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Paul A. Harris
Paul Harris is the senior partner (IP Litigation) at Venner Shipley with over 35 years of experience in IP cases. He has worked in contentious matters relating to patents, covering a wide variety of technologies including complex chemical cases, pharmaceuticals, electronics and mechanical patents. Notably, he handled the successful defence of Black & Decker in an action brought by Electrolux, the outcome of which lead 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 also 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 again successful for Stanley Black & Decker in enforcing its trade marks against a former distributor, as well as being involved in the extended passing off case: Fage v Chobani. Paul's skill and experience in analysing strategic IP matters is often called upon, from trade mark problems and licensing strategies, to patent analysis and assessment.
Paul enjoys his commitment to lecturing new IP practitioners on trade mark law for the Oxford University IP Graduate Diploma course.
Now that the new section 24(1A) of the Trade Marks Act 1994 is in force, what practical steps should be taken when transferring a business to ensure that trade marks that are required to be retained are not inadvertently assigned to the purchaser? Is there any guidance as to the circumstances in which the presumption in favour of transfer will not apply?
Where a trade mark coexistence agreement is silent on successors-in-title, will the agreement be binding on the successor-in-title in an asset purchase transaction?
Chartered Institute of Trade Mark Attorneys
Chartered Institute of Patent Attorneys
AIPPI, UK Council Member
INTA Committee Member
Royal Society of Chemistry
Case Analysis Panel
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