Joshua joined Chambers as a tenant in 2022 following the successful completion of pupillage. Joshua specialises in all areas of intellectual property law including copyright, trade marks, patents, design rights, database rights and related contractual and jurisdictional issues.
Prior to commencing pupillage, Joshua was a solicitor and senior associate at an international law firm specialising in intellectual property law where he was ranked as a “rising star” (Legal 500 and Managing IP).
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Experience
Patents & SPCs
At the start of his tenancy, Joshua spent 5 months on part-time secondment to a firm of specialist patent attorneys where he was involved in patent cases concerning bispecific antibodies for the treatment of multiple myeloma, patents for the treatment of ADHD through lisdexamfetamine compounds and procedural matters relating to interim injunctive relief.
- Milenco Limited v AP Lifting Gear Company Ltd (ongoing) – acting as sole counsel for the Defendant in patent infringement proceedings concerning a levelling device for caravans and recreational vehicles.
- Alcon Eye Care UK Ltd v AMO Development LLC [2022] EWHC 955 (Pat) – assisting Michael Tappin KC and Henry Ward in a trial relating to the infringement and validity of two patents for ophthalmic surgical systems used for laser cataract surgery.
- Optis Cellular Technology v Apple Retail UK Ltd [2022] EWCA Civ 792 – assisting Tom Moody-Stuart KC and Tom Jones in responding to an appeal of Meade J’s validity findings in technical Trial B in the wider FRAND proceedings between the parties.
- Optis Cellular Technology v Apple Retail UK Ltd [2022] EWCA Civ 1411– assisting Isabel Jamal and Jennifer Dixon in preparing to respond to an appeal of the judgment of Meade J in Trial F concerning the appropriate relief to be granted in FRAND proceedings following a finding of validity, essentiality and infringement.
- IP Bridge v Huawei – assisting Mark Chacksfield KC, James Whyte and Edmund Eustace in drafting a reply statement of case concerning validity, essentiality and infringement for the purposes of Trial E in the wider FRAND proceedings between the parties.
- General Electric v Siemens – assisting Michael Tappin KC and James Whyte in drafting amendments to a Defence and Counterclaim concerning damages in lieu of an injunction in patent infringement proceedings relating to wind turbines.
Trade marks & Brands
- Match Group LLC v MuzMatch Limited [2022] EWHC 941 (IPEC) – assisting Jessie Bowhill with a pre-trial review and preparation for trial in proceedings for trade mark infringement and passing off in relation to online introduction and dating services.
- Combe International LLC v Dr August Wolf GmbH [2022] EWHC 125 (Ch) – assisting Andrew Norris KC and Ashton Chantrielle in a consequentials hearing following a finding of trade mark infringement and in applying for permission to appeal the findings relating to acquiescence.
- Montres Breguet SA v Samsung Electronics [2022] EWHC 1127 (Ch) – assisting Daniel Alexander KC and Ashton Chantrielle in a trial relating to trade mark infringement and passing off as a result of apps for smartwatch faces being uploaded by third parties to the Galaxy App store.
- John Lobb Ltd v John Lobb SAS [2022] EWHC 2306 (Ch) – assisting Huw Davies KC and Jaani Riordan in an appeal of the decision of Deputy Master Marsh in proceedings concerning the doctrine of common mistake and the alleged mistaken belief as to ownership of the beneficial title in a global trade mark portfolio.
Since commencing tenancy, Joshua has advised on and/or prepared pleadings in trade mark infringement and passing off disputes in sectors relating to horticultural products, caravans and mobile homes, alcoholic drinks, clothing, tote bags, charities, fast food restaurants, luxury restaurants, furniture, watches, gyms and activewear, car manufacturers, medical devices and vape pens. Joshua has also advised on and/or prepared applications for judgment in default in trade mark and infringement proceedings.
Joshua has also been instructed in relation to trade mark matters before the UKIPO including in relation to opposition proceedings and appeals to the Appointed Person.
Copyright & Databases
- PQ Systems Europe Ltd v Aughton [2023] EWHC 581 (Pat) – acting as junior counsel for the Claimants in a copyright infringement and breach of confidential information claim relating to statistical process control software for improving industrial processes written in VB.NET and C#. The claim succeeded in full.
- HRH The Duchess of Sussex v Associated Newspapers Ltd [2021] EWCA Civ 1810 – assisting Jessie Bowhill in responding to an appeal of the judgment of Warby J granting the Duchess of Sussex (Meghan Markle) summary judgment for copyright infringement and misuse of private information.
- Sheeran & Ors v Chokri & Ors [2021] EWHC 3553 (Ch) – assisting Jessie Bowhill in opposing the defendants’ application for disclosure concerning, in particular, music files and notes relating to the creation of the song, Shape of You.
