Guy Hollingworth

Intellectual property including breach of confidence, copyright, passing off, trade marks, service marks, licence agreements, malicious falsehood, misleading advertising, design right

• STITCH Trade Mark [2023] EWHC 1167 (Ch)
  Acting for TikTok in their opposition to an application to register STITCH as a trade mark, before the IPO and on appeal to the High Court.
• City Electrical Factors v IMO Precision Controls Ltd [2022] 3 WLUK 816 
  Acting in the UKIPO and on appeal for the successful trade mark applicant.
• Safe-T-Systems Holdings Ltd v ILR Safety CC [2021] EWHC 2992 (Ch)
  Acting for the Claimant in a claim to enforce settlement terms of a compromised trade mark, passing off and malicious falsehood claim.  The defence was struck out shortly before trial in December 2022, for failure to comply with an unless order.
• Puma SE v Nike Innovate CV [2021] EWHC 1438 (Ch)
  Acting as junior counsel for Nike in its successful application to register FOOTWARE are a trade mark.  The High Court upheld the IPO’s decision on appeal
• Manuka Honey (BL O-899-21)
  Acting for the successful opponents to an application to register MANUKA HONEY as a certification mark.  The application was refused following a two-day hearing in the IPO, which was the first before a panel of three Hearing Officers.
• Front Door (UK) Ltd (t/a Richard Reid Associates) v Lower Mill Estate Ltd [2021] EWHC 2324 (TCC)
  Acting for Defendants who successfully resisted amendment of the claim to introduce IP allegations (infringement of moral rights and passing off).
• The Project Band v Alan Parsons
  Acting for the First Defendant in a claim seeking a declaration of non-passing-off regarding a band’s name.  The claim settled shortly before trial in 2021.
• The Crown Estate v Emedia Development 
  Acting for the Claimants in a claim of alleged ‘cybersquatting’ and bad faith trade mark registration.  The claim settled shortly after a two-day trial in IPEC in 2020.
• Merck KGaA v Merck Sharp & Dohme Corp [2016] EWHC 49 (Pat); [2017] EWCA Civ 1834
  Acting as junior counsel for the Defendant in a claim concerning breach of a co-existence agreement and trade mark infringement arising from the use of the name Merck by both parties. In its Judgment delivered in November 2017 [2017] EWCA Civ 1834, the Court of Appeal remitted various issues for rehearing: [2020] EWHC 1273 (Ch).
• Starbucks (HK) Ltd v British Sky Broadcasting Group Plc Supreme Court [2015] UKSC 31; [2015] 1 W.L.R. 2628
  Acting as junior counsel for the successful Defendants/Respondents in proceedings concerning their NOW TV service.  The claims in passing off and trade mark infringement were dismissed in November 2012 (Arnold J): [2012] EWHC 3074 (Ch); [2013] FSR 29.  The Court of Appeal dismissed the appeal: [2013] EWCA Civ 1482.  The Supreme Court granted permission to appeal in respect of passing off but dismissed the appeal on the basis that the Claimants did not have protectable goodwill within the jurisdiction.
• Enterprise Holdings Inc v Europcar Group UK Ltd [2015] EWHC 17 (Ch); [2015] E.T.M.R. 16
  Acting as junior counsel for the Defendant in a claim for trade mark infringement and passing off concerning the use of an ‘e’ device mark.  Guy also represented Europcar at a number of contested interim hearings concerning survey evidence, disclosure and amendments ([2014] EWHC 2498 (Ch), Morgan J; [2014] EWHC 3282 (Ch), Mann J; [2014] EWHC 3169 (Ch), Morgan J).
• SAS Institute Inc. v. World Programming Ltd [2013] EWHC Civ 1482
  Acting as junior counsel for the Claimant in a claim concerning its SAS analytical software. The Claimant alleged that the Defendant had infringed its copyright and acted in breach of contract in developing its WPS software. The trial was heard in July 2010 (ArnoldJ) [2010] EWHC 1829 (ch); [2011] RPC 1 and concluded in early 2013 after a number of questions were referred to the Court of Justice of the EU: [2013] EWHC 69 (ch); [2013] PRC 17.  The appeal was heard and dismissed by the Court of Appeal in November 2013; [2013] EWCS Civ 1482
• Seven Arts Entertainment Ltd v Content Media Corp Plc Chancery Division [2013] EWHC 588 (Ch)
  Acting for the First Defendant in a claim of infringement of copyright and distribution rights in five motion pictures.  The case concerned disputes over the ownership of the international rights to the films, against the background of previous litigation in other jurisdictions.  The Claimants’ application for summary judgment based upon a Canadian judgment was dismissed in February 2013 by Sales J.
• Smithkline Beecham Ltd & Glaxo Group v  GSKine Ltd & Lloyd Hamilton [2011] EWHC 169 (Ch) 
  Acting for the Claimant in its claim for trade mark infringement and passing off.  Summary Judgment was granted against the Defendants where, in the absence of any explanation, the inference was that their company name had been chosen to refer to the Claimant group of companies.
• Oracle America v M-Tech Ltd [2012] UKSC 27; [2012] 1 W.L.R. 2026;
