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Iona Berkeley

CALL: 1999 (England & Wales 1999, Ireland 2021*)
Iona Berkeley
Iona Berkeley has an excellent reputation as a leading Senior Junior in Intellectual Property matters.

The legal directories comment that: “Iona is always supremely well prepared and instils great confidence in clients, courts and tribunals.” (Legal 500 2023). The directories further describe her as  “extremely bright, thoughtful, thorough and practical” (Legal 500 2024) and that Iona is “..an excellent advocate who has the respect of opponents and the bench” (Chambers & Partners 2018); and as having “..a brilliant mind and a wonderful manner with clients. She is enthusiastic and proactive and recognises issues quickly.” (Chambers & Partners 2021).  Further, Iona is described as providing “an excellent level of service and is an expert in her field.” (Chambers & Partners 2023)

Iona  particularly focusses on trade marks, passing off,  copyrights, designs, confidential information, and associated areas such as media and entertainment, IP related international arbitrations and, contractual disputes and media and entertainment. For example, Iona acted as Counsel in the major action Glaxo v Sandoz for several years which dealt with complex issues concerning trade marks and passing off, including the use of survey evidence and interlinked with medicines regulatory law and practice and involved two hearings in the Court of Appeal, a two week High Court trial and related UK IPO proceedings. Iona has been a co-author of the authoritative Kerly’s law of Trade Marks and Trade Names for many years, including the recently published 17th Edition. Iona is also a co-author of Laddie, Prescott and Vitoria, The Modern Law of Copyright (5th and 4th Ed) one of the leading practitioner texts on Copyright and related rights.

