Simon Barker
Partner & Head of Intellectual Property
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“Simon Barker is very proactive and has dealt with matters for us quickly and efficiently. He is very good to deal with, and very commercial in his approach.”
(Chambers & Partners, 2024)
Simon is an intellectual property lawyer based in Birmingham. Qualified since 2000, he has many years’ experience in advising business on intellectual property related matters; covering trade marks, patents, designs, copyright and confidential information.
A seasoned litigator of intellectual property disputes, Simon leads a team that is focussed on resolving disputes by keeping in mind the commercial objectives while ensuring there is understanding of all possible outcomes.
Specialised with a team of dedicated lawyers, Simon’s practice is holistic. He offers intellectual property well-being with a fully integrated service that is necessary for efficient management and effective enforcement of intellectual property rights.
Simon has acted in numerous cases before the UK courts, at the UK Intellectual Property Office and at the EU Intellectual Property Office. He has also appeared before the General Court in Luxembourg.
Simon is recognised as a Leading Individual in Chambers & Partners (2024 edition). He’s listed as a Recommended Lawyer and Leading Individual in the Legal 500 (2024 edition) for Intellectual Property.
Legal Services
Intellectual Property & Media
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 urgent application to court to restore access to a client’s domain name, email and web-service. Email and website restored within 3 days.
- Defending a claim for trade mark infringement and passing off relating to frozen meals; early strategic attack of the Claimant’s trade marks and successful negotiation; settling the claim and application for interim injunction. Settlement achieved in approximately 5 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.
Sectors
Retail
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.
Cases
- 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 in passing off relating to the packaging design of a hair oil product.
Automotive
Cases
Advertising and Marketing
- Providing regular advertising and marketing advice to a car parts retailer; including clearance, campaign strategy and marketing plans, competition terms, 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 collaboration agreement for development of technology to automate traditional hand manufacturing techniques in the automotive sector.
- Drafting complex patent and know-how licence for building technology relating to safety barriers for use in manufacturing.
- Drafting and negotiating design services agreement for parts manufacturer.
- Advice on trade mark strategy and filing, design protection for a designer, manufacturer and supplier of custom motorcycle parts to fit Triumph bikes.
Latest
- IP Disputes: How to avoid them and what to do when they occur?
- Intellectual Property: The Common Mistakes for UK business owners
- IP Checklist: What do buyers or investors look for?
- No offence but – Offensive, Irresponsible, or Indecent advertising – When is it too much?
- Indecent advertising in fashion: Boohoo, Balenciaga and Pretty Little Thing
- Freeths advises on the purchase of Joules subsidiary
- Freeths appoints new partner to its thriving intellectual property and media practice
- Ambush Marketing: Create a buzz without getting stung
- Investigation into Pierre Cardin and the significance of selective distribution against grey goods
- Intellectual Property Webinars – Ambush Marketing – Playing by the rules – innovative or infringing?
- New regulations put foods high in fat, sugar and salt in the firing line
- Trade Marks in a Whole New World
- Freeths Sector Showcase
- “Pornsquatting” – is your Brand at risk from 01 December 2021?
- The future of parallel imports and the implications for rights holders
- Is META really better?
- Representation Changes at the UKIPO
- Customs Seizure of Counterfeit Goods: Are you covered? Apply for Action.
- Yabadabadoo! Freddy wins victory for fashion industry in IPEC post-sale confusion ruling
- Brexit Brunch Week – 22nd February – 1st March 2021
- The Future of Retail – Is Augmented Reality a Silver Bullet for the Retail, Hospitality & Leisure Sectors?
- Geographical Indications and Brexit
- Brexit and Intellectual Property Rights
- Hot potatoes: advertising regulation and the food sector
- Reading the tea leaves: the ASA and intellectual property rights
- IPSO FACTO publications
- Brexit: Questions and Answers
- What Brexit means for your intellectual property rights
- No need for Brexit panic over IP laws
To contact Simon or for more information…
Call: 0345 634 2583
Mobile: 0792 160 3234
Or email: Send an email
‘Simon Barker offers clear, sensible advice.’
(The Legal 500, 2024)
“Simon Barker is a very experienced IP litigator, and pleasant to work with.”
(Chambers & Partners, 2024)
“My non-legal colleagues have found his advice and suggestions both user-friendly and constructive.”
(Chambers & Partners, 2024)
“Simon Barker is a very experienced IP litigator, and pleasant to work with.”
(Chambers & Partners, 2024)
“He is very responsive and provides us with clear advice. My ‘non-legal’ colleagues have found his advice and suggestions both user-friendly and constructive.”
(Chambers & Partners, 2024)
“Simon is my go-to lawyer. He understands us, knows our strategies, and pays attention to our legal and commercial requirements.”
(Chambers & Partners, 2024)
‘Simon Barker is excellent – calm, pragmatic, experienced and will find every point.”
(The Legal 500, 2023)
‘Simon Barker – very experienced in dealing with competing products to the market leaders. Is great at handling lay clients’ expectations and guiding them through the whole litigation process.’
(The Legal 500, 2023)
Simon Barker is an excellent professional with remarkable capabilities and skills.”
(Chambers & Partners, 2023)
“He is a brand and designs specialist, well versed in both litigation and also commercial licensing and corporate support work.”
(Chambers & Partners, 2023)
Client service
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Contact: 03301 001 014