8 NEW SQUARE

020 7405 4321

Mark Platts-Mills QC

 


Year of call: 1975
Year of silk: 1995
Position: Head of Chambers

After reading engineering and economics at Balliol College, Oxford, Mark Platts-Mills QC joined the pre-eminent patent and intellectual property set at the time, the Chambers of Mr. Thomas Blanco White at Francis Taylor Building. He has since specialised in all aspects of intellectual property including patents, trade marks, passing off, registered designs, copyright, design right, technical trade secrets and commercial matters with a technical content. Mark was characterised as a “real fighter” in Chambers Directory 2010 and indeed, Ultraframe v Eurocell is prominent among his recent highlights as one of very few fully fought out inquiries as to damages in a patent action. He has also recently represented the applicant for revocation of a UK patent which, if upheld, would have covered the ubiquitous USB memory stick (Trek v MSystems). In other highlights, Mark appeared for the defendant in the leading database right case (British Horse Racing Board v William Hill), and for the claimant in a successful trade mark infringement trial concerning tree shaped air fresheners (Julius Samann v Tetrosyl). In addition, he successfully represented the defendant in a design rights case relating to helmets for the rescue services (Helmet Integrated Systems v Mitchell Tunnard). He is currently representing the claimants in the trade secrets case Vestergaard Frandsen v Bestnet.

Clients can expect to benefit from Mark’s long experience encompassing an extremely diverse range of cases, which has given him a lasting appetite for the most challenging of disputes.

Copyright, Database Rights and Design Rights

High profile cases include Ordnance Survey v AA (concerning plagiarised OS maps) and The Football Association Premier League and Topps Europe Ltd v Panini UK Ltd. (football stickers). Mark was also involved in Specialist Marine Services v Dalby (relating to the operation of ships out of the Humber) and the successful Court of Appeal case Helmet Integrated Systems Ltd v Mitchell Tunnard and others (firemen’s helmets). Further highlights include Cray Valley v Deltech (resins in paint) and IPC v MGN (comparative advertising).

Copyright

PPL v Netflix (2013)

Advising Netflix in relation to a claim for infringement of copyright in PPL film titles.

Specialist Marine Services v Dalby
(2009)

Copyright and confidential information case concerning operating of ships out of Humber. Mediation settled.

Helmet Integrated Systems Ltd v Mitchell Tunnard and others (2006)

With Benet Brandreth. The Appeal related to employment issues – breach of duty of fidelity and breach of fiduciary duty - alone. Succeeded in Court of Appeal. Case concerned firemen’s helmets, copyright infringement. Appeal was breach of fiduciary duty only.

The Football Association Premier League and Topps Europe Ltd v Panini UK Ltd. (2003/3)

Representing the Claimant with James St. Ville. The latest round in the Football stickers war between Topps (formerly Merlin) and Panini. This was the reverse of the 1996 action where Panini successfully prevented Merlin from using team crests on their football sticker products. In this case Mr. Justice Peter Smith determined that there was only one substantial issue in the action namely whether Panini (in this case) was entitled to the benefit of the incidental use defence under s31 of the CDPA. He found that they were not. The Court of Appeal rejected Panini’s Appeal.

Cray Valley v Deltech (2003)

Representing the Defendant with Lindsay Lane. A breach of confidence and copyright infringement action relating to the recipes and processes for the manufacture of resins used in the manufacture of paint. The Claimant had purchased the business of a resin manufacturer but failed to purchase the plant or to impose any restrictions on the employees. A competitor bought the plant and employed the employees. The Claimant failed to control the recipes documents which remained at the plant. Although the new purchaser was found to have infringed copyright in the recipes the claim in breach of confidence failed.

Ordnance Survey v AA (2001)

A copyright action in which the OS alleged that the AA had plagiarized a large number of its maps over a long period of time. The action was due to last 4 weeks but settled the day before trial and received wide coverage in the press as regards the size of the settlement.

Database Protection

The British Horse Racing Board v William Hill (2004/2005)

Representing William Hill with James Abrahams. The leading case in the European Community on the application of the Database Directive. The Judgment of the ECJ was handed down in early November 2004 in apparently unequivocal terms in William Hill’s favour. Despite that BHB attempted to persuade the Court of Appeal that it should revisit the conclusion. They did not succeed.

Design Rights

Pendle Metalwares v Walter Page (2013)

With Fiona Clark for the Defendants. An Inquiry as to damages in a design right case relating to cigarette bins.

Bayerische Motoren Werken AG (BMW) v Round and Metal Ltd. (2012)


Representing the Defendants with Jonathan Hill in a claim by BMW that wheels imported by the Defendants infringed BMW’s Community Registered Design Rights. The central issue was as to whether the wheels were entitled to the benefit of the “must match” defence under Art 110 of the Community Design Regulation and in particular whether the provision that “protection as a Community design shall not exist for a design which constitutes a component part of a complex product used within the meaning of Article 19(1) for the purpose of the repair of that complex product so as to restore its original appearance” applied in this case.
 

Frayling Furniture Ltd v Premier Upholstery Ltd, 1998

Design right in leather furniture. As originally formulated the action related to several million design rights. In the end it came down to a few dozen. The trial lasted five and a half weeks and was resolved in substantial part in the Defendants’ favour. None of its current designs was held to infringe.

  • What the Directories Say
  • "He is phenomenal at cross-examination; equally charming and ruthless in his line of questioning."
    Legal 500 (Intellectual Property) 2017

    "Adept in all areas of IP"
    Legal 500 (Intellectual Property) 2016

    "Formidable in court"
    Chambers & Partners (Intellectual Property) 2016

    "Recommended for all aspects of IP law."
    Legal 500 (Intellectual Property) 2015

    " Head of chambers, he brings an impressive amount of experience to cases." " Highly versatile and a good street fighter"
    Chambers & Partners (Intellectual Property) 2015