James Tumbridge

• Advised on a High Court determination of emergency injunction concerning trade marks in financial services, whether registered marks are confusing, and the meaning of retail use in finance within Class 36.

JLG Group & Ors v MTL Financial June 2020

• Provided expert opinion on English law to construe jurisdiction in light of an arbitration provision.
  Emirates NBD Bank (PJSC) v Ronald A. Chisholm Limited, Ontario Superior Court [2019] unreported
• Advised on a UK Supreme Court ruling on the extent of legal advice privilege that may be claimed by non-lawyers, representing the IP profession.
  R (on application of Prudential plc and anor) v Special Commissioner of Income Tax [2013] UKSC 1
• Advised on the construction of contracts in relation to a Special Investment Vehicle.

Bank of New York v Montana [2008] EWHC 1594 (Ch)

• Advised on a dispute concerning an aircraft finance and lease-back agreement, considering the analogous nature of leases and mortgages. the Court of Appeal confirmed that the claimant could not change their case based on a skeleton argument in the absence of first amending its pleadings.

Credit Suisse v Arabian Aircraft & Equipment Leasing Co [2013] EWCA Civ 1169 on appeal from EC (2013) – LTL QBD (Comm) (Judge Mackie QC) 24/04/2013 2013 EWHC 1094 (comm)

• Advised the UK Government on data protection issues and law reform.
• Advised UK Government departments in matters of data protection and freedom of information enquiries.
• Advised senior politicians in the UK and Canada.
• Determination of court’s powers to address internal unincorporated association party political disputes under a party constitution.
• Barnett v Walker & Ors [2020] EWHC 1538 (QB)
• Advised on a Court of Appeal review of the Electoral Commission’s powers to publish reports not mandated under statute. Vote Leave v Electoral Commission [2019] EWCA Civ 1938
• Advised on a judicial review of questions of election law and the meaning of an incurred expense and donations in relation to the EU referendum. Additional ancillary proceedings in regard to cost capping orders.
• Good Law Project v Electoral Commission [2018] EWHC 2414 (Admin), [2018] EWHC 602 (Admin) & [2018] EWHC 2553 (Admin)
• Advised on a copyright claim concerning seismic data and licences for exploration. GSI v Falkland Islands Government – SC/CIV/05/14 Supreme Court
• Advised on personal data compliance and the limits of jurisdiction where data is beyond the seas under control of a sister company. Metropolitan Police v Smith, Blockchain Limited & Oths 2016 (unreported, Old Bailey)

• Advised on the Court of Appeal’s first interpretation of the doctrine equivalence post the Actavis decision of the Supreme Court to determine infringement in favour of the appellant, also a decision concerning a patent validity challenge on the grounds of priority, raising questions of the role of what the skilled person is taken to know, including common general knowledge, in the determination of whether a claim is entitled to priority, as well as considering threats and the defence under section 70 of the Patent Act. Icescape v Ice-World International BV et al [2018] EWCA Civ 2219, [2017] EWHC 42 (Pat)
• Advised a global US tech company on UK acquisitions and IP rights.
• Advised companies offering software solutions in the crypto/blockchain environments, addressing law enforcement enquiries, IP and data protection issues.
• Advisedstart-ups and software developers on data protection and IP issues including AI development.
• Arbitration of a software licence for financial services use and copyright claims.
• Acted on a cross-border enforcement of a guarantee for breach of a software licence resulting in a series of decisions from the London County Court, and the Albertan Queen’s Bench. Micromine v Alhambra & Komarnicki (2015/16)
• Challenged the extent of power of Intellectual Property Enterprise Court to hear cases with declarations that concern IP but where the case’s centre is contractual. DEK v Alent Plc (2014, unreported IPEC case)
• Obtained an emergency injunction to restrain a software release for breach of confidential information, High Court to Court of Appeal in one day resulting in the law on equitable relief on foreign claims changing. Titus v Bolden James [2011] EWCA Civ 993
• Advised on patent validity and power of the court to declare patents essential to standards. Nokia v InterDigital Corporation [2004] EWHC 2920 (Pat) and [2005] EWCA Civ 614

• Advised a football agent and their clients on various reputation management issues and defamation matters.
• Advised on sport sponsorship agreements.
• Advised on the construction of a court order and the right of a party to change their behaviours after a passage of time concerning trade marks. Arsenal FC v Reed [2014] EWHC 781 (Ch)
• Advised on football finance matters, considering the liability for a guarantee when agreement varied unilaterally. Lloyds TSB Bank plc v Hayward (CA) [2002] EWCA 1813 [12 December 2002] LTL 12/12/02

