John Colbourn

John has a broad practice covering all aspects of intellectual property and related issues, with particular focus on trade marks and copyright. He has advised in numerous trade mark and passing off disputes and has significant experience running multi-matter enforcement programs against misuse of trade marks and copyright works, and in relation to parallel imports and exhaustion of rights. His work also covers trade mark prosecution and portfolio management, including related strategic advice. John manages and advises on both UK and international brand portfolios for a number of well known brands in a variety of sectors, and in particular on complex issues involving of disputes, enforcement, and filing strategies in multiple jurisdictions.

John has acted in the High Court, Patents Court, Intellectual Property Enterprise Court (IPEC) and the UK IPO and the EUIPO (including appeals to the General Court of the EU) and the European Court of Justice. He has coordinated customs enforcement actions to prevent counterfeit goods entering the UK and international online takedown programs.

In 2007 John completed the Bristol University Post Graduate Diploma in Intellectual Property Law and Practice. In 2010 John won the AIPPI national award for the best young contribution for his work in relation to trade mark dilution laws.

He is actively involved in a number of professional organisations, including INTA, CITMA, MARQUES and PTMG. He is presently a member of the MARQUES Geographical Indications team and joins the INTA Parallel Import committee from January 2018. John has regularly led seminars and talks for clients on IP topics including: the systems and procedures of the English IP courts; copyright exceptions; and, updates on trade mark law. He regularly writes case reports for the CITMA Review, the INTA Bulletin, and IP Forum in Australia and New Zealand.

Prior to joining Wiggin, John worked at Redd.

  • Experience

    Contentious work includes:

    • Acting for Microsoft in the High Court in a trade mark infringement and passing off case brought by British Sky Broadcasting Group Plc against the use of the name ‘SkyDrive’ for a cloud storage service (British Sky Broadcasting Group Plc v Microsoft Corporation), and in related appeals to the General Court of the European Union from trade mark Opposition in the EUIPO.
    • Acting for Agent Provocateur in UK and Community unregistered design infringement proceedings before the IPEC concerning bikini designs.
    • Acting for a leading US software company in serial litigation in the High Court for trade mark and copyright infringement and passing off against parallel importers from outside Europe; including damages inquiry and preliminary issues concerning competition law defences.
    • Acting for OKA Direct in trade mark infringement proceedings before the IPEC.
    • Running an international enforcement program for iconic computer games brands against unauthorised merchandise, game clones, and apps.
    • Acting for the iconic footwear brand in trade mark opposition proceedings before the UK IPO and in trade mark and passing off enforcement matters.
    • Advising DSB Invest Holdings SA in High Court proceedings concerning a patent and know how sale agreement relating to biological coating technology for medical implants.
    • Acting for the claimant, Boegli-Gravures, in patent infringement and invalidity proceedings before High Court and Court of Appeal.
    • Acting for national online restaurant review website to stamp out unauthorised use by third parties of database extracts and copyright infringement.
    • Acting in and advising on contractual disputes across a variety of matters including: wrongful termination of brand licences; non-payment of debts; breach of licence terms; breach of distribution rights; and other terms.
    • Acting for Glaxo Wellcome, SmithKline Beecham and Boehringer Ingelheim in parallel import repackaging litigation before Court of Appeal and European Court of Justice.
    • Acting for well-known national brand in systematic enforcement and policing strategy to stamp out trade mark infringement and passing off including, for example, to stop infringing use by others of keyword sponsorship in online search engines.

    Commercial work includes:

    • Providing brand clearance advice for use and registration of trade marks for a variety of products, from food and fragrances to toys and software.
    • Negotiating and drafting merchandise agreements for character brands.
    • Negotiating and drafting software development, licence and distribution agreements for major computer games publishers.
    • Negotiating and drafting international fragrance brand licence for licensee and conducting associated trade mark due diligence and brand clearance work.