Ian Silcock

Introduction & Contact Details

Ian began his career as a barrister specialising in IP litigation in the legal department of The Body Shop Intl Plc. Before commencing independent practice at the bar in 2002, he worked as in-house legal counsel to a global internet and domain name consultancy, and later as technical assistant to a leading firm of patent & trade mark attorneys. In addition to his legal experience, Ian has a post-graduate degree in computer science, which he obtained with a distinction in 2001, following the award of a scholarship from the European Physics & Science Research Council in the previous year.

Ian’s practice covers all aspects of intellectual property and information technology law, including the law of patents, copyright, designs, trade marks and passing off, as well as related fields, such as franchising, media, music and entertainment law (including emergency pre-broadcast injunction applications), defamation, breach of confidence, data protection, telecoms regulation and competition law. In the field of ADR, Ian has experience of acting for clients in mediation, as well as in arbitrations under the Arbitration Act 1996; he has also been instructed as an expert witness by the British Psychological Society as an expert in the field of copyright law. His recent clients have included The Royal Opera House, The All England Lawn Tennis Club (Wimbledon) Ltd, Channel 5 Broadcasting Ltd, Dementia UK, the estate of Morecambe & Wise, Katie Price and Peter Andre, Ancestry.com UK Ltd, Purple Frog Studios Ltd, North One Television Ltd (producers Football Icon for Sky TV), Danone SA (Evian, Cow & Gate), Pandora A/S (jewellery), Next Retail Ltd and Mitchells & Butlers plc (All Bar One, Browns, Harvester, O’Neill’s).

Ian lectures regularly in the field of intellectual property law. He has lectured to the Boards of Appeal of the European Patent Office (EPO), the Institute of Professional Representatives before the EPO (epi) in Munich, and to the Institute of Trade Mark Attorneys (ITMA), and he is a Visiting Lecturer both to the Queen Mary Intellectual Property Research Institute, London, and to the Centre d’Etudes Internationales de la Propriété Industrielle (CEIPI), Strasbourg, as well as being a member of the General Council of the Bar’s Online Systems Taskforce.

Qualifications

• LL.B Law (Hons)
• MSc (IT)

Professional Associations

• Intellectual Property Bar Association
• Society for Computers & Law
• Institute of Trade Mark Attorneys (Associate Member)
• Nanotechnology Industries Association (Associate Member)

Intellectual Property

Pandora A/S v. Me Me Me Accessories Ltd  (current) HC11C01801 (Ch)
Representing claimant international jewellery designers and producers in High Court registered trade mark infringement and passing off action against former distributors.

Nutricia Ltd (Cow & Gate) v. Kerr  (current) HC11C01801 (Ch)
Representing claimant baby and infant products company in High Court proceedings concerning allegations of groundless threats, invalidity and infringement of defendant’s registered trade mark.

So Organic Ltd v. J Sainsbury plc – SO ORGANIC Trade Mark  (current) (UK IPO)
Current UK trade mark opposition and invalidity proceedings before the UK IPO, representing owner of earlier TM registration (So Organic Ltd) against J Sainsbury plc.

Frederic Robinson Ltd v. Pavel Maslyukov – OLD TOM Trade Mark  (current) (UK IPO)
Representing applicant brand owner in application before the UK IPO for a declaration to invalidate a registered trade mark.

Ghias (t/a GRILLER) v. The Griller Original & others  (current) 1CL70027 (PCC)
Representing claimant fast food chain franchisor (“Griller”) in registered trade mark infringement proceedings against various defendants trading as The Griller Original, Griller King, and Griller Hut.

Wilkinson v. Chrysostomou  (current) 1CL70016 (PCC)
Representing defendant in alleged copyright infringement proceedings regarding copyright in product photographs, alleged use of images without copyright owner’s consent, terms of licence.

Travel Spot LLP v. Carrington  (current) 1CL70006 (PCC)
Instructed by claimant in patent, design right, copyright, registered trade mark infringement and passing off proceedings relating to vehicle headlamp converters.

Dahlia Fashion Co Ltd v. Broadcast Session Ltd  (current) HC11C02756 (Ch)
Representing defendant clothing wholesaler and importer in High Court proceedings for alleged UK and Community design right infringement.

