Clifford Chance
In the early 1970s, David Perkins moved from the law firm where he started as a solicitor, Theodore Goddard, to Clifford-Turner/Clifford Chance, where he established and headed its Intellectual Property department for three decades. Here he talks about practising ‘intellectual property’ law during that period, the challenges of ‘magic circle’ law firms to work on what was then conceived as a very specialised field and how relations with barristers have changed. More specifically, he shares stories and memories of well-known cases in which he participated, the making of an intellectual property department and the experiences in different courts.
Selected cases
Benchairs v. Chair Centre 1972 FSR 397; 1974 RPC 429 1973 FSR 123
Illinois Tool Works Inc’s Patent: 1975 RPC 98 1975 FSR 37 and 1975 FSR 434
Templeborough Rolling Mills Ltd’s Application 1975 RPC 511 (CA)
Roban Jig & Tool Co. Ltd. & Anor v. Taylor & Ors 1979 FSR 130 (CA)
Rank Film Distributors v Video Information (1980) 2 All ER 273 and (1982) AC 380
The Boots Co. Ltd’s Application (1981)
British Steel v Granada Television (1981) AC 1096
Catnic Components v Hill & Smith (1982) RPC 183
Catnic Components v. C Evans & Co 1983 FSR 401
Apple Computer Inc. v. Sirtel (UK) Ltd. 1983
Lego System AB v. Lego M Lemelstrich Ltd. 1983 FSR 155
Rowntree MacIntosh Ltd’s Trademark Application (1983) reported in 1993 RPC 217
Hickman v Andrews (1983) RPC 147
O’Neill v Paramount Pictures Corpn. (1983) CAT 235
Granby Marketing Services Ltd. v. Interlego AG 1984 RPC 209
Farmos v. Wellcome Foundation 1984 (CA)
Unilever Plc v. Pearce 1985 FSR 475
Spesi SA v. Benrose UK Ltd. 1986 (HL)
Interlego AG v. Alex Folley (VIC) Pty Ltd 1987 FSR 283
Mars (GB) Ltd. v. Country Petfoods Ltd. (1987)
Thetford Corporation v. Fiamma 1987 FSR 244 (CA) and 1987 3 CMLR 266 (CA) and 1990 1 WLR 1394 (ECJ)
Mars (GB) Ltd. v. Cadbury Ltd. 1987 RPC 387
Schering Agrochemicals v. ABM Chemicals Ltd. 1987 RPC 185
Interlego AG v Tyco Industries Inc ([1989] AC 217
David Perkins “Rights of Employee Inventors in the United Kingdom under the Patents Act 1977″ Industrial Property Law, 1979, 353 (with P. A. Molyneux)
David Perkins and Garry Mills ‘Patent Infringement and Forum Shopping in the European Union’ 20 (2) Fordham International Law Journal, 1996: 549-601.
Judy Slinn, Clifford Chance: its origins and development (Granta, 1993)
Clifford Chance
Facilitator: How did you become a solicitor?
Perkins: My father was a solicitor. He was actually the youngest Town Clerk in the days when Town Clerks were solicitors. I started off being articled to him before going to Newcastle University. It was originally King’s College Durham University and the Law Department was at King’s College in Newcastle. The Professor was Bill Elliott, who wrote the then leading text book on Criminal Law. His son, Bob, later joined my Group at Clifford-Turner. Elliott ‘s No.2 was John Clarke, a practising Chancery barrister specialising in land law, equity, trusts and succession. I was interviewed for articles in Newcastle by a Panel who all knew my father. So the interview was quite short and very friendly. If was along the lines “Ah, Perkins, nice to see you. How is your father? We don’t need to ask you any questions, do we. Jolly nice to see you. Good bye.”
After University, my father advised me that work in private practise in the North East was rather limited and recommended that I should go to London to complete Articles. He introduced me to the in-house solicitor for Procter & Gamble, who in those days had their European Headquarters in Gosforth, a suburb of Newcastle. He gave me the same advice. However, when I eventually went to Clifford-Turner, I found that one of my contemporaries, John Edwards, had, in fact, served his articles with P&G!
