Daniel Selmi

Called to the bar 2013 Junior

BIOGRAPHY

Daniel has an extremely broad and busy intellectual property practice, spanning the full range of hard (patents) and soft (trade marks, passing off, copyright, designs etc.) IP.

In addition to extensive advisory and drafting work, he regularly appears at the UK Intellectual Property Office (UK IPO), at first instance and on appeal. In 2019, he was one of the most frequently instructed barristers at the UK IPO and acted in one of the first, if not the first ever, extended form passing off actions in relation to services.

In addition, Daniel is regularly instructed on his own in the Intellectual Property Enterprise Court (IPEC) and High Court, and he also has international experience in the European Patent Office (EPO) and European Union Intellectual Property Office (EUIPO), at first instance and on appeal. His recent clients include Apple, Breitling and Which? Limited.

Daniel has also been instructed as a junior in many major pieces of litigation in the High Court and Court of Appeal and is currently acting for (or has recently acted for) the following clients: Aspire Pharma & Actavis (High Court, patent), The Physio Network (High Court, databases), ClearCorrect (High Court, patent), Resman AS (High Court, patent), ZyXEL (High Court, patent), Napp Pharmaceutical Holdings (High Court, patent) and Fidelis (High Court and Court of Appeal, trade marks/passing off).

A selection of Daniel’s cases can be found below and on his downloadable CV (current as of February 2020).

Prior to coming to the Bar, Daniel completed an undergraduate Masters degree in Molecular and Cellular Biochemistry at the University of Oxford, achieving a high Distinction in the preliminary examinations and graduating with 1st class (Hons) in 2005. He was the only life scientist accepted onto the Life Sciences Interface Doctoral Training Centre (LSI DTC) programme at the University of Oxford, which provided comprehensive postgraduate training in mathematical, physical, computational and engineering science techniques. As a result of this breadth, he is able to grasp all areas of science and technology.

Daniel subsequently undertook a DPhil (PhD) in Condensed Matter Physics at Oxford titled “DNA Lattices and Protein Arrays: Novel Approaches to Biological Structure Determination”, which was awarded in 2010. His DPhil thesis was examined as “exceptional for a PhD student” and “timely, thought-provoking, and ground-breaking”. He subsequently continued his research at postdoctoral level and was elected a Fellow of St Cross College, Oxford University.

During his subsequent legal training, Daniel obtained the top scholarship for both the law conversion (GDL) and Bar training (BPTC) years from Lincoln’s Inn. During his GDL year, he won the prestigious ESU-Essex Court Chambers National Mooting Competition and went on to represent the UK (and win) the 13th Commonwealth Mooting Competition, where he was named the best individual mooter in the final. Clients have since praised his advocacy as “brilliant” and “totally outclassing the competition”.

EDUCATION AND TRAINING

2013-2014: 12-month pupillage at Three New Square, to Tom Hinchliffe, Tom Mitcheson, Simon Malynicz and Geoff Pritchard, covering all aspects of Intellectual Property law

2012-2013: Bar Professional Training Course, City University
Awards: Lord Mansfield Scholarship (top BPTC scholarship); Shelford Pupillage Scholarship
Mooting: Winner (UK team) & Best Individual Mooter, 13th Commonwealth Mooting Competition, Cape Town, South Africa (Awarded the Commonwealth Shield, 2013)

2011-2012: Graduate Diploma in Law, Oxford Brookes University (Distinction)
Awards: Hardwicke Entrance Award; Lord Bowen Scholarship (top GDL scholarship)
Mooting: Winner of the ESU-Essex Court Chambers National Mooting Competition (Awarded the Silver Mace, 2012); Winner of the Oxford Inter-Varsity Moot (2012)

2009-2011: St Cross College, Oxford University, Junior Research Fellow
Awards: BBSRC Postdoctoral Research Fellowship (postdoctoral award – research grant ranked 1st/~150 overall)

2006-2009: St Hugh’s College, Oxford University, DPhil in Condensed Matter Physics (Bionanotechnology): “DNA Lattices and Protein Arrays – Novel Approaches to Biological Structure Determination”
Awards: EPSRC Doctoral Prize Fellowship (postdoctoral award – top 10% of PhD students)

2005-2006: St Hugh’s College, Oxford University, Life Sciences Interface Doctoral Training Centre (transitioned from the Life-Sciences into the Mathematical, Physical & Computational Sciences)
Awards: EPSRC Graduate Studentship (PhD scholarship)

2001-2005: St Hugh’s College, Oxford University, MBiochem (Hons) degree in Molecular and Cellular Biochemistry (Distinction, 1st Class)
Awards: Mary Lunt Scholarship (undergraduate scholarship at St Hugh’s college); Book Prize (1st class in Finals); Fulford Scholarship (graduate scholarship at St Hugh’s college)

