James Tumbridge

Profile

James is an Intellectual Property Litigation partner heading up our legal services team. He has extensive experience in commercial litigation, intellectual property and alternative dispute resolution (ADR). His practice has covered a wide variety of IP disputes, and ancillary issues in commercial litigation, employment, and insolvency affecting intellectual property rights. He focuses on intellectual property disputes; and has been involved in cases such as the Supreme Court decision in R. v. Prudential on the issue of whether legal professional privilege applies to non-lawyers representing the interests of the IP community, the House of Lords decision in RPR v Yeda concerning patent entitlement to a cancer therapy, Icescape v Ice-World concerning patent interpretation under the doctrine of equivalence, CCH v the Law Society of Upper Canada a decision of the Canadian Supreme Court concerning copyright in judgments, trade mark cases such as the Enterprise Court decision protecting the Dyno-Rod mark from rogue plumbers, as well as design and confidential information disputes in the High Court.

James leads a team with vast experience in contentious and non-contentious data protection matters. James has advised international entities on cross border data use for over 15 years, and is often engaged in regulatory defence matters, he also gave advice to the Government on the 2018 Data Protection Act, and continues to advise them on data protection and reform.  His work also extends to compliance in regards to data protection for advertising and promotions, as well as issues with data capture for those dealing in virtual currency and customer data. He has been an ad hoc advisor to various UK MPs and MEPs on a range of IP and dispute issues. Through his engagement with policy makers he has extensive Government relations experience and advises clients on how to prepare for legislative changes and regulation compliance.

James is a qualified mediator, listed with the World Intellectual Property Organisation (WIPO), the United Kingdom Intellectual Property Office, CIArb, Clerksroom and a number of other ADR providers. He also spent two years chairing the International Trade Mark Association’s ADR committee. Since 2014 James has held appointment as a Chairman of Police Tribunals, a junior judicial role.  James has experience with IP crime cases, and has trained several police forces on data protection matters.

James has truly global experience appearing as an advocate in courts in the USA, Canada and the Falkland Islands, he has also worked on disputes in Gibraltar, the Isle of Man, Germany, France, Austria and Spain.

James’ writing has been featured in numerous publications inter alia; International Company and Commercial Law Review, Commercial Litigation Review, World Intellectual Property Report, EIPR, AIPPI, Canadian Intellectual Property Journal, ABA IPL Section, BioScience Law Review, the Law Society of Upper Canada Intellectual Property Law Year Review, Oxford Journal of IP Law & Practice, and in the Federated Press Federal Intellectual Property Review Journal.

He is also the author of several books: Tumbridge’s Guide to Legal Qualification: The Common Law World, published by Carswell; a co-author of Drafting Patents for Litigation and Licensing, published by Bloomberg; co-author of Privilege and Professional Confidences: An International Review, published by Bloomberg, and co-author of ‘A Practical Guide to the Ownership of Employee Inventions – From Entitlement to Compensation’ published by Law Brief.

Honours & Awards

• Best Lawyers in the United Kingdom, Intellectual property – 2023 and 2024
• Managing Intellectual Property, IP Stars (Patent and Trade Mark Stars) – since 2016
• Litigation Lawyer of the Year in the United Kingdom, Lawyer Network Annual Awards – 2022
• Corporate LiveWire Global Awards, IP Lawyer of the Year – 2021/2022
• Client Choice Award Winner by Lexology – 2021
• Global Law Experts – Litigation Lawyer of the Year UK – 2021
• World Trademark Review WTR Trademark 1000 – The World’s Leading Trade Mark Practitioners, since 2012
• IAM Patent 1000 for Patent Litigation
• Who’s Who Legal, Patents, since 2016
• Who’s Who Legal, Trademarks, since 2015
• Legal 500 UK (Intellectual Property: Trade Marks, Copyright And Design) – 2021
• Legal 500 UK (Electoral Law) – 2021
• Chambers & Partners UK – Recommended for Parliamentary & Public Affairs, Electoral Law – UK-wide
• Corporate Excellence Awards – Most Influential Lawyer of the Year 2019 – IP Litigation
• Excellence in IP Litigation, UK – Corporate LiveWire Awards Winner, 2018 & 2019
• IP Litigation Lawyer of the Year – ACQ5 Global Awards, 2017 & 2018
• Managing Intellectual Property, IP Stars – ranked in Strategic Counselling, Litigation, Copyright, Trade Marks and Patents
• Chambers Global, Dispute Resolution – UK & Canada, Intellectual Property
• Chambers UK, Dispute Resolution and Mediation
• Chambers UK, Intellectual Property
• AI Intellectual Property Awards – Most Innovative IP Disputes Firm & Best Full Service IP Firm – UK 2015
• UK Litigation Lawyer of 2013 and 2014 – ILO Client Choice Awards
• UK Litigation Lawyer of 2013 – ACG & FT Awards
• Member of the INTA Panel of Trade Mark Mediators
• Recommended by the International Mediation Institute
• Harold Fox Scholarship
• Hardwicke Scholarship to Lincoln’s Inn
• James Bushell Scholarship for the Bar Vocational Course
• Lawrence Atwell Award for the Bar Vocational Course
• Sidney Perry Award for the Bar Vocational Course
• Young Lawyer Award from the International Association for the Protection of Intellectual Property (AIPPI)

