Background
Paul is a solicitor, Partner and Head of Litigation at Dehns, having joined the firm in 2021. His 38 years’ experience covers the range of contentious and non-contentious intellectual property matters. Paul’s litigation practice incorporates UKIPO appeals and cases before the Business & Property Courts of England & Wales (Patents Court; IPEC), and the Court of Appeal (Civil); while his litigation experience and tactical expertise is called upon in cases currently before the UPC.
Paul’s experience extends across a range of technologies, incorporating, inter alia, complex chemical, electronics and mechanical. He successfully defended Black & Decker in a patent action brought by Electrolux, the outcome of which led to changes in the Patents Court Guidelines on experiments and expert’s reports. He was involved in the erythropoietin litigation (Kirin Amgen); and stent litigation (Boston Scientific); and acted for the defendant in Icescape v Ice-World International, at first instance and on appeal – the first case to provide guidance on the application of the doctrine of equivalents following the decision in Actavis v Eli Lilly.
Paul is known for his trade mark practice (registered and unregistered). He successfully litigated the first case under the Trade Marks Act 1994 (Wagamama Ltd v City Centre Restaurants plc). More recently, he was involved in the extended passing off case: Fage v Chobani, and successfully steered longstanding client, Stanley Black & Decker, Inc., in a trade mark infringement/ jurisdictional battle involving a former distributor (The Black & Decker Corporation v Dvize).
Paul handled the Dyson v Strutt litigation, relating to misuse of confidential information: the same action laid down guidance on the important issue of common costs recovery. He led the successful team in the First Conference v Bracchi case, which included executing an interlocutory search and seizure order against the defendant.
Paul’s expertise in non-contentious IP matters is called upon by domestic and international clients alike. He provides corporate support, strategic advice and innovative solutions across all aspects of IP, including programmes for registration in overseas jurisdictions; patent analysis and assessment; negotiation and licensing arrangements (incorporating multi-national and cross-licensing and co-existence agreements); and due diligence on the sale of businesses. Paul notably played a part in the £2 billion sale to Du Pont of ICI’s film business. Paul also deals with the copyright and design rights, and has acted for a management buy-out team in relation to computer software and hardware.
Paul has lectured on patents, trade marks and confidential information. Well-known domestically and internationally, he has been invited to speak at conferences across the UK, Europe, the USA and the Middle East. He has, since 1995, been privileged to teach aspects of trade mark law on the Intellectual Property Diploma Course at the University of Oxford. In addition, Paul has written extensively on IP matters, and been published widely, particularly on patent and trade mark-related issues.
Representative Matters
- Ocean on Land Technology (UK) Limited (2) Caribbean Sustainable Fisheries Corp v Northbay Innovations Limited & Ors [2024] EWHC 396 (IPEC) – multi-layered satellite litigation to determine issues of admissibility of evidence of fact in respect, variously, of misrepresentation and without prejudice material under the Oceanbulk exception.
- Ensygnia IP Limited -v- Shell International Petroleum Company Limited & Ors [2023] EWHC 1495 (Pat) – trial of a patent infringement action concerning a mobile payment system and barcode/ QR code technology.
- Yeti Coolers LLC -v- Yetigel International SA BL O/1128/22 – appeal to the Appointed Person of a Hearing Officer’s denial of a retrospective application for an extension of time in which to effect service, thereby signalling revocation, where the factual circumstances were affected by both the pandemic and by Brexit.
- Wineapp Ltd v Johnson [2022] EWHC 620 (Ch) – Appeal to the High Court of the Hearing Officer’s first instance decision.
- Horsham Nutraceuticals Ltd & Anor v Manna Pro Products LLC [2019] EWHC 1935 (Ch)
- Icescape Ltd v Ice-World International BV and ors [2017] EWHC 42 (Pat), and [2018] EWCA Civ 2219 – patent validity and infringement decisions in which the Court of Appeal decided on the application of G2/98 Same Invention concerning priority date, and applied the doctrine of equivalence following the UK Supreme Court’s decision in Actavis UK Ltd v Eli Lilly & C0.
- The Black & Decker Corporation v Dvize BV [2017] 3387 (Ch)
- Icescape v Ice-World International & Ors [2017] EWHC 42 (Pat)
- Fage UK Ltd v Chobani UK Ltd [2014] EWCA 5, and [2013] EWHC 3755 (Ch) – extended passing off action relating to yogurt.
