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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.

 

Trade Marks and Passing Off

Mark frequently acts in breach of confidence, trade mark and passing off disputes, often involving SMEs. He was instructed alone in the Court of Appeal in a passing off claim between local undertakers - Newman v Adlem - which involved the much discussed issue of the so called "own name defence", as well as fundamental questions concerning the proprietary nature of goodwill.

Allergan - BOTOX®.

Mark has worked on a number of cases for Allergan concerning its famous BOTOX® product. Given its allure, the reputation of this brand is frequently abused by third parties, leading to litigation in the High Court, UK IPO and OHIM, and subsequent appeals. These cases have varied from modest oppositions, to hugely fact heavy litigation.

I. N. Newman Ltd v Adlem (CoA)) ([2005] EWCA Civ 1741, [2006] FSR 16)

This was a bitterly fought claim, concerning the sale and ownership of a business name. The case, and appeal, raised a number of interesting legal points in relation to the assignability of goodwill, the distinction between goodwill and personal reputation, and the so called ‘own-name’ defence. The Claimant was successful on all of its claims, and was awarded all of its costs, the vast majority on the indemnity basis.

I. N. Newman Ltd v Adlem ([2004] EWHC 1563 (Ch))

This was the first instance hearing on the case mentioned above – although in the end the judgment turned on a decision on the facts as to joint ownership of goodwill, and the judge did not need to find in relation to the more difficult legal points relating to assignments of goodwill and the ‘own-name’ defence.
 

  • 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