  • Experience

    Trade marks & Brands

    • Schneider Electric IT Corporation v Ikonic Technology Ltd (High Court 2022 – 2023): High Court trade mark infringement action concerning alleged parallel imports of branded uninterruptible power supplies and related goods. As well as the trade mark parallel importation issues, this case involved consideration of various disclosure and amendment issues. Case settled before trial.
    • Marriott Worldwide Corporation v Delta Air Lines, Inc. (High Court) [2023] EWHC 283 (Ch): Appeal to the High Court from the Trade Marks Registry in relation to an partially successful Application for a declaration of invalidity concerning the Trade Mark “Delta” registered for various services including “hotel services; resort lodgings.; reservations for hotel accommodations”. The Applicant was the proprietor of an Earlier Trade Mark for the Trade Mark “Delta” registered for “air transportation services”.  The Appeal considered issues concerning similarity of the said services, issues under Section 5(2)(b) and Section 5(3) and issues concerning a  previous settlement agreement. The Appeal was dismissed and the trade mark registry decision finding partial invalidity of the trade mark was upheld.
    • Waymo LLC v Wayve Technologies Limited (Appointed Person) O/730/21: Appeal to the Appointed Person in relation to the Trade Mark Application for the mark “Wayve” to be registered for inter alia “software for self-driving cars or autonomous vehicles” and “arrangement of transport”. The Appeal was brought by the trade mark owner and concerned objections under Sections 5(2)(b), 5(3) and 6 of the Trade Marks Act 1994 based on its earlier trade marks for the mark “Waymo” registered for good and services in inter alia classes 9 and 39 (in particular “computer software for vehicle navigation” and “transportation services”).
    • F5 Networks Inc. v Blizzard Entertainment Inc. (IPO) O/358/20: Trade Mark Registry Opposition in relation to the trade mark application for “F5 Overwatch” for “Software as a service (SaaS) providing computer network operators with the ability to monitor and inventory network applications” opposed by the owner of the word EU trade mark “Overwatch” for various goods and services including “computer game software” and “providing computer games that may be accessed via a global computer network” under Section 5(2)(b) of the Trade Marks Act.
    • Glaxo Wellcome UK Ltd and Anor v Sandoz Ltd and others [2019] EWHC 2545 (Ch) (High Court): Passing off by origin and equivalence, Purple colour get up, survey evidence, the issue of distinctiveness, Asthma Inhalers/pharmaceuticals, prescribing and dispensing practices and regulation of inhalers in the UK, Medical professional trade evidence, issue of intention to deceive, joint tortfeasorship.
    • Equity Cheque Capital v EUIPO (General Court) (Case T-91/18) (2019): Appeal to the General Court from EUIPO Board of Appeal concerning an Application for an EUTM for a combined figurative and word mark including the words “Diamond Card” for various kinds of financial services in Class 36. Considered issues of Distinctive character.
    • BT Telecommunications Plc v Sky UK Plc (High Court): action concerning trade mark infringement and comparative advertising of broadband services by BT and Sky. Case settled before trial.
    • Glaxo Wellcome UK Ltd (t/a Allen & Hanburys) v Sandoz Ltd [2017] EWCA Civ 335; [2016] EWHC 1537 (Court of Appeal, High Court): trade mark infringement and passing off, Colour per se trade marks, Asthma Inhalers/pharmaceuticals, trade mark declared invalid on Summary Judgment).
    • Glaxo Wellcome UK Ltd (t/a Allen & Hanburys) v Sandoz Ltd [2017] EWHC 3196 (Ch) (High Court): passing off, Asthma Inhalers/pharmaceuticals, application for permission to adduce survey evidence.
    • Speciality European Pharma Ltd v (1) Doncaster Pharmaceuticals Group Ltd & (2) Madaus GmbH [2015] EWCA Civ 54; [2013] EWHC 3624 (Ch) (Court of Appeal, High Court): pharmaceutical parallel importation/trade mark infringement case concerning trospium chloride pharmaceutical products and the necessity to rebrand.
    • Glaxo Wellcome UK Ltd (t/a Allen & Hanburys) v Sandoz Ltd [2017] EWCA Civ 227; [2016] EWHC 2743 (Ch) (Court of Appeal, High Court): asthma Inhalers/pharmaceuticals, Passing off, Joint tortfeasorship, Joinder of possible defendants.
    • Whirlpool Corp v Kenwood [2009] EWCA Civ 753; [2008] EWHC 1930 (Ch) (Court of Appeal, High Court): 3D trade mark infringement and passing off. The case concerned Kitchen Aid and Kenwood food mixers.
    • Ferrero SPA v Campbell Soup Company (IPO) O/127/11: Trade Mark registry Opposition in relation to the trade mark Application for “TIM TAM” for biscuits and confectionery opposed by the owner of the word mark “TIC TAC” for pocket confectionery.
    • Bambino Mio Ltd v Cazitex [2008] EWHC 2796 (Ch) & [2009] EWCA Civ 922(High Court, Court of Appeal) trade mark infringement case concerning nappies. It was alleged that the UK trade mark ‘Bambino Mio’ was infringed by “Bambineo”. Action dismissed.

    Copyright & Databases

    • Genius Sports Technology Ltd and ors v Soft Construct (Malta) Ltd and ors (High Court 2021 – 2023). Database rights infringement case concerning databases and live match sports data. Case settled before trial.
    • Peloton Interactive Inc v Echelon Fitness LLC (High Court 2020-2022). Copyright Infringement and Trade mark infringement claim. the copyright infringement claim concerned issues concerning the Graphic User Interface artistic works used in the parties’ Fitness equipment. Case settled before trial.
    •  Football Association Premier League Ltd (High Court): various cases concerning the communication to the public and broadcasting of Premier League football matches and the infringement of copyright by those defendants supplying services to enable the screening of, and those defendants screening, these matches without the appropriate licences.
    • Coward v Phaestos Ltd [2013] EWHC 1292 (Ch): copyright infringement and ownership issues – the case concerned automated hedge fund software.
    • FanFan Music Liechti & Cie v (1) Divorce Productions Ltd and (2) Merchant Ivory  Ltd (High Court): a music copyright infringement action concerning the film ‘Le Divorce’. The action settled before trial.
    • PRS for Music v Amplefuture (High Court): a dispute concerning the royalties payable in relation to the supply of mobile phone ringtones. Case settled before trial.
    • FAPL Ltd v Panini [2003] EWCA Civ 995 (Court of Appeal): copyright infringement case concerning football player sticker albums and the defence of incidental inclusion.

