Simon Malynicz QC

Called to the bar 1997 (England & Wales 1997, Ireland 2021) Took silk 2016 Silk

Practice Area

His practice covers trade marks, passing off, copyright, IT/computer software, media/entertainment, collective/certification marks, PDOs and GIs, confidential information and designs. He also handles commercial cases with an intellectual property element. He appears regularly in the High Court, Court of Appeal, and General Court of the EU, as well appearing in or advising on proceedings before the UKIPO and EUIPO.

Please note that Simon is a fully qualified member of the Bar of Ireland and is a member of the Law Library in Dublin. Thus, with full rights of audience before the Courts of an EU Member State, he continues to:

  • accept instructions to represent parties before the General Court of the European Union in trade mark appeals from the EUIPO, where he has acted in over 100 such proceedings.
  • advise clients on EU law and disputes with a pan-EU element
  • advise clients and draft documents in proceedings before the EUIPO

Notable Cases

Simon has been involved in some of the leading trade mark and copyright cases of the last decade including:

Trade mark

Sky v SkyKick – the leading case on the bad faith ground of invalidity – after a trial, a reference to the CJEU, several consequential hearings and two CA hearings, the case is now headed to the Supreme Court.

Montres Breguet v Samsung – the most recent word on “trade mark use” & the defences under the E-Commerce Directive in a trial on infringement arising out of Samsung’s smartwatch faces that resembles Swiss watch brands such as Omega, Longines and Tissot.

Halloumi – appeals before the General Court & CJEU on collective marks, certification marks and PDOs.

Nestle v Cadbury (Colour Purple) – the leading case on colour marks, acting for Nestle, invalidated Cadbury’s purple single-colour trade mark.

Cadbury v Nestle (Kit Kat shape) – CJEU and CA judgments on shape marks and acquired distinctive character

Interflora v Marks & Spencer  – acted for Interflora in trade mark infringement trial before the High Court resulting in appeals to the CA on the admissibility of survey evidence and reference to the CJEU on the question of infringement on the internet by Google ads.

Intel v CPM – the leading CJEU case on trade mark dilution

 L’Oreal v Bellure – acted for the UK government in the leading CJEU case on trade mark free-riding

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

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

Specsavers v Asda – acted for UK government before the CJEU in a reference on the issue of use of a trade mark in a variant form

CIPA (IP Translator)  –acted for the UK government in CJEU reference concerning the interpretation of the specification of goods and services, class headings and legal certainty

Budejovicky Budvar v Budweiser [2012] acting for Czech brewer before the Court of Appeal and in the reference to the CJEU that “invented” honest concurrent use” under the new Act.

 Copyright

 Kogan v Martin – the Court of Appeal applied EU originality approach to claims for joint authorship of the copyright in the script to the Meryl Streep/Hugh Grant movie Florence Foster Jenkins

SAS Software – CJEU case on copyright in software and documentation

 Promusicae – CJEU case on copyright injunctions against file-sharing on the internet

Copydan – CJEU reference on private copying.

UPC Telekabel Wien – CJEU reference on injunctions against ISPs in copyright infringement cases.

Football Dataco v. Yahoo – 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 – Copyright Tribunal and High Court proceedings concerning copyright infringement by online news aggregators. Acted in strike out proceedings.

Deakin v. Cardrax  – two week trial before the PCC concerning copyright in greeting cards and joint tortfeasorship.

SGAE, AGEDI,  LSG, all references to the ECJ concerning various copyright directives.

PPL v. Attorney-General –  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.