• Advised US-UK researchers on the use of medical data, and lectured at the Texas Medical Center on data use.
• Advised on the Medical Device Regulations post-Brexit.
• Advised on patent infringement & validity matter, also addressing requirements of statements of case and permissions of experiments as well as ADR. Select Healthcare Limited v Cromptons Healthcare Limited [2011] EWHC 1830 (Pat), [2011] EWHC 796 & 797 (Pat)
• Acted in a High Court case regarding the use of a company law derivative claim under s.261 of the Companies Act 2006, as a basis for an alleged patent entitlement claim. Successfully precluding the application, and requiring any patent entitlement to be properly pleaded and brought in the proper forum. Confirmed a hypothetical director acting in accordance with Companies Act s.172 could not continue such a claim unless in the interest of the company and this could not be established. Glew & Others v Amro Biotech & Others [2019] EWHC 3183 (Ch), [2019] 11 WLUK 384, [2020] B.C.C. 248
• Advised clinicians and a UK hospital on brand development to maximise their international repute in support of their teaching.
• Advised on entitlement to inventions and collaboration concerning COVID-19 vaccines.
• Advised on collaborations in the development of diagnosis of Alzheimer’s.

• Advised a bespoke packaging company on global contracts and protection of IP.
• Advised on a ‘Greek Yoghurt’ extended passing off case, including permissions for surveys, the approach to proper disclosure and interim injunctions. Fage v Chobani [2012] EWHC 3755 (Ch); [2012] EWHC 3097 (Ch); [2013] EWHC 298 (Ch); [2013] EWHC 630 (Ch); [2013] E.T.M.R. 28; [2013] F.S.R. 32; (2013) 157(14) S.J.L.B. 31; [2014] EWCA Civ 5
• Advised on a trade mark dispute concerning a split brand ownership and the right of one trade mark holder to prevent another from using a different and valid trade mark on the grounds of confusion – advice on English law relating to concurrent ownership, use and confusion. Philip Morris Products S.A. v Marlboro Canada Limited [2010] FC 1099
• Advised on a dispute regarding the sale of goods, in particular whether there is entitlement to repudiate a contract based on performance and whether goods sold by sample or description. Scancom International A/S v RWH Enterprises Ltd [2003] All ER (D) 89
• Advised on the invalidation and revocation of trade marks on the basis of bad faith registration and misleading the public. Dyno Holdings & Dyno-Rod Limited v Dial A Rod Homecover Limited et al [2013] EWPCC 8
• Provided expert evidence advice on English law regarding patent validity. Bridgeview Manufacturing et al. v Duratech et al. [2010] FCA 188 (FCA)

• Advised on a passing off claim in the High Court; determination against transfer to IPEC; confirming claimant choice of forum matters, complexity included the number of points to be addressed and not simply if the points themselves are complex, the test on whether the claim exceeds the cost cap is whether the claimant has a reasonable prospect of showing that its damages will exceed £500,000, not a balance of probabilities as that requires a mini-trial, further costs of restoring brand reputation are to be taken into account; finally, undertakings to cease use must be given to court to be effective.Other Creative Ltd v Mother Family Ltd [2021] EWHC 3172 (Ch)
• Advised on bespoke copyright fonts for marketing and advertising.
• Advised on data use in targeted social media campaigns.
• Advised on permissions for collecting personal data in marketing and surveying.
• Acted in a Supreme Court of Canada case on a copyright decision regarding fair dealing and original works in law reports.CCH Canadian Ltd. v Law Society of Upper Canada [2004] SCC 13

• Advised a world-renowned research university on its co-operation and development agreements to protect IP.
• Advising schools on the issues of personal data for those above and below the age of digital majority.
• Teaching/lecturing on data protection, intellectual property and advocacy to lawyers and students in the USA, Canada and the UK.

• (Unreported) decision of Master Moncaster on the test for transfer from the High Court to the Patents County Court. Gham & Anor. v First Dragon Limited (Queens Bench, 10 December 2010)
• (Unreported) decisions of Master Teverson – penalising in costs parties who agreed then repudiated to mediate in a probate matter. Croll v Radford et al (Chancery Division 2009 & 2010)
• Advised on the variation to a worldwide freezing order.
  Mobil Cerro Negro Ltd. v Petroleos De Venezuela SA [2008] EWHC 532 (Comm)
• Advised on employment and the proper calculation for rates of pay.Evans v Malley Organisation Ltd (CA) [2003] IRLR 156; [2002] EWCA Civ 1834
• Acted in an Ontario Court of Appeal case regarding the rights of trustees to fees in bankruptcy cases. Wasserman Arsenault Ltd. v Sone [2002] OJ No. 1221 & 3772, (2002) 157 OAC 183, 33 CBR 145