SECONDMENT EXPERIENCE

Following completion of his pupillage, Daniel chose to spend nearly one and a half years on secondment at three leading solicitors’ firms (2014-2016), in order to gain experience working on both sides of the litigation team (which he thoroughly enjoys). As a result, he understands the demands that solicitors face and is responsive and able to work accordingly. In addition, he gained in-depth patent experience in the fields of life sciences, engineering/physics and telecommunications, principally:

TCT Mobile Europe SAS v. Telefonaktiebolaget LM Ericsson (2014-15) (Infringement and validity of 3 patents (highest technical rating of 5) concerning speech coding technology for mobile telecommunications)

Wobben Properties GmbH v. Siemens [2015] EWHC 2114 (Pat) (1-week trial of a patent action concerning a method of operating a wind power station)

• Warner-Lambert Company LLC v. Teva UK Ltd. (2015) (Patent action concerning pregabalin dispensing practices)

Celltrion v. Biogen & Others (2015) (3-patent action concerning rituximab dosage regimes)

Teva v. Astra Zeneca (2017) (Multi-jurisdictional 3-patent action concerning Fulvestrant)

• TQ Delta LLC v. ZyXEL [2017] EWHC 3305 (Pat) (2-patent action concerning ADSL2/2+, VDSL2 technology)

CASE EXPERIENCE (SELECTION)

Since returning to Chambers full-time as a barrister in 2017, Daniel has been instructed on a large number of cases, as set out below.

PATENTS

• Alcon v. Aspire & Actavis (HC 14 D02730 & HP 15 000003) (instructed in two actions concerning generic travoprost products)

• Instructed in a 2-day opposition at the EPO against EP 2793618 in the name of The Coca-Cola Company

Resman AS v. Tracerco Ltd. (HP-2017-000073) (Instructed in a 1-week trial concerning the infringement and validity of a patent for reservoir monitoring. Settled weeks before trial in February 2019)

• TQ Delta LLC v. ZyXEL [2017] EWHC 3305 (Pat) (Instructed as junior counsel in the CMC of a 2-patent action concerning ADSL2/2+, VDSL2 technology)

• Align Technology, Inc. v. ClearCorrect (HP-2017-00007) (Instructed in a 2-week trial concerning the infringement and validity of 4 patents relating to orthodontic appliances. Adjourned shortly before trial and then settled in March 2019)

Napp Pharmaceutical Holdings Ltd. v. Dr Reddy’s Ltd. & Sandoz Ltd. [2016] EWHC 1517 (Pat) (Instructed in several pre-trial hearings in a 2-patent action concerning trans-dermal patches for pain relief. Appeal to CoA: [2016] EWCA Civ 1053)

Actavis v. Lilly [2015] EWCA Civ 555, [2015] EWCA Civ 666 (Assisted in the appeal to the CoA of this seminal dispute concerning pemetrexed, which involved complex issues of foreign law as well as fundamental issues relating to the construction of patents. Appeal to the Supreme Court: [2017] UKSC 48)

• T 2154/14 (Daptomycin II/CUBIST PHARMACEUTICALS. Assisted in this appeal at the EPO relating to the use of daptomycin in treating bacterial infections)

Philips v. Nintendo [2014] EWHC 1959 (Pat), [2014] EWHC 3172 (Pat), [2014] EWHC 3177 (Pat) (Assisted with pre-trial preparation and the form of order hearing in relation to a 1-week 3-patent trial concerning Nintendo Wii consoles)

Hospira v. Genentech [2014] EWHC 1094 (Pat) (Assisted with pre-trial preparation and in a 9-day 2-patent trial concerning trastuzumab antibody purification and dosing regimens)

• Samsung v. Apple [2014] EWCA Civ 376 (Assisted in Apple’s application for an order requiring Samsung to elect between this appeal and its central amendment applications. Patents related to channel coding in mobile telecommunication systems)

• Teva v. Amgen [2013] EWHC 3711 (Pat) (Assisted in Amgen’s application to substitute one of the defendants in this patent & SPC infringement/invalidity/declaratory relief action concerning GCS-F polypetides)

TRADE MARKS / PASSING OFF / COPYRIGHT / DESIGNS

Trade Marks & Passing Off

• BL O/029/20 (Instructed in an appeal to the Appointed Person in relation to an opposed figurative trade mark)

Apple v X (IP-2019-000172) (Instructed in an IPEC action for infringement/passing off of Apple’s marks)

• Case 23 241 C (Instructed at the EUIPO in trade mark invalidity proceedings against the mark LIFE. Currently under appeal to Board of Appeal)