Representative Matters

• Other v Mother, [2021] EWHC 3172 (Ch) – Passing Off claim in the High Court; determination against transfer to IPEC; confirms claimant choice of forum matters, complexity includes the number of points to be addressed and not simply if the points themselves are complex, the test on whether the claim exceeds the cost cap is whether the claimant has a reasonable prospect of  showing that its damages will exceed £500,000, not a balance of probabilities as that requires a mini-trial, further costs of restoring brand reputation are to be taken into account; finally undertakings to cease use must be given to court to be effective.
• JLG Group & Ors v MTL Financial June 2020, unreported – High Court determination of emergency injunction concerning trade marks in financial services, and whether registered marks are confusing, and the meaning of retail use in finance within Class 36.
• Glew & Others v Amro Biotech & Others [2019] EWHC 3183 (Ch), [2019] 11 WLUK 384, [2020] B.C.C. 248 – High Court decision on the use of a company law derivative claim under s.261 of the Companies Act 2006, as a basis for an alleged patent entitlement claim. Successfully precluding the application, and requiring any patent entitlement to be properly pleaded and brought in the proper forum. Confirmed a hypothetical director acting in accordance with Companies Act s.172 could not continue such a claim unless in the interest of the company and this could not be established.
• EMIRATES NBD BANK (PJSC) v RONALD A. CHISHOLM LIMITED, Ontario Superior Court [2019] unreported, providing expert opinion on English law to construe jurisdiction in light of an arbitration provision.
• Icescape v Ice-World International BV et al [2018] EWCA Civ 2219, [2017] EWHC 42 (Pat) – the Court of Appeal’s first interpretation of equivalence post the Actavis decision of the Supreme Court to determine infringement in favour of the appellant, also a decision concerning validity challenge on the grounds of priority, raising questions of the role of what the skilled person is taken to know, including common general knowledge, in the determination of whether a claim is entitled to priority, as well as considering threats and the defence under section 70 of the Patent Act.
• Metropolitan Police v Smith, Blockchain Limited & Oths – 2016 unreported Old Bailey – Decision on data access, and the limits of jurisdiction where data is beyond the seas under control of a sister company.
• GSI v Falkland Islands Goverment – SC/CIV/05/14 Supreme Court – A copyright claim concerning seismic data and licences for exploration.
• Micromine v Alhambra & Komarnicki – 2015/16 – a series of decisions of the London County Court, and the Albertan Queen’s Bench – Cross-border enforcement of a guarantee for breach of a software licence.
• DEK v Alent Plc – 2014 – unreported IPEC case – Extent of power of Intellectual Property Enterprise Court to hear cases with declarations that concern IP but where the case’s centre is contractual.
• Arsenal FC v Reed [2014] EWHC 781 (Ch) – Construction of a court order and the right of a party to change their behaviours after a passage of time concerning trade marks.
• Credit Suisse v Arabian Aircraft & Equipment Leasing Co [2013] EWCA Civ 1169 on appeal from EC (2013) – LTL QBD (Comm) (Judge Mackie QC) 24/04/2013 2013 EWHC 1094 (comm) – summary judgment application concerning aircraft finance and lease back agreement, considering analogous nature of leases and mortgages, the Court of Appeal confirmed the claimant could not change their case based on a skeleton argument in the absence of first amending their pleadings.
