Madeleine Heal

Call:1996

Introduction and Contact details

Madeleine Heal is a barrister practising principally in Intellectual Property law, including patents, trade marks, copyright and designs.  She is also a specialist in Media & Entertainment law.  Her work in both areas often gives rise to issues of European and international commercial, competition, conflict of laws and franchising law.

Her style of advocacy focuses on the commercial implications of IP and Media and seeks to achieve a cost effective and procedurally incisive solution for her clients.  She is often instructed to appear in urgent matters which require an injunction.

"...clear-minded and passionate about IP" - The Legal 500 (2008)

"...very competent and very approachable" - The Legal 500 (2005)

"Heavyweight Madeleine Heal is a breath of fresh air with amazing IP skills" - Chambers & Partners   (2006)

                                
Email madeleine.heal@hardwicke.co.uk

INTELLECTUAL PROPERTY

Madeleine Heal is a highly experienced IP lawyer and has represented some of the world’s leading businesses in maintaining and defending their intellectual property rights.

Recent Work

• Representing Channel 4 in an action by Miss World alleging infringement of the “MISS WORLD” trade mark in a documentary on transsexual beauty pageants.
• Acting for Microsoft in an action for a freezing order against assets of defendants alleged to be dealing in counterfeit and unlicensed Microsoft products.
• Acting for Gucci in its copyright and trade mark infringement action against Chinese importers of infringing handbags.
•  Representing Lacoste in design right litigation.
• Advising on an infringement of copyright and passing off claim for Australian band ‘Manjari’ against a former member and her UK producer.
• Advising Dubai Mercantile Exchange on European/UK patentability of “hub” trading concept, restrictive covenants and contractual issues in light of ICE v NYMEX litigation in New York.

Relevant Cases

Microsoft Corporation v Waterman and others

Acted for Microsoft in an action for a freezing order which was granted to restrain worldwide assets of individuals against whom allegations of copyright infringement were made in respect of counterfeit and/or unlicensed Microsoft products.

Guccio Gucci S.p.a. v Regalcrest International Limited

Acted successfully for Gucci in its copyright and trade mark infringement action in respect of Gucci handbags. An interim injunction and £20 million freezing order was obtained.

Jules Rimet Cup Ltd v The Football Association Ltd [2008] FSR 10

Appeared for The FA in a copyright, trade mark and passing off trial regarding the 1966 England World Cup mascot “World Cup Willie”. The FA succeeded in opposing applications by Jules Rimet Cup Limited to register World Cup Willie and a cartoon drawing as trade marks.   

G.A. Modefine S.A (Armani) v Zara (UK) Limited

Acted for Armani in trade mark infringement proceedings in respect of the “ARMANI EXCHANGE” trade mark.

Shakeaway Worldwide Limited v Shakeabout Holdings Limited

Acted for Shakeaway milkshakes in trade mark, passing off and contempt proceedings.

The Food Doctor Limited v Tiger Aspect Productions Limited

A trade mark infringement action involving rival reality TV shows and the marks THE FOOD DOCTOR v THE DIET DOCTORS.  The case raised issues relating to the balancing of the Convention right to freedom of expression and the trade marks proprietor’s monopoly in the light of Cream Holdings and the section 12(3) Human Rights Act test for interim and final injunctive relief.

La Chemise Lacoste v GH Warner Footwear plc

Appeared for Lacoste in a registered and unregistered design right dispute with a UK footwear manufacturer.

FIFA v Onside TV Limited

Acted for Onside TV in dispute with FIFA over highlights compilation DVDs of 12 World Cup tournaments.

Lyle & Scott Limited v Primark Stores Limited

Appeared for the well-known knitwear company against Primark in an action for infringement of Lyle & Scott’s registered trade mark for its Eagle device.

Wolters Kluwer (UK) Ltd v Reed Elsevier (UK) Ltd [2006] FSR 28

A trade mark infringement action under section 10(6) regarding on-line tuition services and the meaning of “commercial purpose” in the context of comparative advertising.

Aber Instruments v Abertec

Instructed by the University of Wales in action for declaration of non-infringement, invalidity and unenforceability (based on an allegation of fraud against the Patent Office).

Hello! Magazine v Tina Price

Copyright infringement action regarding a celebrity couple’s wedding photographs.

Lacoste Alligator S.A. v Hi-Tec Sports UK Ltd

Instructed by Lacoste in the UK design right and copyright infringement action in respect of the Paris shoe design.

Walt Disney Company Limited v Huggables Limited

Acted for Walt Disney in counterfeit action after independent action by Blackpool Trading Standards re sale of counterfeit plush toys “Winnie the Pooh”, “Eeyore”, “Tigger” and “Piglet”.

Unicorn Tourism Limited v English Tourism Council

A trade mark and competition case involving the abuse of a dominant position under EC and UK competition law.  Advised a number of England's regional tourist boards upon their proposed action for breach of a dominant position contrary to Part II of the Competition Act 1998 against the Government.

