Douglas Campbell

Called to the Bar 1993

Practice Areas
Patent, trade mark/passing off, copyright, designs, confidential information, and all other aspects of intellectual property; information technology and computing. Industries covered include electronics, software, television information systems, satellite television, publishing, MP3 players, DVD, telecommunications (telecoms), pharmaceuticals, animal health, oil exploration and production, shipping, mechanical engineering, databases, food products, and many consumer products. Experience includes taking evidence abroad for use in the UK and vice versa.  He has also acted in a number of confidential arbitrations and mediations.

Douglas was appointed a Recorder in October 2010 and was authorised to sit as a Judge of the Patents County Court in January 2012. He is a member of the Attorney General's Panel of Junior Counsel to the Crown, and has been consistently ranked as a leading junior by both Chambers & Partners and the Legal 500 in relation to both intellectual property and information technology law.

Notable and recent cases

Patent

• Generics (UK) t/a Mylan v ViiV Healthcare UK Ltd [2012] EWHC 441 (Pat); expedited trial

• Danisco A/S v Novozymes A/S, [2011] EWHC 3288; Patents Court; stay of UK patent action pending EPO appeal, use of UK disclosure documents abroad

• Seiko Epson v DCI, [2011] EWHC 316 printers and print cartridges: patent action to be heard in advance of competition claim

• Benker v Comptroller General of Patents [2011] EWHC 3604; appeal from UK IPO

• Musion v Activ8-3D [2011] EWPCC 012 Patents County Court (preliminary issue in patent infringement action)
• Gemstar v Virgin [2011] EWCA Civ 302, [2009] EWHC 3068 (computer software, presentation of information, novelty)

• Red Spider v Omega [2010] EWHC 59 (water injection valves for oil industry, entitlement to priority); [2010] FSR 6 (pre-action disclosure)
• Teva v Aventis [2010] EWHC 67 (Pat) (formulation patent for docetaxel)
• TNS v Neilsen [2009] EWHC 1160 (propriety of bringing UK patent proceedings so as to influence other European courts)
• Belvac Production Machinery Inc v Carnaudmetalbox Engineering Ltd [2009] EWHC 292; patent validity, infringement;
• Sony, Philips v Alba, Amino (Patents Court, 2008) action on 14 patents belonging to the MPEG LA patent portfolio (MPEG-2 standard for DVD and digital television)
• Nokia v InterDigital, Patents Court, 2008, mobile phones, standards, essentiality
• Vector v Glatt [2007] RPC 12, [2007] EWCA (Civ) 805 (CA); amendment, added matter, and insufficiency
• SanDisk v. Phillips [2006] EWHC 3100 (Pat), [2006] EWCH 2692 (Pat); MP3 Players; declaration of essentiality with respect to industry standards, added matter
• Edwards Lifesciences v Cook Biotech Inc. [2008] EWHC 1899, 1900; confidentiality; independently valid claims
• Eli Lilly v Neopharma, Neolab [2008] EWHC 358; interim injunctions, disclosure of customer names
• Ultraframe v Eurocell [2006] EWHC 1344 (Pat); damages enquiry, damages for loss of market position, reasonable royalty
• CFPH’s applications [2006] RPC 5; patentability of computer software and business methods
• Forticrete v Lafarge [2005] EWHC 3024; commercial success, right to continue prior use
• Coflexip v Stena Offshore [2004] FSR 34, CA; estoppel and damages
• Xtralite (Rooflights) Ltd v Hartington Conway [2004] RPC 7, [2004] RPC 137; estoppel, correct approach to patent appeals
• 3M’s International Patent Application [2003] RPC 28, [2003] RPC 541; patent entitlement, joint ownership
• Stena v Irish Ferries [2002] RPC 990, [2003] RPC 668 (CA), [2003] RPC 668, the leading case on the special exception under s60(5) of the Patents Act 1977
• Asahi v Macopharma [2002] EWCA Civ 466, CA, correct approach to assessing inventive step

Trade mark

• Sauflon Pharmaceutical v Novartis, High Court, Oct 2011, interim injunction to restrain comparative advertising
• B Sky B v Digital Satellite, High Court, [2011 ] EWHC 2662 (Ch), [2011] EWHC 2636 (Ch), summary judgment relating to alleged mis-selling of extended warranties for satellite TV equipment; stay of proceedings due to settlement