• Dyno Holdings & Dyno-Rod Limited v Dial A Rod Homecover Limited et al – [2013] EWPCC 8 – invalidation and revocation of trade marks on the basis of bad faith registration and misleading the public.
• R (on application of Prudential plc and anor) v Special Commissioner of Income Tax – [2013] UKSC 1 – UK Supreme Court ruling on the extent of Legal Advice Privilege that may be claimed by non-lawyers, representing the IP profession.
• Fage v Chobani – [2012] EWHC 3755 (Ch); [2012] EWHC 3097 (Ch); [2013] EWHC 298 (Ch); [2013] EWHC 630 (Ch); [2013] E.T.M.R. 28; [2013] F.S.R. 32; (2013) 157(14) S.J.L.B. 31; [2014] EWCA Civ 5; – the ‘Greek Yoghurt’ extended passing off case, including permissions for surveys, the approach to proper disclosure and interim injunctions.
• Titus v Bolden James – [2011] EWCA Civ 993 – emergency injunction to restrain software release for breach of confidential information, High Court to Court of Appeal in one day. Changed the law on equitable relief on foreign claims.
• Select Healthcare Limited v Cromptons Healthcare Limited – [2011] EWHC 1830 (Pat), [2011] EWHC 796 & 797 (Pat)) – patent infringement & validity matter, also addressing requirements of statements of case and permissions of experiments as well as ADR.
• Gham & Anor. v First Dragon Limited – Queens Bench, December 10th 2010, (unreported) decision of Master Moncaster on the test for transfer from the High Court to the Patents County Court.
• Philip Morris Products S.A. v. Malboro Canada Limited – [2010] FC 1099 – trade mark dispute concerning a split brand ownership and the right of one trade mark holder to prevent another from using a different and valid trade mark on the grounds of confusion – advice on English law relating to concurrent ownership, use and confusion.
• Bridgeview Manufacturing et al. v. Duratech et al., [2010] FCA 188 (FCA) – patent validity matter – expert evidence advice on English law provided regarding patent validity.
• Croll v Radford et al – Chancery Division 2009 & 2010 – (unreported) Decisions of Master Teverson – penalising in costs parties who agreed then repudiated to mediate in a probate matter.
• Bank of New York v Montana [2008] EWHC 1594 (Ch) – Construction of contracts in relation to a Special Investment Vehicle.
• Mobil Cerro Negro Ltd. v. Petroleos De Venezuela SA [2008] EWHC 532 (Comm) – Variation to a World Wide Freezing Order.
• Yeda Research and Development Co Ltd v Rhône-Poulenc Rorer International Holdings Inc and another [2006] EWHC 160 (Ch), [2006] EWCA Civ 1094, [2007] RPC 9 [2007] UKHL 43 – Patent Entitlement and the proper construction of pleadings and limitation in relation to such claims.
• Nokia v InterDigital Corporation [2004] EWHC 2920 (Pat) and [2005] EWCA Civ 614 – Patent validity and power of the Court to declare patents essential to standards.
• CCH Canadian Ltd. v Law Society of Upper Canada [2004] SCC 13. – Supreme Court of Canada – Copyright decision regarding fair dealing and original works in law reports.
• Evans v Malley Organisation Ltd (CA) [2003] IRLR 156; [2002] EWCA Civ 1834 – Employment and the proper calculation for rates of pay.
• Scancom International A/S v RWH Enterprises Ltd [2003] All ER (D) 89 – Sale of Goods, entitlement to repudiate contract based on performance and whether goods sold by sample or description.
• Lloyds TSB Bank plc v Hayward (CA) [2002] EWCA 1813 [12 December 2002] LTL 12/12/02 – Liability for a guarantee when agreement varied unilaterally.
• Wasserman Arsenault Ltd. v Sone [2002] OJ No. 1221 & 3772, (2002) 157 OAC 183, 33 CBR 145 Ontario Court of Appeal – Rights of trustees to fees in bankruptcy cases.

