James Martin

James Martin

James Martin

Partner

What they say

"I have known and worked closely with James for the past ten years dealing with complex multi-jurisdictional IP matters. His attention to and grasp of the detail is extraordinary as is his drive to achieve a commercially successful outcome on behalf of his clients."

Pravin Anand, Managing Partner, Anand & Anand (India)

James has a broad practice area advising clients in all aspects of intellectual property including trade marks, designs, copyright, patents, confidential information (trade secrets) and domain name disputes and has considerable experience of brand protection programmes for multi-national companies. He is a regular writer and speaker on IP law contributing articles for Intellectual Property Magazine amongst others. 

James works closely with leading IP professionals around the world and has a wide experience of coordinating international parallel IP proceedings in multiple jurisdictions.  In particular James has extensive knowledge of the Indian commercial and legal landscape and regularly assists UK and European businesses entering India in their commercial and intellectual property matters, as well as Indian businesses investing in and protecting their intellectual property in the UK.

Notable cases

Confidential Information cases

  • Vestergaard Frandsen A/S & Ors v Bestnet Europe Ltd & Ors [reported at all instances]. James acted, for over ten years, for Vestergaard Frandsen, the world’s largest disease control textiles company and manufacturer of long lasting insecticidal mosquito nets in the global fight against malaria, in one of the biggest and now leading misuse of confidential information (trade secrets) claims ever litigated in the UK. This also involved co-ordinating the global litigation and working closely with and supervising overseas counsel in France and India (and earlier related litigation in Denmark and Switzerland). 

    In the UK this involved successfully defending a strike-out application by the Defendants in the High Court in 2007. Succeeding at trial in 2009 & being awarded indemnity costs. Succeeding at appeal in 2011 with only a minor reversal in favour of the Defendants which was also heard on appeal to the Supreme Court in 2013.  Obtaining a temporary freezing injunction against the Defendants when they sought to transfer their trading business out of the jurisdiction. Successfully resisting a strike-out of parts of the inquiry as to damages at first instance in 2012 and on appeal in 2013. Obtaining a favourable judgment at the inquiry as to damages in 2014 with quantum appealed to the Court of Appeal in 2016.

Trade Mark cases

  • Philips v Remington (No.1) – Court of Appeal (following ECJ Judgment) 
  • Koninklijke Philips Electronics NV v (1) Remington Consumer Products Ltd (2) Rayovac Europe Ltd – High Court [2005] FSR 17 & Court of Appeal [2006] 29(4) IPD 29029 - all related to the validity and infringement of a shape mark representing the head of a three-headed rotary shaver
  • Gerber v Gerber – Court of Appeal ([2003] RPC 34) - Revocation proceedings for non-use (under 1938 Trade Marks Act)
  • Miguel Torres v Cantine Mezzacorona S.C.A.R.L. – High Court & Court of Appeal ([2004] RPC 26) - registration of marks / prior rights
  • Acted for Morton’s Club Limited the licensors of Morton’s club in Berkeley Square, London defending trade mark infringement proceedings and seeking a declaration of invalidity of a European CTM for MORTON’S held by the claimant Morton’s of Chicago, Inc.
  • Acted for UK home furnishing retailer Dwell to obtain an interim injunction against House of Fraser

Patent cases

  • Menashe v William Hill – High Court ([2002] 3 All ER 597, [2002] RPC 47) & Court of Appeal ([2003] 1 WLR 1462, [2003] RPC 31) - regarding the interpretation of the putting into effect of an invention within a jurisdiction when component parts of the invention (computer servers / terminals etc.) were located in different jurisdictions around the world
  • Blue Gentian LLC and another v Tristar products (UK) Ltd and another - [2014] All ER (D) 16 (Jan) & Court of Appeal  [2015] EWCA Civ 746, [2015] All ER (D) 231 (Jul -  Successfully resisted interim injunction proceedings and acted in a patent infringement action and appeal concerning an expandable garden hose
  • Assisted a major UK company to defend an employee inventor s.40 Patents Act claim before the IPO (successful settlement achieved)
  • Assisted a manufacturing company to defend UK patent infringement proceedings brought against it by a competitor with further threats of global litigation (successful settlement achieved obtaining a global licence under the patent and a waiver for past damages)

Design Right cases

  • Helmet Integrated Systems Ltd v Tunnard & (Ors) [2006] FSR 41 (Patents County Court) & [2007] IRLR 126 (Court of Appeal) - successfully defended unregistered design right infringement proceedings (and ancillary employment contract/fiduciary claims) relating to the design of a firefighter’s helmet developed by a former employee of the claimant and successfully resisted a partial appeal by the Claimant with regard to the employment contract/fiduciary aspects of the case. The appeal was dismissed in which the Court of Appeal dealt with the ownership of employee created inventions in the context of fiduciary duties

Copyright cases

  • Performing Right Society Ltd v B4U Network (Europe) Ltd [2013] FSR 19 & Court of Appeal [2013] EWCA Civ 1236, [2014] Bus LR 207, (2013) Times, 25 October, [2013] All ER (D) 28 (Nov) - acted for the Indian Bollywood broadcaster, B4U Network (Europe) Ltd, in defending a substantial copyright infringement claim brought by the Performing Right Society
  • Acted for Elvis Presley Enterprises in obtaining a freezing injunction, interim and permanent injunctions and a search and seizure order in respect of infringing copies of Elvis Presley’s final concerts
  • Successfully struck out a copyright infringement claim brought against FIFA in respect of goal line technology
  • Advised a multi-national technology company on cloud computing infringement liability issues

James' memberships and professional societies

  • Intellectual Property Lawyers Association (IPLA)
  • The Intellectual Property Lawyers Organistation (TIPLO)
  • International Trademark Association (INTA)
  • International Bar Association (IBA)

 

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