Cantine Mezzacorona SCARL v Miguel Torres SA [2004] RPC 26, CA

Appeared for Miguel Torres in this significant competition and trade mark case concerning the interface between EC agricultural regulation, competition law, TRIPs, wine labelling, appellations of origin and the trade mark system.

Building Product Design Ltd v Sandtoft Roof Tiles Limited [2004] FSR 41

Appeared for Sandtoft in this routine patent infringement action.  The case is reported because of the points made in respect of commencing second proceedings in relation to the same subject matter, res judicata, abuse of process, whether a second action should be struck out.  Sandtoft was successful in having the second action struck out as an abuse of the court's process after pleading errors by the claimant in the first action that were not remedied during the trial.

Warheit v Olympia [2003] FSR 6

Appeared for Olympia in this mechanical patent infringement case both at first instance and in the Court of Appeal.

Royal Enfield Motorcycles v Matthew Holder [2002] RPC 24

A trade mark and competition law case for Royal Enfield which successfully retained its trade mark rights despite sales of spare parts for 1950s classic motorcycles by Mr Holder in the UK in the intervening period between the closure of the UK cycle manufacturing business and the incorporation of a phoenix manufacturing company in India.

Wolfgang Joop v Canadelle [2002] RPC 24

Appeared for Joop in this trade mark case involving the trade marks “WONDERBRA” and “WUNDERKIND”.

WH Smith Limited v Colman [2001] FSR 9, CA

A passing off case involving the domain name “www.whsmith.com”.  The case raised questions regarding admissibility of without prejudice correspondence.

Parker v Rasalingham Times Law Reports 25 July 2000

Appeared for Mr Parker who successfully argued that damages should be available for breach of an injunction.

Secretary of State for Defence v Arcadia Group Brands Limited

Opposition proceedings in the Trade Marks Registry.  Instructed by the Secretary of State for Defence on behalf of the Royal Air Force in respect of the RAF Roundel device.

Secretary of State for Defence v Major League Baseball Properties Inc

Opposition proceedings in the Trade Marks Registry.  Instructed by the Secretary of State for Defence on behalf of the Met Office in a dispute with the Mets American Baseball team over the trade mark METS.

JH Fenner & Co. Limited and Turner Belting Limited v Gulf Conveyor Systems Pty Limited

Instructed by an English firm to appear in proceedings commenced in the Chancery Division in London and in the Federal Court of Australia for injunctions to restrain patent infringement, breach of confidence and breach of s.52 of the Trade Practices Act (Cth).  The case concerned patents for self extinguishing conveyor belting for use in underground coal and bauxite mines.  The patented invention had been developed by the English company and licensed to an Australian distributor that set up in competition with the English company in breach of contractual restrictions and in breach of confidence.

Media and Entertainment

 Madeleine Heal's Media & Entertainment practice includes:

• music, sport, broadcasting, television and performers rights
• confidentiality and privacy
• celebrity and the press
• publication of ancillary relief proceedings
• civil fraud and fraud in relation paternity (Junior to Nicholas Mostyn QC)

Relevant Cases

The Wailers v The Original Wailers

Acted for the band containing the remaining original member of Bob Marley and The Wailers in passing off proceedings brought against an imposter band.

Miss World Television v Channel 4 Television Corporation [2007] FSR 30

An injunction was granted to the owners of the MISS WORLD trade mark to prevent a television company using the title “Mr Miss World” when broadcasting a television programme about a transsexual beauty pageant. Case involved complex issues of balance between rights of proprietors of registered trade marks and Article 10 right to freedom of expression, section 12 Human Rights Act and Cream Holdings v Banerjee considerations.  Court had to consider question whether owners of famous marks should be entitled to prevent use of the weight of their famous marks against themselves in circumstances where there could be little or no likelihood of confusion and a public interest was served by broadcasting information.

Jules Rimet Cup Ltd v The Football Association Ltd [2008] FSR 10

Appeared for The FA in a copyright, trade mark and passing off trial regarding the 1966 England World Cup mascot “World Cup Willie”.  The FA succeeded in opposing applications by Jules Rimet Cup Limited to register World Cup Willie and a cartoon drawing as trade marks.  The court held that the undoubted goodwill in The FA’s 1966 mascot “World Cup Willie” arising from its use in connection with the 1966 World Cup was The FA’s goodwill and taking all of the evidence into consideration, The FA had not abandoned its goodwill since that time.  It was held to be a question of fact as to whether the goodwill had survived a period of almost 40 years.  All of the available material established that in 2005 there was enough goodwill for The FA to have succeeded in a passing off action.  JRC was also held to have applied for the trade marks in bad faith because it applied knowing that there was valuable residual goodwill owned by The FA in the 1966 mascot.  Although The FA has established copying of its mascot, it had not shown that there had been copying of a substantial part of the 1966 mascot and accordingly there was no copyright infringement.

