Charters Macdonald-Brown | Intellectual Property Lawyers: commercial contracts and dispute resolution

Charters Macdonald-Brown

Partner

Contact:

e:charters@redd.eu

t:+44 (0)20 7776 4760

Qualifications:

Solicitor (England & Wales) 1974

Barrister (England & Wales) 1969

Positions:

Member of WIPO's Arbitration and Mediation Domain Name Panel

Memberships:

Law Society (England & Wales)

Council member: AIPPI UK

Associate: CIPA & ITMA; IPLA; EPLAW; AIPLA; INTA; and, ECTA

Charters, a founding partner of Redd, is a highly experienced specialist litigator in intellectual property disputes.

He has litigated in all the principal English first instance and appellate courts which hear IP cases and in the Court of Justice in Luxembourg. A lot of his cases, particularly patent, are multi-jurisdictional and involve working closely with lawyers from other jurisdictions.

Lectures on IP litigation and tutors and examines on copyright and designs on Oxford University IP Diploma Course. Chairman of the Communications Committee of AIPPI.

Contributor to the Community Designs Handbook jointly issued by the Chartered the Institute of Patent Attorneys and the Institute of Trade Mark Attorneys.

Charters has delivered many talks on intellectual property matters and makes regular contributions to IP publications. Recognised for many years as a "leading individual" in intellectual property by Chambers UK Client's Guide to the UK Legal Profession.

Charters is married with four children. He enjoys sailing, golf (in small doses) and art.

For further information on Charters' background and experience
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Background
Like the other founding partners of Redd, Simon and Sara, Charters trained with Gouldens, a commercial law firm based in the City of London; he headed Gouldens' commercial litigation group from the late 1970s. In the mid-1970s, he started to develop what became a highly successful intellectual property practice which enjoyed a substantial reputation in handling 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.
Patents
Charters has acted in some well known patent cases including Pioneer Electronics v. Warner Music (Court of Appeal) and Du Pont v. Akzo (House of Lords, now the Supreme Court).
Of recent cases which have gone to court proceedings and are in the public domain, the subject matters at issue have included: technology relating to stent coating; suspension systems; hair clips; and, packaging/storage systems for CDs/DVDs (this last case involved parallel proceedings in France and Germany.
Charters has advised on complex SPC issues relating to pharmaceutical patents.
Apart from above, Charters' patent litigation has included instant camera technology; chemical selection patents; 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; flooring systems; electronic sensors; and, containers for multiple disks or CDs.
Trade marks and Passing Off
Charters has acted on many important cases including the leading passing off case in the UK (Warninck - v - Townsend - the "Advocaat" case); the Chicago Pizza Pie Factory v LS Grunts case; and, 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 as diverse as pharmaceuticals; tobacco; batteries; lottery games; golf club shafts; sun care products; restaurants; and, chocolates.
Design right
He has handled design cases covering replacement parts for cars; sportswear; fashion apparel; shoes (both fashion and industrial); sunglasses; lamps; cameras; umbrella cases; tools; and, packaging.
Trade secrets & Confidential information
Has acted on cases involving the misappropriation of trade secrets (for example, Johnson & Bloy v. Wostenholme Rink - formulation for a printing ink) and confidential information (e.g. theft of blueprints for designs; manufacturing specifications). 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.
Domain names & competition
Apart from adjudicating on ICANN domain name disputes referred to WIPO (Charters is a member of WIPO's Arbitration and Mediation Domain Name Panel), he has prepared complaints to domain name registries and has acted in proceedings against domain name registries.
Search & Seize and Freezing orders
Has obtained search & seize orders in many cases, usually, but not exclusively, counterfeit cases.
Contractual issues
Related contractual advice on patent licences and technology development agreements.