Affiliations

• American Bar Association (ABA)
• Chartered Institute of Patent Attorneys (CIPA)
• Chartered Institute of Trade Mark Attorneys (CITMA)
• Intellectual Property Bar Association
• Intellectual Property Owners Association (IPO)
• International Association for the Protection of Intellectual Property (AIPPI), UK Council Member
• International Bar Association (IBA), ADR Committee Member
• International Intellectual Property Law Association (IIPLA)
• Committee Member at International Trade Mark Association (INTA)
• International Federation of Intellectual Property Attorneys (FICPI)
• Member of the Chartered Institute of Arbitration (MCIArb.)
• UNION of European Patent Attorneys
• The Intellectual Property Lawyers’ Organisation (TIPLO)

Publications

• Sweet & Maxwell UK Trade Marks Handbook in association with CITMA, contributing author on trade marks and the internet
• ‘A Practical Guide to the Ownership of Employee Inventions – From Entitlement to Compensation’ by James Tumbridge & Ashley Roughton
• Drafting Patents for Litigation and Licensing, published by Bloomberg; contributing authors; James Tumbridge & Tim Russell
• Privilege and Professional Confidences: An International Review, published by Bloomberg, contributing author; James Tumbridge

Selected Speaking Engagements

• OBN BIOTrinity: Exciting Exits – An insight into the latest collaboration, acquisitions, co-development success stories, London 2023
• OBN Digital: The pros and cons of the new Unitary Patent and Unified Patent Court, 2022
• OBN BIOTrinity: In Conversation with the IP Minister on the UK Government Life Sciences Vision, London 2022
• OBN – Belgian Economic Mission: Belgium, The Health & Biotech Valley of Tomorrow, Belgium 2022
• AIPPI TURKEY International webinar on ‘Artificial Intelligence in Intellectual Property’ – 2021
• World Intellectual Property Forum – The AI and Data Revolution – Data & Compliance – what do we need to know? – 2021
• Quantum London – Patent Protection for Quantum Technologies – 2021
• OBN Digital: CEO Briefing ‘What does the end of the Brexit transition mean for UK Life Sciences?’ 2020
• WIPO: ADR Data Disputes Webinar 2020
• American Bar Association: Data Protection – What has Europe Done, 2020
• 6th AIPPI Turkey Intellectual Property Seminar on: General Reflections on Artificial Intelligence on Intellectual Property Law, Turkey 2020
• Brexit and the Consequences for IP – OBN BioTrinity – London 2019
• Pharmaceutical Intellectual Property Conference – London 2019
• AIPPI Congress – International Property in Free Trade Agreements and the UK post Brexit – Mexico 2018
• EAPC Conference – General Data Protection Regulation – New Rules on Data Targeting and Use – London 2018
• IPIC Conference on Trade Marks, Ontario 2017
• Digital Copyright: Shaping New Law – Fair Dealing & New Defences – London 2017
• Opportunities for UK Life Sciences following Brexit – OBN BioTrinity, London 2017
• Trans-Atlantic Data Post Brexit – Toronto 2016
• 3D Printing: What will tomorrow bring? London 2015
• UPC: The future of litigation in Europe, California 2015
• Internet Disclosure, Invalidity and Infringement, UNION meeting Berlin 2014
• IP issues in China, presentation to the Anglo-Chinese All Parliamentary Group, Parliament, London 2014
• IP Leadership Forum, presenting on the Unified Patent Court, New Delhi, India 2014
• Colloquium on Privilege – FICPI AIPPI AIPLA, Paris 2013
• Fordham International IP Conference on European Patent Reform, NY 2012
• IPIC Conference on Litigation Reform and IP disputes 2010
• IPIC Conference on both
• Mediation and IP disputes 2009
• World Summit of Corporate Counsel on ADR 2009
• East Anglian Mediation Seminar of CEDR, Cordex and Talk 2008 & 2009
• IT and E-Commerce Update Conference 2008
• Speaker and Session Co-chair Commonwealth Conference 2007
• American Bar Association IPL 2004

“James is a highly experienced lawyer who is able to effect meaningful outcomes for his clients. He can see things from multiple angles and offers a cost-effective service.”

World Trademark Review 1000, 2023