Ambar Kelly Ltd v. Lowe Engineering (Midland) Ltd  (2011) 1CL70006 (PCC)
Represented defendant manufacturer in patent infringement and invalidity proceedings relating to safety platforms for use in riser shafts in multi-level buildings.

Purple Frog Studios Ltd v. Whittles – PURPLE FROG Trade Marks  (2011) O/235/11 (UK IPO)
UK trade mark opposition proceedings before the UK IPO, represented owner of earlier TM registration (Purple Frog Studios Ltd) in opposition against later applicant for similar mark.

Superdry (DKH Retail Ltd) v. The Officers Club 1979 Ltd  (2011) HC10C02871 (Ch)
Represented defendants (The Officers Club clothing retailers) against Superdry in High Court design right and passing off proceedings.

GreenThumb Ltd v. Abramson  (2011) 1BM30172 (Ch)
Represented defendant in High Court proceedings brought by claimant franchisor against defendant ex-franchisee for alleged passing off and breach of franchise agreement.

Melfort Pier Holidays Ltd v. The Melfort Club – MELFORT VILLAGE Trade Mark  (2011) O/048/11 (AP)
Trade mark opposition and appeal proceedings before the UK IPO and Appointed Person regarding the registrability of an alleged place name as a trade mark.

Estee Lauder Cosmetics Ltd v. NB Labs Ltd  (2011) O/388/11 (UK IPO)
Represented trade mark applicant NB Labs in their successful defence of their trade mark application for the mark NuBo PERFECTIONIST against opposition proceedings brought by Estee Lauder.

Carlisle Intangible Company v. Splash Imports (UK) Ltd  (2011) HC11C02234 (Ch)
Represented claimant brand owner in High Court Norwich Pharmacal proceeding to obtain disclosure of the identities of suppliers and importers of registered trade mark infringing products.

National Guild of Removers & Storers Ltd v. McKeown  (2011) 0CL70116 (PCC)
Represented defendant in Patents County Court proceedings for alleged registered trade mark infringement and passing off, and in subsequent inquiry as to damages.

Lakota Ltd v. Mitchells & Butlers plc & others  (2010) HC10C01283 (Ch)
Represented defendants (brand owners of All Bar One, Browns, Harvester, O’Neill’s) in High Court registered trade mark infringement and passing off proceedings.

Williams v. Canaries Seaschool SLU – CLUB SAIL Trade Mark  [2010] RPC (32) 826 (AP)
Represented TM applicant in appeal to the Appointed Person from decision of the UK IPO.

Next Retail Ltd v. Hawley – NEST Trade Mark  (2011) O/396/10 (UK IPO)
Represented Next Retail Ltd in opposition against application to register NEST & device (fig.)

Baker Book Housing Co v. Amue & others (2009) (QB)
High Court proceedings for committal for alleged contempt of court for breach of court order in copyright infringement proceedings.

Getty Images (US) Inc v. JA Coles (Removal Contractors) Ltd  (2009) HC 09 C00794 (Ch)
Copyright infringement proceedings, online image library.

Amstech Contracts Ltd v. Bohannon  (2009) HQ 09 X00640 (Ch)
High Court claim for breach of confidence and unlawful interference with a business, restraint of trade, costs.

WR Grace & Co-Conn v. KC White Consultancy Ltd – GRACE Trade Mark  (2009) O/064/09 (UK IPO)
Trade mark opposition proceedings before UK IPO.

Courtesy Shoes Ltd v. Lynam – TREADSAFE, TRADESAFE Trade Marks  (2009) O/005/09, O/007/09 (UK IPO)
Trade mark opposition, cross-application for declaration of invalidity.

The Old Radiator Company Ltd v. Bygones Reclamation (Canterbury) Ltd  (2008) HC 08 C02370 (Ch)
Trade mark infringement, passing off, website, refurbished and reconditioned radiators, interim injunction.

Tower House Ltd v. Residual Stock Company Ltd  (2008) HC 08 C00652 (Ch)
Registered trade mark infringement, passing off and breach of contract proceedings, men’s clothing.

Kumon Educational UK Company Ltd v. Worley  (2008) HQ 08 X00089 (QB)
Franchise agreements, High Court action against ex-franchisee.

