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John Coldham
Director

Speaks: English

Qualified: 2005 - Solicitor of England and Wales

Primary Office: London

John Coldham

John Coldham is an experienced litigator of all types of intellectual property (IP) and was recognised in 2017's prestigious Acritas Stars database as a 'star lawyer'. His priority is to help clients to maximise the return on their investment in their IP, through strengthening their portfolio and strategically enforcing it against infringers.

IP arises through investment in business, whether it is in development of new products or services, new packaging or new marketing approaches and branding. As a result, IP is often what distinguishes one business from another and makes it a success. John advises clients on how this investment can be protected through registered and unregistered rights, and works with them to ensure that infringement of their IP is managed in the most commercially appropriate manner.

John works closely with clients to ensure that they are getting the most out of their investment in their business - be that in the brand, the R&D or the design elements. By taking time to ensure he really understands the commercial importance of different aspects of the business, he helps clients ensure that budgets are used in the most cost-effective way, with a constant eye on the commercial objectives.

Whether the budget is big or small, every client has the same wish – that it is spent effectively and responsibly while obtaining the best possible result. Our team has spent a lot of time considering costs of litigation and we pride ourselves on our accurate and competitive estimates.

John's experience covers cases big and small, from running multi-jurisdiction patent litigation to design right cases in the Intellectual Property & Enterprise Court. Clients from around the world trust John's sensible, considered advice, and praise his commercial nous.

John is also very involved with IP policy, particularly in the area of designs, where he has particular experience. He is a member of the Design and Copyright Committees of both the Chartered Institute of Patent Attorneys (CIPA) and the Institute of Trade Mark Attorneys (ITMA), and is a long-standing member of both organisations. John was recognised in 2017's prestigious Acritas Stars database as a 'star lawyer'.

Highlights

  • Advising Unilever in relation to its emergency injunction against the British National Party was a day that stands out. John obtained instructions at 11am that the British National Party had released a party political broadcast online that featured a picture of a jar of Marmite in the corner throughout (without permission), and the party was due to air its broadcast on national television the following day. Within a few hours John was in court, having tried to negotiate with the party but not obtaining the necessary assurances. After a detailed hearing involving analysis of a number of discrete issues, the High Court ordered the injunction, which was served shortly afterwards. Press analysis described the case as an example of "best practice".
  • Advising Dyson in relation to dispute involving its registered design in its original cylinder vacuum cleaner at the High Court and Court of Appeal. The case is often cited as precedent in other design law cases.
  • Acting for Hasbro in a major brands dispute involving the Play-Doh trade mark. The case was particularly hard-fought, and this was a highlight not just because it was hugely successful for the client but also because it drew out the best in everyone in the team despite the sometimes extremely long hours!
  • Advising JTI on a major multi-jurisdictional patent dispute about electronic cigarette technology.

Clients

John works with clients across a number of sectors, from tech start-ups to global manufacturers of fast-moving consumer goods. John acts for clients in consumer electronics, food and drink, retail, high end design, fashion, technology, and the services sector to name just a few.

Experience

John advises clients in relation to a variety of areas from building brands and strengthening portfolios to litigation and from small enforcement issues to complex multi-national disputes. John's particular focus is on designs and brands law.

Designs

  • Design law is becoming an increasingly popular way to stop infringers. Registered designs are cheap to acquire, and even where there is no registration, unregistered rights are often available.
  • John helps clients understand the choice of rights available, and the advantages and disadvantages of each, and works with them to secure the best portfolio for their needs.
  • If clients then experience infringement of their rights, John has significant experience of enforcing designs at every level, from informal resolution through correspondence through to major litigation through the Intellectual Property Enterprise Court, the High Court and Court of Appeal. For example, John advised Dyson on an infringement case against Vax to the Court of Appeal and is currently advising a high end denim fashion brand in relation to a number of infringements of its designs.

Brands

  • Brands are often the core of a business, especially if it is consumer facing. Damage to the brand can affect the entire success or failure of a product or the business itself.
  • John has worked with numerous clients over the years to ensure that their brands are sufficiently protected both in the UK and overseas, and has advised many of them in relation to enforcement of their rights against infringers, from small-scale copycats to major threats to the brand itself. Many disputes are resolved rapidly and commercially, whereas others require full court proceedings in order to obtain the necessary result. John has significant experience of both these extremes (and many in the middle!).
  • John's experience includes working with a number of businesses to build a strong brand portfolio, including Freedrinks and Insure the Box.
  • John's litigation experience includes acting for Hasbro in relation to a significant (and successful) trade mark infringement action over its Play-Doh trade mark, and obtaining an emergency injunction for Unilever's Marmite brand against the British National Party.

Patents

  • Patents require an aptitude for the technical detail and an understanding of what is really important in an invention. John acted for Dyson in relation to a major patent dispute with Samsung, concerning dust separation in a vacuum cleaner, resulting in victory at trial.
  • John's other patents cases have covered everything from deep sea drilling equipment to snap-fit flooring to the technology behind ADSL broadband. Clients appreciate John's experience in fighting hard to win a case while always keeping a close eye on the commercial strategy that underpins the issue to ensure the litigation does not does not lose sight of its original objectives.

