Anna Carboni | Intellectual Property Lawyers: commercial contracts and dispute resolution

Anna Carboni

Partner

Contact:

e:anna@redd.eu

t:+44 (0)20 7776 4760

Qualifications:

Solicitor (England & Wales) 1988

Solicitor Advocate 2000

Called to the Bar (Inner Temple) 2003

Mediator (CEDR) 2004

Education:

MA (Cantab) Natural Sciences 1984

Positions:

INTA Board of Directors

TIPLO Committee

Nominet Expert Review Group

Editorial Board Member for Journal of IP Law & Practice

and European Trade Mark Reports

Appointed Person under the Trade Marks Act 1994

Memberships:

Law Society (England & Wales)

Associate: CIPA, ITMA

Member: AIPPI, Competition Law Association, ECTA, INTA, PTMG

Anna has over 20 years' experience as an intellectual property lawyer. Qualified as both a solicitor and a barrister, she now practises as a Solicitor Advocate, focusing on intellectual property dispute resolution and advice. She joined Redd on 1 January 2012.

With a broad client base spanning a wide range of industries and professions including pharmaceuticals, software, consumer electronics, food and drink, luxury goods, office products, entertainment and insurance, Anna's main focus is on litigation and advice connected with trade marks, designs, copyright, confidential information and associated contract issues.

Anna's past cases have taken her through the UK IPO, OHIM, the Patents County Court, High Court, Court of Appeal, the General Court and the Court of Justice of the European Union and have ranged from straightforward arguments through urgent ex parte applications, interim injunctions and multi-jurisdictional litigation, to complex appeals.

Anna has substantial advocacy expertise, having qualified as a Solicitor Advocate in 2000 and more recently spending seven years as an independent barrister. While she enjoys litigating, Anna is also an enthusiastic advocate of mediation in appropriate cases. She is herself an experienced mediator, as well as being an Appointed Person under the Trade Marks Act 1994.

Rated by the directories as a leader in the field, Legal 500 (2011) describes Anna as an "assured litigator", while the World Trademark Review 1000 (2011) has her down as "amazingly good" and in the top tier for contentious trade mark lawyers in the UK.

Anna lives in rural Kent with her husband, three teenage sons, a cat, four hens and the occasional sheep. She tries to stay sane by choral singing, cross country running and mountain trekking.

For further information on Anna's background and experience
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Background
After taking a degree in Natural Sciences at Cambridge University, Anna converted to Law and did her legal training at 'magic circle' law firm, Linklaters, qualifying as a solicitor in 1988. She undertook a wide range of contentious and non-contentious IP and IT work there, becoming a partner in 1996 and Head of the London IP Group in 2001.
Anna left Linklaters in 2003 to join Wilberforce Chambers, where she practised as an independent barrister specialising in intellectual property litigation. Although she loved the independence of the Bar, she missed the closer client relationships and teamwork that one has in a law firm and decided to return to life as a solicitor, but this time in a specialist IP firm. After just over a year at IP boutique Powell Gilbert LLP, she joined Redd in January 2012.
Trade marks and Passing Off
Anna found disputes about trade marks and passing off hard to resist after being involved in the trial of Gucci v Paolo Gucci in 1990. Not all of her cases have had such glamorous content, but they have all been interesting and have covered a wide range of subject matter and procedures, including:

obtaining and defending interim injunctions - Samsung Electronics v Black Dog Office Supplies (2006); Glaxo v Coca-Cola Enterprises (2011)
summary judgment applications - The Automobile Association v AA Vehicle Clamping & Security Services (2002); Lloyd's of London & Informa v Lloyds Publishing Group (2008); Daimler v Sany (2009)
the scope of IP injunctions - Microsoft Corporation v Plato Technology (1999)
res judicata, estoppel and acquiescence - Prudential v Prudential (2003); Evans v Focal Point Fires (2009); Ergo v 2 Ergo (2011)
comparative advertising - Chippendales v Superstar Entertainment (2010)
Euro-defences - Digital v. LCE (1992); Microsoft v. Backslash (1998)
threats actions - Mrs Singh v Cambridge University (2011)
common origin of competitors' trade marks (confidential)
co-ordination of multi-jurisdictional trade mark disputes (numerous)

