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Mark Chacksfield

 


Year of call: 1999

Described in the directories as “enormously bright and diligent, with a keen focus on client demands”, “a knowledgeable and deeply impressive adviser on the full spectrum of IP disputes” and “widely considered to be one of the rising stars of the IP Bar”, Mark has been nominated for the Chambers and Partners IP/IT Junior of the Year in both 2014 and 2015. He practices in all areas of intellectual property law, with particularly strong expertise in major patent litigation where he is described as a “sector leading” litigator. He has considerable experience in appearing as the sole advocate both at first instance and in the Court of Appeal, as well as in the EPO.

Mark has an outstanding reputation in the patents field, having acted in many of the leading cases. Recent pharmaceutical and biotech cases include FKB v. AbbVie (‘Arrow declarations’, adalimumab), Teva v. Boehringer (inhaled tiotropium), Novartis v. Focus (rivastigmine patches), Hospira v. Genentech (Herceptin), Teva v. Leo (calcipotriol/betamethasone), Resolution Chemicals v H. Lundbeck (escitalopram/res judicata), Teva v Merck (efavirenz/quia timet actions), Eli Lilly v HGS (Neutrokine-α), Regeneron Pharmaceuticals v Genentech (VEGF Trap-EYE®/Lucentis®), Ranbaxy v AstraZeneca (Swiss-form claims/esomeprazole), and Convatec v Smith & Nephew (Durafiber® wound care products). Mark has represented Nokia in the Interdigital, IPCom and HTC litigations, and Unwired Planet against Google, Samsung and Huawei, as well as working with a number of other high profile telecoms and licensing companies on both standards essential and non-essential patents. He has also appeared in both high tech and mechanical patent actions, including appearing alone in the leading Court of Appeal case on indirect infringement of Grimme Landmaschinenfabrik GmbH & Co. KG v Derek Scott

Other areas of practice include media and entertainment, where Mark has represented broadcasters, record companies, picture libraries and well-known personalities in copyright and privacy claims, as well as having experience in musical copyright actions concerning substantial hits. His media clients include Northern & Shell, the Premier League Football Association, the Ian Fleming Estate, the BBC, ITV Network, Phonographic Performance, and various record companies and well known personalities.

Trade mark, passing off, copyright, design rights and complex copyright/breach of confidence actions (often involving commercial information such as client lists or technical software disputes), constitute other common areas of his practice. Mark also has experience in professional negligence cases concerning patent and IP professionals, the most recent being Kerr v Lawrence Shaw & Associates.

 

Additional Information

Education Awards

1994 - 97: Clare College, Cambridge BA Natural Sciences (Zoology) (Double First)
Hurst Prize for Zoology
1997 - 98: The College of Law, York (CPE) The Hammond Suddards’ Prize for Land Law
1998 - 99: Inns of Court School of Law, Bar Vocational Course Bar Prize from the Worshipful Company of Arbitrators.

 

Publications

Bullen, Leake & Jacob's Precedents of Pleadings (15th to 17th editions) Exhaustion of Rights and Wrongs.

‘Exhaustion of Rights and Wrongs: section 92 of the Trade Marks Act 1994’ [2003] EIPR 388.

‘A Community Patent Court at last?’ Commercial Lawyer, June 2003

‘Examining the Evidence’ Legal Week, July 2001

The Hedgehog and The Fox, a Substantial Part of the law of Copyright? [2001] EIPR 259

 

Seminars and Lectures

Mark’s numerous lectures and seminars have included:

  • New provisions on experimental use
  • The Amgen decision
  • EU design rights
  • Database rights
  • The Biotechnology Directive
  • Pharmaceutical patents
  • ISP Liability/E-Commerce Directive
  • Internet copyright/consumer contracts
  • Trade mark law

 

Professional Memberships

AIPPI, Intellectual Property Bar Association (IPBA) and Chancery Bar Association.

 

Interests

In an earlier life Mark was a keen sportsman, fencing at a national level, coming 2nd as an U20 epeeist, and once squeaking into the top 8 in the national championships. He was also a committed modern pentathlete, obtaining his Blue at Cambridge. Now, however, his exercise is mostly limited to carrying boxes of papers, an occasional run home from chambers and kicking a ball around with his three much loved children. He also remains involved in modern pentathlon, through a charity set up by Mark and two of his team mates (now with 200 supporters) to raise funds for, and generally assist with, the Cambridge University club. Mark also loves to travel, good food and music (mostly of the type with irritating repetitive beeps).

  • What the Directories Say
  • "He is really great with clients and is very solid, commercial and creative." "He is enormously bright and diligent, with a keen focus on client demands"
    Chambers Directory (Intellectual Property) 2017

    "He is highly rated and gives excellent advice."
    Legal 500 (Intellectual Property) 2017

    "He always makes time for the clients"
    Legal 500 (Intellectual Property) 2016

    "He's extremely busy and sought after by major pharmaceutical and technology companies." "A creative lateral thinker who approaches every case with huge commitment and enthusiasm"
    Chambers Directory (Intellectual Property) 2016

    "A very impressive and highly recommended senior junior, who adds gravitas"
    Legal 500 (Intellectual Property) 2015

    "Enormously bright and diligent, with a keen focus on client demands"
    Chambers Directory (Intellectual Property) 2015