Fiona Clark

CALL: 1982
Fiona Clark is a very experienced senior junior with extensive legal knowledge, highly rated advocacy skills, good legal instincts and sound common sense.

Fiona’s practice covers all aspects of intellectual property law, but she has a particular interest in trade marks and designs. She has extensive experience of branding, comparative advertising and media and entertainment disputes and often acts in design cases with significant technical content. Fiona is also the Editor of specialist law reports and Editor and/or co-author of various practitioner textbooks.

  • Experience

    Patents & SPCs

    • Virgin Atlantic Airways Ltd v. Jet Airways (India) Ltd [2013] EWCA 1713 and [2012] EWHC 2153: acted for the Comptroller in an infringement action and appeal from the IPO raising issues of both patent and constitutional law as well as human rights issues.
    • Knight v. Her Majesty’s Comptroller-General of Patents, Trade Marks and Designs[2007] EWHC 2264: acted for the Comptroller in judicial review proceedings concerning compliance with the PCT.
    • Department for Education and Skills v. Frontline Technology Ltd [2004] EWHC 1487: revocation proceedings relating to wireless attendance registers involving allegations of anticipation, obviousness and prior user.
    • Fraser v Oystertec Plc [2003] EWHC 2787 (Pat): ownership dispute relating to radiator fittings raising, inter alia, issues of the validity of patent assignments and breach of fiduciary duty.

    Copyright & databases

    • Sweeney (Trustee of Estate of James Joyce) v Macmillan Publishers Limited[2002] R.P.C. 35: Proceedings for Infringement of copyright and passing off brought in relation to an edition of Ulysses published without the consent of Joyce’s Estate raising issues concerning, inter alia, of revived copyright and substantiality.
    • Norowzian v. Arks (No.1) (Ch D) [1998] F.S.R. 394:  application to strike out allegations of infringement of film (as opposed to dramatic work) copyright made in relation to an advertisement for a well-known Irish stout.

    Trade marks & brands

    • PULSE MINDSET BL O/322/18: Appeal to the Appointed Person in opposition proceedings in which it was alleged that the hearing officer had mischaracterised the mark applied for, that there was no proper foundation for the finding of similarity of services and it was argued that the applicant’s right to a fair trial had been infringed
    • PAWSECCO BL O/311/18: Opposition to an application to register in relation to edible pet treats based on the well-known PDO PROSECCO raising issues as to the scope of protection afforded by such protection. (Appeal proceedings are ongoing.)
    • JOYSLEEP BL O/009/17 and O/257/17: Appeal to the Appointed Person in opposition proceedings under s. 5(4) raising issues in relation to ownership and proof of goodwill in the retail furniture sector.
    • THATCHER JOE BL O/010/17: Opposition by well-known vlogger in relation to an application for registration in class 25 (clothing) raising issues in relation to both the nature of goodwill and proving it.
    • Sofaworkshop Ltd v Sofa Works Ltd[2015] EWHC 1773 (IPEC): CTM infringement and passing off proceedings concerning the name of retail outlets selling sofas and other furniture and raising issues of non-use of CTMs, descriptive names and likelihood of confusion (particularly in internet searches.
    • OCN LONDON BL O/271/15: A series of invalidity applications in relation to marks used in the adult education sector and raising issues of ownership of goodwill, common origin, concurrent use, estoppel and consent.
    • C-294/12 and T-369/10 You-Q BV v OHIMEU:C:2013:300 and EU:T:2012:177: opposition appeals under art. 8(5) concerning an application to register the mark BEATLE (for goods including wheelchairs) and based on the earlier mark THE BEATLES.
    • C-106/11P Helena Rubinstein SNC v. Allergan Inc[2012] ETMR 40: appeal to the CJEU in cancellation proceedings relating to the Community trade marks BOTOLIST and BOTOCYL based upon the earlier mark BOTOX under art. 8(5).
    • Plentyoffish Media Inc v. Plenty More LLP [2011] EWHC 2568: invalidation proceedings based on alleged UK goodwill in a dating website situated abroad.

    Design rights

    • Pendle Metalwares Ltd v Walter Page (Safeways) Ltd [2014] EWHC 1140 & [2014] EWHC 1144: infringement action relating to various designs of outdoor cigarette boxes raising issues of originality, subsistence (esp. must fit) and copying.
    • Oakley Inc. v. Animal Ltd [2005] EWCA 1191: action for infringement of registered designs relating to sunglasses raising issues as to the validity of the Registered Designs Regulations 2001 and the law applicable when assessing the validity of designs registered or applied for prior to the coming into force of those Regulations.
  • Education & awards
    • M.A. (Cantab.)
    • Trinity College, Cambridge, Law (1981)
  • Professional memberships
    • Chancery Bar Association
    • Intellectual Property Bar Association
    • Associate Member of CITMA
  • Languages

    French and German (Conversational)

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