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Mark Platts-Mills QC

 


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

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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.

Patents

In patent revocation proceedings concerning USB key drives (Trek Technology (Singapore) v M-Systems Flash Pioneers), Mark successfully defended M-Systems against Trek’s appeal to the Patents Court and advised the same client regarding the equivalent Trek patent in proceedings in Singapore. Elsewhere, he represented Ultraframe in one of very few fully fought out inquiries concerning damages in a patent action (Ultraframe (UK) Ltd v Eurocell Profiles Ltd and another), and the applicant for revocation of a UK patent in AlleyEnterprises Ltd v Gerkros Boilers (Tipperary) Ltd, a case that settled before trial. Further highlights include Hesco v Macafferri (bastions), Playhut v Springform (self-erecting tent structures) and Charlesworth v Relay Roads (invention to lay asphalt curbing).

Recent cases include

Kingspan Insulation Ltd v Xtratherm (2014)

Defending a claim for infringement in relation to insulation boards with counterclaim for revocation.

Brilliant Achievement SDN v Asia File Products Sdn (2012)

Advising in relation to an appeal from the decision of the High Court in Singapore in a patent action relating to the design of box files.

Trek Technology (Singapore) v M-Systems Flash Pioneers (2008) EWHC 102 (Patents Court - Kitchin J). 

Representing M-Systems with Jonathan Hill. Patent revocation proceedings in the Patent Office. The Patentee sought to amend the patent in the course of those proceedings. Successful defence of Trek’s appeal to the Patents Court. The case concerned a patent for USB key drives. The appeal also raised issues of re judicata based on foreign judgments. We have also advised the same client in respect of the equivalent Trek patent in Singapore proceedings in Singapore.

Ultraframe (UK) Ltd v Eurocell Profiles Ltd and another (2006)

Represented Ultraframe with Jessie Bowhill and Adrian Speck. This was an Inquiry as to damages in a Patent Action relating to conservatory glazing panels. One of very few fully fought out inquiries. In excess of £3m was recovered on behalf of the Claimant.

AlleyEnterprises Ltd v Gerkros Boilers (Tipperary) Ltd, (2006)

Representing, with Jonathan Hill, the Applicant for revocation of a UK Patent. The principle issues related to alleged prior use by the manufacture and sale of boilers in Ireland and whether they were in fact manufactured prior to the priority date at all. Settled before trial.

Fieldturf v Heydour Contract Services (2004)

A patent action in the Patents County Court in respect of an invention relating to artificial turf structures. In the course of the action the Claimant applied to amend its two patents. The amendment was opposed by a third party. The action settled and the amendment proceedings were directed to be heard in the Patent Office together with revocation proceedings brought by the third party.

Hesco v Macafferri 2000

A patent infringement action relating to “bastions”. Bastions are wire mesh structures which, when filled with sand or building material are used to form a structural barrier they were successfully used to hold back the sea in East Anglia and as temporary fortifications during the Gulf War. The patent was found to be valid and infringed.

Playhut v Springform 1999

A patent infringement action relating to self-erecting tent structures. Although the Defence was unsuccessful the case is going to the Court of Appeal in 2001. It is understood that the EPO may have reached a different decision to Laddie J. in respect of added matter.

Charlesworth v Relay Roads, 1999

Representing the claimant with Mike Tappin. This was a further aspect of the patent action mentioned below. Having found the patent to be partially valid and infringed Neuberger J permitted the Defendant to re-open the action in order to try an issue of alleged self prior use by the Claimant. It was alleged that the Claimant or an associated company had used a machine embodying the invention to lay asphalt curbing on the M3 Motorway some 6 months before the date of the patent and allegedly in front of an array of witnesses. The allegation was flatly denied and the Claimant had documents that appeared to refute the proposition. Sadly the Defendant failed to meet conditions imposed by the Judge and the proposed defence did not proceed.

Haberman v Jackel International

1999 A patent infringement action relating to toddlers’ training cups. The extreme success of the invention may have tipped the balance in favour of the Claimant on the issue of obviousness.

Novamedix v NDM 1997

Patent infringement and validity – Patents County Court and Court of Appeal.

Lars Norling v Eez-Away Ltd, 1997

Patent Infringement, amendment - meat de-boning machinery.

Brain v Ingledew Brown Bennison & Garret, 1997

Action for unjustified patent threats. Laddie J found in favour of the Claimant albeit doubting whether much in the way of damages would result.

Michael Ladney v Cinpres Ltd, 1997

The first round of this ongoing dispute. Patent proprietorship - blow moulding process - Court of Appeal. The Court of Appeal reinstated the Patent Office decision in favour of Mr. Ladney which Laddie J had overturned.