"John has produced some excellent work during the course of this case, demonstrating his total commitment to his client throughout."
Gill Smith, Dyson

2016

Gowling WLG (UK) LLP, director

2014

Wragge Lawrence Graham & Co, director

2005

Qualified, Solicitor of England and Wales

2005

Wragge & Co LLP, associate

2005 - 2014

2005

Bristol University, Diploma in Intellectual Property Law and Legal Practice

Featured insights & resources

How to protect your design rights

John Coldham

Podcasts 07 September 2017

Designs for Life - an essential overview of design protection, enforcement and exploitation

Kate Swaine, John Coldham

Articles 22 May 2017

A dog's breakfast: Use of ZUMA for dog food infringes famous restaurant's trade mark

John Coldham, George Sevier

Articles 31 March 2017

Photos and replicas of iconic designs can no longer be sold

John Coldham

Articles 30 January 2017

Asos to pay over £20 million to settle trade mark litigation

Multiple Authors

Articles 19 October 2016

Reduced UK designs fees likely from 1 October 2016 - consider payment timings!

John Coldham

Articles 13 June 2016

UKIPO unpacks new UK designs guidance following Trunki's Supreme Court ruling

John Coldham

Articles 01 June 2016

Significant changes to European trade marks - immediate action required for some owners

John Coldham, Dr Thomas J. Farkas, LL.M.

Articles 23 March 2016

Career & Recognition

2016

2016

Gowling WLG (UK) LLP, director

2014

2014

Wragge Lawrence Graham & Co, director

2005

2005

Qualified, Solicitor of England and Wales

2005

2005

Wragge & Co LLP, associate

2005 - 2014

2005

2005

Bristol University, Diploma in Intellectual Property Law and Legal Practice

2003

2003

Lovells, trainee solicitor

2003 - 2005

2002

2002

Oxford Institute of Legal Practice LPC

1998

1998

University of Oxford, Jurisprudence (2:1 BA (Hons))

1998 - 2001

John Coldham
Profile highlights

#
John Coldham

John Coldham is an experienced litigator of all types of intellectual property (IP) and was re...

John Coldham
Featured insights & resources

How to protect your design rights

John Coldham

Article 07 September 2017

Insights & Resources

How to protect your design rights

John Coldham

Podcast September 7, 2017

Designs for Life - an essential overview of design protection, enforcement and exploitation

Kate Swaine, John Coldham

Article May 22, 2017

A dog's breakfast: Use of ZUMA for dog food infringes famous restaurant's trade mark

John Coldham, George Sevier

Article March 31, 2017

Photos and replicas of iconic designs can no longer be sold

John Coldham

Article January 30, 2017

Asos to pay over £20 million to settle trade mark litigation

Multiple Authors

Article October 19, 2016

Some iconic designs come back into copyright protection on 28 July 2016

John Coldham

Article July 25, 2016

Reduced UK designs fees likely from 1 October 2016 - consider payment timings!

John Coldham

Article June 13, 2016

UKIPO unpacks new UK designs guidance following Trunki's Supreme Court ruling

John Coldham

Article June 1, 2016

Significant changes to European trade marks - immediate action required for some owners

John Coldham, Dr Thomas J. Farkas, LL.M.

Article March 23, 2016

Trunki loses at the Supreme Court: practical guidance for designers

John Coldham

Article March 9, 2016

High Court considers factors for transfer to the Intellectual Property Enterprise Court

Alexandra Brodie, John Coldham

Article March 3, 2016

Government consultation to reduce design filing and renewal fees launched today

John Coldham

Article January 7, 2016

Proposal to bring forward repeal of s.52 CDPA 1988 to April 2016

John Coldham

Article November 3, 2015

Designs for Life: an essential overview of design protection, enforcement and exploitation - Part III

John Coldham

Article September 17, 2015

Designs for Life: an essential overview of design protection, enforcement and exploitation - Part II

John Coldham

Article September 10, 2015

Designs for Life: an essential overview of design protection, enforcement and exploitation - Part I

John Coldham

Article September 3, 2015

Q&A: Commencement of repeal of s. 52 CDPA 1988 postponed

John Coldham

Article August 17, 2015

Repealed in ERRA - s52 copyright repeal repealed

John Coldham

Article July 24, 2015

G-Star Raw v Rhodi and others - useful guidance on how to assess UK unregistered design right infringement

John Coldham

Article February 11, 2015

Fashion and damages in the latest two IPEC designs decisions

John Coldham

Article December 15, 2014

M&S succeeds in its appeal of Interflora's High Court keyword advertising victory

John Coldham

Article November 5, 2014

Important design law changes start today

John Coldham

Article October 1, 2014

Implications of the Intellectual Property Act 2014 for businesses - guidance published

John Coldham

Article June 30, 2014

The Saucy Fish Co. locks horns with Aldi in lookalike dispute

Multiple Authors

Article May 20, 2014

Design and patent law changes in IP Bill near Royal Assent

Cerryg Jones, John Coldham

Article March 13, 2014

Court of Appeal reverses Trunki's High Court registered design success

John Coldham

Article March 5, 2014

Goodbye PCC, hello 'Intellectual Property Enterprise Court'

John Coldham

Article October 2, 2013

John Coldham
Profile highlights

#
John Coldham

John Coldham is an experienced litigator of all types of intellectual property (IP) and was re...

Insights & Resources

Speaking Engagements

ThinkHouse Brands Workshop - Birmingham

Events 17 October 2017

ThinkHouse Brands Workshop - London

Events 18 October 2017

Client Work

John Coldham
Profile highlights

#
John Coldham

John Coldham is an experienced litigator of all types of intellectual property (IP) and was re...

John Coldham
Featured insights & resources

How to protect your design rights

John Coldham

Article 07 September 2017

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