SIMON MALYNICZ

Simon Malynicz QCprintPDF

Called to the Bar 1997
Took Silk in 2016

Practice Areas

His practice covers trade marks, passing off, designs, copyright, IT/computer software, media/entertainment, confidential information and patents. He also handles commercial cases with an intellectual property element.

He was appointed to the Attorney General's A Panel of Counsel on 1st March 2014 and was previously on the Attorney-General's B Panel of Counsel from 2008 to 2013.

He appears regularly before all the relevant tribunals including the High Court, Court of Appeal, Patents Court, Patents County Court, and UK Intellectual Property Office.

He has extensive experience of the Court of Justice of the European Union (CJEU) and General Court (GC) in Luxembourg. To date he has acted in more than 20 references to the CJEU, covering diverse areas of IP such as:

• Copyright (Football Dataco, SAS Institute, UPC Telekabel Wien, VG Wort, Copydan, Promusicae, AGEDI, LSG, SGAE, FA Premier League

 • Trade marks, (Kit Kat, Specsavers v Asda, IP Translator, Interflora v M&S, Budweiser, Intel, L’Oreal, Adam Opel, Arsenal, Bovemij, UDV, DHL Express)

 • Registered designs (FEIA)

 • Supplementary protection certificates (Actavis, AHP Manufacturing)

  • The Biotech Directive (Monsanto Technology).

 

He has also acted in more than 50 cases before the General Court on trade mark appeals from OHIM. In several of these he has represented clients on further appeal to the CJEU (Environmental Manufacturing, Clorox, Hrbek, Cadila)

ReCENT cases INCLUDE:
Trade mark/passing off

• Kit Kat (Shape) – hearing before the CJEU on a reference concerning acquired distinctiveness and technical function

Interflora v M&S (2013-2015) High Court trial, various appeals to the Court of Appeal and reference to the CJEU concerning Google AdWords infringement, survey evidence.

Enterprise v Europcar (2015) High Court trial concerning car rental logo trade marks, scope of injunction

Total v YouView (2014) High Court trial concerning distinctiveness, infringement, bad faith, legal certainty of trade marks

Woolley v UP Global Sourcing – High Court trial (account of profits) re passing off

Lush v Amazon – High Court trial for trade mark infringement arising out of the appearance of Amazon’s product listings

Nestle v Cadbury (Colour Purple) (2012-13) High Court and Court of Appeal concerning registrability of Cadbury’s colour mark.

Zee Entertainment v Zeebox (2014)– Court of Appeal case concerning surveys in passing off

Comic Enterprises v Fox (The Glee case) –(2014/2015) High Court trial and Court of Appeal case concerning trade mark infringement arising out of the title of the US TV series

Healey Sports Cars v Jensen – High Court appeal concerning use of the JENSEN trade mark for cars

Specsavers v Asda – acted for UK government before the CJEU in a reference from the national court concerning scope of infringement of trade mark

Chartered Institute of Patent Attorneys (IP Translator) [2012] -acting for the UK government in CJEU reference before the Grand Chamber concerning class headings

Budejovicky Budvar v Budweiser [2012] acting for Czech brewer before the Court of Appeal and in the reference to the CJEU

Woolley v Ultimate [2012] trial and appeal before the Court of Appeal in a passing off case concerning watches

BDO v Banco De Oro [2013] trial concerning trade mark BDO for financial services, own name defence


Copyright

Copydan [2015]- CJEU reference on private copying. 

• UPC Telekabel Wien [2014] CJEU reference on injunctions against ISPs in copyright cases

VG Wort [2013] – CJEU reference on fair compensation

SAS Institute [2012]- reference to the CJEU on copyright in computer programs. 

Football Dataco v. Yahoo [2012]- CJEU reference on database right and authors own intellectual creation standard.

Football Association Premier League ­– copyright in football broadcasts, reference to the CJEU and appeal to Court of Appeal

NLA v. Meltwater [2010]– Copyright Tribunal and High Court proceedings concerning copyright infringement by online news aggregators. Acted in strike out proceedings.

Deakin v. Cardrax [2011] - two week trial before the PCC concerning copyright in greeting cards and joint tortfeasorship.

SGAE [2010], AGEDI [2008], LSG [2008] and Promusicae [2007], all references to the ECJ concerning various copyright directives.

PPL v. Attorney-General [2008] Francovich damages case against the government involving copyright exceptions and the Rental Rights Directive.


Patent

MMI v. CellXion [2010-2012] – Two High Court trials and two Court of Appeal hearings re patent for mobile telephone interception equipment

Actavis [2013] CJEU reference on SPCs

Unilever v SC Johnson [2012] PCC trial on shower head technology

Universal Engraving v Falctontec [2012] PCC case involving magnetic technology.

EPO Case G3/08 (Patentability of computer software.)[2010] Acted for the UK.

Monsanto Technology [2010] – reference to the CJEU on the Biotech Directive, acted for the UK.

AHP Manufacturing [2009] a reference to the CJEU concerning supplementary protection certificates, acted for the UK.


