Daniel Selmi

Called to the bar 2013 Junior

BIOGRAPHY

Daniel is recognised as a “Rising Star” and “Recommended Lawyer” Ranked: Tier 1 for Intellectual Property Law in The Legal 500 2021. He is also ranked in Chambers and Partners 2021 as an “Up and Coming” junior for Intellectual Property Law. He practices in all areas of intellectual property law, including patents, trade marks, passing off, copyright, registered designs and design rights and confidential information and commercial disputes involving the same. Daniel is a contributing author to Terrell on the Law of Patents (19th edition, 2020), the leading practitioner textbook on UK patent law.

A selection of cases that Daniel has been instructed on can be found below and on his downloadable CV (current as of July 2021).

Prior to coming to the Bar, Daniel completed an undergraduate Masters degree in Molecular and Cellular Biochemistry at the University of Oxford, achieving a Distinction in the preliminary examinations and graduating with 1st class (Hons) in 2005. He was the only life scientist accepted onto the Life Sciences Interface Doctoral Training Centre (LSI DTC) programme at the University of Oxford, which provided comprehensive postgraduate training in mathematical, physical, computational and engineering science techniques. As a result of this breadth, he is able to grasp all areas of science and technology. Daniel subsequently undertook a DPhil (PhD) in Condensed Matter Physics (bionanotechnology) at Oxford titled “DNA Lattices and Protein Arrays: Novel Approaches to Biological Structure Determination”, which was awarded in 2010. His DPhil thesis was examined as “exceptional for a PhD student” and “timely, thought-provoking, and ground-breaking”. He subsequently continued his research at postdoctoral level and was elected a Fellow of St Cross College, Oxford University.

During his subsequent legal training, Daniel obtained the top merit-based scholarship for both the law conversion (GDL) and Bar training (BPTC) years from Lincoln’s Inn. During his GDL year, he won the prestigious ESU-Essex Court Chambers National Mooting Competition and went on to represent the UK (and win) the 13th Commonwealth Mooting Competition, where he was named the best individual mooter in the Commonwealth final.

EDUCATION AND TRAINING

2013-2014: 12-month pupillage at Three New Square, to Tom Hinchliffe, Tom Mitcheson, Simon Malynicz and Geoff Pritchard, covering all aspects of Intellectual Property law
2012-2013: Bar Professional Training Course, City University
Awards: Lord Mansfield Scholarship (top BPTC scholarship); Shelford Pupillage Scholarship
Mooting: Winner (UK team) & Best Individual Mooter, 13th Commonwealth Mooting Competition, Cape Town, South Africa (Awarded the Commonwealth Shield, 2013)
2011-2012: Graduate Diploma in Law, Oxford Brookes University (Distinction)
Awards: Hardwicke Entrance Award; Lord Bowen Scholarship (top GDL scholarship)
Mooting: Winner of the ESU-Essex Court Chambers National Mooting Competition (Awarded the Silver Mace, 2012); Winner of the Oxford Inter-Varsity Moot (2012)
2009-2011: St Cross College, Oxford University, Junior Research Fellow
Awards: BBSRC Postdoctoral Research Fellowship (postdoctoral award – research grant ranked 1st/~150 overall)
2006-2009: St Hugh’s College, Oxford University, DPhil in Condensed Matter Physics (Bionanotechnology): “DNA Lattices and Protein Arrays – Novel Approaches to Biological Structure Determination”
Awards: EPSRC Doctoral Prize Fellowship (postdoctoral award – top 10% of PhD students)
2005-2006: St Hugh’s College, Oxford University, Life Sciences Interface Doctoral Training Centre (transitioned from the Life-Sciences into the Mathematical, Physical & Computational Sciences)
Awards: EPSRC Graduate Studentship (PhD scholarship)
2001-2005: St Hugh’s College, Oxford University, MBiochem (Hons) degree in Molecular and Cellular Biochemistry (Distinction, 1st Class)
Awards: Mary Lunt Scholarship (undergraduate scholarship at St Hugh’s college); Book Prize (Outstanding academic performance in Finals); Fulford Scholarship (top graduate scholarship at St Hugh’s college)

SECONDMENT EXPERIENCE

Daniel chose to spend nearly one and a half years on secondment at three leading solicitors’ firms, in order to gain experience working on both sides of the litigation team (which he thoroughly enjoys). As a result, he understands the demands that solicitors face and is responsive and able to work accordingly. In addition, he gained in-depth patent experience in the fields of life sciences, engineering/physics and telecommunications, principally:

