Jeremy Heald

Jeremy Heald

Called to the bar 2010 Junior

Practice Area

Jeremy has a broad intellectual property practice, with a particular focus on patents, trade marks/passing off and rights in software (copyright, confidential information).

He has worked for clients from a wide range of industries including pharmaceuticals, biotechnology, medical devices, telecoms, software, automotive, financial services, retail, food, clothing, education, music and entertainment.

He has extensive experience appearing both with and without a leader in proceedings before the High Court and the Intellectual Property Enterprise Court. He also regularly acts in trade mark registration proceedings.

His advisory experience ranges from general advice on the merits of a claim/defence to detailed advice on specific points, examples of which are given below.

Cases

Trade marks and passing off
Court of Appeal

  • JW Spear v Zynga (judgment pending) – appeal against the trial judgment in dispute as to whether the use of the name SCRAMBLE for a game infringed JW Spear’s rights in the word SCRABBLE
  • JW Spear v Zynga [2013] EWCA Civ 1175; [2014] FSR 14 – validity action relating to whether a three-dimensional ivory-coloured tile bearing a letter and a number on its top surface was capable of graphical representation within the meaning of art. 2 of Directive 2008/95

High Court

    • JW Spear v Zynga [2013] EWHC 3348 (Ch) – trial of trade mark infringement and passing off claim regarding whether the use of the name SCRAMBLE for a game infringed JW Spear’s rights in the word SCRABBLE
    • Stichting BDO v BDO Unibank [2013] EWHC 418 (Ch) – dispute regarding the use of the name BDO between a network of accountancy firms and Filipino bank
    • Samuel Smith Old Brewery (Tadcaster) v Philip Lee (t/a Cropton Brewery) [2011] EWHC 1879 (Ch) – infringement action relating to beer trade marks

Intellectual Property Enterprise Court/Patents County Court

      • Sussex Heights (Brighton) Ltd v Coady [2012] EWPCC 36 – preliminary issue on whether case had settled

UK Intellectual Property Office (Appointed Person)

      • THE SWINGING BLUE JEANS (BL O/148/14) – appeal against a refusal of an application for rectification which raised issues as to the meaning of “error or omission” and “a matter affecting the validity of the mark” for the purposes of s. 64 of the Trade Marks Act 1994

UK Intellectual Property Office (Trade Marks Registry)

      • BOSSERT (BL O/449/12) – final hearing of opposition
      • THE SWINGING BLUE JEANS (BL O/392/12) – final hearing of rectification action

Patents
Court of Appeal

      • Generics (UK) v Yeda & Teva [2013] EWCA Civ 925; [2014] RPC 4 – appeal in revocation/non-infringement action relating to Copaxone (glatiramer acetate), a drug used in the treatment of multiple sclerosis

High Court

      • Hospira v Genentech [2014] EWHC 1094 (Pat) – revocation/non-infringement action relating to patents for a dosing regimen and formulation of Herceptin (trastuzumab), a drug used in the treatment of breast cancer
      • Samsung v Apple (404 Patent) [2013] EWHC 468 (Pat) – infringement/invalidity action relating to a telecoms patent
      • Generics (UK) v Yeda & Teva [2012] EWHC 1848 (Pat) – revocation/non-infringement action relating to Copaxone (glatiramer acetate), a drug used in the treatment of multiple sclerosis

Intellectual Property Enterprise Court

      • Brundle v Perry [2014] EWHC 475 (IPEC) – infringement action relating to a patent for a fence bracket

Copyright

    • Omnibill v EPGSXXX Ltd [2014] EWHC 3762 (IPEC) – appeared for the Second Defendant in this action relating to infringement of copyright in images used on competing websites.
    • Instructed in a number of disputes relating to rights in software, including allegations that source code has been obtained from former employees and by reverse engineering

Advisory Experience

Trade marks and passing off

  • Trade mark infringement by search engine operators in light of the CJEU decisions in the Google AdWords cases
  • Infringement of a three dimensional trade mark for the design of a car part
  • Infringement of a trade mark registered for clothes by the use of a sponsor’s logo on team replica clothing
  • Responding to use evidence filed by a trade mark proprietor in proceedings for revocation on the grounds of non-use
  • Conflict between businesses having long-standing use of similar names arising as their markets begin to overlap

Patents

  • Entitlement to priority
  • Interpretation, validity and enforcement of a licence agreement

Copyright

  • Comparison of code bases to establish whether a substantial part of one has been reproduced in the other
  • Licensing, including drafting and disputes

Procedure

  • Choice of forum: The relative merits of bringing a claim in the High Court, the Intellectual Property Enterprise Court, the UK IPO or OHIM
  • The sui generis Patents County Court procedural and costs rules, including the PCC small-claims track
  • Privilege, including the protection of communications with patent and trade mark attorneys
  • Orders for letters of request for the examination of witnesses in foreign jurisdictions

Professional Memberships

Education

  • 2008: BSc (Hons), First Class, Mathematics and Physics, University of Durham
  • 2009: Graduate Diploma in Law, Nottingham Law School
  • 2010: Bar Vocational Course, Nottingham Law School

Personal Interests

Jeremy is currently training for his private pilot’s licence

“A junior of recent call who has impressed numerous sources with his thorough preparation and well-developed arguments following high-profile instructions in patent and trade mark cases.”

Chambers & Partners 2015