Paul Harris

Head of Litigation
Paul Harris

Background

Paul is Partner and Head of Litigation at Dehns, having joined the firm in 2021. He has 38 years’ experience in handling intellectual property matters: both non-contentious and contentious. In relation to patents, he deals with a wide variety of technologies including complex chemical cases, electronics and mechanical patents.

For patent litigation, Paul successfully defended Black & Decker in an action brought by Electrolux, the outcome of which led to changes in 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). More recently, Paul acted for the defendant in Icescape v Ice-World International: the first case to apply the doctrine of equivalence following Actavis v Eli Lilly.

Paul is also 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, and again was successful when acting for Stanley, Black & Decker in a trade mark infringement/jurisdictional battle involving a former distributor (The Black & Decker Corporation v Dvize).

He 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 has 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 has also had the privilege of teaching aspects of trade mark law on the Intellectual Property Diploma Course at the University of Oxford, since 1995. He has written many articles over the years, particularly on patent and trade mark issues.

Representative Matters

  • Horsham Nutraceuticals Ltd & Anor v Manna Pro Products LLC [2019] EWHC 1935 (Ch)
  • Icescape Ltd v Ice-World International BV and ors [2017] EWHC 42 (Pat), and [2018] EWCA Civ 2219 – patent validity and infringement decisions in which the Court of Appeal decided on the application of G2/98 Same Invention concerning priority date, and applied the doctrine of equivalence following the UK Supreme Court’s decision in Actavis UK Ltd v Eli Lilly & C0.
  • 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 – UKIPO/decision: O-359-12
  • 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 – UKIPO/decision: O-115-09
  • 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) – [2004] EWHC 2092 (Ch) 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

Memberships

  • 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

Other

Paul has been regularly highlighted and acknowledged as a leading IP expert in various leading legal and IP directories. This has included:

  • WTR Trademark 1000 – The World’s Leading Trade Mark Practitioners – 2021 & 2020
  • Legal 500 UK (Intellectual Property: Trade Marks, Copyright And Design) – 2021
  • Managing Intellectual Property, IP Stars – ranked in Trade Marks and Patents – 2020 & 2019
  • IAM Patent 1000 (Bronze) for Patent Litigation – 2020 & 2019
  • Chambers UK 2019 (Intellectual Property) – 2019

“Solicitor Paul Harris is a senior member of the litigation team, with the skill to take over and turn around cases in which adverse decisions have been handed down for other firms.” World Trademark Review 1000, 2021

‘All-sector solicitor Paul Harris is a “thoroughly straightforward person who manages to get right into the issues that need to be addressed – he responds quickly, works within budgets and is always easy to understand”.’ Client Testimonial, IAM Patent 1000 (Bronze) for Patent Litigation – 2020