TCT Mobile Europe SAS v. Telefonaktiebolaget LM Ericsson (2014-2015) (Infringement and validity of 3 patents (highest technical rating of 5) concerning speech coding technology for mobile telecommunications)
Wobben Properties GmbH v. Siemens [2015] EWHC 2114 (Pat) (1-week trial of a patent action concerning a method of operating a wind power station)
• Warner-Lambert Company LLC v. Teva UK Ltd. (2015) (Patent action concerning pregabalin dispensing practices)
Celltrion v. Biogen & Others (2015) (3-patent action concerning rituximab dosage regimes)
Teva v. Astra Zeneca (2017) (Multi-jurisdictional 3-patent action concerning Fulvestrant)
• TQ Delta LLC v. ZyXEL [2017] EWHC 3305 (Pat) (2-patent action concerning ADSL2/2+, VDSL2 technology)

CASE EXPERIENCE

Daniel has been instructed on a number of high-profile cases, as set out below:

PATENTS

• UK IPO revocation proceedings in respect of EP 2 664 149 (Withdrawn following the CMC, which included a contested security for costs application)
• EPO opposition to EP 2 156 751 (2020-2021) (Novel Sweetener Having Sugar-Like Taste And Production Method And Use Of The Same)
• Alcon v. Aspire & Actavis [2021] EWHC 1026 (Pat); [2021] EWHC 1881 (Pat) (Junior counsel in a 1-week trial of two actions relating to fluprostenol isopropyl ester for treating glaucoma and ocular hypertension)
• EPO opposition to EP 2 793 618 (2019) (Beverage Comprising Steviol Glycosides). Appeal pending at the EPO.
Resman AS v. Tracerco Ltd. (HP-2017-000073) (Junior counsel in a 1-week trial concerning the infringement and validity of a patent for reservoir monitoring. Settled shortly before trial in February 2019)
• TQ Delta LLC v. ZyXEL [2017] EWHC 3305 (Pat) (Junior counsel in a 2-patent action concerning ADSL2/2+, VDSL2 technology)
• Align Technology, Inc. v. ClearCorrect (HP-2017-00007) (Junior counsel in a 2-week trial concerning the infringement and validity of 4 patents relating to orthodontic appliances. Settled shortly before trial in March 2019)
Napp Pharmaceutical Holdings Ltd. v. Dr Reddy’s Ltd. & Sandoz Ltd. [2016] EWHC 1517 (Pat); [2016] EWCA Civ 1053 (Instructed in several pre-trial hearings in a 2-patent action concerning trans-dermal patches for pain relief)
Actavis v. Lilly [2015] EWCA Civ 555, [2015] EWCA Civ 666; [2017] UKSC 48 (Assisted in the appeal to the CoA of this seminal dispute concerning pemetrexed, which involved complex issues of foreign law as well as fundamental issues relating to the construction of patents)
• T 2154/14 (Daptomycin II/CUBIST PHARMACEUTICALS. Assisted in this appeal at the EPO relating to the use of daptomycin in treating bacterial infections)
Philips v. Nintendo [2014] EWHC 1959 (Pat), [2014] EWHC 3172 (Pat), [2014] EWHC 3177 (Pat) (Assisted with pre-trial preparation and the form of order hearing in relation to a 1-week 3-patent trial concerning Nintendo Wii consoles)
Hospira v. Genentech [2014] EWHC 1094 (Pat) (Assisted with pre-trial preparation and in a 9-day 2-patent trial concerning trastuzumab antibody purification and dosing regimens)
• Samsung v. Apple [2014] EWCA Civ 376 (Assisted in Apple’s application for an order requiring Samsung to elect between this appeal and its central amendment applications. Patents related to channel coding in mobile telecommunication systems)
• Teva v. Amgen [2013] EWHC 3711 (Pat) (Assisted in Amgen’s application to substitute one of the defendants in this patent & SPC infringement/invalidity/declaratory relief action concerning GCS-F polypetides)