Registry and OHIM disputes
While Redd does not have a trade mark filing practice, it assists clients and their trade mark attorneys in disputes before the UK IPO and OHIM, particularly where there are parallel infringement issues. Anna has extensive experience of such cases including:

oppositions based on absolute grounds, prior rights and bad faith - J. Choo Ltd v Soochi Ltd (CHOOSI) (2007); Intel v Munroe (ACTIVINTEL) (2009); Total Web Solutions v MySpace (MYSPACE) (2010)
revocation applications - Wyeth v Knoll (2002); Optima Health v Esi & Albissola (2008); Aikman v Apple (TIME MACHINE) (2008)
invalidity applications - Glencairn v Chivas Brothers (ongoing, now before General Court); Mr Gill v Cambridge University (2011)
As one of the six 'Appointed Persons' under the Trade Marks Act 1994, Anna adjudicates on appeals from decisions of the UK IPO. Her decisions can be found on the UK IPO website at www.ipo.gov.uk

Anti-counterfeiting and parallel imports
anti-counterfeiting cases and campaigns for a range of brand owners ranging from software to luxury goods; this has included liaising with Customs, Trading Standards Authorities and the Police
obtained Norwich Pharmacal orders against Customs and banks requiring disclosure of details of suspected manufacturers and dealers in counterfeits
co-drafted submissions made by INTA to the Court of Justice of the EU in Nokia v HMRC, INTA intervening, concerning the ability of Customs to seize and detain fake goods in transit
Domain name disputes
have assisted several clients in recovering domain names from cybersquatters, using the UDRP / WIPO and Nominet's dispute resolution service
successfully brought a complaint before WIPO to recover for Wilberforce Chambers
have decided numerous Nominet complaints as a DRS panellist and more recently appointed to Nominet's Expert Review Group, which involves quality control of decisions and sitting on appeal panels
Designs
dispute over registration and use of seagull device on clothing - design cancellation action at OHIM and related litigation advice
advice in connection with the alleged copying of famous building and furniture designs
registered design litigation concerning the design of fizzy drinks bottles
unregistered design rights in mobile phone cases
Copyright, database rights, data protection and confidential information
action for breach of copyright and database rights in connection with compilations of paint colours
copyright and data protection advice to an education provider
copyright infringement and breach of confidence action concerning the alleged misuse of cryptographic software, involving search orders, a strike-out application and numerous interim applications
unrelated cryptographic software case involving allegations of breach of confidence and copyright infringement as well as malicious falsehood claims
Search Orders and Freezing Orders
considerable experience of obtaining and setting aside Search Orders and Freezing Orders, primarily (but not always) in connection with counterfeiting cases
acted as supervising solicitor in a multi-billion dollar bank fraud case, involving serving and executing a Search Order and dealing with follow-up disputes concerning confidentiality, disclosure and privilege
Mediation and ADR
a CEDR-accredited mediator with experience of mediating numerous IP and related contractual disputes, in role of solicitor, advocate and mediator
used as independent expert and for second opinions to assist in facilitating resolution of disputes
Clearance and counselling
General IP advice and counselling across a wide range of topics, including brand clearance, litigation tactics and strategy, dispute avoidance and opinions on matters of English and EU law
Recent talks and teaching
September 2011: INTA Advanced Trademark Symposium, Washington - "European Case Law Update"
April 2011: Fordham University School of Law Annual IP Conference - "Lookalikes: Can Telling the Truth Be Unfair?" and "Trademark Reflections on the Royal Wedding"
January 2010: CLT Annual Intellectual Property Law Conference - "Classical Trade Mark Infringement"
December 2009: INTA Conference, Vienna - "Dilution after INTELMARK, L'Oréal v Bellure and NASDAQ"
October 2009: conference, Lisbon - "Famous and Well-Known Marks"
May 2009: INTA Annual Meeting in Seattle - Mediation Workshop
November 2008: CLT's Copying without Infringing 2008 Conference - "What the Court of Appeal Really Said: How Protectable was the Febreze Spray Can and Why?"
August 2008 (also in 2007): IBC Informa IP Summer School, Cambridge - "Pan-European Trade Mark Litigation"
April 2008: annual conference - "Bad faith and public morality"
February 2008: IBC Informa's 9th Annual Community Trade Marks and Community Designs Conference, Brussels - "Interplay between Community Designs and Community Trade Marks"
November 2007: CIPA Annual Congress - workshops on "Packaging and Repackaging in Europe" and "Alternative Dispute Resolution"