Designs

Skruf Snus [2015] appeal to the General Court from OHIM concerning RCD for a  snuff box design

Kohler Mira v. Triton [2010] Community registered design and UKUDR in bathroom products. Interlocutory hearings in Patents Court, with trial due in 2011.

Care Monitoring v. Burrell [2009], a five day Community design right and UKUDR trial in the PCC concerning patient monitoring devices.

Fundacion Espanola para la Innovacion de la Artesania (‘FEIA’) [2008] the first reference to the CJEU on the Community Designs Regulation, acted for UK.

Oakley v. Animal [2006], Court of Appeal – case concerning the UK’s implementation of the Designs Directive.

Information Technology

IT cases include Artificial Solutions v. Creative Virtual [2008] a five day trial before Arnold J and Mass Information Systems v. RBS, acting for RBS in a contractual dispute with an IT supplier.

FOI work includes acting for the Department of Work and Pensions in DWP v. Collingbourne [2010] a two day “trial” (hearing with cross-examination) before the First Tier (Information Rights) concerning trade secrets and the public interest.



Complete list of reported cases to date

 Enterprise v Europcar (trial judgment) [2015] F.S.R. 22, High Court

Nazneen Investments v OHIM [2015] ETMR 1, GC

Copydan Bandkopi v Nokia [2015] ECDR 9, CJEU

Interflora v M&S III (trial appeal) [2015] FSR 10, Court of Appeal

Total  v YouView (High Court trial) [2015] FSR 7, High Court

Interflora v M&S (interim injunction) [2015] FSR 13, High Court

Indian Motorcyle v Indian Motorcycle [2015] RPC 15, Appointed Person

The Hut.com v OHIM [2015] ETMR 9, GC

Enterprise v Europcar (survey evidence) [2014] ETMR 50, High Court

Woolley v UP Global Sourcing [2014] F.S.R. 37, High Court

Cosmetic Warriors v Amazon [2014] F.S.R. 31, High Court

Comic Enterprises v  Fox [2014] F.S.R. 35, High Court

Galileo International Tech v OHIM [2014] ETMR 59, GC

Healey Sports Cars v Jensen [2014] E.T.M.R. 18, High Court

Beyond Retro v OHIM [2014] ETMR 54, GC

UPC Telekabel v Constantin [2014] ECDR 12, CJEU

Adelphoi Ltd v DC Comics [2014] ECC 11, Appointed Person

Elliott v LRC Products [2014] RPC 13, Appointed Person

Zee Entertainment v Zeebox (Court of Appeal) [2014] F.S.R. 26, Court of Appeal

Zee Entertainment v Zeebox (High Court application) [2014] F.S.R. 26, High Court

Nestlé v Cadbury (Kit Kat Shape) [2014] F.S.R. 28, High Court

Specsavers v Asda (CJEU reference) [2013] E.T.M.R. 46; [2014] F.S.R. 4, CJEU

Nestle v Cadbury (Colour Purple) [2013] EWCA Civ 1174; [2014] R.P.C. 7, Court of Appeal

Interflora v M&S II (Survey Appeal II) [2013] EWCA Civ 319; [2013] FSR 2, Court of Appeal

Interflora v M&S I [2013] FSR 26, [2013] FSR 21, Court of Appeal

Nestle v Cadbury (Colour Purple) [2013] ETMR 2, High Court

VG Wort [2013] ECDR 13, CJEU

Awareness Ltd v Plymouth City Council [2013] RPC 34, Appointed Person

Environmental Manufacturing v OHIM [2013] [2013] ETMR 54, GC

Stichting BDO v BDO Unibank [2013] FSR 35, High Court

Meemi v Wardrobe [2013] ECC 18, High Court

YouView v Total [2013] ECC 17, High Court

Budejovicky Budvar v Budweiser [2013] RPC 12, Court of Appeal

Syngenta v Chemsource [2013] FSR 11, High Court

Football Dataco v Yahoo [2013] FSR 1, CJEU

Chartered Institute of Patent Attorneys (IP Translator) [2013] RPC 11, CJEU (Grand Chamber)

Fruit of the Loom v OHIM [2012] ETMR 44, GC

Interflora v M&S (survey evidence) [2012] FSR 32, High Court

SAS Institute [2012] RPC 31, CJEU

Comic Enterprises v Fox [2012] FSR 30, PCC

Football Association Premier League [2012] FSR 12, Court of Appeal

• Tilda Riceland (Basmali) [2012] ETMR 15, GC

Advanced Permiter Systems [2012] RPC 15, Appointed Person

Cadbury’s Trade Mark Application [2012] RPC 18, IPO

Budejovicky Budvar v Budweiser [2012] RPC 11, CJEU

Chalk v OHIM [2012] ETMR 23, GC

Ineos Healthcare v OHIM [2011] ETMR 24, GC

Galileo v European Union [2011] ETMR 22, High Court

Diageo v. ICB (“Vodkat”) [2011] RPC 2, Court of Appeal

Pasticceria e Confetteria Sant Ambroeus Srl v G&D Restaurant Associates Ltd (“St Ambroeus”) [2010] RPC 28, Appointed Person

Budejovicky Budvar Narodni Podnik v Anheuser-Busch Inc [2010] RPC 7, Court of Appeal

Diageo v. ICB (“Vodkat”) [2010] RPC 12, High Court.

