Redd Solicitors Telephone+44 (0) 20 7776 4760

Charters Macdonald-Brown

Consultant

Charters is currently a non-practising solicitor and a consultant to Redd.

Charters, a founding partner of Redd, earned a substantial reputation as a specialist litigator in intellectual property disputes. During his time in private practice, he litigated in all the principal English first instance and appellate courts which hear IP cases and in Europe's most senior court, the Court of Justice of the European Union in Luxembourg. A lot of his cases, particularly patent, were multi-jurisdictional and involved working closely with lawyers from other jurisdictions.

He remains a member of WIPO's Arbitration and Mediation Domain Name Panel.

Charters has delivered many talks on intellectual property matters and made
numerous contributions to IP publications. He has long been recognised for as a
"leading individual" in intellectual property by the legal directories. In Chambers
Global (2014) it was said that “having him around, even for a small part of a project, can change everything”.

Patents

  • Acting in well known patent cases including Du Pont v. Akzo (House of Lords), Pioneer Electronics v. Warner Music (Court of Appeal) and Pozzoli -v- BDMO (Court of Appeal).
  • Handling patent cases across a wide range of technologies including: stent coating; suspension systems; hair clips; packaging/storage systems for CDs/DVDs; instant cameras; chemical selections; car roof racks; tampon applicators; sausage skin manufacturing processes and products; intrusion detectors; methods for forming optical disks and the production of video disk replicas; gas meters; flooring systems; and, electronic sensors.

Trade marks and Passing Off

  • Acting on many important cases including the leading passing off case in the UK
    (Warninck v Townsend - the "Advocaat" case); the Chicago Pizza Pie Factory v LS Grunts case; and, the "Treat" case (British Sugar v James Robertson, one of the first trade mark infringement cases to be heard under the Trade Marks Act 1994) as well as other trade mark cases in fields as diverse as pharmaceuticals; tobacco; batteries; lottery games; golf club shafts; sun care products; restaurants; and, chocolates.

Design right

  • Handling design cases covering replacement parts for cars; sportswear; fashion
    apparel; shoes (both fashion and industrial); sunglasses; lamps; cameras; umbrella cases; tools; and, packaging.

Trade secrets & Confidential information

  • Acting on cases involving the misappropriation of trade secrets (for example, Johnson & Bloy v. Wostenholme Rink - formulation for a printing ink) and confidential information (e.g. theft of blueprints for designs; manufacturing specifications). In many of these cases, "search and seizure" orders were obtained to preserve evidence and asset freezing orders were obtained to prevent dissipation or movement of the defendants' assets in order to avoid payment to claimants.

Domain names & competition

  • Apart from adjudicating on ICANN domain name disputes referred to WIPO (Charters is a member of WIPO's Arbitration and Mediation Domain Name Panel), he has prepared complaints to domain name registries and has acted in proceedings against domain name registries.

Search & Seize and Freezing orders

  • Obtaining search & seize orders in many cases, usually, but not exclusively, counterfeit cases.

Contractual issues

  • Related contractual advice on patent licences, technology development agreements and distribution agreements.

Charters started his legal career at the Bar (called in 1969) with a general practice
covering crime, personal injury and family work. This proved to be a useful
grounding for the more commercial litigation practice which he developed as a
solicitor (admitted in 1974) with Gouldens, a commercial law firm based in the
City of London. From the late 1970s, Charters headed Gouldens' commercial
litigation group.

In the mid-1970s, Charters started to develop what became a successful
intellectual property practice which enjoyed a substantial reputation in handling
contentious and non-contentious IP matters. Charters' general commercial
litigation background has been very valuable in handling IP litigation by bringing a
broad approach to this technical practice area.

He was Joint Managing Partner of Gouldens before its merger with Jones Day in
2003, following which he became head of Jones Day's London IP group. He left
Jones Day in 2004, with Sara and Simon to set up Redd as a specialist IP firm.  He retired from the partnership in 2015 and is now a consultant to Redd.

Charters is on WIPO's Arbitration and Mediation Domain Name Panel.

Charters has been recognised as a leader in the field of intellectual property for
many years:

  • "having him around, even for a small part on a project, can change everything." - Senior Statesman, Chambers Global (2014).
  • "a seasoned expert on patent litigation, particularly with regard to co-ordinating disputes in multiple jurisdictions" - Senior Statesman, Chambers UK (2014).
  • “always handles a case in a diligent and respectful matter and has a history of success to equal anyone” - WTR (2014).
  • Legal 500 - Senior Statesman (2014).
  • Who's Who Legal - Patents and Trade Marks (2014).
  • MIP IP Star - Patents and Trade Marks (2014).





t: +44 (0) 20 7776 4760

e: charters@redd.eu