TRADE MARKS / PASSING OFF / COPYRIGHT / DESIGNS

Trade Marks & Passing Off

Court work

• Christian Dior Couture S.A. v (1) Luxoptics Ltd (2) B2C18 Ltd (BL-2021-000542) (Contested Norwich Pharmacal disclosure application in relation to Christian Dior eyewear)
• Churches Fire Security Ltd & Ors v Executive Alarms Limited & Ors (IL-2021-000037) (High Court trade mark infringement / passing off action in relation to fire safety services)
• Lidl v Tesco (IL-2020-000127) (Junior Counsel in a trade mark infringement / passing off action in respect of Tesco’s Clubcard)
Puma v Nike [2021] EWHC 1438 (Ch) (High Court trade mark appeal in respect of UK IPO decision O/415/19 for the mark FOOTWARE)
Equisafety Ltd v Battle, Hayward & Bower, Ltd (IL-2020-LIV-000001) (IPEC action for trade mark infringement / passing off in relation to equine safety products)
Full Fortune Intellectual Ltd v Coobuy Ltd (IL-2020-000081) (IPEC action for passing off / copyright infringement in relation to footwear products)
Thunderbird Partners LLP v Thunderbird Group Ltd & Anor (IL-2020-000045) (High Court trade mark infringement action in respect of hedge fund services)
Apple v Mr Lee (IP-2019-000172) (IPEC action for infringement/passing off of Apple’s marks)
• Lease Comparison Limited v. Carparison Limited (IP-2019-000052) (IPEC passing off action in relation to car leasing services)
Fantex Limited v. Berendsen Healthcare & UK Ltd (IL-2019-000033) (High Court action relating to trade mark infringement/passing off of FANTEX antimicrobial hospital curtains)
• Unilever v. various (IP-2018-000174, IP-2018-000179, IP-2018-000194, IP-2019-000023) (4 separate IPEC actions relating to trade mark infringement/passing off of UNILEVER marks)
• Fidelity v. Fidelis [2018] EWHC 667 (Ch), [2018] EWHC 1097 (Pat), [2018] EWHC 2074 (Ch) (Junior counsel in a 4-day trial relating to trade mark infringement/passing off of Fidelity’s trade marks. Settled shortly before appeal in November 2019)
• TVM Management Co Ltd v. District Enforcement Ltd (IP18S00077) (IPEC trial involving copyright infringement and passing off of mooring maps and journey calculators. Settled several days before trial in September 2019)
Breitling v. Moshe & Ors (IP18S00025) (IPEC trial in relation to trade mark infringement of Breitling’s marks; unreported)
• Prefabricated Access Suppliers v Circle Safety Training Ltd (IP-2017-000214) (IPEC trial involving trade mark infringement / passing off of various marks for mobile scaffolding towers. Settled the week before trial in October 2019)
HBI Europe Gmbh v. MMS Wholesale Ltd. (IP-2017-000184) (IPEC trial relating to trade mark infringement/passing off of HBI’s RAW trade marks for rolling trays. Settled the week before trial in December 2018)
• Pho Holdings Limited v. Pho Street Limited (HC-2017-00070) (High Court passing off action in relation to Vietnamese restaurants)
Pizza Express v One Delivery Limited (IP16S00008) (IPEC trademark/copyright infringement/passing off action in respect of Pizza Express’s marks)
Enterprise v. Europcar [2014] EWHC 2498 (Ch), [2015] EWHC 17 (Ch), [2015] EWHC 300 (Ch) (Assisted with pre-trial preparation including Enterprise’s application to adduce survey evidence for a 1-week trial for trade mark infringement/passing off in relation to Enterprise ‘e’ logos. Assisted with the scope of various remedies post-judgment)
• Comic Enterprises Ltd. v. Twentieth Century Fox [2014] EWHC 185 (Ch) (Assisted with Form of order hearing following a 5-day trade mark infringement/passing off action concerning ‘Glee’ marks)
Nestlé v Cadbury [2014] EWHC 16 (Ch) on appeal from O/257/13 (Assisted with appeal from the UKIPO concerning the registrability of Kit Kat’s 3D shape and in the subsequent reference to the CJEU for a preliminary ruling)

UK Intellectual Property Office & EU Intellectual Property Office work

Daniel also has extensive experience at the UK IPO and the EU IPO and is one of the most frequently instructed barristers at the UK IPO over the past 5 years (2016-2020):

