Anna Carboni

Anna Carboni, Wilberforce Chambers, 8 New Square, Lincoln’s Inn, London, WC2A 3QP
Tel: + 44 (0)20 7306 0102 Fax: + 44 (0)20 7306 0095
www.wilberforce.co.uk

Email: acarboni@wilberforce.co.uk

Direct dial: +44 (0)20 7304 2905

Education & Career

Called to the Bar 2003
former Solicitor, admitted 1988

Anna Carboni joined Wilberforce Chambers in 2003 after a 17 year “first career” at the international law firm of Linklaters. It was there that she completed her legal training, qualifying as a solicitor in 1988 into the firm’s Intellectual Property and Technology Department and being made a partner in 1996. In her last two years at Linklaters, Anna was head of the London IP practice and was on the firm’s International Board.

Anna has a degree in Natural Sciences from Cambridge. She qualified as a Solicitor-Advocate in 2000 and decided to move to the Bar three years later in order to concentrate on court and advisory work.

In 1989 Anna spent six months working for the Italian intellectual property firm of Jacobacci & Perani (now Jacobacci & Partners) in Turin. She returned fluent in Italian (a little rusty these days) and also speaks and understands French at a moderate level. With French, Italian, Russian, Scottish and English ancestry, Anna is keen to take on work which will give her opportunities to improve her language skills!
 

Perhaps best known for her expertise in relation to matters concerning brands, Anna’s legal practice spans the full range of intellectual property and information technology law. She has litigated disputes and advised on issues concerning trade marks, copyright, designs, patents, database rights, domain names, computer contracts, comparative advertising and confidential information. Her science background means that she is comfortable dealing with technical subject matter, though she is happy with simple problems too.

Anna’s previous career as a solicitor and partner of an international law firm gave her experience in negotiating commercial agreements in non-contentious situations, as well as in settling disputes to put an end to litigation or, preferably, to avoid it altogether. Such negotiations and settlements have sometimes been small and domestic, while others have involved several parties based in different jurisdictions in highly complex arrangements and disputes. She has also had to deal with a range of management issues, both within her own firm and referred to her by clients.

With this background, Anna is now developing a mediation practice, both as a representative for parties and as a mediator, to run alongside her more traditional barrister’s advisory and advocacy practice. She became a CEDR Accredited Mediator in 2004 and has since been assistant mediator in two mediations (rated “excellent” in both), with more lined up.

Anna is an Independent Expert for Nominet’s domain name Dispute Resolution Service and has decided a number of such disputes since her appointment in February 2004.
 

Anna has acted in numerous high-profile disputes, including:

• Guccio Gucci SpA v Paolo Gucci [1991] FSR 89 (trade mark and passing off case involving use of a famous surname)

• Virgin Atlantic Airways v British Airways (confidential information and anti-competitive practices)

• Microsoft Corporation v Computer Future [1998] ETMR 597 (parallel imports and anti-counterfeiting)

• Mary Quant Cosmetics v Mary Quant (shareholder and directors’ dispute)

• Wyeth v Knoll [2002] EWHC 899 (Ch) (breadth of trade mark specifications)

• adidas v Microhaven [2003] ETMR 94 (anti-counterfeiting and freezing order)

• Prudential v Prudential [2003] EWCA Civ 327 and 1154 (breach of contract, trade mark infringement and scope of without prejudice privilege)

• adidas v Aldgate Warehouse [2004] (parallel imports; summary judgment and costs issues).

Since joining the Bar, Anna has represented clients in applications for search (Anton Piller) orders, ‘Norwich Pharmacal’ orders, interim injunctions and pre-action disclosure, among other interlocutory applications. She has advised on a wide range of issues, from the compulsory licensing of intellectual property rights to the taxation of goodwill. And she has drafted and settled numerous pleadings, applications and orders in a variety of cases.

In parallel with her client work, Anna is regularly invited to speak at conferences on a range of IP and IT-related topics. She has written book chapters and numerous articles for journals, as well as being on the editorial board of European Trade Mark Reports. She is the National Reporter General for the Competition Law Association and is the EU Sub-committee chair of the Parallel Imports Committee of the International Trademarks Association (INTA). She is also a member of the Computer Law Group, the AIPPI (British Group) and The Intellectual Property Lawyers Organisation (TIPLO), and an Associate Member of the Chartered Institute of Patent Agents (CIPA) and the Institute of Trade Mark Attorneys (ITMA).

Professional reputation
 

As a solicitor, Anna was frequently mentioned in both the specialist IP and general legal directories. Chambers & Partners (2002-03) said that “Anna Carboni’s ‘first class’ trade mark expertise has propelled her up the tables due to sheer weight of peer and client recommendation”, while The Legal 500 (2002) reported a client comment that she is “friendly, decisive and extremely knowledgeable”. Chambers UK (2003-04), which was published when Anna was in transition from Linklaters to the Bar, announced: “The firm loses ‘star performer’ Anna Carboni, its standout figure for general IP litigation”. The Legal 500 (2004) lists Anna as a Leading Junior and comments that her move to the Bar “is proving fruitful”.

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Revised: 05 May 2008

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