Next Retail Ltd v. Yüksel – NEXTSTAR Trade Mark  (2008) O/320/08 (UK IPO)
Represented Next Retail Ltd in successful opposition against registration of a TM for electronic apparatus.

Oven Clean Ltd v. Gilbert  [2007] EWHC 3483 (Ch)
Registered trade mark infringement and passing off proceedings, ex-franchisee.

Citibank NV, Citicorp v. Citybond Holdings Plc – CITYBOND Trade Mark  [2007] RPC (13) 301 (AP)
Trade mark opposition proceedings before UK IPO, appeal to the Appointed Person, insurance services.

Hawes & Curtis Ltd v. Intrinsic International Ltd  (2007) HC 07 C02852 (Ch)
Registered trade mark infringement proceedings, clothing, interim injunction, interim delivery-up.

B4U Telecom Ltd v. T-Tech Global Mobiles Ltd  (2007) 7 BM 40014 (Ch)
Design right infringement and malicious falsehood proceedings, high-end mobile phones, eBay retailing.

Moor Spa International Ltd v. Moor At Home Ltd – MOOR SPA Trade Mark  (2006) HC 06 C02801 (Ch) 
Registered trade mark infringement and passing off proceedings, breach of directors’ fiduciary duties.

CP Retailing & Marketing Co Ltd v. BE Intl Foods Ltd – JADE DRAGON Trade Mark  (2006) CH2006 APP 671/678 (Ch) 
Trade mark opposition, appeal to the High Court, Chinese food importation, wholesaling.

Mobyko Ltd v. Phonesync Ltd  (2006) HC 06 C03420 (Ch)
Computer source code, mobile telephone synchronisation services, interim injunction, interim delivery-up.

Geddes v. Dawe & Partners Ltd  (2006) 5 CL 54190 (CCLC)
Architectural practices, passing off proceedings, inquiry as to damages.

Re Compass Group Holdings Plc – GUSTO+ Trade Mark  (2006) O/327/06 (AP)
Represented appellant in successful appeal to the Appointed Person from an earlier decision of the UK IPO regarding a trade mark for retail services.

New Look Ltd v. Jacques Jaunet SA – NEW MAN Trade Mark  (2006) O/301/06 (UK IPO)
Represented TM applicant against New Look Ltd in TM opposition proceedings before the UK IPO regarding a trade mark in the field of retail clothing.

NC Graphics (Cambridge) Ltd v. VI Group Plc  (2005) HC 03 C02239 (Ch)
High Court proceedings for software copyright infringement, breach of software distribution agreements.

IT & Telecoms

Computer Software Group Ltd v. National Union of Teachers  (current)
Representing the NUT in a substantial IT claim involving alleged breaches of IT contracts and alleged negligence relating to the supply of a software system to the NUT.

Getty Images (US) Inc v. JA Coles (Removal Contractors) Ltd  (2009) HC 09 C00794 (Ch)
Copyright infringement proceedings, online image library.

B4U Telecom Ltd v. T-Tech Global Mobiles Ltd  (2007) 7 BM 40014 (Ch)
Design right infringement and malicious falsehood proceedings, high-end mobile phones, eBay retailing.

Mobyko Ltd v. Phonesync Ltd  (2006) HC 06 C03420 (Ch)
Computer source code, mobile telephone synchronisation services, interim injunction, interim delivery-up.

NC Graphics (Cambridge) Ltd v. VI Group Plc  (2005) HC 03 C02239 (Ch)
High Court proceedings for software copyright infringement, breach of software distribution agreements.

Media

Martinez-Pinon v. Twitter, Inc & others  (current) HQ11X04742 (QB)
Representing claimant director in proceedings against Twitter and others for Norwich Pharmacal disclosure of user details, and against the principal anonymous defendant for online defamation, harassment and breach of confidence.

Szentmihali v. Matsoukis  (2011) HQ10D02454 (QB)
Defamation (libel), breach of confidence and harassment proceedings, fake Facebook profiles, related criminal proceedings, instructed by defendant.

Riddington v. Northcliffe Media Ltd  (2011) (pre-action)
Defamation (libel), repeated libellous publications in local newspaper; instructed by claimants in pre-action proceedings; publishers printed apology and paid damages and costs.