• O/247/21 (UK IPO trade mark opposition to Nairn’s POPPED OATS marks)
• R 372/2020-1 (Appeal at the EU IPO to the registration of the mark WEFIX)
• O/557/20 (UK IPO cancellation proceedings against various historic motorcycle marks)
• O/773/19 (Appeal to the Appointed Person following this opposition by Which? to “which dish”, including a security for costs application)
• O/029/20 (Appeal to the Appointed Person in relation to an opposed figurative trade mark)
• O/776/19 & O/777/19 (UK IPO parallel revocation and opposition proceedings against the trade mark ABANKA)
• O/702/19 (UK IPO cancellation proceedings against the mark DYFLEX)
• O/640/19 (Instructed at the UK IPO in one of the first, if not the first ever, extended form passing off actions in relation to services)
• O/587/19 (UK IPO opposition to the mark FRENCH DREAM)
• O/385/19, [2019] 6 WLUK 746 (Appeal to the Appointed Person concerning invalidity of CHEVRON trade marks)
• O/032/19, [2019] 1 WLUK 316 & O/056/19 (Trade mark invalidity appeal to the Appointed Person concerning the trade mark Reprolene)
• 23 241 C (EU IPO trade mark invalidity proceedings against the mark LIFE. Pending appeal to Board of Appeal)
• R 1145/2019-4 (Appeal at the EU IPO to the registration of the mark ADEPT)
• O/738/18 (UK IPO revocation proceedings against the mark TWINKLE)
• O/556/17 (UK IPO opposition proceedings to the mark MGM MUTHU HOTELS)
• O/462/17 (UK IPO opposition proceedings to the mark ROYAL CIRCUS)
• O/439/14, [2015] RPC 15 (Trade mark appeal to the Appointed Person concerning invalidity and revocation claims brought by the applicant in respect of Indian Motorcycle marks)

Copyright

Illiquidx Ltd v Altana Wealth Ltd & Anor [2021] EWHC 647 (Ch) (Junior counsel in a High Court action for breach of contract, breach of confidence and/or trade secrets and copyright infringement)
Full Fortune Intellectual Ltd v Coobuy Ltd (IL-2020-000081) (IPEC action for passing off / copyright infringement in relation to footwear products)
• Original Fabrics Ltd v JT Griffiths & Co Ltd (IP-2020-000019) (IPEC copyright infringement action in relation to fabric designs)
Voodoo v. Rollic Games & Hero Games (2020) (Junior counsel in a High Court action for copyright infringement concerning one of the most successful free-to-play video games)
Lawspeed Ltd v. Jackie Kerr Ltd (2019) (IPEC action concerning copyright in privacy notices)
Amtico International Limited v. Luxury Flooring (IP-2019-000053) (High Court action relating to copyright infringement in vinyl flooring)
• TVM Management Co Ltd v. District Enforcement Ltd (IP18S00077) (1-day IPEC trial involving copyright infringement and passing off. Settled several days before trial in September 2019)
• Goulding v Bedford (IP16S00053) (Several interim applications and IPEC damages inquiry in relation to copyright infringement/licensing of swim-wear images. The claimant sought damages in excess of £90,000 and was awarded less than £200. Unreported)
Pizza Express v. One Delivery Limited (IP16S00008) (IPEC trademark/copyright infringement/passing off action in respect of Pizza Express’s marks)
• Penyards Property Management v. Mr Graham Evans & Others (HC-2015-005122) (Junior counsel in a trademark infringement/passing off action)
• Enigma Imports (UK) Ltd v. Vina Trade (Europe) Ltd (IP-2015-00005) (Summary judgment application and 2-day IPEC trial concerning copyright and UK/C-UDR infringement in statues. Settled on the first day of trial in June 2016)
• Omnibill v. EPGSXXX Ltd [2014] EWHC 3762 (IPEC) (Assisted in several applications and in a 1-day IPEC trial concerning copyright infringement in images on adult websites)

Design Rights

Sony Interactive Entertainment Europe Ltd v Junzhi Wang (UK IPO application for invalidity asserting Sony’s Dual Shock 4 controller)
Global One-Pak Ltd v. Easy Cleaning Solution Ltd (2019) (IPEC action for infringement of Community registered designs in trigger sprays)
Target Sports Ltd v. Legend Darts Ltd (2019) (IPEC action for infringement of unregistered design rights in darts packaging)
• Enigma Imports (UK) Ltd v. Vina Trade (Europe) Ltd (IP-2015-00005) (Summary judgment application and 2-day IPEC trial concerning copyright and UK/C-UDR infringement in statues. Settled on the first day of trial in June 2016)

OTHER INTELLECTUAL PROPERTY

Confidential Information

Illiquidx Ltd v Altana Wealth Ltd & Anor [2021] EWHC 647 (Ch) (Junior counsel in a High Court action for breach of contract, breach of confidence and/or trade secrets and copyright infringement)