    Design Rights

    • DKH Retail Ltd v Sports Direct Ltd and others (IPEC): a community registered design action. Case concerning Superdry Jackets and allegations of community registered design infringement (the case settled before trial).
    • DKH Retail Ltd v H Young Operations Ltd [2014] EWHC 4034 (IPEC): this case concerned UK and Community unregistered design rights in clothing (a gilet) for a major fashion brand (Superdry).
    • Lacoste SA v Integrix (High Court): a design right infringement action concerning shoe designs (the actions settled shortly before trial).

    Trade Secrets & Confidentiality

    • Adelphi Masterfil ltd v Potihpar  and Filing and Capping machines Ltd (High Court): action for breach of settlement agreement and alleged misuse of technical design drawings. The action concerned filling and capping machines for the product of consumer products such as shampoo bottles.
    • EPI Environmental Technologies Inc v Symphony Plastics  Plc [2006] EWCA Civ 3; [2004] EWHC 2945 (Court of Appeal, High Court): action for breach of confidence, breach of contract and passing off.  The action concerned degradable plastic technology.

    Patents & SPCs

    • Kingspan Insulation Ltd v Xtratherm Ltd (High Court): patent infringement and invalidity action concerning insulating building materials. The case settled shortly before trial.
    • Kohler Mira v Norcros and Triton (High Court): patent infringement and invalidity action concerning electric showers. The case settled shortly before trial.
    • Statoil ASA v University of Southampton BL O/268/05 (High Court, IPO): patent entitlement dispute regarding a patent concerned with electromagnetic mapping for oil exploration.
    • Trespaphan UK v Polinas Plastics (High Court): patent infringement action relating to packing films. The case settled shortly before trial.
    • Kirin Amgen Inc v Roche Diagnostics and TKT (High Court): patent case concerning recombinant DNA technology and the protein Erythropoietin).

    Media, Sport & Entertainment

    • Genius Sports Technology Ltd and ors v Soft Construct (Malta) Ltd and ors (High Court 2021-2023). Database rights infringement case concerning databases and live match sports data. Case settled before trial.
    • BT Telecommunications Plc v Sky UK Plc (High Court): action concerning trade mark infringement and comparative advertising of broadband services by BT and Sky. Case settled before trial.
    • Football Association Premier League Ltd (High Court): various cases concerning the communication to the public and broadcasting of Premier League football matches and the infringement of copyright by those defendants supplying services to enable the screening of, and those defendants screening, these matches without the appropriate licences.
    • FanFan Music Liechti & Cie v (1) Divorce Productions Ltd and (2) Merchant Ivory  Ltd (High Court): a music copyright infringement action concerning the film ‘Le Divorce’. The action settled before trial.
    • PRS for Music v Amplefuture (High Court): a dispute concerning the royalties payable in relation to the supply of mobile phone ringtones. Case settled before trial.

    Arbitration & Mediation

    • Major International Ad Hoc Arbitration – Major international Ad Hoc Arbitration with hearings in Singapore. The dispute concerned an international trade mark co-existence agreement and its interpretation.
    • Major ICC International Arbitration – Major ICC arbitration in respect of an international trade mark licensing dispute. Hearings in London.
    • Major ICC International Arbitration concerning international trade mark licence, with hearings on both liability and quantum in Paris.
    • Iona has represented numerous clients at mediations.
  • Education & awards
    • BA Biological Sciences, Trinity College, Oxford University (2:1) (1994-1997) MA (Oxon)
    • CPE Diploma in Law (with Commendation) City University (1997-1998)
    • Inns of Court School of Law, Bar Vocational Course (Very Competent) (1998-1999)
    • Diplock Scholarship, Middle Temple (1997)
    • Queen Mother Scholarship, Middle Temple (1998)
  • Professional memberships
    • Member of Middle Temple
    • Member of Intellectual Property Bar Association
    • Member of the Chancery Bar Association
  • Irish qualifications

    Iona has been called to the Irish Bar, but is not presently on the Roll of Practising Barristers; straightforward administrative steps would need to be taken before she can accept instructions as an Irish barrister.  Please contact one of the clerks to discuss how we may assist on European work.

  • Hobbies & interests

    Music, Art, Books, Gardens and the Natural World.

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