Partner & Head of Intellectual Property
"Provides commercially minded, practical advice and understands our business aims."
(Chambers & Partners)
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.
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.
- 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.
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.
- 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  EWHC 1686 (IPEC) (29 May 2014) Successfully defending a case in passing off relating to the packaging design of a hair oil product.
- Managing Intellectual Property: Trade Mark Star
“Great efficiency and quick answers.”(The Legal 500, 2016)
“One of the most reactive and effective firms in the UK.”(The Legal 500, 2017)
“Simon Barker’s IP practice includes dispute resolution, portfolio management and transactional services. Clients describe him as a ‘really helpful and attentive’ lawyer.”(Chambers & Partners, 2018)
Practice head Simon Barker is “an expert in his field and a safe pair of hands”.(The Legal 500, 2019)
Simon Barker advises on the commercial exploitation, portfolio management and enforcement of all core rights. A client praises his eye for “innovation and his ability to solve problems and find new solutions to win the case.”(Chambers & Partners, 2019)
‘Doing the right thing’ is at the heart of Freeths. Find out more about our excellent client service and the strong set of values that guide the way we work.
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Contact: 03301 001 014