Simon Barker

Recent Work

Advertising and marketing

• Providing regular advertising and marketing advice to a car parts retailer; including clearance, campaign strategy and marketing plans, competition terms and advice on compliance with the Gambling Act
• Prior to 2010, experience of providing advertising clearance work for Peugeot in press, tv and radio.

Contentious IP

• Leighton Vans Limited v David Harris and All Seasons Leisure [2022] EWHC 2386 (Ch) (October 2022). Acted for the claimant Leighton Vans Limited on a successful application for interim injunction and further application for disclosure of manufacturer/supplier information.
• Aston Martin Lagonda v Envisage Manufacturing Limited and others (settled before trial). Acted for the defendant in a case alleging infringement of trade marks, design rights and copyright.
• Kuka Systems GmbH and Thompson Friction Welding v Mike Dorsett & Magna Inc (settled before trial). Acting for Kuka in an application before the Comptroller of Patents in the UK and in court for a declaration of entitlement to foreign patent rights relating to an invention for a flexible method of press hemming.

Non-contentious IP

• Advising on the protection of designs in automotive parts and prosecuting applications for multiple registered designs as part of an enforcement strategy
• Advising and drafting a collaboration agreement for the development of technology to automate traditional hand manufacturing techniques in the automotive sector
• Drafting a complex patent and know-how licence for building technology relating to safety barriers for use in manufacturing
• Drafting and negotiating a design services agreement for parts manufacturer
• Advice on trade mark strategy and filing and design protection for a designer, manufacturer and supplier of custom motorcycle parts to fit Triumph bikes.

Simon and his team deliver a fixed price trade mark and design filing service, early-warning services, company name tribunal complaints and domain name disputes. Simon and his team also have particular expertise in advertising cases including cases of trade mark infringement in comparative advertising, complaints to the ASA and appeals to the Independent Reviewer.

In addition to prosecuting cases, Simon is well known in his field for defending clients and advising on the risks of infringing third party rights including product, design and trade mark clearance advice. With an eye on litigation risk, Simon also drafts and negotiates contracts for effective IP transactions and licences.

Recent work

• Successful settlement of a claim in passing off and infringement of trade marks for the shape of a chocolate bar and counterclaims for invalidity of those marks
• Prosecuting application for a court injunction restraining the use of a client’s trade mark against a politically sensitive defendant
• Successful prosecution of an urgent application to court to restore access to a client’s domain name, email and web service. Email and website restored within three days.
• Defending a claim for trade mark infringement and passing off relating to frozen meals including an early strategic attack of the claimant’s trade marks and successful negotiation, settling the claim and application for interim injunction. Settlement achieved in approximately five weeks.
• Proactively identified and advised the successful clearance (for use and registration) of an important trade mark in certain goods classes by advising and deploying a strategy to attack third party rights which meant the client avoided significant future costs of litigation
• Drafted complex patent and know-how licence for building technology
• Drafted and negotiated the purchase of jointly owned patent rights, including foreign rights and management of exchange control provisions
• Drafting terms between client and architect delimiting ownership of IP rights in different elements of the building
• In defence to infringement allegation, making application at the EUIPO for invalidity of a trade mark for the shape of a toaster
• Successfully making application at the EUIPO to invalidate the design registration for a cup holder and dealing with the registered proprietor’s appeal against the decision to invalidate.

Acting for a number of high street retailers in the UK, Simon is well known in his field for defending and prosecuting intellectual property cases, in particular relating to packaging, get-up and product. Simon also acts for, and has acted for, a number of fashion brands in enforcement of their intellectual property rights including trade marks, designs and in copyright.

Recent work

• Bringing a claim in passing off and unregistered Community design relating to the design of packaging for designer sunglasses
• Bringing a claim for infringement of UK unregistered design right and unregistered Community design, relating to the design of part of a shoe
• Moroccanoil Israel Ltd v Aldi Stores Ltd [2014] EWHC 1686 (IPEC) (29 May 2014). Successfully defending a case of passing off relating to the packaging design of a hair oil product.