- 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 Ltd & Anor v DialARod Home Cover & Ors [2013] EWPCC 8 – trade mark infringement
- Future Publishing v Edge Interactive Media – amendment to court order, February 2013
- CONSUMER FOCUS TM – trade mark opposition – UKIPO/decision: O-359-12
- Fage UK Ltd & Anor v Chobani UK Ltd & Anor [2013] EWHC 630 (Ch) – interim relief and permission for survey evidence, December 2012
- First Conferences Services Ltd v Bracchi & Ors [2009] EWHC 2176 (Ch) – breach of confidence
- SCHRIEBER TM – trade mark opposition – UKIPO/decision: O-115-09
- Dyson Technology Ltd v Strutt [2007] EWHC 1756 – costs orders
- The Black & Decker Corporation v OHIM (joined cases T-239/05; T-240/05; T-245/05; T-247/05; T-255/05; T-274/05 – T-280/05; Atlas Copco AB ECLI: EU: T: 2017)
- Dyson Technology Ltd v Strutt [2005] EWHC 2814 (Ch) – misuse of confidential information/restrictive covenant, November 2005
- Philips Domestic Appliances & Personal Care BV v Salton Europe Ltd (part 20 claim v Electrical & Electronic Ltd) – [2004] EWHC 2092 (Ch) software in respect of coffee makers – this case has now become the leading authority on what constitutes “authorisation” of one entity by another to instigate infringement
- Yellow and Black trade mark application in name of Black & Decker – appeal from TM Registry, 2004
- Black & Decker v. ALM Manufacturing – Lawn edge trimmer technology, 2003
- Amey Vectra Ltd. v. Vectra N. Jones and others – misuse of confidential information, 2002
- N.C. trade mark application Vitality, 2000
- R.A. Technology v. A.E.A. Technology – breach of fiduciary duty, copyright infringement, malicious falsehood, 1998
- Boston Scientific v. Johnson & Johnson – stents (cardiography technology), 1997
- Route 66 & Device in name of Andre and Mairade Levy – Trade mark Opposition, 1997
- Electrolux Northern v. Black & Decker – lawnmowers (suck and hover), 1996
- Wagamama v City Centre Restaurants plc [1995] FSR 713 (Ch.D)
- INADINE TM [1992] RPC 421
Memberships
- International Trademark Association (INTA), Committee Member
- International Association for the Protection of Intellectual Property, UK Council Member
- Chartered Institute of Patent Attorneys
- Chartered Institute of Trade Mark Attorneys
- Royal Society of Chemistry
Other
Paul has been regularly highlighted and acknowledged as a leading IP expert in various leading legal and IP directories. This has included:
- Who’s Who Legal – “Recommended Individual” in the 2024 edition.
- IAM Patent 1000 2024 edition – recognised as “immensely experienced at steering disputes through to a successful close for his following. He is a fierce advocate who has a fine-grained understanding of the law and procedure, and masterfully coordinates global disputes.”
- IAM Patent 1000 – noted as ““A tenacious and strategic disputer, Harris secured a major win on behalf of a patron in the aerospace industry last year.” – 2023
- World Trade Mark Review 1000 – Ranked in 2024and 2022 edition, noted as “a major boon to Dehns’ contentious offering”.
- WTR Trademark 1000 – The World’s Leading Trade Mark Practitioners – 2021 & 2020
- The Legal 500 UK (Intellectual Property: Trade Marks, Copyright And Design) – 2021
- Managing Intellectual Property, IP Stars – ranked in Trade Marks and Patents – 2023, 2022, 2021, 2020 & 2019
- IAM Patent 1000 (Bronze) for Patent Litigation – 2020 & 2019
- Chambers UK 2019 (Intellectual Property) – 2019
- Who’s Who Legal – listed as “Recommended” – 2022
“Solicitor Paul Harris is a senior member of the litigation team, with the skill to take over and turn around cases in which adverse decisions have been handed down for other firms.” – World Trademark Review 1000, 2021
‘All-sector solicitor Paul Harris is a “thoroughly straightforward person who manages to get right into the issues that need to be addressed – he responds quickly, works within budgets and is always easy to understand”.’ – Client Testimonial, IAM Patent 1000 (Bronze) for Patent Litigation – 2020
‘Paul Harris is an outstanding litigator with years of experience and a thoroughly pragmatic approach. He leaves no stone unturned getting the right result for his clients.’ – Legal 500