Paul A. Harris

Partner, Solicitor

Profile

Paul is an Intellectual Property Litigation partner with over 35 years of experience in intellectual property matters. He has worked in both non-contentious and contentious matters relating to patents, covering a wide variety of technologies including complex chemical cases, electronics and mechanical patents.

On the contentious side, he handled the successful defence of Black & Decker in an action brought by Electrolux, the outcome of which led to the Patents Court guidelines on experiments and expert’s reports. He was also involved in the erythropoietin litigation (Kirin Amgen) and stent litigation (Boston Scientific).

Paul is particularly noted in trade mark matters (registered and unregistered), having successfully litigated the first case under the Trade Marks Act 1994 (Wagamama Ltd v City Centre Restaurants plc). More recently, he was involved in the latest extended passing off case: Fage v Chobani.

Mr. Harris is also known for his confidential information practice and handled the Dyson v Strutt litigation, relating to misuse of confidential information, and the same litigation on important issues of costs. He also led the successful team in the First Conference v Bracchi case, which included executing an interlocutory search and seizure order against the defendant.

On the non-contentious side, Paul’s skill and experience in analysing and solving strategic IP matters is called upon by many international clients. It ranges from trade mark problems and licensing strategies, to patent analysis and assessment. He has also been instrumental in the negotiation and preparation of international licensing arrangements for patents and trademarks, and been involved in many non-contentious dealings including corporate support by way of due diligence relating to the sale of businesses and the licensing of the IP, preparation of multi-national licensing and cross-licensing arrangements (including co-existence agreements), and most notably the £2 billion sale to Du Pont of ICI’s film business. Paul has also overseen programmes for the registration of trademarks in many overseas jurisdictions. He also deals with the copyright and design right field, and has acted for a management buy-out team in relation to computer software and computer hardware.

Paul has lectured on both patents and trade marks, as well as confidential information. He is well-known domestically and internationally and has been invited to speak at international conferences as far afield as Bulgaria, Egypt, the UK and USA. He also teaches trade mark law on the Intellectual Property Diploma Course at the University of Oxford. He has written many articles over the years on both patents and trade mark issues.

Representative Matters

  • The Black & Decker Corporation v Dvize BV [2017] 3387 (Ch)
  • Icescape v Ice-World International & Ors [2017] EWHC 42 (Pat)
  • Fage UK Ltd v Chobani UK Ltd [2014] EWCA 5, and [2013] EWHC 3755 (Ch) – extended passing off action relating to yogurt.
  • Credit Suisse v Arabian Aircraft & Equipment Leasing Co [2013] EWCA Civ 1169 on appeal from EC (2013) – LTL QBD (Comm) (Judge Mackie QC) 24/04/2013 2013 EWHC 1094 (comm) – summary judgment application concerning aircraft finance and lease back agreement, considering analogous nature of leases and mortgages, the Court of Appeal confirmed the claimant could not change their case based on a skeleton argument in the absence of first amending their pleadings.
  • Dyno Holdings Ltd & Anor v DialARod Home Cover & Ors [2013] EWPCC 8 – trade mark infringement
  • Future Publishing v Edge Interactive Media – amendment to court order, February 2013
  • CONSUMER FOCUS TM – trade mark opposition before UKIPO, December 2012
  • Fage UK Ltd & Anor v Chobani UK Ltd & Anor [2013] EWHC 630 (Ch) – interim relief and permission for survey evidence, December 2012
  • First Conferences Services Ltd v Bracchi & Ors [2009] EWHC 2176 (Ch) – breach of confidence
  • SCHRIEBER TM – trade mark opposition before UKIPO, May 2009
  • Dyson Technology Ltd v Strutt [2007] EWHC 1756 – costs orders
  • The Black & Decker Corporation v OHIM (joined cases T-239/05; T-240/05; T-245/05; T-247/05; T-255/05; T-274/05 – T-280/05; Atlas Copco AB ECLI: EU: T: 2017) 
  • Dyson Technology Ltd v Strutt [2005] EWHC 2814 (Ch) – misuse of confidential information/restrictive covenant, November 2005
  • Philips Domestic Appliances & Personal Care BV v Salton Europe Ltd (part 20 claim v Electrical & Electronic Ltd) – software in respect of coffee makers – this case has now become the leading authority on what constitutes “authorisation” of one entity by another to instigate infringement
  • Yellow and Black trade mark application in name of Black & Decker – appeal from TM Registry, 2004
  • Black & Decker v. ALM Manufacturing - Lawn edge trimmer technology, 2003
  • Amey Vectra Ltd. v. Vectra N. Jones and others – misuse of confidential information, 2002
  • G.N.C. trade mark application Vitality, 2000
  • E.R.A. Technology v. A.E.A. Technology – breach of fiduciary duty, copyright infringement, malicious falsehood, 1998
  • Boston Scientific v. Johnson & Johnson - stents (cardiography technology), 1997
  • Route 66 & Device in name of Andre and Mairade Levy - Trade mark Opposition, 1997
  • Electrolux Northern v. Black & Decker - lawnmowers (suck and hover), 1996
  • Wagamama v City Centre Restaurants plc [1995] FSR 713 (Ch.D)
  • INADINE TM [1992] RPC 421

Affiliations

  • International Trademark Association (INTA), Committee Member
  • International Association for the Protection of Intellectual Property, UK Council Member
  • Chartered Institute of Patent Attorneys
  • Institute of Trade Mark Attorneys
  • Royal Society of Chemistry

Recognition and Awards

  • Managing Intellectual Property, IP Stars - ranked in Trade Marks and Patents, 2017 and 2018 - 'Harris "is commercially savvy whilst being legally tactically astute".  A client also says Harris takes "time to listen and learn" in order to deliver successful outcomes.'
  • IAM Patent 1000, The World's Leading Patent Practitioners, 2017