An interview with legendary IP barrister Christopher Morcom

15 February 2016

Michael Conway, an Associate at Haseltine Lake, recently interviewed Christopher Morcom, one of Britain's most highly regarded IP barristers, for the February edition of the ECTA e-bulletin. Below is an excerpt from the full article, which can be found here.

Renowned throughout the trade mark profession, Christopher Morcom has had a remarkable career as an advocate, adviser and author, spanning over 50 years.

We meet on a sunny November morning at Hogarth Chambers, in the heart of London’s historic Inns of Court, where Christopher has based his practice since its foundation in 2001. Named after the 18th Century English painter, engraver and satirist William Hogarth who successfully lobbied Parliament to create the first law giving copyright protection to the works of artists, Hogarth remains one of London's leading IP sets. 

Michael Conway and Christopher Morcom

Beginnings in IP

Christopher’s mother’s family were solicitors, while his father’s family were engineers and scientists, setting him up with, in hindsight, a perfect base from which to enter the field of IP.

Christopher was initially steered towards a science career by the influence of the turbine-making family business Belliss & Morcom, in which his Great Grandfather and Grandfather were heavily involved. It was only after  two years of studying Natural Sciences at Cambridge that Christopher decided to change to Law in his third year.

On finishing his studies, and not having yet heard the term “intellectual property”, Christopher discussed his future with a great uncle who was a senior barrister and member of the Middle Temple, Sir Kenneth Swan QC. Although his background was in classics, Sir Kenneth had an interest in patents and was instrumental in developing the UK's 1949 Patents Act. 

The reason for his interest may be that Sir Kenneth’s father and Christopher’s great grandfather, Sir Joseph Swan, was an inventor and had experience of patents. Notably, Sir Joseph came up against Thomas Edison, because he was actually the first inventor of an electric light, before Edison later produced his own version.  This led to litigation which resolved in Swan’s favour, and discussions led to the establishment of a joint company, The Edison & Swan United Electric Light Company Ltd, which adopted the brand ‘Ediswan’.

Conversations with Sir Kenneth Swan piqued Christopher’s interest and he went on to join both the Middle Temple and Sir Kenneth’s London Chambers following his call to the bar in 1963.

An evolving professional landscape

Christopher has witnessed a remarkable amount of change during his years of practice. For much of his career, he worked under the Trade Marks Act of 1938, outdated legislation that generated a large number of trade mark refusals for what can now be recognised as unsound reasons. The Act limited the scope of protection to the actual goods covered by a registration, producing some useless registrations. Christopher cites the example of HARRIS TWEED, a certification mark that was registered (and could be enforced) only in relation to “harris tweed” - no good for preventing use of the name for other types of tweed.

The barristers' profession itself has also changed quite considerably. Traditionally the barrister was the advocate in court; he couldn’t work without instructions of a solicitor (or, as later permitted, a trade mark or patent agent) and he would advise on cases, draft proceedings and then present the case in court. Now the legal profession is opening out, with solicitors appearing as advocates in the higher courts, and many trade mark and patent attorneys also becoming litigators with rights to represent clients and appear as advocates before the courts.

All this has shaped the barrister's modern role as primarily a specialist in larger litigation, and Christopher has done his fair share of this work. In one particularly long running case Christopher acted for the World Wild Fund for Nature in a dispute with the World Wrestling Federation over the use of the letters WWF. After lengthy negotiations, a settlement agreement was concluded, only for the Federation to subsequently ignore its terms, forcing the Fund to return to court for an injunction. The breach was so flagrant that, on this rare occasion, Christopher gave the client a 95% chance of obtaining summary judgement, a prediction that was duly fulfilled and upheld on appeal.

The Modern Law of Trade Marks

One of Christopher's finest achievements is unquestionably the reference work The Modern Law of Trade Marks, a comprehensive guide on trade mark law enabling practitioners to provide clients with the best possible support.

Now in its fourth edition, the work includes detailed analysis, based on the most recent case law at the time of publication. It has always been beautifully well-explained, an essential go-to reference for many in the profession.

Christopher is characteristically modest when discussing the book and emphasises the contribution of his fellow authors - the work is co-written by three barristers, currently Christopher, Ashley Roughton and Thomas St Quintin. Christopher characterises working on the book as a wonderful way to stay up-to-date on case law, also praising the contributions of Jeremy Philips and the IPKAT team who, he says, always seem to know what is going on before anyone else.

A consummate family man

Christopher has loved his career, but he has especially loved being able to share it with his wife Diane and his family. He speaks proudly of ‘taking silk’ (being elevated to Queen’s Counsel) in 1991 and the significance of that to his family. He also speaks fondly of life in Chambers and the Middle Temple, where he was elected Master of the Bench in 1996, and where he and Diane actively participate in dinners and other events. He relishes the sense of community and the  company his career has brought to him, and feels privileged to have been involved at the forefront of such a fascinating and ever-changing industry.

Michael Conway

Michael Conway

Associate Partner

Our Expert
Michael Conway
Michael Conway
Location: Bristol (UK)

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