AHP Manufacturing BV v Bureau voor de Industriele Eigendom (C-482/07) [2010] FSR 23, CJEU

Fundacion Espanola para la Innovacion de la Artesania (FEIA) v Cul de Sac Espacio Creativo SL (C-32/08) [2010] RPC 13, CJEU

•  L'Oreal SA v Bellure NV (C-487/07) [2010] RPC 1, CJEU

• Lastminute.com v OHIM [2010] ETMR 35, GC

Interflora Inc v Marks & Spencer Plc, [2009] RPC 22, High Court

Honda Europe v OHIM [2009] ETMR 34, GC

Intel v CPM United Kingdom [2009] ETMR 13, CJEU

Promusicae [2008] 2 C.M.L.R. 17, CJEU (Grand Chamber)

MMI Research Ltd v. Cellxion Ltd [2008] F.S.R. 23, High Court

Melly's Trade Mark Application; Oppositions of Fianna Fail and Fine Gael [2008] E.T.M.R. 42, Appointed Person

Adam Opel AG v. Autec AG [2007] E.T.M.R. 33, CJEU

Bovemij Verzekeringen NV v. Benelux-Merkenbureau [2007] E.T.M.R. 29, CJEU

Miss World Ltd v. Channel Four Television Corp [2007] F.S.R. 30, High Court

Valent Biosciences Trade Mark [2007] R.P.C. 34, IPO

Efax Ltd's Trade Mark Application [2007] R.P.C. 26, IPO

Tesco Stores Ltd v. Elogicom Ltd [2007] F.S.R. 4, High Court

VITASOY International Holdings Ltd v. The Sunrider Corp (VITALITE Trade Mark) [2007] R.P.C. 29, High Court

Oakley Inc v. Animal Ltd [2006] R.P.C. 9, Court of Appeal

Julius Samann v. Tetrosyl [2006] E.T.M.R. 75, High Court

Ajit Newspaper Inc's Trade Mark [2006] R.P.C. 25, Appointed Person

• Smirnova v. Smirnoff [2006] R.P.C. 16, IPO

Bongrain (Cheese Shape) Trade Mark Application [2005] R.P.C. 14, Court of Appeal

LOWDEN Trade Mark [2005] R.P.C. 18, High Court

KML Invest AB's Trade Mark Application [2004] RPC 47, Appointed Person

Arsenal Football Club v. Reed (No. 2) [2003] ETMR 36, High Court

Arsenal Football Club v. Reed [2003] RPC 9, CJEU

Adidas-Salomon AG v Microhaven Ltd [2003] ETMR 94, High Court

Minsterstone Ltd v. Be Modern Ltd [2002] FSR 53, PCC

FIRETRACE Trade Mark [2002] RPC 15, IPO

Pearce v. Ove Arup Partnership Ltd [2002] ECDR, High Court

Arsenal Football Club v. Reed (No.1) [2001] RPC 46, High Court

Premier Luggage & Bags Ltd v. Premier Co (UK) Ltd [2001] FSR 29 [2001] ETMR 6, Court of Appeal

BT v. Nextcall [2000] FSR 679, [2000] ETMR 943, High Court.

BT v. Nextcall [2000] FSR 679, [2000] ETMR 943, High Court.

 

Chambers UK 2015 & 2014

 

Awarded IP Junior Barrister of the Year 2014 at the Chambers Bar Awards

 

Ranked in Band 1 among leading juniors for Intellectual Property:

 

“Without doubt one of the most accomplished barristers for trade mark disputes, and someone who has recently been instructed to act against silks. He is also one of the most experienced ECJ advocates with respect to trade mark and copyright cases” (2015)

 

“…has appeared in some of the most critical cases of the past year” and that he 'gets straight to the heart of commercial issues and provides the kind of creative advice that clients love." "Marked out for great things" he handles a variety of matters, but is particularly well regarded for his trade mark practice where he show himself to be "keen and hungry for good work." (2014)

 

Also ranked as a leading junior in Media & Entertainment:

 

“Has broad expertise pertaining to the media industry, and is notably adept at handling cases with IP components” (2015)

 

Legal 500 2015 & 2014

 

Ranked in top rank of leading juniors in Intellectual Property:

 

“The best trade mark senior junior at the Bar - no one knows more about the case law” (2015)

 

"…authoritative, tenacious and user-friendly" and “an encyclopedic knowledge of trade mark law” (2014)

 

Also ranked as a leading junior for Media and Entertainment work:

 

“Client friendly, very clever and a good advocate” (2015) and "practical and commercial" (2014)


Education
B.A. (Sydney), M.A. (New School, NY) LLB (Lond.)

Career

• Appointed to Attorney General's A Panel of Counsel on 1st March 2014

Attorney-General's B Panel of Counsel from 2008 to 2013

Joined Three New Square in February 2011

Joined Hogarth Chambers from Clifford Chance in 1999.