Geoffrey Hobbs KC
Barrister
Call 1977 Silk 1991
Geoffrey Hobbs KC 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.
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Examples of Recent Cases
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Intellectual Property
- Edwards Lifesciences LLC v Boston Scientific Scimed Inc [2018] EWHC 1256 (Pat)
The court determined the terms of a final injunction restraining the use of transcatheter aortic valves which infringed a European patent where, for a small cohort of patients with aortic stenosis, the valve was the only suitable device. The injunction was stayed for 12 months to allow those clinicians who were used to implanting the valve to be re-trained to use another device, and made subject to a permanent exception in respect of those patients for whom only that valve was suitable, although the patentee would be permitted to terminate the exception if, before the patent's expiry, a device became available which was both non-infringing and suitable for all such patients. [2018] EWHC 1256 (Pat) Ch D (Patents Ct) (Arnold J) 24/05/2018 References: LTL 24/5/2018: [2018] FSR 31: [2018] 5 WLUK 459
- Fujifilm Kyowa Kirin Biologics Co v Abbvie Biotechnology Ltd [2017] EWCA Civ 1
Instucted on behalf of Abbvie in the Court of Appeal where the scope of declaratory relief available to biosimilar manufacturers seeking to "clear the way" was in issue: specifically in question was whether Arrow declarations are permissible in respect of pending divisional EP applications. - Merck KGaA v Merck Sharp & Dohme Corp [2016] EWHC 49 (Pat); [2017] EWCA Civ 1834
Acting for the Defendants 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 took place in April 2015. [2016] EWHC 49 (Pat). The Court of Appeal subsequently set aside the Order made at trial and remitted specified matters for retrial. The retrial took place in July 2018. Judgment awaited. - 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. The appeal was subsequently 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). - 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 in respect of the Defendant’s parallel importation of computer hardware. The Supreme Court allowed the Appeal and rejected the Defendant’s “Euro-Defences”.
- Edwards Lifesciences LLC v Boston Scientific Scimed Inc [2018] EWHC 1256 (Pat)
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What the Directories Say
"Geoffrey Hobbs KC is top of the tree for UK trade mark disputes." (Chambers and Partners 2024: Star Individual)
"He is well respected and well known. He is a trade mark icon and expert." (Chambers and Partners 2024: Star Individual)
‘Geoffrey is a doyen of the IP Bar with particular strength in trade marks and copyright. He is a gifted advocate who holds the attention of the court, in particular at the appellate level, where much of his work is done.’ (Legal 500 2024: Tier 1)
‘Still one of the very best IP silks at the Bar, especially in the field of trade marks and copyright. Incredibly knowledgeable, and always thinking about the case and how to drive home the key points.’ (Legal 500 2023: Tier 1)
"Geoffrey is generally considered to be the best trade mark person there is" (Chambers and Partners 2023: Star Individual)
"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." (Chambers and Partners 2022: Star Individual)
"The leading trade mark silk in the country. In action, he has great knowledge and is forceful and persuasive." "He is the barrister to bring in on the most challenging cases. He is an incredible cross-examiner." "He is absolutely brilliant on soft IP work. He is an amazing advocate and is particularly good in the appellate courts." (Chambers and Partners 2022: Star Individual)
"Geoffrey is an icon in the world of IP and in particular has an encyclopedic knowledge of trade marks." "He is a phenomenally clever person who thinks creatively and has a broad way of looking at complex legal issues." "He is really good at simplifying everything and reducing it to the absolute bare essentials, and then walking you through it. He inspires enormous confidence." Star Individual. (Chambers and Partners 2021)
‘A standout silk and a titan of trade mark work and every European nuance of it.’ (Legal 500 Ranked: Tier 1)
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.
"He is a superbly clever and wonderful advocate." "He is erudite as well as being able to master the big picture." (Chambers & Partners 2020, Intellectual Property)
"... 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)