including honest use of own name or other legitimate indications or prior rights (cf paras 1(2)(b), 6 and 7 Schedule 4) and exhaustion of rights (cf para 9 Schedule 4) arise
- Och-Ziff Management Europe Ltd v. OCH Capital LLP  EWHC 2599 (Ch);  ETMR 1;  FSR 11
For Claimant, as sole counsel, in High Court TM infringement and passing off proceedings, in which C alleged confusion and association as a result of D's acts and where D sought to rely upon the 'honest use of own name' defence.
- Allergan Inc & Anr v. Klein-Becker USA, LLC & Ors
For D1&2, with Geoffrey Hobbs QC, in High Court TM infringement action concerning Ds' use of the strap-line 'Better than Botox?' and reliance upon comparative advertising defences. The trial settle shortly prior to its commencement in 2007.
- easyGroup IP Licensing Ltd
For the company in various disputes (before the High Court and IPO) in relation to the protection of their 'easy' brand and prevention of third parties seeking to benefit from any association with the 'easy family'.
- Fraser-Woodward v. BBC  EWHC 472 (Ch);  EMLR 22;  FSR 36
For Appellant, with Geoffrey Hobbs QC, before the Court of Appeal concerning issues of fair dealing and incidental inclusion in a copyright claim (cf para 8 schedule 4).
- Obtaining interim injunctions on behalf of cosmetics, electronics, pharmaceutical and motor companies to prevent parallel importation of the products, in which issues of trade mark exhaustion arose, including Glaxo Group Ltd v. Dowelhurst Ltd & Anr  ETMR 39.
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Guy is a CEDR-accredited mediator and registered member of the Civil Mediation Council. He has recently taught mediation at Cologne University and spoken at Mediation Awareness Week in London. Further information about Guy’s mediation practice can be found at: www.ipmediator.co.uk.
Brunel University - BSc (Hons) Industrial Design (1st Class)
College of Law - Post-Graduate Diploma in Law (Distinction)
College of Law - Bar Vocational Course (Very Competent)