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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.

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.

  • 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