MHP s.a.r.l. and Humanoids Group SA v Quintus Group Limited and Rubberneck Television Limited

Contract for production of animated television series in dispute between Production Company and animators.  Gave evidence of English law to French Court on behalf of Quintus in respect of categorisation of contractual clauses said to constitute a penalty.

Adam Lee t/as Manjari® v Manjula Ariaratnam and Robin Millar [2007] All ER (D) 186 (Apr)

Advised Adam Lee in his dispute with former Australian band member and another over the band's back catalogue and passing off bands name.

Lucas & Walliams v Liberation

Acted for Matt Lucas and David Walliams against Liberation who produced unauthorised “Early Years” DVD.

IMG Liechti & Cie v TRO Essex Music Limited [2005] All ER (D) 161 (Nov)

Dispute regarding sub-publishing agreements for various musical works.

Hello! Magazine v Tina Price

Copyright infringement action regarding a celebrity couple’s wedding photographs.

Walt Disney Company Limited v Huggables Limited

Acted for Walt Disney in counterfeit action after independent action by Blackpool Trading Standards re sale of counterfeit plush toys Winnie the Pooh, Eeyore, Tigger and Piglet.

Franchising

Madeleine Heal undertakes UK and cross border franchising work for both franchisees and franchisors, particularly in complex matters involving UK, EU and international law and intellectual property law.  She specialises in applications for urgent injunctive relief.

Relevant Cases

Shakeaway Worldwide Limited v Shakeabout Holdings Limited

Acted for Shakeaway milkshakes in franchise, trade mark, passing off and contempt proceedings.

COMMERCIAL

Madeleine Heal appears in both the Commercial Court and Chancery Division in commercial matters.  She has experience of a wide range of matters affecting businesses, particularly those involving contractual disputes and intellectual property. Madeleine regularly represents and advises bodies corporate in their disputes, particularly in relation to jurisdiction, conflict of laws and IP.

Relevant Cases

Barclays Bank plc v Petromiralles 3, SL [2008] EWHC 2512 (Comm)

Appeared for Petromiralles, a Spanish downstream oil company defending Barclays Capital’s claim for €1.34 million under alleged contracts for foreign exchange hedge transactions.  In a challenge to the court’s jurisdiction, Petromiralles successfully resisted jurisdiction of the English court to hear the dispute pursuant to Article 23 of Council Regulation 44/2001.  Barclays, having been ordered to pay Petromiralles costs of the jurisdiction hearing, attempted to set off those costs against the amount Barclays alleged it was owed under the foreign exchange transactions.  Petromiralles also successfully resisted that attempt.  The case is proceeding in Spain.

Animal Friend’s Insurance Services Limited v Equine & Livestock Company Limited

Acted for Equine & Livestock Limited in their claim for copyright infringement in a policy of insurance for domestic animals and horses.

Miller Brewing v Mersey Docks and Harbour Company and Others [2004] FSR 5

Appeared for the 6th, 7th and 8th defendants, Seth Shipping Ltd, Bahr Behrend Agencies Ltd and Zim Israel Navigation Co. Ltd in this case which concerned liability of innocent third parties in relation to impounded parallel imports.   The 6th, 7th and 8th defendants, who were responsible for quay rent and demurrage whilst Miller and the first defendant fought out their trade mark dispute, sought an undertaking in similar terms to the undertaking normally expected of an applicant for a freezing order protecting innocent third parties.  The court declined and held that a freezing order was a special type of injunction "the very existence of which is controversial" and was not prepared to extend the usual undertaking to include innocent third parties.  The case has prompted recent academic debate.

CNA Insurance Co. (Europe) Limited v Servico International Ltd [2002]

Summary judgment had been entered by David Steele J against Servico for £10.98 million.  The case involved the construction of a contract of insurance for motor insurance, variation of contracts, termination, when a debt becomes due and calculation of premium.  The case settled favourably after the hearing of the appeal but before the judgment was handed down.

Compagnie Noga v Australia and New Zealand Banking Group

Instructed with Steven Gee QC by Noga to apply for world wide tracing and freezing injunctions, leave to serve the proceedings out of the jurisdiction, and for disclosure orders against 28 defendants in respect of $ US700 million that was held in accounts in many countries.  The applications were made in support of Noga's claim as equitable assignees to proceeds of bills of exchange under a contract between the Federal Government of Nigeria and the Russian Federation to build the Ajaokuta Steel Plant in Nigeria.

Microsoft Corporation v Waterman and others

Acted for Microsoft in action for Freezing Order which was granted to restrain worldwide assets of individuals against whom allegations of copyright infringement were made in respect of counterfeit and/or unlicensed Microsoft products.

Articles

'Secret filming and the case law that subsequently arises', Law Society Gazette 4 March 2010