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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.

 

Copyright and Design Rights

Mark's practice covers technically complex copyright actions as in the case of Cray Valley Ltd v Deltech Ltd, technical software / source code disputes such as Sport Universal S.A. v Prozone Holdings Limited and media cases concerning allegations relating to various well known pop songs.

Copyright

Football Dataco Ltd v Smoot Enterprises Ltd ([2011] EWHC 973 (Ch); [2011] 1 W.L.R. 1978; [2011] F.S.R. 25

This was an interesting case which raised the question of the availability of judgment in default where, in a parallel action against different defendants, the question of the subsistence of the right relied upon had been referred to the Court of Justice. The Court was initially hesitant about allowing the application to proceed, but was ultimately persuaded that this was the appropriate path to follow, and judgment was granted.

A v.B

This was a claim for misuse of highly private personal information relating to a well known celebrity.

E v. B. & Ors

This action concerned a claim that a substantial number 1 hit was based upon, and infringed the copyright in, a song written by E. The action was strongly contested by the record labels, and proceeded close to trial, when it settled on confidential terms.

Celebrity Pictures v. Dolman

This case involved a substantial number of ex-parte 3rd party disclosure orders, followed by search orders in order to track down the party responsible for hacking into, and circulating on the internet, exclusive photos from the claimant photographic library. Ultimately the culprit was identified, and judgement obtained to prevent any further such activities.

Sport Universal S.A. v Prozone Holdings Limited

This concerned a computer program which monitored and analysed the movement of players over a football pitch. The claim was for infringement of copyright, as well as touching upon breach of confidence, breach of contract and passing off. It started with an Anton Piller order, and was brought against the Claimant’s ex-head programmer and his new employer. The case was technically very complex and involved a detailed analysis of the structure and content of hundreds of lines of C++ code. It settled shortly before trial.

Cray Valley Ltd v Deltech Ltd ([2003] EWHC 728)

This was a claim for breach of confidence, infringement of copyright and other related causes of action brought against the exemployees of a third party from whom the Claimant had bought information relating to the formulation and manufacture of alkyd and polyester resins. The trial concentrated on the value of the information, steps taken to preserve its confidentiality and on its use by ex-employees who were largely unable to remember it save by reference to the ex-employer’s documents. 

Roche v SHAC

An ex-parte injunction to prevent the Defendant (an animal rights activists umbrella organisation) from publishing on the internet certain confidential and copyrighted documents relating to inter alia the personal details of the Claimant’s staff.

Design Rights

D. Jacobsen & Sons v. Crocs Inc [2014] EWHC 987 (Ch)

This was an interesting application by the defendant pursuant to Art 91 of the Community Designs Regulation for a stay of the proceedings pending an ongoing invalidity action in OHIM. The claim was one in threats relating to letters written in 2005, which had been subject to a previous voluntary stay pending different, earlier OHIM invalidity proceedings. The history of the proceedings were complex, and raised difficult issues concerning the scope of the stay provisions, and ECHR Art 6 aspects, although ultimately the Court decided the matter on much narrower grounds.
 

Grimme Landmaschinenfabrik Gmbh & Co. KG v Derek Scott (T/A Scotts Potato Machinery) ([2009] EWHC 2691 (Pat), [2010] FSR 11)

This claim concerned the infringement of unregistered design rights in the parts of a mechanical potato harvesting machine. The claim traversed all of the usual issues, such as subsistence, commonplace, must fit, must match, and infringement. The Claimant was successful in virtually all of it's claims.

Elite Angling v RAGS ([2007] FSR 10)

This was a claim for infringement of unregistered UK and Community Design rights in the Patents County Court. The trial eventually lasted three weeks, traversing all of the issues of originality, commonplace, ‘new’ and ‘individual character’ and independent design in the context of specialist carp fishing tackle. The Defendant raised an interesting argument as to whether an article can be commonplace if made by a known, but very rarely used, technique, as well as presenting the Court with questions of how to approach a claim to design rights in a highly flexible article. The Claimant was successful on most of the legal points, but failed on the issue of copying.

Spiralstem Ltd v Marks & Spencer, Superframe Group PLC (25 February 2005)

This was an inquiry into damages following on from an admission on liability in an action for design right infringement. The Claimant advanced a total claim for £2.1M in relation to the core claim and a very broad range of ‘convoyed’ goods and services. Argument involved detailed analyses of the proper construction of the Allied Maples test, as well as the notional background against which damages for infringement of IP rights are to be assessed. In the event the Claimant was awarded only about a third of the damages claimed.

  • 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