Victoria Jones > Chambers of David Berkley QC > London, England > Lawyer Profile

Chambers of David Berkley QC
3PB
3 PAPER BUILDINGS, TEMPLE
LONDON
EC4Y 7EU
England
Victoria Jones photo

Work Department

Intellectual property.

Position

Victoria joined 3PB in 2009 after having previously been a tenant at Hogarth Chambers and having worked at Wiggin LLP.

Victoria’s IP practice continues to flourish. She has a strong reputation in the fields of trade marks and passing off and has in the last year been involved in several notable cases before the IPEC, Chancery Division and the UKIPO. She also regularly advises on and represents clients in proceedings at the EUIPO.

Her practice also includes all aspects of designs, copyright, breach of confidence.

INTELLECTUAL PROPERTY

Victoria is an Intellectual Property specialist. Her IP practice covers all aspects of trade marks, passing off, designs, copyright and breach of confidence. She has extensive experience in the Chancery Division, IPEC, UKIPO and EUIPO including applications for interim relief.

Victoria is particularly well known for her expertise in trade mark and passing off matters. She has acted for many well-known brands including Lidl, Virgin, Victoria’s Secret, Draper tools and DAF Trucks NV. She also represents small and medium enterprises and regularly appears before the IPEC and the UKIPO. In addition to her general practice, Victoria regularly gives seminars on specialist topics. This includes seminars to CITMA, attending White Paper conferences and she also hosts an annual IP Seminar in Bristol.

Other areas of Victoria’s practice include copyright and designs. Her copyright work encompasses all areas including architect disputes, computer software infringement, musical copyright claims and infringement of photographs and other artistic works. She is currently acting for a South West based firm of architects in relation to the unauthorised reproduction of their plans. In relation to designs, Victoria has advised and represented well-known businesses in relation to registered and unregistered design right infringement and has recently acted on behalf of a client in relation to an iconic piece of furniture.

A developing area of Victoria’s practice is in relation to breach of confidence actions including trade secret disputes and employee competition matters. She has extensive experience in both seeking and defending applications for interim relief including interim injunctions, search and seizure orders, freezing orders, inspection orders and applications for pre-action and specific disclosure.

Cases

  • British Amateur Gymnastics Association v UK Gymnastics Ltd & Ors [2020] EWHC 1678 (IPEC). Following a 2 day hearing in March, HHJ Melissa Clarke sitting as an Enterprise Judge in the IPEC, handed down a 66 page judgment finding in British Gymnastics’ favour on every count of registered trade mark infringement and passing off.
  • Zenith Logistics Services (UK) Ltd and others v Coury [2020] EWHC 774 (QB)
    Victoria Jones appeared before the QBD in a successful appeal against a Master’s decision refusing to approve a Tomlin Order with a schedule containing confidential terms on the basis that it was contrary to the principles of open justice.
  • Gabriel Alvardo v Karl Johnson – RESLOSOUND (O/619/17): UKIPO O/619/17, 19 June 2018 – successful appeal to the Appointed Person against decision of Hearing Officer under rule 38(6) TMR 2008 to refuse late admission of TM8 due to registrant suffering depression
  • ‘The Colour Orange, Pantone 1595C’ Trade Mark Application: UKIPO O/433/18, 17 July 2018 – Opposition proceedings relating to acquired distinctiveness
  • ‘Loch’ and ‘Cloch’ Trade Mark Applications: UKIPO O/431/18, 16 July 2018 – Consolidated opposition proceedings
  • Country Cars of Bristol Ltd v (1) County Cars (SW) Ltd (2) Carl Wayne Sparey (t/a County Cars) (2018) LTL 22/3/2018 Extempore
  • Student Union Lettings Ltd v Essex Student Lets Ltd [2018] EWHC 419 (IPEC)
  • Coreix Ltd v Coretx Holdings Plc & 8 ors [2017] EWHC 1695 (IPEC)
  • Royal Mint Ltd v Commonwealth Mint & Philatelic Bureau Ltd [2017] EWHC 417 (Ch)
  • George East Housewares Ltd v Fackelmann GMBH & Co KG and another [2016] EWHC 2476 (IPEC)
  • ‘SOLISPOST’ Trade Mark: BL O/234/26, 12 May 2016 – Invalidity proceedings based upon prior rights and bad faith
  • (1) OOO Abbott (2) Godfrey Victor Chasmer v (1) Econowall UK Ltd (2) Project Consulting & Construction Ltd (3) Smith Brewer Ltd (4) Retail Display Connections Ltd [2016] EWHC 660 (IPEC)
  • Jonathan Malcolm-Green v And So To Bed Ltd [2013] EWHC 4016 (IPEC)
  • Earthworks Environment Ltd v Beale (QBD) LTL 1/3/2013
  • National Guild of Removers and Storers Ltd v Alliance Removals and Storers Ltd and Barrett (September 2011- Patents County Court)
  • Redwood Tree Services Ltd v Warren Aspey t/a Redwood Tree Surgeons [2011] EWPCC 014
  • Freshtime UK Ltd v Wayne [2006] EWHC 3639 (Ch)
  • PPL v Gough [2007] All ER (D) 255 (Oct)
  • Coty Prestige Lancaster Group GmbH and Anor v Beauty Collection (London) Ltd [2007] EWHC 3087 (Ch); [2007] All ER (D) 388

Speaking

Victoria recently spoke at a White Paper Conference on the threshold for acquired distinctiveness of shape marks.

In May 2018 she gave a seminar to CITMA (Midlands) on “The big trade mark cases of 2018 so far….”

Victoria spoke at Cambridge University’s IP summer school on 18th August 2017.

On 27th June 2017, Victoria gave the following seminar to CITMA:  ’A sovereign affair – an update and commentary on the Royal Mint and other cases and some evidentiary tips and tactics’.

Career

Called 2003; Lincoln’s Inn. Before joining 3PB in 2009, Victoria was a tenant at Hogarth Chambers and also worked at media law firm Wiggin LLP.

Languages

French, German.

Memberships

IP Bar Association; Chancery Bar Association.

Education

University of Birmingham (LLB (Hons) Law with French); ICSL (BVC); Hardwicke Entrance Award (2003 Lincoln’s Inn); Ethram Scholar·(2003); Nottingham Law School (Post Graduate Diploma in Commercial IP).

Lawyer Rankings

London Bar > Intellectual property

(Leading Juniors) Ranked: Tier 4

Victoria Jones3PBShe has particular expertise in trade mark and passing off litigation.