Brudenell-Bruce v. Manton  (2011) HQ09D05416 (QB)
Defamation (libel), breach of confidence and harassment proceedings, emails & text messages, instructed by claimant ex-owner of Fabric nightclub.

Jokanovic v. Care Quality Commission  (2010) HC08X02212 (QB)
Defamation (libel) proceedings, online reports, instructed by defendant Care Quality Commission.

Seecharan v. Malik  (current) (2010) HQ05X00909 (QB)
Defamation (libel) proceedings, letters of complaint to NHS Trust, instructed by claimant practice nurse in defamation action and subsequent enforcement proceedings.

Bowen-Griffith v. Home Base Ltd  (2001) HQ01X03854 (QB)
Defamation (slander) proceedings, instructed pro bono by RCJ CAB for the claimant.

Commercial

Ian’s practice covers all aspects of intellectual property and information technology law, as well as the closely related fields of franchising, media & entertainment law, defamation, breach of confidence, data protection and telecoms regulation. His specialist areas include:

• registered trade mark infringement & passing off
• copyright (particularly software copyright)
• patent infringement and validity (including software & nanotech patents)
• registered and unregistered design right infringement
• media & entertainment law
• television broadcasting & telecoms regulation
• defamation, breach of confidence, privacy, and data protection
• urgent interim injunctive applications in all of these areas

In addition to his recent contentious work, Ian is also experienced in advising upon and drafting specialist agreements and contracts within the above fields, including, in particular:

• confidentiality and non-disclosure agreements (NDAs)
• trade mark assignments & licences
• copyright assignments & licences
• software licences (including EULAs)
• specialist software development agreements
• joint venture agreements
• TV production agreements & releases
• publishing agreements (traditional print and e-book publication)
• music business agreements
• dispute resolution & settlement agreements
• website terms, conditions & disclaimers
• website data protection & privacy notices

Ian’s recent contentious work has also included representing clients, advising and drafting in relation to:

• applications for urgent pre-broadcast interim injunctions against TV broadcasters, urgent pre-broadcast legal issues faced by TV producers, and the protection of rights in TV formats
• potential proceedings threatened by the London Organising Committee of the Olympic Games Ltd (LOCOG) against various potential defendants for their use of the mark “2012” and similar marks
• drafting written submissions, statements of case and grounds of appeal in proceedings before the Community trade mark office (OHIM) and before OHIM’s Boards of Appeal
• application of RIPA 2000, the Wireless Telegraphy Act 2006 and other wireless telegraphy regulation to novel Bluetooth technology, applications and business model
• architectural copyright infringements
• ownership and possession of computer source code
• uploading of copyright infringing material to FTP servers
• copyright and design right infringement by reproduction of printed circuit boards (PCBs
• intellectual property rights in online computer games
  alleged Community unregistered design right infringement by retail clothing outlet
• a claim against a major record label for unpaid royalties dating from the 1970s
• cross-border enforcement of intellectual property rights
• ownership and enforcement of intellectual property rights by various local authorities
• directors’ liabilities, liability for causing unfair prejudice to minority shareholders
• breach of confidence by misappropriation of client contact lists & sensitive price information
• enforcement of restrictive covenants against ex-employees and ex-franchisees
• complaints to the ICO in relation to unauthorised use of personal data by public authorities
• potential defamation proceedings relating to online defamation on a web-forum and blog

Full lists of the recent and significant cases in which Ian has been instructed as counsel are set out below under the relevant practice headings.

Franchising

GreenThumb Ltd v. Abramson  (2011) 1BM30172 (Ch)
Represented defendant in High Court proceedings brought by claimant franchisor against defendant ex-franchisee for alleged passing off and breach of franchise agreement.

Openwork Ltd v. various  (2011) 1BS40715 (QB)
Advising defendant ex-franchisees in High Court proceedings brought by franchisor for claims in excess of £250k for alleged breaches of franchise agreement.

Kumon Educational UK Company Ltd v. Worley  (2008) HQ 08 X00089 (QB)
High Court proceedings for alleged breach of franchise agreements, instructed by ex-franchisee.

Oven Clean Ltd v. Gilbert  [2007] EWHC 3483 (Ch)
registered trade mark infringement and passing off proceedings in the High Court against ex-franchisee, instructed by franchisor.