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Gerard is an associate practising exclusively in the intellectual property field. He is a member of Matheson Ormsby Prentice's dedicated Intellectual Property Group with a particular focus on IP litigation.
Gerard has extensive experience of intellectual property and information technology law gained over several years while working for a well known commercial law firm in Dublin before joining Matheson Ormsby Prentice.
Gerard has been involved in some of the most high profile IP litigation in recent years in the Irish Commercial Court and Supreme Court including: Acting for a number of pharmaceutical companies in patent and SPC disputes concerning infringement, validity and injunctive proceedings (Patents), EMI and others v UPC Communications Ireland (Copyright), Karen Millen v Dunnes Stores (Unregistered Community Design), Snapcount Limited v Orbiscom Limited (Breach of Confidence/Patents), Compagnie Gervais Danone v Glanbia (Trade Marks).
In addition to being a qualified solicitor in Ireland, Northern Ireland (non-practising) and England and Wales (non-practising), Gerard is an Associate of the Irish Taxation Institute (AITI), a registered trade mark agent in the Irish Patents Office (RTMA) and a Member of the Chartered Institute of Arbitrators (MCIArb). He is also a European Trade Mark and Design Attorney and a member of the European Communities Trade Mark Association (ECTA) and the International Association for the Protection of Industrial Property (AIPPI).
Gerard has been involved in the presentation of a number of talks and has written a number of articles on IP topics for publications such as European Intellectual Property Review, Intellectual Property Magazine, Marketing Age and Irish Intellectual Property Law Quarterly. In addition, Gerard is a lecturer, tutor and examiner on the Law Society of Ireland's professional training courses for solicitors in the areas of copyright, designs and patents.
Education
University of Limerick, BA Law and Accounting
University College Dublin, LLM Commercial Law
Law Society of Ireland, Diploma in E-Commerce
University College Dublin, Diploma in Arbitration
King's College London, Postgraduate Diploma in UK, European and US Law of Copyright and Related Rights
Law Society of Ireland, Diploma in Commercial Litigation
Highlights
Gerard has:
- extensive experience in the conducting of intellectual property disputes in the Commercial Court including trade mark, passing-off, copyright, patent and design right infringement proceedings
- represented clients in High Court patent litigation proceedings relating to ownership of inventions, infringement of patents and staying infringement proceedings pending the outcome of an EPO opposition on the validity of a patent
- recently acted for pharmaceutical company in related patent revocation and infringement proceedings including a preliminary injunction application
- advised pharmaceutical companies on generic product launch issues such as preliminary injunctions and 'clearing the way' and related issues such as SPCs, market authorisations and data exclusivity
- experience in various copyright disputes including copyright infringement proceedings (both primary and secondary liability) and related proceedings such as a Norwich Pharmacal Order application to identify ISP subscribers involved in illegal filesharing and particularly in a high profile case taken by the music industry seeking injunctive relief against an ISP to prevent subscriber P2P filesharing
- advised on all aspects of anti-counterfeiting and contraband matters including the representation of clients in Irish customs procedures under the European Community Customs Regulations and various actions for delivery up and damages in respect of the sale of counterfeit products in the Irish marketplace
- defended the first Irish case on unregistered Community design rights in the fashion industry, which has been appealed to the Supreme Court
- acted for a multinational energy company in injunction proceedings related to trade mark infringement and passing off
- acted for financial services company in patent and breach of confidence proceedings related to credit card technologies
- acted for a well known online retailer in the giving of evidence in the Irish Courts as part of foreign criminal enforcement proceedings for copyright infringement
- advised a mobile telecommunications provider on misleading and prohibited comparative advertising issues
- represented an international clothing label in shareholder dispute proceedings before the Commercial Court
- acted for an indigenous software company in arbitration proceedings concerning a software contract dispute relating to a multisite installation
- successfully represented clients in obtaining the transfer of .ie and .eu domain names under the .ie and .eu Domain Name Dispute Resolution Policies
- extensive experience in filing and prosecuting trade mark applications and oppositions at both an Irish and Community level
- drafted trade mark, patent and software licences, distribution agreements, confidentiality agreements and services agreements for multinational clients in the telecommunications, financial services, food, computer game and cosmetic sectors
- advised internet start up companies on intellectual property matters concerning website operations and database copyright
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