Alex

Borthwick

Of Counsel

a proactive, professional and efficient lawyer who adopts a very practical approach to disputes.

WTR 1000 2023

Alex

Borthwick

Of Counsel

a proactive, professional and efficient lawyer who adopts a very practical approach to disputes.

WTR 1000 2023

Profile

Alex advises clients in contentious matters across the full range of IP rights. His IP litigation experience includes acting before the High Court, Intellectual Property Enterprise Court and Court of Appeal in cases concerning pharmaceuticals, medical devices, telecommunications and high-street consumer goods. He has also been involved in the coordination of multi-jurisdictional patent and trade mark litigation, including preparation for and attendance at trials and hearings before numerous European courts and the European Patent Office.

Alex represents clients in trade mark opposition and cancellation proceedings before the UK Intellectual Property Office and has advised in respect of arbitration proceedings. His trade mark and passing off cases have involved counterfeits, lookalikes and parallel imports. He has advised on design and copyright ownership and infringement issues concerning artwork, fashion and luxury products, packaging, advertisements, software and graphical user interfaces. Alex’s experience in breach of confidence disputes has related to manufacturing processes and information submitted in a tender process.

Alex regularly writes articles and commentary on IP issues for the legal press, is a contributor to a pending practitioner guide to IP arbitration and is named as a ‘recommended individual’ for trade mark enforcement and litigation in WTR 1000.

Alex joined Powell Gilbert in 2008.

Key cases

  • Philip Morris v Nicoventures (patents – heat-not-burn tobacco)
  • Accord Healthcare v Research Corporation Technologies (patents – anti-epileptics)
  • Procter & Gamble v Star Global Trading Limited (trade marks – perfumes)
  • Procter & Gamble v Express S Solution Ltd (trade marks – toothbrush heads)
  • Procter & Gamble v Awan Marketing (trade marks, registered design, copyright, passing off, breach of contract – perfumes)
  • HTC v Gemalto (patents – telecommunications)
  • Imagination Technologies v Creative Technology (trade marks and passing off – digital radio)
  • BSkyB v Microsoft (trade marks and passing off – cloud computing)
  • Sandoz / ratiopharm v Napp (patents – controlled release oxycodone formulations)
  • Green Lane Products v PMS International & Others (registered design – laundry products)
  • Merck v GSK  (patents – pneumococcal vaccines)

 

Qualifications

2006 Solicitor (England & Wales)

2014 Solicitor Advocate (England & Wales)

Education

MChem (Chemistry), Oxford University

Diploma in Intellectual Property Law and Practice, Bristol University

Connections & Networks

Member of PTMG, AIPPI and LSLA

Awards & Recognition

Legal 500 Key Lawyer

WTR 1000 – UK Litigation (Bronze Tier)

Additional Facts
Favourite music

Anything cello-related

Favourite technology

The Hutchison Rabbit phone

Additional Facts
Languages spoken

Pigeon Italian & Geordie