• O/776/19 & O/777/19 (Instructed at the UK IPO in parallel revocation and opposition proceedings against the trade mark ABANKA)

• O/702/19 (Instructed at the UK IPO in cancellation proceedings against the mark DYFLEX)

• O/640/19 (Instructed at the UK IPO in one of the first, if not the first ever, extended form passing off actions in relation to services)

• O/587/19 (Instructed at the UK IPO in a trade mark opposition to the mark FRENCH DREAM)

• BL O/385/19, [2019] 6 WLUK746 (Instructed in an appeal to the Appointed Person concerning invalidity of CHEVRON trade marks)

• Case R 1145/2019-4 (Instructed in an appeal at the EUIPO to the registration of the mark ADEPT)

• Lease Comparison Limited v. Carparison Limited (IP-2019-000052) (Instructed in an IPEC passing off action. Trial in 2020)

Fantex Limited v. Berendsen Healthcare & UK Ltd (IL-2019-000033) (Instructed in a High Court action relating to trade mark infringement/passing off of FANTEX antimicrobial hospital curtains. Settled before damages inquiry)

• O/032/19, [2019] 1 WLUK 316 & O/056/19 (Instructed in a trade mark invalidity appeal to the Appointed Person concerning the trade mark Reprolene)

• Unilever v. various (IP-2018-000174, IP-2018-000179, IP-2018-000194, IP-2019-000023) (Instructed in 4 separate IPEC actions relating to trade mark infringement/passing off of UNILEVER marks. Settled before damages inquiries)

• Fidelity v. Fidelis [2018] EWHC 667 (Ch), [2018] EWHC 1097 (Pat), [2018] EWHC 2074 (Ch) (Instructed as junior counsel in a 4-day trial relating to trade mark infringement/passing off of Fidelity’s trade marks. Settled shortly before appeal in November 2019)

• TVM Management Co Ltd v. District Enforcement Ltd (IP18S00077) (Instructed in a 1-day IPEC trial involving copyright infringement and passing off. Settled several days before trial in September 2019)

Breitling v. Moshe, Taktak, Garcia (IP18S00025) (Instructed in a 1-day IPEC trial in relation to trade mark infringement of Breitling’s marks)

• O/738/18 (Instructed at the UK IPO in revocation proceedings against the mark TWINKLE)

• Prefabricated Access Suppliers v Circle Safety Training Ltd (IP-2017-000214) (Instructed in an IPEC trial involving trade mark infringement / passing off. Settled the week before trial in October 2019)

HBI Europe Gmbh v. MMS Wholesale Ltd. (IP-2017-000184) (Instructed in a 1-day IPEC trial relating to trade mark infringement/passing off of HBI’s RAW trade marks. Settled the week before trial in December 2018)

• O/556/17 (Instructed at the UK IPO in opposition proceedings to the mark MGM MUTHU HOTELS)

• O/462/17 (Instructed at the UK IPO in opposition proceedings to the mark ROYAL CIRCUS)

• Pho Holdings Limited v. Pho Street Limited (HC-2017-00070) (Instructed in a High Court passing off action in relation to Vietnamese restaurants. Settled)

Pizza Express v One Delivery Limited (IP16S00008) (Instructed in a trademark/copyright infringement/passing off action (IPEC). Settled before damages inquiry)

Enterprise v. Europcar [2014] EWHC 2498 (Ch), [2015] EWHC 17 (Ch), [2015] EWHC 300 (Ch) (Assisted with pre-trial preparation including Enterprise’s application to adduce survey evidence for a 1-week trial for trade mark infringement/passing off in relation to Enterprise ‘e’ logos. Assisted with the scope of various remedies post-judgment)

Indian Motorcycle v. Indian Motorcycle O-439-14, [2015] RPC 15 (Assisted in a trade mark appeal to the Appointed Person concerning invalidity and revocation claims brought by the applicant)

The Coca-Cola Company v. OHIM (2014) (Assisted in preparing oral submissions on behalf of the applicant for annulment in a trade mark appeal to the General Court)

• Comic Enterprises Ltd. v. Twentieth Century Fox [2014] EWHC 185 (Ch) (Assisted with the form of order hearing following a 5-day trade mark infringement/passing off action concerning ‘Glee’ marks)

Nestlé v Cadbury [2014] EWHC 16 (Ch) on appeal from O/257/13 (Assisted in this appeal from the UKIPO concerning the registrability of Kit Kat’s 3D shape and in the subsequent reference to the CJEU for a preliminary ruling)

Copyright

Voodoo v. Rollic Games & Hero Games (2020) (Instructed as junior counsel in a High Court action for copyright infringement concerning one of the most successful free-to-play video games)

