Simon Clark

Partner, Head of Intellectual Property

"Simon Clark gives tailored commercial advice, with clear recommendations and no fence-sitting" Legal 500 2014
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Simon has taken cases into these courts: Copyright tribunal, IP Enterprise court, High court, Court of appeal, supreme court and the European court of justice
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Biography

  • Head of firm’s Intellectual Property Group, specialising in all aspects of intellectual property law, including copyright and design rights, patents, trade marks, passing off and breach of confidence.
  • Solicitor Advocate with full Higher Rights in the Civil and Criminal Courts.
  • Described by Legal 500 and World Trademark Review as “outstanding”, listed as one of the 45 Trade Mark Leaders in the UK by World Intellectual Property Review 2016 and ranked as a leading individual in intellectual property in Chambers UK 2016 and WTR 2016.
  • Named as one of the Top 50 most influential people within the design industry by Design Week.
  • Honorary Secretary of BLACA (the British Literary and Artistic Copyright Association (BLACA).
  • Co-author of Intellectual Property, a text book published by Palgrave MacMillan currently in its sixth edition. Simon is also a contributor to the Trade Mark Handbook and sits on the Advisory Panel of Intellectual Property Magazine.

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Q&A

  • What are the most frequent issues clients are consulting you on currently?

    With the introduction of new cost budgeting rules and the need to ensure that litigation remains a commercially effective solution, we are increasingly agreeing alternative funding arrangements with clients. In particular, we have a specialised IP Enterprise Court team which can significantly reduce the cost and risks of litigation in appropriate cases. Design disputes have really taken off in the last 18 months. Cutting edge issues relating to online content and branding remain our busiest area, and it is now unusual for one of our IP cases not to involve an international dimension.
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Recent work

Simon's examples of work Simon's examples of work

Fat Face

Advising the clothing retailer Fat Face on trade mark, copyright and design matters.

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Monsoon/Accessorize

Advising Monsoon/Accessorize on copyright, design right and trade mark disputes, including actions against other retailers for selling alleged copies of their designs in the IP Enterprise Court, with Simon undertaking the advocacy.

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Markit

Managing the global trade marks portfolio and related IP advice for financial information company, Markit.

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Pentagram

Acting for one of the world’s leading design agencies, Pentagram, in respect of various IP issues, including both contentious and non-contentious advice.

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Cutbot v Newspaper Licensing Agency

Obtained a successful judgment from the Copyright Tribunal following a challenge to the terms of a copyright licence operated by the NLA, which licenses the use of newspaper content on behalf of the UK newspaper industry. The Tribunal rejected every challenge brought by Cutbot, a media monitoring company, and confirmed that there was no need for the NLA to change any of the terms of its licence or the amount of fees charged, which the Tribunal found to be fair and reasonable.

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Newspaper Licensing Agency, Meltwater & the PRCA

Acted for the NLA on a case which raised an important question about the application of copyright law to acts of browsing material on the internet. Ultimately the CJEU ruled that copies of copyright-protected web pages made in a user’s computer and on their screen when browsing the internet would be covered by the “temporary copies” exception. This ruling related to a narrow hypothetical issue, with the rest of the Court of Appeal’s judgment in our client’s favour remaining unaffected, including in particular the finding that newspaper headlines are capable of attracting copyright protection.

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London Taxi Co vs Frazer-Nash

Defending trade mark infringement and passing off proceedings brought against Frazer-Nash in relation to the shape of their new design of taxi. We succeeded on all our defences and a counterclaim to declare London Taxi Co’s shape trade marks invalid.

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Career highlights

Simon Clark Timeline
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