Charters Macdonald-Brown - Partner
T: +44 (0)20 7776 4760
E: charters@redd.eu
Charters is predominantly a litigator, focusing on contentious IP, advising on all aspects of enforcement strategy, infringement and validity issues, and conducting legal proceedings or alternative dispute resolution for all IP rights (patents, trade marks, passing off, designs, copyright, trade secrets); related competition issues; advertising issues; contractual matters; parallel import cases; trade libel and malicious falsehood; and anti-counterfeiting matters.
Charters is recognised as a "leading individual" in intellectual property by Chambers & Partners Guide to the UK Legal Profession (2009 Edition). He is also listed in Legal Experts 2008 and Who'sWhoLegal (Trademarks 2008).
Charters' recent cases have covered patent infringement; patent validity attacks; trade mark infringement and passing off; and, infringement of design right and registered design. Of these cases which have gone to trial, he has acted for: two major pharmaceutical companies in leading trade mark litigation against parallel importers in the UK and before the European Court of Justice; the defendants in patent infringement proceedings concerning packaging/storage systems for CDs/DVDs with parallel proceedings in France and Germany; the claimant in proceedings involving trade marks and get-up relating to a well known specialist sun care product; the claimant in two leading cases in design right and registered design for a major UK umbrella designer and manufacturer; and, the defendants in patent cases relating to suspension systems and laminate flooring systems.
Admitted as a solicitor in 1974, like his partners, Simon and Sara, Charters trained with Gouldens; as a member of Gouldens' commercial litigation group (which he became head of in the late 1970s), he started in the mid 1970s to develop what became a highly successful intellectual property practice which enjoyed a substantial reputation in handling both contentious and non-contentious IP matters. Charters' general commercial litigation background has been very valuable in handling IP litigation by bringing a broad approach to this technical practice area. He was Joint Managing Partner of Gouldens before its merger with Jones Day in 2003, following which he became head of Jones Day's London IP group. He left Jones Day in 2004, with Sara and Simon to set up Redd as a specialist IP firm.
In patents, he has advised on patent litigation covering matters as diverse as instant camera technology; chemical selection patents; hair pieces; car roof racks; tampon applicators; sausage skin manufacturing processes and products; intrusion detectors; methods for forming optical disks and the production of video disk replicas; gas meters; and electronic sensors and containers for multiple disks or CDs. He has acted on many important trade mark and passing off cases including the leading passing off case in the UK (Warninck -v- Townend - the "Advocaat" case); the "Treat" case (British Sugar - v- James Robertson, one of the first trade mark infringement cases to be heard under the Trade Marks Act 1994) as well as other trade mark cases in fields such as pharmaceuticals, tobacco, batteries, lottery games, restaurants and chocolates.
He has handled many design cases over the years covering replacement parts for cars and design for sportswear, fashion apparel, shoes (both fashion and industrial), sunglasses, lamps, cameras, umbrella cases, tools and packaging. He has also acted on cases involving the misappropriation of trade secrets and confidential information. In many of these cases "search and seizure" orders were obtained to preserve evidence and asset freezing orders were obtained to prevent dissipation or movement of the defendants' assets in order to avoid payment to claimants. Charters has also acted in many cases against counterfeiters particularly in the sportswear industry. These have often involved co-operation with customs authorities and trading standards officials.
Charters is a visiting lecturer on the Oxford University Post-Graduate Diploma in Intellectual Property Law and Practice, lecturing on litigation and tutoring and examining on designs and copyright.
Charters has delivered many talks in the UK and overseas on intellectual property matters.
He is a contributor to the Community Designs Handbook which is issued jointly by the Chartered Institute of Patent Attorneys and the Institute of Trade Mark Attorneys. Also, he regularly contributes to the Australian publication, IP Forum, and has published articles in other leading IP publications including the European Intellectual Property Review (EIPR), ITMA Review, CIPA Journal and Trade Mark World.
He is the honorary legal adviser to the Law and Parliamentary Committee of the Royal Society of Chemistry, a member of WIPO's Arbitration and Mediation Domain Name Panel, the UK Council of the International Association for the Protection of Intellectual Property (AIPPI), and a committee member of INTA. He is a member of the Intellectual Property Lawyers' Association (IPLA) and the Pharmaceutical Trade Marks Group (PTMG) as well as an associate member of the Chartered Institute of Patent Agents (CIPA) and the Institute of Trade Mark Attorneys (ITMA) and an overseas member of AIPLA.
Charters is married with four children and lives in Barnes, South West London.
Some recent talks
- 21 May 08
INTA Annual Meeting, Berlin, Germany. The Community trade mark: the Charm and the Crux of pan European protection. - 10 November 07
INTA Leadership Meeting, Orlando, U.S.A. How lawyers and agents around the world deal with conflict. - 09 May 07
AIPLA Spring Meeting, Boston, U.S. The European Perspective: working with experts in Europe in patent cases and cross border co-ordination. - 22 March 07
ITMA International Meeting, London, U.K. Jurisdiction in relation to national and Community trade marks: Pan European relief. - 10 October 06
AIPPI World Congress, Gothenburg, Sweden. Survey evidence in trade mark cases.