Lawspeed Ltd v. Jackie Kerr Ltd (2019) (Instructed in an IPEC action concerning copyright in privacy notices. Settled)

Amtico International Limited v. Luxury Flooring (IP-2019-000053) (Instructed in a High Court action relating to copyright infringement in vinyl flooring. Settled)

• TVM Management Co Ltd v. District Enforcement Ltd (IP18S00077) (Instructed in a 1-day IPEC trial involving copyright infringement and passing off. Settled several days before trial in September 2019)

• Goulding v Bedford (IP16S00053) (Instructed in several interim applications and in a 1-day IPEC damages inquiry in relation to copyright infringement/licensing of swim-wear images)

The Entertainer (Amersham) Ltd. v. The Entertainer FZ LLC & Others [2016] EWHC 344 (Ch) (Assisted the claimant in resisting the transfer to the IPEC of a trademark infringement claim relating to THE ENTERTAINER marks)

Pizza Express v. One Delivery Limited (IP16S00008) (Instructed in a trademark/copyright infringement/passing off action (IPEC). Settled before damages inquiry)

• Penyards Property Management v. Mr Graham Evans & Others (HC-2015-005122) (Instructed as junior counsel in a trademark infringement/passing off action. Settled before trial)

• Enigma Imports (UK) Ltd v. Vina Trade (Europe) Ltd (IP-2015-00005) (Instructed in a summary judgment application and in a 2-day IPEC trial concerning copyright and UK/C-UDR infringement in statues. Settled on the first day of trial in June 2016)

• Omnibill v. EPGSXXX Ltd [2014] EWHC 3762 (IPEC) (Assisted in several applications and in a 1-day IPEC trial concerning copyright infringement in images on adult websites)

Design Rights

Global One-Pak Ltd v. Easy Cleaning Solution Ltd (2019) (Instructed in an action for infringement of Community registered designs)

Target Sports Ltd v. Legend Darts Ltd (2019) (Instructed in an action for infringement of unregistered design rights)

DAMAGES INQUIRIES

• Health & Case Management Limited v The Physiotherapy Network (UK) Ltd [2018] EWHC 869 (QB) & (BL-2018-002432) (Instructed as junior counsel following the trial of this action in a 1-week damages inquiry for sui generis database infringement. Settled several weeks before trial in January 2020).

• Goulding v Bedford (IP16S00053) (Instructed in several applications and in a 1-day IPEC damages inquiry in relation to copyright infringement/licensing of swim-wear images)

PUBLICATIONS

Scientific

• Adamson R.J., Sharp T.H., Selmi D.N., Goddard A.D., Gilbert R.J.C., Turberfield, A.J. and Watts A. Probing GPCR-G-alpha interactions: A functional study by EM and SPR. European Biophysics Journal with Biophysics Letters 42 (2013) S172-S172

• Selmi D.N., Adamson R.J., Attrill H., Goddard A.D., Gilbert R.J.C., Watts A. and Turberfield A.J. (2011) DNA-templated protein arrays for single-molecule imaging. Nano Letters 11(2): 657-660

• Selmi D.N., Attrill H., Watts A., Gilbert R.J.C. and Turberfield A.J. (2011) Observation of Structural Changes on Activation of the NTS1 G-Protein-Coupled Receptor on DNA-Templated Protein Arrays by Cryo-EM. Biophysical Journal 98(3)

• Selmi D.N. and Turberfield A.J. (2009-2011) Method of Preparing Polypeptides for Cryo-Transmission Electron Microscopy (Cryo-EM) and Structure Determination Using DNA Lattices. WO 2011/012844 A1

As a second-year undergraduate student, Daniel developed a keen interest in neuropharmacology. He proposed the notion of complex neuropsychobiological interactions between certain drugs, which rationalised a large amount of experimental data and led to publications in the Journal of Neural Transmission and Journal of Psychopharmacology, where he was attributed.

Legal

• The evolving impact of Sky v Skykick on national and EU trade marks (17 October 2019) (link)

• Missed Opportunity Sky v Skykick (30 January 2020) (link)

• Brexit Creates Long-Term Uncertainty in U.K. Trademark Law (3 February 2020) (link)

PERSONAL

• Coached the Oxford team at the Oxford IP International Moot (2017); Judge (2019)

• Competitive powerlifting between 2007-2009 (Varsity, national and international. Oxford University Sportsman of the Year, 2008). Currently re-training for British Powerlifting Nationals (Masters)

• Competitive Olympic weightlifting between 2009-2011. Currently re-training for British Weightlifting Nationals (Masters)

• Various martial arts