- Genius Sports Technologies Ltd v Soft Construct (Malta) Ltd [2021] EWHC 3200 (Ch) – assisting Jessie Bowhill in an application to join representative parties to proceedings relating to infringement of database rights, in particular the subsistence and ownership of rights before and after Brexit.
- Lewis v (1) UniPrepco Limited (2) Shah (unreported) – acting as sole counsel for the Defendants in the trial of copyright infringement proceedings in the IPEC Small Claims Track. The case concerned tutorial materials to prepare students for Oxbridge admissions examinations.
Since commencing tenancy, Joshua has been instructed in relation to copyright infringement disputes concerning the travel sector and televised subscription-only broadcasts of sporting events, subscription services for access to video content, clothing, newspaper articles, academic articles, outdoor pottery and AI generative tools.
Design Rights
- KF Global Brand Limited v Lead Wear Ltd & Ors (unreported) – represented all Defendants at a CMC in the IPEC in UK unregistered design right infringement proceedings concerning cargo work trousers. Obtained an order for costs to be assessed after trial and falling outside the individual stage costs and overall costs cap on account of the Claimant’s having behaved unreasonably.
- KF Global Brands Limited v Lead Wear Ltd & Ors [2023] EWHC 1303 (IPEC) – acting as sole counsel for the Defendants in proceedings concerning the alleged infringement of UK unregistered design right claimed to subsist in the design of the Claimant’s cargo trousers. The claim was dismissed at trial on the basis that the design lacked originality.
Since commencing tenancy, Joshua has been instructed in relation to the infringement of both registered and unregistered design rights relating to homeware products and clothing, including industrial work wear and fashion items.
Media, Sport & Entertainment
- Assisting Ashton Chantrielle in drafting a Defence to claims of passing off brought by the estate of a deceased Formula 1 racing driver relating to the use of his name on a supercar.
- Advising a clothing brand in relation to claims made by a former FA Premiership and England footballer.
- Advising a television and radio presenter in relation to fancy dress for a publicised event.
- Advising a car dealership in relation to claims made against it by a book and film franchise in relation to a televised advertisement.
- Tyburn Film Productions Ltd v Lucasfilm & Ors [2023] EWHC 3247 (Ch) – acting as junior counsel in a claim concerning performers’ rights and unjust enrichment in relation to a contractual restriction on the ability to “resurrect” deceased actor Peter Cushing OBE by way of special effects in Star Wars: Rogue One.
IT & Telecoms Disputes
- IBM United Kingdom Ltd v LzLabs GmbH & Ors [2023] EWHC 3015 (TCC) – acting as junior counsel for the Defendants in a CMC in proceedings concerning the alleged breach of an agreement for the supply of an IBM mainframe and ICA Programs and the development of software facilitating customer migration of applications from an IBM mainframe and onto a modern computing environment.
- Education & Awards
2017 – Diploma in Intellectual Property Law & Practice, University of Oxford
2015 – Bachelor of Civil Law (BCL), University of Oxford (Distinction)
2011 – LLB, University of Manchester (First Class Honours)
Awards
Oxford Law Faculty Prize in Intellectual Property Law – the University of Oxford
RG Lawson Prize in Environmental Law – the University of Manchester
Ranked by Legal 500 as a “Rising Star” 2021
Ranked by Managing IP as a “Rising Star” 2020
Oxford Blue – Rugby League 2015
- Publications
“Rights Beyond the Registration: from black and white to grey” (2022) 17(2) JIPLP 193
“Unjustified Threats as a Cause of Action” (2020) 42(3) EIPR 150
“Copyright ‘Works’ and ‘Fixation’: Where Are We Now?” (2019) 3 IPQ 252
“Colour Trade Marks Revisited: use and infringement” (2019) 15(5) JIPLP 401
“Balancing the Right to Integrity with Caricature, Parody and Pastiche” (2018) 13(12) JIPLP 955
“Wrong-way-round and Initial ‘Disinterest’ Confusion” (2018) 40(8) EIPR 510
“Employee Compensation for Patented Inventions” (2018) 40(7) EIPR 421
“Ooo Abbott v Design and Display Ltd: account of profits for patent infringement” (2018) 40(5) EIPR 329
“Account of Profit for Infringement of Intellectual Property Rights” (2018) 40(4) EIPR 260
“Colour Trade Marks: Certainty, Utility or Impossibility” (2017) 12(10) JIPLP 860 also published in GRUR Int 2017 issue 12 at 1108
“Aggravated or Exemplary Damages for Copyright Infringement” (2017) 39(9) EIPR 565
“Compensatory Damages and Account of Profit: separate elections for separate causes of action – trademark infringement and passing off” (2016) 11(4) JIPLP 285
- Hobbies & Interests
Rugby union and rugby league (controversially, in equal measure), cricket, cycling, strong coffee and cooking (when provided with a recipe).
Contact Joshua Marshall's clerks
Whilst barristers have a designated practice management team, all the clerks have the capacity and knowledge to assist in cases involving all counsel.