Andrew Stone

Andrew is a Partner in the intellectual property team specialising in brand protection.

Andrew’s expertise includes many aspects of both contentious and non-contentious intellectual property law. He has acted for many of the world’s best known brands in relation to both domestic and international disputes.

Andrew qualified in February 2009 focusing exclusively on intellectual property matters. Andrew joined Clarke Willmott in 2010.

Andrew is a member of the Anti-Counterfeiting Group. Andrew has also co-authored articles on intellectual property law which have been published in legal journals.

Chambers and Partners Guide – Listed as a “Notable Practitioner” and is recommended as “very diligent and very hard-working,” according to one market source, while a client adds: “The attention to detail is fantastic.” Noted for his expert handling of trade mark enforcement, passing-off disputes and anti-counterfeiting.

Listed as a “Next Generation Lawyer” in Legal 500 – Andrew is “excellent – he has great attention to detail, is great to work with, reliable and is a good client manager who is completely committed to his clients’ cases“. He is also recommended for IT and Telecoms, it states he has an “incredible ability to master the technical detail which clients are very impressed with“.

Experience

• Drafting and negotiating licence agreements, distribution agreements, franchise agreements, agency agreements and assignments.
• Conducting trade mark, copyright, design right and patent litigation.
• Advising on breach of privacy and breach of confidence claims.
• Advising brands, including many globally recognised names, on implementing anti-counterfeiting strategies both in the UK and internationally.
• Andrew is currently acting for and recently acted for clients in the Court of Justice of the European Union (CJEU), Court of Appeal, High Court, the High Court – Shorter Trials Scheme, the Intellectual Property Enterprise Court (IPEC), the County Court and the Small Claims Court in copyright, trade mark, design right and patent cases.

Notable cases

• Andrew has recently been acting before both the Court of Appeal in the case of AMS Neve Ltd & Ors v Heritage Audio SL & Anor [2018] EWCA Civ 86 and the CJEU (AMS Neve, C-172/18) with regard to an application originally heard in the IPEC to contest jurisdiction in respect of allegations of infringement of an EU trade mark by the trade mark owner. The IPEC judgment, which has been widely reported, confirmed that the English and Wales Courts did not have jurisdiction to hear this part of the claim. The Court of Appeal subsequently referred the case to the CJEU. After the Hearing in front of the CJEU it has now made a preliminary ruling on the questions raised by the Court of Appeal. This decision has, in essence, overturned the decision of the IPEC and has determined that the English and Welsh Courts do have jurisdiction. This was the first case heard by the CJEU that has ruled on the issue of international jurisdiction in online EU trade mark infringement cases and is likely to be widely cited in future cases on this issue. The case will now be sent back to the Court of Appeal for judgment on the issue. The remaining parts of the claim in the IPEC have been stayed pending the outcome of the hearings in the Court of Appeal and CJEU. In between the hearing and the judgment of the CJEU the European trade mark in question relied upon by AMS Neve has been declared invalid by the European Union Intellectual Property Office so this is likely to have an impact on the claim when it returns to be heard in front of the IPEC.
• Andrew acted before the Court of Appeal in the case of Fred Perry (Holdings) Ltd v Brands Plaza Trading Ltd & Anor [2012] EWCA Civ 224 following proceedings brought by Fred Perry for trade mark infringement and passing off in the High Court. The judgment highlighted the recent changes to the CPR Rules in particular dealing with relief from sanctions such as a strike-out for non-compliance with a Court Order. This case has been widely cited and referred to in recent cases dealing with similar issues.