Trade Marks and Passing Off

Recent highlights include Tsit Wing (Hong Kong) Co Ltd v TWG Tea Co Ltd in which Mark represented the successful Claimants in a three week trial in Hong Kong in June 2013 and the equally successful appeal in October 2014, Fine & Country Ltd v Okotoks in which the claimant successfully sought to prevent passing off and infringement of its Fine & Country device mark by the use of a device comprising the word Fine in a similar script. Also, Julius Samann Ltd. and others v Tetrosyl Ltd., where the ECJ decision in Arsenal in respect of infringement was applied, and the enforcement case The Children's Trust v The Department of Health. He also acted for the opponent in a successful appeal from the decision of the Trade Marks Registry to permit registration of the mark “1-800 Flowers”. In the context of passing off actions, he appeared for the claimant in Andrew Knight v Beyond Properties PTY Ltd & Others, concerning the defendant’s broadcast of “Mythbusters” on Discovery and the BBC, and in Universal Music Operations Ltd. v Sony BMG Music Entertainment (UK) Ltd, concerning the sound track album for the Da Vinci Code. 

Tsit Wing (Hong Kong) Co Ltd v TWG Tea Co Ltd (2013/2014)

Mark represented the Claimants with Ms Winnie Tam SC (a door tenant at 8 New Square) and Philips Wong in a trade mark infringement and passing off claim relating to tea and coffee. The Claimants successfully attacked the Defendants’ attempts at “witness gathering” exercises. An application to appeal to the Court of Final Appeal is pending.

Nigel Wooley v Ultimate Products Ltd (2014)

Leading Thomas Moody-Stuart for the Defendants. An account of profits in a passing off action.

Re “TOMMY NUTTER” trade mark (2013)

Representing J&J Crombie in its unsuccessful attempt to overturn the decision of the Registrar in relation to its trade marks derived from the famous 1960’s fashion designer.

Fine & Country Ltd v Okotoks Ltd
(2013)

Mark and Jessie Bowhill representing the Defendants in this passing off and trade mark infringement claim. The Defendants were found to have passed of their estate agency business as that of the Claimant and infringed the Claimants device mark comprising the words FINE & COUNTRY by the use of their mark FINE in a similar script and with other embellishments which were found to be similar to those of the Claimant. An application for permission to appeal to the Court of Appeal is awaiting a decision.

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

Although the principle issue in the case concerned the application of the must match defence, issues of passing off and trade mark infringement arose in relation to the manner in which the Defendants advertised the wheels offered by them as spare parts for BMW vehicles.

Donovand Limited v Ozaltun Otelcilil Turizm Ve Ticaret Ltd Sti and Others (2010)

Appeared with Jessie Bowhill on behalf of the defendants in this substantial international trade mark dispute relating to the “Gullivers Travels” brand in the travel industry.

Julius Samann Ltd. and others v Tetrosyl Ltd. (2006)

Representing the Claimant with Jessie Bowhill. A trade Mark infringement action. The trade mark comprised the outline of the shape of an air freshener product to be seen in many motor vehicles. The judgment of Kitchin J. deals with an array of attacks that were launched against the validity of the registration in issue. It also deals with and applies the ECJ decision in Arsenal in respect of infringement. The Claimant established a likelihood of confusion primarily by means of a carefully prepared and executed survey.

The Children's Trust v The Department of Health. (2004)

The Children's Trust at Tadworth sought to enforce its registered trade marks of a device and the words "The Children's Trust" against the DoH which had set up a number of Children's Trusts as part of its health care service. The action settled after the first day o f the trial.

1-800 Flowers TM 2001

Represented the Opponent in a successful appeal from the decision of the Trade Marks Registry to permit registration of the mark “1-800 Flowers”. Amongst other successful grounds Jacob J found the mark to lack inherent distinctiveness. The Applicant’s appeal to the Court of Appeal was dismissed. Subsequently represented the same client in proceedings to prevent the infringement of the trade mark “1-800 Mobiles”. The latter case was satisfactorily resolved out of Court.

 

Passing Off

Tsit Wing (Hong Kong) Co Ltd v TWG Tea Co Ltd (2013/2014)

Mark represented the Claimants with Ms Winnie Tam SC and Philips Wong in a trade mark infringement and passing off claim relating to tea and coffee. An application to appeal to the Court of Final Appeal is pending.

Nigel Wooley v Ultimate Products Ltd (2014)

An account of profits in a passing off action.

Fine & Country Ltd v Okotoks Ltd (2013)
 

Midland Van & Truck v Midlands Truck & Van (2011)

Represented the Defendant in a claim for passing off relating to truck and van sales.

Andrew Knight v Beyond Properties PTY Ltd & Others (2007)

Appeared for Claimant, the author of a series of childrens’ books published in early 1990s including “Mythbusters” in the title; The trial concerned the alleged passing off by the defendant’s broadcast of “Mythbusters” on Discovery and the BBC.

