Ranked in 1 Practice Areas
3

Band 3

Intellectual Property

London (Firms)

14 Years Ranked

Ranked in Guides

About

Provided by Iain Connor

UK

Practice Areas

Iain has built an intellectual property practice protecting ideas and innovation for clients across a range of sectors:

• retail and consumer

• hotels and leisure;

• financial services;

• software and tech;

• FMCG (fast moving consumer goods);

• healthcare and pharmaceuticals; and

• education and training;

• media and sport.

Iain is recognised as an expert in his field with his international experience extending beyond trade marks, brands and advertising into patents, design rights, database rights, copyright, trade secrets and breach of confidence cases.

He also has a strong technology and software disputes practice as well as advising on parallel imports.

He advises on advertising matters and copy clearance issues as well as comparative advertising, marketing and sponsorship issues.

He has pursued many pieces of high profile IP litigation through the UK courts and then on to the Court of Justice of the European Union. Case highlights include:

• Interflora -v- Marks & Spencer – a trade mark infringement case relating to the use of Interflora as an AdWord in the Google advertising programme – for which his team won Managing IP’s ‘UK Trade Mark Litigation Team of the Year’ and The Lawyer’s ‘IP team of the Year’;

• British Horseracing Board -v- William Hill – the first Database Rights case to be heard before the CJEU;

• Specsavers -v- Asda Stores – a parody advertising case relating to the use of the advertising strapline “Be a real spec saver at Asda” referred to the CJEU on the question of genuine use of a trade mark;

• L’Oreal -v- Bellure – a comparative advertising case relating to smell-a-like perfumes referred to the CJEU on the question of what amounts to taking unfair advantage of a trade mark;

• TQ Delta, LLC v Zyxel Communications UK Ltd (Court of Appeal) – successfully resisting an application that our client ZyXEL should be forced to take a global FRAND licence for DSL technology covered by standard essential patents;

• HPAS Ltd t/a SafeStyle -v- Niamac Developments Ltd t/a SafeGlaze – a trade mark infringement, breach of confidence and breach of restrictive covenant injunction case involving a successful application for a search and seizure order;

• Flynn Pharma Ltd v Drugsrus - a novel parallel import case involving a free standing "Euro" defence based on an argument that the enforcement of trade mark rights amounted to a quantitative restriction on trade;

• Football DataCo -v- Livescore – a database rights case relating the to re-use of football match data;

• Hasbro -v- Nahrmittel - a trade mark dispute in relation to the words "play dough";

• Adidas-Solomon -v-International Tennis Federation - acting to restrain an ITF rule change the effect of which was to prevent use of the then current form of the Adidas 3 stripe logo;

• Novasco Enterprises -v- Allsport (Getty Images) - a copyright dispute relating to the use of English Premiership footballer images;

• Getmapping plc -v- Ordnance Survey - a case which concerned Getmapping's digital photographs of the United Kingdom and making them accessible on Ordnance Survey's website;

• Norowzian -v- Arks - a case defining the meaning of a “dramatic work” in the context of the Guinness advert called “Anticipation”;

https://www.michelmores.com/people/iain-connor/

Professional Memberships

• British Literary and Artistic Copyright Association

• The International Trademark Association (INTA),

• The Competition Law Association,

• The Society of Computers and Law

Work Highlights

Case highlights include:

• Interflora -v- Marks & Spencer – a trade mark infringement case relating to the use of Interflora as an AdWord in the Google advertising programme – for which his team won Managing IP’s ‘UK Trade Mark Litigation Team of the Year’ and The Lawyer’s ‘IP team of the Year’;

• British Horseracing Board -v- William Hill – the first Database Rights case to be heard before the CJEU;

• Specsavers -v- Asda Stores – a parody advertising case relating to the use of the advertising strapline “Be a real spec saver at Asda” referred to the CJEU on the question of genuine use of a trade mark;

• L’Oreal -v- Bellure – a comparative advertising case relating to smell-a-like perfumes referred to the CJEU on the question of what amounts to taking unfair advantage of a trade mark;

• TQ Delta, LLC v Zyxel Communications UK Ltd (Court of Appeal) – successfully resisting an application that our client ZyXEL should be forced to take a global FRAND licence for DSL technology covered by standard essential patents;

• HPAS Ltd t/a SafeStyle -v- Niamac Developments Ltd t/a SafeGlaze – trade mark infringement; breach of confidence; breach of restrictive covenant injunction case involving a successful application for a search and seizure order;

• Flynn Pharma Ltd v Drugsrus & or - a novel parallel import case involving a free standing "Euro" defence based on an argument that the enforcement of trade mark rights amounted to a quantitative restriction on trade;

• Football DataCo -v- Livescore – a database rights case relating the to re-use of football match data;

• Hasbro -v- Nahrmittel - a trade mark dispute in relation to the words "play dough";

• Adidas-Solomon -v-International Tennis Federation - acting to restrain an ITF rule change the effect of which was to prevent use of the then current form of the Adidas 3 stripe logo;

• Novasco Enterprises -v- Allsport (Getty Images) - copyright dispute relating to the use of English Premiership footballer images;

• Getmapping plc -v- Ordnance Survey - a case which concerned Getmapping's digital photographs of the United Kingdom and making them accessible on Ordnance Survey's website;

• Norowzian -v- Arks - a case defining the meaning of a “dramatic work” in the context of the Guinness advert called “Anticipation”;

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Key Sectors

Provided by Michelmores LLP

Technology, Media and Telecoms (TMT)

Retail and Consumer

Health and Life Sciences

Industrials, Engineering and Manufacturing

Sport