Philip Harris

Call: 2014

Introduction

Philip had 30 years’ experience as a registered trade mark attorney and solicitor-advocate in in-house and private practice (latterly as a partner and Head of Department in a prominent London IP attorney firm), representing major international clients, before transferring to the Bar in 2014. He specialises in all aspects of contentious and non-contentious trade mark law and has experience of copyright, designs and other “soft” IP rights too.

Philip’s contentious practice includes infringement and passing off in the English courts, especially the Intellectual Property Enterprise Court where he was the first Trade Mark Attorney to appear as trial advocate. He also specialises in proceedings before the UK Intellectual Property Office and the Office for Harmonization in the Internal Market.  As a former trade mark attorney Philip has extensive experience of working with international clients, especially those in the EU, US and the Far East, and he can continue to receive direct instructions for advice and assistance from overseas trade mark and IP lawyers.

A Fellow of the Institute of Trade Mark Attorneys, Philip was its President from 2006-2008 and is still a Council Member. He serves on several committees and was recently appointed Chair of the Education Committee. From 2009-2012 he was a Board Member of the Intellectual Property Regulation Board, having led much of the work leading to its creation as a regulatory body under the Legal Services Act 2007, which included giving evidence to a parliamentary committee.

In his free time Philip plays bass guitar, mandolin and banjo with a celtic-rock band which has   appeared at major venues and festivals across the UK and in Europe.

What the directories say

Legal 500 mentioned Philip several times for his  past role as a Trade Mark Attorney and Solicitor, describing him as:

“Recommended”, 2002

“Highly rated”, 2005

“Highly recommended”, and “notable” 2007

Reported Cases

In over 30 years in practice Philip  has acted as advocate and/or instructing attorney in numerous cases, of which the following is a selection:

  • Strellson -v- Thornton & Ross (UKIPO Appointed Person appeal, Trade Marks Registry)
  • Powell -v- Turner [2013] EWHC 3242 (IPEC) (WISHBONE ASH)
  • EGL Gem Lab Ltd -v- Guillaume Margel, UKIPO O-426-10 (as instructing attorney)
  • Yakult Honsha Kabushiki Kaisha -v- Kavaklidere Europe, Case T‑276/09 (YAKUT)
  • Pfizer, Inc -v- Viaguara SA, OHIM Opposition No. 1115809 (VIAGUARA)
  • Volvo Trademark Holding Aktiebolag -v- City Motor Holdings, Nominet Dispute Resolution Service D00009730
  • American Express Company -v- CHC Internet t/a This domain name is FOR SALE, Nominet Dispute Resolution Service DRS Number 4610
  • Kustom Musical Amplification -v- OHIM, Case R 1035/2004-2 (Guitar shape) (and assisting on appeal to the CFI)
  • Hasbro, Inc -v- Enercon GmbH, Case C‑59/09 P (ENERCON)
  • Hasbro, Inc -v- Rudiger Flick, OHIM Case R0288/2003-1 (EUROPOLY)
  • Laboratoire de la Mer Trade Mark [2001] EWHC 492 (Ch) (as supervising/instructing trade mark attorney)
  • Compair Ltd -v- Naber & Co KG, OHIM Case R0590/1999-2 (COMPAIR)
  • CHLORALIT Trade Mark 1999 WL 111891 (as instructing trade mark attorney)

Recent Experiences

Recently Philip has been involved in or advised in relation to:

  • 3 passing off and trade mark infringement cases (one pro bono) , all coincidentally concerning complex issues of localised goodwill and invalidity;
  • A series of trade mark infringement cases concerning adulterated goods sold on Ebay;
  • An appeal in OHIM relating to “bad faith”
  • Database rights, trade mark rights and copyright in relation to event programming

Professional Associations

  • Institute of Trade Mark Attorneys Council Member 1998-2009, including President 2006-2008 and Chair of Disciplinary Committee 2004-6; Council Member 2012-date, including Chair of Education Committee
  • Associate Member, International Trade Mark Association (regular contributor to the INTA publication Trademark Cancellations)
  • Associate Member, Pharmaceutical Trade Marks Group

 


My Expertise