After University I was articled at Theodore Goddard. I wanted to go to a firm that had an office in Paris and there were very few that did in those days. One was Theodore Goddard. Others were Denton Hall and a small West End firm, Langton D. Passmore. I interviewed with those three and also with Terence Robey, a partner at Nabarro Nathanson and also a Director of Coates Viyella. When being interviewed at Theodore Goddard by Peter Morley, he asked which other firms I had interviewed with and which I had liked the best. I told him that I’d most enjoyed talking to Robey and, after him, the partners at Denton Hall. (I later discovered that one of them, Burgin, was Max Williams’ brother-in-law and it was Max’s Litigation Department at Clifford-Turner, which I joined several years later.) Morley thereupon phoned Robey and the conversation went along the following lines. “I’ve got young Perkins here. Are you going to have him, or are we?” Robey apparently said he would take me, as Morley then asked which firm I would prefer. I opted for Theodore Goddard. It was all so simple by comparison with what is required today in order to get articles with a City Firm. A stellar academic CV, preferably several languages, have undertaken pro bono work for worthy causes etc.. And having to survive several layers of Human Resources in the process before ever meeting a partner. But, going back to the mid 1960s, the humorous stories of interviews for articles are legion. It was then more about the impression the candidate made with the interviewing partner(s).
Facilitator: Did Theodore Goddard have an IP practise?
Perkins: Well, you mentioned Blanche Lucas. She had handled patent or trade mark litigation involving BIC biros but was more involved with transactional work when I was there. Possibly representation of BIC was connected to her Hungarian origin and that the inventor of the biro, Laszlo Biro, was also Hungarian. There was a strong expat Hungarian practise at Theodore Goddard led by Laszlo Gombos, who represented George Weidenfeld, the publisher, another Hungarian expat. I recall that Blanche may also have been involved in one of the early GE trade mark cases, but that was before my time.
When I qualified, the Theodore Goddard partner who did the IP/patent cases was Keith Shute. A delightful fellow who smoked non-stop using a cigarette holder and who was partial to a pink gin on the way down to an early evening conference with counsel. I became Keith’s assistant and, because he told me that he didn’t like patent cases, they were pretty much delegated to me. One I recall was for GKN Sankey, which involved racking and kegging of beer barrels. Another involved farm machinery for Bamfords of Uttoxeter, a family rival of today’s Bamford of JCB fame.
After two very enjoyable years with Keith Shute, one of my contemporaries, Paddy Grafton-Greene (now senior partner at Simpkins), was made a partner. This galvanised me into looking for partnership opportunities outside Theodore Goddard. One of my fellow articled clerks there, Henry Lazarski, had left to join Clifford -Turner’s Paris office and he strongly advised me to talk to them. I was interviewed by Max Williams – later, Sir Max and a President of The Law Society – and George Staple. In those days, in common with other City Firms, if a patent case came along, they would send it off to one of the boutique firms. For example, Bristows, Woodham Smith, Faithful Owen & Fraser etc.. But, when I joined, having had some patent litigation experience at Theodore Goddard, the cases were then channelled to me.
For the first one, I was sent off to David Young at 6 Pump Court, the Chambers now at 3 New Square. It was a copyright and design case, and David and I got along very well. When the second case came along, I wanted to work again with David. But the senior Clerk, John Glazebrook, told me that David was busy. However, he could offer me another young member of Chambers. Glazebrook was a really nice chap and good friend of Stuart, Andrew Bateson’s Clerk. I had got to know Andrew and his chambers – then in Queen Elizabeth Building but now in Gray’s Inn – through the defamation work I had done for The Sunday Times and The News of the World while at Theodore Goddard. The young member of chambers was Antony Watson. Glazebrook said “He’s very, very good and the judges – then Pat Graham and Jack Whitford – like him.” So, off I went to confer with Antony and, after only a few minutes, we realised that we knew each other from the North East. His father was, I think, Chief Constable of South Shields and Antony had been at school with several of my friends. We got along famously and worked extensively together until in 1985/6 we found ourselves on opposite sides in the long running Pilkington v PPG ‘Float Glass’ arbitration: 1985-1991. From those early days at Clifford-Turner beginning in 1972 I worked mainly with the barristers in 6 Pump Court, Willie Aldous, David Young, Antony Watson, Simon Thorley and Andrew Waugh. I also did some cases with Douglas Falconer before he was appointed to the Bench and with Richard Miller, but not to the same extent as the others. I also worked a great deal with Hugh Laddie, then at Francis Taylor Building, now 8 New Square. Hugh had, I believe, been given his first instructions by Keith Shute at Theodore Goddard. We also became good friends and I worked with Hugh opposite Antony throughout the 6 year Pilkington/PPG marathon.