  Acting as junior counsel for the successful Claimant/Appellant in its appeal to the Supreme Court seeking summary judgment for trade mark infringement as a result of the Defendant’s parallel importation of computer hardware.   The Supreme Court rejected the Defendant’s so-called “Euro-Defences
• Football Dataco Ltd & ors v Stan James  & ors [2011] EWHC 1414 (Ch)
  Acting for the Stan James Defendants at hearings to determine how a number of parallel claims for infringement of database right would be dealt with, pending references to the Court of Justice and undertakings by other defendants to be bound by the outcomes in other proceedings.
• Och-Ziff Management Europe Limited & ors  v  OCH Capital LLP & ors [2010] EWHC 2599 (Ch); [2011] FSR 11
  Acting for the Claimants at trial in their successful claim for trade mark infringement and passing off against OCH Capital LLP and its director.
• esure Insurance Ltd v. Direct Line plc [2008] RPC 5; [2008] RPC 6; [2008] EWCA Civ 842
  Acting as junior counsel for Direct Line before the TMR, High Court and Court of Appeal in their opposition to esure's application to register a mouse on wheels, relying upon rights in Direct Line's telephone on wheels.
• World Wide Fund for Nature & Anr v. World Wrestling Federation Entertainment Inc [2006] FSR 38; [2008] 1 WLR 445
  Acting as junior counsel, including advising and appearing in connection with a damages inquiry before the High Court and subsequently before the Court of Appeal. Also appeared in the Court of Appeal in a breach of injunction/contempt of court appeal [2004] FSR 10.
• Anglia Autoflow Ltd v. Wrightfield Ltd (Patents County Court, 2008)
  Acting for the claimant in the trial of an action for infringement of copyright in software.
• Glaxo Group Ltd v Dowelhurst Ltd [2004] EWCA Civ 290; [2005] E.T.M.R. 104
  Acting for the Claimants in a claim for trade mark infringement in respect of parallel importation of pharmaceutical products.
• Appearing in the UK IPO, both at first instance hearings and in appeals to the Appointed Person.  Recent appeals include: O-004-18 Business Insider (as to whether one Appointed Person may appear before another); L&D SA's ‘Magic Tree’ Registration (April 2015); Thompson Hotels LLC Trade Mark Application (October 2014); Euro Car Parts Ltd v Renault SAS (February 2014); MIP Metro Group Intellectual Property GmbH & Co KG v Hackett Ltd (May 2013); Unite Group Plc v Unite the Union (May 2013) [2014] R.P.C. 14
• Advising and appearing (in both the High Court and Trade Marks Registry) for easyGroup IP Licensing Limited in relation to the protection of their 'easy' brand, including 'easy.com' Easynet Group Plc v Easygroup IP Licensing Ltd [2006] EWHC 1872 (Pat); [2007] R.P.C. 6; and 'easyTelecom' (O/073/06). Guy was junior counsel in easyGroup's dispute with Orange concerning use of the colour orange in relation to mobile telephone communications.
• Advising and acting in a range of proceedings in the Community Trade Marks Office (OHIM) and on appeal to the Court of First Instance/General Court.
• Acting for Pepsi in their dispute in the Trade Marks Registry with Coca-Cola in relation to Coca Cola's application to register 'IPSEI'.
• Acting in a trade mark infringement action concerning use of the sign 'BOTOX' in the slogan ‘Better than Botox?’.
• Advising and acting in proceedings for infringement of unregistered UK and Community design rights.
• Obtaining interim injunctions on behalf of cosmetics, electronics, pharmaceutical and motor companies to prevent parallel importation of their products.
• Acting for Applicants and Respondents in a wide range of interim applications, including interim injunctions, Search Orders and Norwich Pharmacal Orders.
• Acting and advising in applications for contempt of Court/enforcement of judgments.
• Advising and acting for Nokia in a range of matters concerning counterfeit mobile phones and accessories.
• Advice, both written and in conference, in a wide range of intellectual property matters, including: parallel importation; validity and infringement of trade marks (including colour marks); domain name and company name disputes; issues of ownership and infringement of copyright; data protection; database rights and design right; licence agreements; secondary liability and joint tortfeasance.

• Acting as junior counsel in a trial in the Technology and Construction Court in a contractual IT case concerning the provision of fibre optic capacity.
• Advisory work in commercial and IT disputes, including contracts for the provision of telecommunications services and breach of warranty claims in a share sale agreement.
• Advising in connection with intellectual property issues arising in IT matters, including copyright in software programmes and infringement of trade marks in invisible computer code (such as metatags and advertising keywords).

Guy is a CEDR-accredited mediator and registered member of the Civil Mediation Council. He has successfully mediated a range of cases, both in person and remotely during the pandemic. He has taught mediation at Cologne University and spoken at Mediation Awareness Week in London.  Further information about Guy’s mediation practice can be found at: www.ipmediator.co.uk.