Damages inquiries

Fit Kitchen v Scratch Meals Ltd & Ors [2020] EWHC 2069 (IPEC damages inquiry following the trial of this action for trade mark infringement of FIT KITCHEN mark)
• Health & Case Management Limited v The Physiotherapy Network (UK) Ltd [2018] EWHC 869 (QB) & (BL-2018-002432) (Junior counsel in a 1-week damage inquiry for sui generis database infringement, including contested applications for security for costs, specific disclosure, permission to amend pleadings and strike out). Significant financial settlement in favour of client several weeks before trial in January 2020).
• Goulding v Bedford (IP16S00053) (Several interim applications and IPEC damages inquiry in relation to copyright infringement/licensing of swim-wear images. The claimant sought damages in excess of £90,000 and was awarded less than £200. Unreported)

Professional negligence

[Party A] v [Party B] (2017-2020) (Junior Counsel in a multi-million-pound professional negligence claim against a leading global intellectual property firm)

PUBLICATIONS & OTHER LEGAL INTEREST

Scientific

Publications

• Adamson R.J., Sharp T.H., Selmi D.N., Goddard A.D., Gilbert R.J.C., Turberfield, A.J. and Watts A. Probing GPCR-G-alpha interactions: A functional study by EM and SPR. European Biophysics Journal with Biophysics Letters 42 (2013) S172-S172
• Selmi D.N., Adamson R.J., Attrill H., Goddard A.D., Gilbert R.J.C., Watts A. and Turberfield A.J. (2011) DNA-templated protein arrays for single-molecule imaging. Nano Letters 11(2): 657-660
• Selmi D.N., Attrill H., Watts A., Gilbert R.J.C. and Turberfield A.J. (2011) Observation of Structural Changes on Activation of the NTS1 G-Protein-Coupled Receptor on DNA-Templated Protein Arrays by Cryo-EM. Biophysical Journal 98(3)
• Selmi D.N. and Turberfield A.J. (2009-2011) Method of Preparing Polypeptides for Cryo-Transmission Electron Microscopy (Cryo-EM) and Structure Determination Using DNA Lattices. WO 2011/012844 A1

Talks

• Invited speaker at a mini symposium on GPCR structure and function, Department of Biochemistry, Oxford University (2011)
• Invited speaker at the 50th Anniversary Symposium of the British Biophysical Society, Cambridge, UK (2010)
• Invited speaker at the Biophysical Society 54th Annual Meeting, San Francisco, California, USA (2010)
• Invited speaker at the 5th International Conference on Foundations of Nanoscience, Snowbird, USA (2008)

As a second-year undergraduate student, Daniel developed a keen interest in neuropharmacology. He proposed the notion of complex neuropsychobiological interactions between certain drugs, which rationalised a large amount of experimental data and led to publications in the Journal of Neural Transmission and Journal of Psychopharmacology, where he was attributed.

Legal

• Contributing author to Terrell on the Law of Patents (19th edition 2020), the leading practitioner textbook on UK patent law
• Daniel has been an invited speaker on intellectual property law and procedure to delegates from the Chinese Ministry of Commerce and Judges of the Supreme Court of the Republic of China. He has also been interviewed by Bloomberg Law for his trade mark expertise and has published several commentaries on legal cases
• Daniel remains active in mooting as a coach and as judge. He coached the Oxford team at the Oxford IP International Moot in 2017 to the semi-finals and was a judge in 2019. He was also a judge of the Kings College London IP Moot in 2020

PROFESSIONAL ASSOCIATION MEMBERSHIPS

• Chancery Bar Association
• IP Bar Association

PERSONAL

• Competitive Olympic weightlifter. Currently English national standard for age group and training for various Masters competitions
• Competitive powerlifting between 2007-2009 (Varsity and national, awarded two half-blues. Deadlifted 270kg at 81.2kg bodyweight. Oxford University Sportsman of the Year, 2008)
• Various martial arts

A junior barrister but one who impresses with his commerciality, combined with a depth of technical knowledge aided by his background in life sciences academia. In addition to a busy practice in UKIPO proceedings, he has taken part in a number of high-profile patent and trade mark cases before the courts.

“Very approachable, provides responsive, well thought out advice and is an impressive advocate.” “He’s got a technical background and is very good on the science. He’s also commercial, and a very good team player who is quick to roll up his sleeves.”

Chambers & Partners, 2021

Excellent knowledge of trade mark laws and provides a clear explanation of his views on the merits of cases.

Legal 500, 2021 (Rising stars) Ranked: Tier 1 and “Recommended Lawyer”

“Absolutely brilliant”…“Outclassing the competition”

Unsolicited client comments following hearings