Key Reported Cases to Date

  • Montres Breguet SA & Ors v Samsung Electronics Co. Ltd [2022] EWHC 1127 (Ch) (20 May 2022) ([2022] EWHC 1127 (Ch); From England and Wales High Court (Chancery Division) Decisions; 355 KB)
  • Sky Ltd & Ors v Skykick, UK Ltd & Anor (Rev2) [2021] EWCA Civ 1121 (26 July 2021) ([2021] EWCA Civ 1121; From England and Wales Court of Appeal (Civil Division) Decisions; 141 KB)
  • Foundation for the Protection of the Traditional Cheese of Cyprus Named Halloumi v Babel Sajt Kft. [2020] EWHC 2858 (Ch) (30 October 2020) ([2020] EWHC 2858 (Ch); From England and Wales High Court (Chancery Division) Decisions; 114 KB)
  • Sky Ltd & Ors v Skykick UK Ltd & Anor [2020] EWHC 1735 (Ch) (02 July 2020) ([2020] EWHC 1735 (Ch), [2020] WLR(D) 424; From England and Wales High Court (Chancery Division) Decisions; 64 KB)
  • Sky Plc & Ors v Skykick UK Ltd & Anor [2020] EWHC 990 (Ch) (29 April 2020)([2020] EWHC 990 (Ch); From England and Wales High Court (Chancery Division) Decisions; 48 KB)
  • Cadbury UK Ltd v The Comptroller General of Patents Designs And Trade Marks [2018] EWCA Civ 2715 (05 December 2018) ([2018] EWCA Civ 2715; From England and Wales Court of Appeal (Civil Division) Decisions; 46 KB)
  • Sky Plc & Ors v Skykick, UK Ltd & Anor [2018] EWCA Civ 2004 (06 September 2018)([2018] EWCA Civ 2004; From England and Wales Court of Appeal (Civil Division) Decisions; 32 KB)
  • Sky Plc & Ors v Skykick UK Ltd & Anor [2018] EWHC 943 (Ch) (27 April 2018) ([2018] EWHC 943 (Ch), [2018] RPC 12; From England and Wales High Court (Chancery Division) Decisions; 25 KB)
  • Sky Plc & Ors v Skykick UK Ltd & Anor [2018] EWHC 155 (Ch) (06 February 2018) ([2018] ETMR 23, [2018] EWHC 155 (Ch), [2018] RPC 5; From England and Wales High Court (Chancery Division) Decisions; 403 KB)
  • Sky Plc & Ors v Skykick UK Ltd & Anor [2017] EWHC 1769 (Ch) (13 July 2017)([2017] EWHC 1769 (Ch); From England and Wales High Court (Chancery Division) Decisions; 40 KB)
  • Societe Des Produits Nestle SA v Cadbury UK Ltd [2017] EWCA Civ 358 (17 May 2017)([2017] Bus LR 1832, [2017] EWCA Civ 358, [2017] FSR 34, [2017] WLR(D) 331; From England and Wales Court of Appeal (Civil Division) Decisions; 106 KB)
  • Cadbury UK Ltd v The Comptroller General of Patents Designs And Trade Marks [2016] EWHC 1609 (Ch) (07 July 2016) ([2016] Bus LR 872, [2016] EWHC 1609 (Ch), [2016] WLR(D) 373; From England and Wales High Court (Chancery Division) Decisions; 12 KB) ([2016] EWHC 796 (Ch); From England and Wales High Court (Chancery Division) Decisions; 33 KB)
  • Cadbury UK Ltd v The Comptroller General of Patents Designs and Trade Marks [2016] EWHC 796 (Ch) (18 April 2016)
  • Société Des Produits Nestlé SA v Cadbury UK Ltd [2016] EWHC 50 (Ch) (20 January 2016)  ([2016] Bus LR 354, [2016] EWHC 50 (Ch), [2016] WLR(D) 23; From England and Wales High Court (Chancery Division) Decisions; 56 KB
  • 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.

Education

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

Career Highlights

  • 2022 – Nominated for QC of the year (IP/media) – Legal 500 awards
  • 2021 – Qualified – Bar of Ireland & Membership of the Law Library, Dublin.
  • 2020 – Winner of QC of the year (IP/media) – Legal 500 awards
  • 2020 – Winner of Senior Counsel of the year (IP) Managing IP awards
  • 2016 – Appointed Queen’s Counsel
  • 2014 – 2016 Appointed A Panel of Attorney-General’s Counsel
  • 2014 – Winner IP/IT Junior of the Year, Chambers Bar Awards

‘ Simon is an innovative and dynamic silk. He is an absolute fountain of knowledge on trade mark law, and is excellent on his feet. ’

Legal 500 2022

“He is tactically astute, collaborative and an encyclopedia of trade mark law.”

Chambers & Partners 2022

“He is right at the top of the tree when it comes to brands. He does brilliant work and is tactically really good.”

Chambers & Partners 2022
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“He is the go-to for trade mark cases and he is also bright and affable.”

Chambers & Partners 2022

Simon Malynicz QC is one of the most highly regarded silks for contentious trade mark matters, including infringement claims and opposition proceedings. He is esteemed for his practical and tactically-minded counsel, and is experienced in CJEU and Court of Appeal cases.

Chambers & Partners 2022

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)

Chambers UK 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)

Legal 500 2015 & 2014