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Prof. Mark Engelman
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Very personable but tenacious and valued for his ability to think outside the box.

Legal 500

He has an inventive mind for challenging situations.

Chambers UK

Mark is a leading intellectual property practitioner whose practice is diverse and includes numerous heavyweight contractual disputes within the court system and by way of arbitration, in which he acts for both governments and corporates.

An esteemed trade mark law and passing-off expert with 25 years of experience of representing well-known brands”, Mark is recommended by both legal directories, Chambers UK and Legal 500, for intellectual property work.  They commend his “encyclopaedic knowledge of the law” and the fact that he has “an inventive mind for challenging situations”.   He is also praised for “his client-facing skills and robust advocacy”.

Mark is known for his “refreshingly informal but highly commercial approach”.   His legal expertise is enhanced by his time as sole in-house counsel at Dunlop Slazenger and Head of IP at The Body Shop International Pl.  He is and has been standing counsel for a number of multi-national companies and SMEs such as Alexander McQueen, Specsavers, Monsoon and Oxford Brookes University.

In addition to his legal practice, Mark is a mentor and advocacy trainer at Kings College London, a research associate at St Edmunds College Cambridge, and in 2018 appointed Associate Professor to Notre Dame University.  He is also a Bencher of the Honourable Society of Gray’s Inn.

Intellectual Property

Mark Engelman trained as a research pharmacologist then practised as a solicitor at Clifford Chance and Denton Wilde Sapte. After 10 years in the corporate world, he returned to the Bar in 1999 and, in one of his most recent reported cases, he successfully represented a United States company’s UK subsidiary against Intel Corp over the fame of the Intel brand. This European Court judgment now governs the law of trade mark dilution for the EU.

His current pending actions include:

  • Apple, Inc v Wapple.net Limited: Acting for the global brand leader Apple, Inc, in the United Kingdom Intellectual property Office against Wapple.net Limited in opposition proceedings.
  • Ray Baldwin(aka Ray Russell) v Ellis Ginn and others: An action concerning the recovery of a musician’s fees, the writer of underscore to TV titles such as Bergerac, Touch of Frost from his ex-manager.
  • Oxford Brookes University v Oxford University: Acting for Oxford Brookes University in a serious of trade mark disputes over its name
  • Lenovo v Legend Bejing Limited: Acting for the 6th largest PC manufacturer in the world against a competition in the Court of First Instance on Appeal from the OHIM Board of Appeal

Recent reported cases include:

