SIMON MALYNICZ

Called to the Bar 1997

Practice Areas
His practice covers trade marks, passing off, designs, copyright, IT/computer software, media/entertainment, confidential information and patents. He also handles commercial cases with an intellectual property element.

He appears regularly before all the relevant tribunals including the High Court, Court of Appeal, Patents Court, Patents County Court, and UK Intellectual Property Office.

Extensive experience of the Luxembourg courts. To date he has acted in 18 references to the Court of Justice, covering diverse areas of IP such as copyright (Promusicae, AGEDI, LSG, SGAE, FA Premier League)  trade marks, (Intel, L’Oreal, Adam Opel, Arsenal, Bovemij, Interflora, Budweiser, UDV, DHL Express, IP Translator) registered designs (FEIA), supplementary protection certificates (AHP Manufacturing), and the Biotech Directive (Monsanto Technology). He has also acted in no less than 26 cases before the General Court on trade mark appeals from OHIM

ReCENT cases INCLUDE:
Trade mark/passing off

• Galileo Technology v. European Union [2011] High Court appeal on revocation for non-use

• Ineos Healthcare v. OHIM [2011]  - appeal to the GCEU pon pharmaceutical trade mark

• PAKI Logistics v. OHIM - acting for the UK government in appeal to the GCEU opposing registration of the trade mark PAKI on grounds of public policy. Judgment expected 2011.

• Interflora v. Marks & Spencer [2010] – reference to the ECJ on Google AdWords, acting for Interflora, judgment expected 2011.
• Budweiser v. Budvar [2010] – reference to the ECJ on acquiescence and damage to essential function, acting for the Czech brewer, judgment expected 2011.
• IP Translator [2010] – reference to the ECJ on OHIM practice concerning class headings, acting for the UK, hearing and judgment expected 2011.
• Vodkat (Diageo v. ICB) [2010]– High Court and Court of Appeal – extended form of passing off re spirit drinks, acted for ICB.
Copyright

• Football Dataco v. Yahoo - reference to the ECJ on database right and authors own intellectual creation standard (acting for the UK government). Judgment expected 2011. 

• NLA v. Meltwater [2010]– Copyright Tribunal and High Court proceedings concerning copyright infringement by online news aggregators. Acted in strike out proceedings.
• Deakin v. Cardrax [2010] - two week trial before the PCC concerning copyright in greeting cards and joint tortfeasorship.
• SGAE [2010], AGEDI [2008], LSG [2008] and Promusicae [2007], all references to the ECJ concerning various copyright directives, acted for the UK.
• PPL v. Attorney-General [2008] Francovich damages case against the government involving copyright exceptions and the Rental Rights Directive.
Patent

• MMI v. CellXion [2011] - High Court second trial on fresh evidence

• EPO Case G3/08 (Patentability of computer software.)[2010] Acted for the UK.
• Monsanto Technology [2010] – reference to the ECJ on the Biotech Directive, acted for the UK.
• MMI Research v. CellXion [2009], High Court and Court of Appeal, concerning telephone interception equipment.
• AHP Manufacturing [2009] a reference to the ECJ concerning supplementary protection certificates, acted for the UK.
Designs
• Kohler Mira v. Triton [2010] Community registered design and UKUDR in bathroom products. Interlocutory hearings in Patents Court, with trial due in 2011.
• Care Monitoring v. Burrell [2009], a five day Community design right and UKUDR trial in the PCC concerning patient monitoring devices.
• Fundacion Espanola para la Innovacion de la Artesania (‘FEIA’) [2008] the first reference to the ECJ on the Community Designs Regulation, acted for UK.
• Oakley v. Animal [2006], Court of Appeal – case concerning the UK’s implementation of the Designs Directive.

Other IT cases include Artificial Solutions v. Creative Virtual [2008] a five day trial before Arnold J and Mass Information Systems v. RBS, acting for RBS in a contractual dispute with an IT supplier.

FOI work includes acting for the Department of Work and Pensions in DWP v. Collingbourne [2010] a two day “trial” (hearing with cross-examination) before the First Tier (Information Rights) concerning trade secrets and the public interest.