Universal Music Operations Ltd. v Sony BMG Music Entertainment (UK) Ltd. (2006)

Representing the Claimant with Henry Ward. An ultimately unsuccessful attempt by the distributors of the sound track album for the Da Vinci Code to prevent the distribution of a CD for similar music said to have been got up to represent that it was the sound track.

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.

Confidential Information

Vestergaard Frandsen AG v Bestnet Europe Ltd and others (2015)

Leading Thomas Moody-Stuart and James Whyte for the Claimants. This dispute (which commenced in 2006) relating to trade secrets in the formulation of the materials from which Mosquito Nets are manufactured continues. The inquiry as to damages was heard in the summer of 2014. Both sides are appealing and an appeal is likely to be heard in late 2015. 

Specialist Marine Services v Dalby (2009)

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

The Gadget Shop v Bug.Com 2000

An application to set aside a without notice search order (Anton Piller). The claimant alleged that the personal defendants had filched a large amount of allegedly confidential information and on that basis obtained a search order. The search revealed virtually nothing and nothing of any substance. The Order was discharged after a six-day hearing on grounds that included material non-disclosure and serial breaches of CPR. The claimant had, among other matters, used an out-of-date version of the standard form search order.
 

EU Law

Antonio Munoz Y CIA SA and Anr v Frumar Ltd and Anr, 1999

The Defendants imported grapes from Spain under various variety names. The Claimant alleged that the grapes grown in Spain infringed local variety rights. The Claimant had, as yet, not managed to establish those rights in Spain. It was unclear whether this was due to defects in the Spanish procedure or defects in the Claimant’s case. The Claimant resorted to an allegation that the Defendant had acted in breach of a Council Regulation requiring table grapes sold in the EEA to bear the correct variety name. The Judge held that there was no cause of action available to the Claimant under the regulation. The ECJ has subsequently decided on a reference by the Court of Appeal in this action that the regulation may give rise to personal rights of action. Frumar were not represented in the reference or in the Court of Appeal.

Other

O2 v H3G (2004/2005)

Representing Hutchison at the interim stage of this dispute, with James Abrahams. This was a comparative advertising case in which O2 sought to restrain by interim injunction advertisements placed by "3" in which they suggested that certain of their services were substantially cheaper than comparative services of O2. The Court, Pumfrey J, held that on the current state of evidence the advertisements were not misleading and declined to grant an injunction. He found arguable, and left open, the question whether the use of bubbles by "3" might constitute infringement of certain O2 bubbles trade marks despite the fact that the advertisement was a comparative advertisement. O2 subsequently applied to refer a raft of questions relating to issues arising under the Trade Marks Directive to the European Court of Justice. The application was refused by the Vice Chancellor.

Jordan Grand Prix v Tiger Telematics (2004/2005)

The Defendant which launched its new "Gizmondo" product in October 2004 entered into sponsorship agreements with the Jordan Formula One team. In March 2004 the Claimant sought summary judgment in respect of alleged breach of contract by failure to pay the fees due of US$3m. The Defendant alleged, amongst other matters, that the contracts had been induced by misrepresentations by Jordan staff. Jordan failed to obtain summary Judgment but persuaded the Court to order payment of US$2.5m into Court. The sum to be paid was reduced on appeal and provision was made for security to be provided by means of shares in the Defendant company. The case was settled shortly before trial.

Kangol Ltd v Sports World International Ltd. (2004)

Kangol sought an interim injunction to prevent the sale by the Defendant of £9.7 million worth of Kangol branded casual wear through its shops, which include Lillywhites. Kangol contended that the goods were "counterfeit". The substantive issue was whether such goods and the manner in which they had been produced and imported fell within the terms of a licence granted by Kangol to a third party. Apart from one design the Claimant failed.

ReadingFestival Ltd v Coors Brewers Ltd. (2003)

Successfully opposed an application by the Mean Fiddler Group to prevent the Carling Group from promoting and issuing a CD of tracks by bands appearing on the Carling Stage at the Reading and Leeds festivals under the title “Best of the Fest” and by reference to various festival logos.

Additional Information

Education

1969-1972: Balliol College, Oxford. Engineering Science and Economics
1974: Called to the Bar

Other

1975: Joined the Chambers of Mr. Thomas Blanco White at Francis Taylor Building which was then the pre-eminent IP set.
2001: Elected Head of Chambers
2006: Elected Bencher of Lincoln’s Inn

Professional Memberships:

Intellectual Property Bar Association, Chancery Bar Association.

Recent Activity

» International Arbitration in Hong Kong
» The London Taxi Corporation Ltd (t/a The London Taxi Company) v Fraser-Nash Research Ltd (2) Ecotive Ltd
» Tsit Wing v TWG Tea
» The London Taxi Corporation Ltd v Frazer-Nash Research Ltd and Ecotive Ltd
» Vestergaard Frandsen A/S (now Called MVF 3Aps) v Bestnet Europe Ltd & Ors [2014] EWHC 3159 (Ch)

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

 

 

 

 

 

  • 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