Iona Berkeley

CALL: 1999
Iona Berkeley has an excellent reputation as a leading Senior Junior in Intellectual Property matters.

She specialises in every aspect of IP, including trade marks, passing off, patents, copyrights, designs, confidential information, and associated areas such as IP related international arbitrations, contractual disputes and media and entertainment. She is a co-author of Kerly’s law of Trade Marks (16th and 15th  Ed) and Laddie, Prescott and Vitoria, The Modern Law of Copyright(5th and 4th Ed).

  • Experience

    Trade marks & Brands

    • 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.

    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).

    Copyright & Databases

    • 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.
    • 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.
    • 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 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).
    • 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).
    • 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.

    Media, Sport & Entertainment

    • 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
    • MA Biological Sciences, Trinity College, Oxford University (2:1) (1994-1997)
    • 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
  • Hobbies & interests

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

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