Mishcon de Reya

Firm overview:

Mishcon de Reya has a growing trade secrets practice, which has expanded over the past year and handles a significant docket of work. Specialists handling trade secrets matters are based in London, Cambridge, Oxford, Hong Kong and Singapore.

Chosen for the “excellence of its lawyers and expertise in IP matters”, says a longstanding client. “I would recommend the firm without hesitation. Its reputation precedes it and you know you are going to get the wisest of counsel and the best legal advice.”

Matters include cases in all sectors, ranging from those involving trade secrets of a highly technical nature (such as detailing valuable technological processes) to databases of customer lists. For trade secret disputes arising when employees or consultants move businesses, the firm is instructed for matters particularly in the life sciences and IT (AI and quantum computing) industries.

A key part of the group is MDR Cyber, Mishcon's in-house team of cyber security specialists, who play a crucial role in digital investigations, investigating data breaches and assisting clients with future preventative measures.

The firm offers a litigation finance venture called MDR Solutions I, to fund litigation and arbitration cases for clients. It is the result of a strategic partnership with Harbour, and includes funding for patent and trade secret disputes.

Team overview:

Peter Nunn heads up the multi-disciplinary Confidential Information and Trade Secrets team, which includes IP practitioners working alongside specialists in employment, data protection, civil and criminal fraud, reputation management, regulatory and commercial law.

The team has benefited from a number of significant additions recently. These include Gareth Dickson (following the merger with Taylor Vinters), who brings a wealth of trade secrets experience; and Justin Lambert, a specialist in patent and trade secrets disputes in complicated technologies.

Lambert is praised by a loyal client as “a truly excellent lawyer who is hugely experienced in all IP matters, with a first class science pedigree that enables him to quickly understand the most complex technologies. He is also extremely personable and engaging and an absolute pleasure to work with.”

As of counsel in the IP Disputes Group, Lambert is qualified as a solicitor in both Australia and the UK, and has more than 25 years’ experience in IP matters in these jurisdictions. He focuses on contentious matters, including significant experience in cases involving misuse of confidential information and related issues of entitlement to consequential rights and assets.

Jeremy Hertzog is chair of Mishcon’s Innovation Department. A renowned IP litigator, he specialises in all aspects of IP protection and enforcement, including trademarks, copyright, confidential information, trade secrets, designs, passing off, patents and licence disputes. He has significant experience in advising on contractual disputes, often with a multi-jurisdictional element, and is particularly known for his work in obtaining and defending injunctive relief.

Hugo Plowman, chair of the firm’s Dispute Resolution department, has developed particular expertise over the past 20 years in cases involving the theft of trade secrets and industrial espionage. His practice straddles a broad range of commercial litigation and arbitration but with a focus on cases involving commercial fraud and investigations. Plowman has been influential in building the firm's cyber security offering, resulting in the creation of MDR Cyber.

Key matters:

• Weiss Technik UK & Ors v Davies & Ors, UK
  Mishcon acted for German multinational technology and engineering group Weiss in a dispute relating to alleged widespread misappropriation and misuse by former employees of its highly sensitive and business-critical data, confidential information and intellectual property.

Weiss sued a former key employee, as well as the competitor company which he went on to found (SJJ System Services) and other ex-employees of Weiss who now work for that competitor. Claims included breach of confidence, copyright and database right infringement and breach of contract.

Following a seven-day liability trial in 2022, the judgment found that all the defendants had breached their obligations of confidence towards Weiss, and had infringed Weiss' copyright in various software programs and its database rights.

The matter is proceeding to a quantum trial to assess the damage sustained by Weiss, with a value estimated to be several million pounds (sterling).

• Ocado v McKeeve, UK
  Mishcon acted for Ocado in its claim against founder Jonathan Faiman, former employee Jonathan Hillary and their new business venture Today Development Partners for theft and misuse of Ocado’s confidential information.

Upon execution of search and imaging orders against the defendants, copies of some of Ocado's most confidential documents were found, including the contract for its new £750 million joint venture with Marks & Spencer.

In 2021 the parties agreed a settlement, which included a public statement in which the defendants acknowledged serious breaches of confidentiality arising from their misappropriation of Ocado’s confidential information for the purposes of their business. The defendants also made a significant payment to Ocado. The court granted a permanent injunction preventing them from using Ocado’s confidential information in future.

During the execution of the search orders made against Today, a secure communications platform (similar to WhatsApp) was deleted at the instruction of Mr Raymond McKeeve, a senior partner at Today’s solicitors, Jones Day, who instructed Today’s IT technician to “burn it”. Ocado brought committal proceedings against Mr McKeeve for criminal contempt of court (in which Mishcon was also instructed).
In the Contempt of Court judgment, a new law was made in the field, during the committal proceedings, following the granting by the High Court of an “unprecedented” order to compel two individuals to attend the trial and be cross-examined by both sides.

In August 2022, Mr Justice Adam Johnson found the defendants’ solicitor McKeeve guilty of contempt of court by destroying documents in response to a Search Order and thwarting the purpose of that order, thereby intentionally interfering with the administration of justice.

McKeeve was subsequently sentenced to a fine of £25,000, and ordered to pay Ocado’s costs of the committal proceedings, assessed on the indemnity basis. Ocado’s recovered costs came to more than £750,000.
The main claim was settled in 2021; judgment in the committal proceedings was handed down in August 2022, and the sentencing hearing was in October 2022.

Clients:

Ocado, Ladbrokes, Weiss Technik UK, Weiss Technik GmbH, Weiss Technik France SAS, TOP Optimized Technologies SL, TOT Power Control SL.