• Hasbro v 123 Nahrmittel GmbH [2011] FSR 21 "Play-Doh" trade mark vs "The Edible Play Dough", descriptive use, honest practices in industrial and commercial matters ; [2011] EWHC 548, scope of injunction
• Unilever v British National Party (High Court, 2010) use of Marmite name and logo in political election broadcast; interim injunction
• Birds Eye v Northern Foods (High Court, 2010) "Better than Birds Eye"; food industry, labelling regulations, use of competitor's trade marks in comparative advertising; interim injunction
• MSC v MSC Europe (High Court, 2009) community trade marks, shipping industry, Article 111 defence under CTMR
• Cellestis v Oxford Immunotec (High Court, 2009) medical testing kits, use of competitor's trade marks in comparative advertising
• Burberry v Southover (High Court, 2008) counterfeiting
• Knoll AG’s trade mark [2003] RPC 175, [2003] RPC 681,"bad faith" and over-broad specifications
• Proctor & Gamble v Wisdom Toothbrushes (2002) IPD 25012, interim injunctions on new products
• D Green & Co (Stoke Newington) v Regalzone [2002] ETMR 22, CA, partly descriptive, partly distinctive marks; nature of descriptive use
• PAG v Hawk-Woods Limited [2002] FSR 46; summary judgment, use of mark to denote intended purpose of goods
• Decon Laboratories v Fred Baker Scientific [2001] RPC 293, over-broad specifications, consequences for infringement
• Raleigh International trade mark [2001] RPC 202, relationship between similarity of goods and similarity of marks with respect to likelihood of confusion

Copyright

• Adelphi Masterfil v Filling and Capping Machines [2011] EWHC 1970 (Ch), infringement of copyright in operating manual, breach of contractual undertaking

• Unilever v British National Party [2010] FSR 33, use of Marmite name and logo in political election broadcast; interim injunction
• Harrison v Streetwise, [2010] FSR 25 moral rights (derogatory treatment, false attribution)
• Telkom v Manor, High Court, 2009, copyright in sales brochures, conversion
• Aston Martin Lagonda v CLF Technologies, High Court, 2008, copyright in source code
• Weight to Go v Bowater, High Court, 2008 ex-employee removing a quantity of copyright material, injunction granted
• Royal Mail Group v i-CD Publishing [2004] ECDR 18, copyright protection for databases before and after the Database Directive
• Lambretta v Teddy Smith (UK) [2003] RPC 41, relationship between copyright and design right as regards fashion clothing, surface decoration

Registered design
• Nike v Outlook Sports (High Court, 2006); community registered design, prior use (golf clubs)
• Oakley Inc v Animal [2004] EWHC 1303 (Ch); sunglasses, extent of disclosure obligation with respect to pleadings
• Thermos v Aladdin [2002] FSR 11 (CA), vacuum flasks, degree of protection for striking design, role of expert evidence

Design right

• Pro-Tec Covers v Specialised Covers Limited [2011] EWPCC 023; action for infringement of UK design right relating to caravan covers

• Kohler Mira v Triton (High Court, 2010) action for infringement of Community and UK design right relating to showers
• Red Spider v Omega, [2010] EWHC 59 (water injection valves for oil industry, method or principle of construction
• Plum Products v Tube Plastics (High Court, 2009) interim injunction relating to design right in trampoline surrounds
• Helmet Integrated Systems Ltd v Tunnard [2006] FSR 41, [2007] FSR 16, CA; employee's fiduciary obligations and duty of fidelity, ownership of intellectual property created whilst employed
• Dyson v Qualtex [2005] RPC 19, [2006] EWCA Civ 166 (CA), vacuum cleaners, degree of protection given to spare parts, terms of design right protection, must-fit and must-match exceptions
• Ultraframe v Eurocell (Disclosure) [2005] FSR 2, disclosure obligation in design right cases, "commonplace designs"
• Lambretta v Teddy Smith (UK) [2003] RPC 41, relationship between copyright and design right as regards fashion clothing, surface decoration

Passing off

• B Sky B v Digital Satellite, High Court, ] EWHC 2662 (Ch), [2011] EWHC 2636 (Ch), summary judgment relating to alleged mis-selling of extended warranties for satellite TV equipment; stay of proceedings due to settlement

• Hasbro v 123 Nahrmittel GmbH [2011] FSR 21 "Play-Doh" trade mark vs "The Edible Play Dough" ; [2011] EWHC 548, scope of injunction
• Unilever v British National Party (High Court, 2010) use of Marmite name and logo in political election broadcast; interim injunction
• Strip Limited v Strip Pte [2009] EWHC 2070 interim injunction to restrain foreign-owned waxing salon entering UK market
• B Sky B v Reynolds (High Court, 2008) substantial damages enquiry for passing off
• MedGen v Passion for Life Products [2001] FSR 496, ownership of goodwill between UK distributor and foreign manufacturer