Complete list of reported cases to date
• Diageo v. ICB (“Vodkat”) [2010] E.T.M.R. 57, Court of Appeal
• Pasticceria e Confetteria Sant Ambroeus Srl v G&D Restaurant Associates Ltd (“St Ambroeus”) [2010] RPC 28, Appointed Person
• Budejovicky Budvar Narodni Podnik v Anheuser-Busch Inc [2010] RPC 7, Court of Appeal
• Diageo North America Inc v Intercontinental Brands (ICB) Ltd [2010] RPC 12, High Court.
• AHP Manufacturing BV v Bureau voor de Industriele Eigendom (C-482/07) [2010] FSR 23, Court of Justice
• Fundacion Espanola para la Innovacion de la Artesania (FEIA) v Cul de Sac Espacio Creativo SL (C-32/08) [2010] RPC 13, Court of Justice
• L'Oreal SA v Bellure NV (C-487/07) [2010] RPC 1, Court of Justice
• Last Minute Network Ltd v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) (T-114/07) [2010] ETMR 35, Court of First Instance
• Interflora Inc v Marks & Spencer Plc, [2009] RPC 22, High Court
• Honda Europe v OHIM [2009] ETMR 34, Court of First Instance,
• Intel v CPM United Kingdom [2009] ETMR 13, Court of Justice
• Productores de Musica de Espana (Promusicae) v. Telefonica de Espana [2008] 2 C.M.L.R. 17, ECJ (Grand Chamber)
• MMI Research Ltd v. Cellxion Ltd [2008] F.S.R. 23, High Court
• Melly's Trade Mark Application; Oppositions of Fianna Fail and Fine Gael [2008] E.T.M.R. 42, Appointed Person
• Adam Opel AG v. Autec AG [2007] E.T.M.R. 33, Court of Justice
• Bovemij Verzekeringen NV v. Benelux-Merkenbureau [2007] E.T.M.R. 29, Court of Justice
• Miss World Ltd v. Channel Four Television Corp [2007] F.S.R. 30, High Court
• Valent Biosciences Trade Mark [2007] R.P.C. 34, UK IPO
• Efax Ltd's Trade Mark Application [2007] R.P.C. 26, UK IPO
• Tesco Stores Ltd v. Elogicom Ltd [2007] F.S.R. 4, High Court
• VITASOY International Holdings Ltd v. The Sunrider Corp (VITALITE Trade Mark) [2007] R.P.C. 29, High Court
• Oakley Inc v. Animal Ltd [2006] R.P.C. 9, Court of Appeal
• Julius Samann v. Tetrosyl [2006] E.T.M.R. 75, High Court
• Ajit Newspaper Inc's Trade Mark [2006] R.P.C. 25, Appointed Person
• Smirnova v. Smirnoff [2006] R.P.C. 16, UKIPO
• Bongrain (Cheese Shape) Trade Mark Application [2005] R.P.C. 14, Court of Appeal
• LOWDEN Trade Mark [2005] R.P.C. 18, High Court
• KML Invest AB's Trade Mark Application [2004] RPC 47, Appointed Person
• Arsenal Football Club v. Reed (No. 2) [2003] ETMR 36, High Court
• Arsenal Football Club v. Reed [2003] RPC 9, Court of Justice
• Adidas-Salomon AG v Microhaven Ltd [2003] ETMR 94, High Court
• Minsterstone Ltd v. Be Modern Ltd [2002] FSR 53, PCC
• FIRETRACE Trade Mark [2002] RPC 15, UK IPO
• Pearce v. Ove Arup Partnership Ltd [2002] ECDR, High Court
• Arsenal Football Club v. Reed (No.1) [2001] RPC 46, High Court
• Premier Luggage & Bags Ltd v. Premier Co (UK) Ltd [2001] FSR 29 [2001] ETMR 6, Court of Appeal
• BT v. Nextcall [2000] FSR 679, [2000] ETMR 943, High Court.

Legal 500 - Ranked in Band 1 (the top rank) of leading juniors in Intellectual Property in the Legal 500 where he is described as "authoritative, tenacious and user-friendly". He is also ranked as a leading junior for Media and Entertainment work, where he is described as "practical and commercial".

Chambers & Partners - Ranked in Band 1 among leading juniors for Intellectual Property, where it is said that he 'gets straight to the heart of commercial issues and provides the kind of creative advice that clients love." "Marked out for great things" he handles a variety of matters, but is particularly well regarded for his trade mark practice where he show himself to be "keen and hungry for good work."

He is on the Attorney General's Panel of Counsel (B Panel) and so acts for the UK government in high-profile cases.

Education
B.A. (Sydney), M.A. (New School, NY) LLB (Lond.)

Career
• Joined Hogarth Chambers from Clifford Chance's IP department in 1999.
• March 2008 appointed to the panel of Junior Counsel to the Crown representing the UK government in some of most high profile IP cases
• 2010 appointed to Attorney General’s Freedom of Information panel of Counsel
• Joined Three New Square in February 2011.