Breach of Confidence
• B Sky B v Digital Satellite, High Court, Oct 2011, summary judgment relating to misuse of customer confidential information

• Sesame v Click, High Court, May 2010, ability of third parties to recover damages on a cross-undertaking relating to misuse of confidential information
• Microtek Medical v Shipley, High Court, 2009, interim injunction to restrain breach of confidence in relation to customer price information
• Aston Martin Lagonda v CLF technologies, High Court, 2008 (breach of confidence in source code)
• Weight to Go v Bowater, High Court, 2008 ex-employee removing a quantity of confidential material, injunction granted

Databases
• B Sky B v Digital Satellite, High Court, Oct 2011, subsistence of database right in customer records
• Nominet v Francis-Macrae, High Court, 2004 (mining the database of Nominet, the UK internet naming agency, so as to send out unauthorised renewal invoices)
• Royal Mail Group v i-CD Publishing [2004] ECDR 18, database right in the Royal Mail's Postcode Address File

Information technology cases

• Seiko Epson v DCI, 2011 (printers and print cartridges)

• Seiko Epson v Medea, 2010 (printers and print cartridges)

• Phillips, Sony, Samsung et al v Alba, Amino, 2008 (the “MPEG-2 patent portfolio”, which relates inter alia to DVD and digital television technology)

• CTI Group v British Telecom 2007 (telephone billing systems)

• SanDisk v Phillips, Sony, et al, 2006 (the “MPEG-1 patent portfolio”, which relates inter alia to MP3 players)

• Essex Business and Careers Partnership v Microdec, 2003 (employment services software)

• Glass’s Guide v Logica, 2003 (automotive industry information systems)

• Anker Systems v Jawad, 2002 (retail information systems)

• Frontline Technology v Rushton et al, 2001 (education attendance monitoring software)

European Patent Office cases

• University of Greenwich's application (restitutio in integrum); Board of Appeal [2009] EPOR 39
• EP 1 475 024 (Thomas Daniels Jr.) entitled "Beverage Mixer", Opposition Division
• EP 0 670 870 (Ameron, Inc) entitled “Polysiloxane coating”; Board of Appeal
• EP 0 848 846 (ODS Technologies, LP) entitled “Interactive wagering systems and processes”; Board of Appeal
• EP No. 0 359 358 (in the name of Showa Aluminium KK) entitled “A condenser”; Opposition Division, and Board of Appeal
• EP No. 0 595 601 (Showa Aluminium KK) entitled “Brazeable aluminium material and a method of producing same”; Opposition Division, and Board of Appeal
• EP 0 219 974 (Modine Manufacturing Company) entitled “Condenser with small hydraulic diameter flow path”; Opposition Division, and Board of Appeal
• EP 0 517 702 (Stanley Rokicki) entitled “Pultruded Fibreglass Framing Sections”; Opposition Division
• EP 840 893 (Cohesive Technologies) entitled “Highly Efficient Liquid Chromatography Process and Chromatographic Apparatus therefor” Opposition Division, and Board of Appeal
• EP 710074 (Unilever plc) entitled “Ice Confections”, Board of Appeal
• EP 328257 (Optical Coating Laboratory Inc) entitled “Magnetron sputtering apparatus and process”, Board of Appeal
• EP 0 732 101 (Deprenyl Animal Health) entitled “Use of L-deprenyl for retarding age dependent deterioration of the immune system function in mammals”; Opposition Division, and Board of Appeal
• EP 0 473 252 (Deprenyl Animal Health) entitled “Use of L-deprenyl for retarding deterioration due to aging”, Opposition Division, and Board of Appeal
• EP 779809 (Deprenyl Animal Health) entitled “Use of Selegiline to prolong life span”; Examination Division
• EP 0623344 (Ceva Sante Animale) entitled “Use of Selegiline in veterinary medicine”; Opposition Division
• EP 728014 (Prodigene, Inc) entitled “Vaccines expressed in plants” Board of Appeal

Franchising
• Compensation Specialists v Compensation Claims Service [2003] EWCA Civ 1108, CA

Personal interests
• Gap year 1990-91 teaching English in Kagoshima, Japan; awarded brown belt in full-contact karate; prize winner in prefectural karate tournament for best performance, though losing to a former sumo wrestler; passed Japanese Government language proficiency test (6000 words/1000 characters level).
• Governor, the Contemporary Dance Trust.