  • Samuel Smith Old Brewery (Tadcaster) v Philip Lee (Trading as “Cropton Brewery”) currently reported on Lawtel [2011] All ER (D) 229 (Jul) This is a trade mark infringement and passing off action brought by Sam Smith against another brewery in Tadcaster over the right of Sam Smith to a monopoly over the white rose of York. Acting for Cropton Brewery, this was a partially successful defence of the proceeding which decided that Sam Smith did not have a monopoly over the white rose of York.
  • Paul Gregory Allen (Acting As Trustee Of Adrian Jacobs, Deceased) V (1) Bloomsbury Publishing Plc (2) Joanne Kathleen Murray (Aka J K Rowling) (2011) High Court judgment dealing with the court’s powers upon determining a summary judgment application under CPR r.24.6 extended to the making of an order for security for costs.
  • The Estate of Adrian Jacobs v (1) J K Murray (A.K.A) JK Rowling (2) Bloomsbury Publishing Plc [2010] All ER (D) 162 (Oct); [2010] E.C.D.R. 16 A copyright infringement action brought by the estate of the late author of a book entitled Willy The Wizard, a literary work to prevent the further publication of Harry Potter and the Goblet of Fire written by JK Rowling and published by Bloomsbury. The case following the last Da Vinci Code case concerning the protection of a plot. The Defendants application for summary judgment has failed and the case now proceeds to trial. Mark’s has been instructed by both the late estate and for the son of the late estate and his pleadings have been reproduced for the purpose of parallel proceedings in the United States.
  • Professor Geoffrey Goldspink (2) MRG Associates Ltd v University College London And University College Business Plc. This action which is already been subject of a hearing in the High Court concerns the exploitation rights to a pharmaceutical substance the subject of a global patent filing by a major pharmaceutical company. It also concerns issues of inventorship relating to those pharmaceutical patents. The Court has imposed confidentiality orders preventing any detailed discussion of the action.
  • Nanjing Automotive Corp And Others v (1) William Riley (2) MG Sports & Racing Europe Limited (2010) 33(4) IPD 33022; [2010] All ER (D) 37 (Jun) The case involves trade mark invalidity proceedings first heard in the Trade Mark Office and now the subject of an embargo judgment of the Court Of Appeal having been tried in the High Court. It concerns the validity of the MG family of trade marks on motor vehicles. Following the collapse of the MG Rover Group, the MG trade mark portfolio was purchased by the Claimants from the liquidators after MG Rover Group went into liquidation in 2005. The British company commenced proceedings in United Kingdom Trade Mark Office for invalidity, the Chinese company pursued trademark infringement proceedings in the High Court. The invalidity proceedings raised by way of Defence and Counterclaim. The trail before Blackburn J ended in late December 2009 and the appeal before the Court of Appeal the subject of an embargo.
  • Munroe V Intel Corp Sub Nom Re Munroe’s Trade Mark Application (2009) RPC 16 Whether a barrister who also sat as a part-time appellate judge in the role of The Appointed Person might in continuing to so act for a party to proceedings, in so doing breach of Art 6 Human Rights Act 1988.
  • Noel Martin v (1) Channel Four Television Corporation (2) Century Films Ltd (3) Estephan Wagner [2009] All ER (D) 80 (Nov) Acceptance in principle of the Court’s of jurisdiction to grant an interim injunction to prevent the broadcast of a television documentary.
  • Intel Corporation Inc v CPM United Kingdom Ltd [2009] IP &T 559 (Case C-252/07) ECJ Establishment of a test for trade mark dilution.
  • Intel Corp Inc v CPM United Kingdom Ltd C-252/07 [2008] All ER (D) 277 (Nov) The European Court of Justice’s landmark decision on what constitutes dilution for the purposes of that type of damage contemplated under Art 5(2) European Trade Marks Directive, ss5(3) and 10(3) Trade Marks Act 1994.
  • Intel Inc v CPM (UK) Ltd in the Court of Appeal: [2007] EWCA Civ 431, [2007] All ER (D) 218 (May)
  • Intel Corporation Inc v CPM UK Ltd [2006] E.T.M.R. 90, an appeal to the Court of Appeal from the High Court and the Trade Mark Registry in relation to the fame of the Intel trade mark.
  • Fleet Mobile Tyres Ltd v Jeff Stone and Lynn Aswell (2006) 150 S.J.L.B. 1150; successfully represented the appellants in the Court of Appeal overturning the High Judge’s decision on derogation from the grant of a brand in a franchise dispute. Leave to the House of Lords pending.
  • Fleet Mobile Tyres Ltd v Jeff Stone and Lynn Aswell [2006] EWHC 1947 High Court trial of 8 days successfully defending injunctive proceedings to enforce post termination 1 year restrictive covenants.
  • In The Matter Of Registration No.1461059 Sub Nom C & J Clark International Ltd V Four Star Distribution (2006) (lawtel) Successfully represented Circa before the Appointed Person on an appeal from the Trade Mark Registry against an attack on its registered trade mark for non-use.
  • Monsoon Plc v Primark Plc [2005] (national press), represented Monsoon in a series of design right infringements of Monsoon’s fashion clothing.
  • Tripp Ltd v Landor & Hawa Intl Ltd [2004] All ER (D) 270 (Ch). A High Court dispute concerning design right infringement, trade mark infringement and international domain name and trade mark squatting. Successful defence of security for costs application.
  • Mastercard International Inc v Hitachi Credit (UK) Plc [2004] EWHC 1623, [2005] RPC 551, [2005] E.T.M.R. 10. Represented Mastercard in an appeal to the Court of Appeal from the High Court and Trade Mark Registry concerning the fame of the Mastercard trade mark.
  • Harrison’s Trade Mark Application [2004] FSR 225. A Court of Appeal and High Court dispute originating in the Trade Marks Registry concerning the objective test for dishonesty in a bad faith application to prevent registration of a trade mark.
  • Ghazilian’s Application [2002] E.T.M.R. 57. An appeal before the Appointed Person concerning the morality of an application for a registered trade mark.
  • CB Richard Ellis v Credit Carte Bleu [2002] R.P.C. 31; Successfully sought strike out in the Trade Mark Registry of Credit Carte Bleu’s trade mark application on grounds of non-use when defended on the basis of foreign web page advertisements.
  • Sun Microsystems v Viglen Plc [2001] R.P.C. 25; Successfully represented Sun Microsystems in defending an application for security for costs before the Appointed Person.
  • AstraZeneca NV v Ratiopharm GmbH (2007) RPC 28 Successfully represented AstraZeneca in an appeal before the Appointed Person in its opposition to the registration of a trade mark for a pharmaceutical of a generics company.

Current high profile cases:

  • Mark has been instructed to act for the trustee of the Estate of the late Adrian Jacobs against Bloomsbury Publishing Plc and JK Rowling. The proceedings in the action have been issued against Bloomsbury and concern an allegation of infringement of literary copyright by Bloomsbury in Adrian Jacob’s fictional work “Willy The Wizard’s Adventures in Livid Land-No:1” by Bloomsbury’s production of JK Rowling’s “Harry Potter and the Goblet of Fire”.
  • (1) Nanjing Automotive Corp (2) NAC UK Limited v (1) MG Sports and Racing Europe Limited (2)William Riley Defence to trade mark infringement proceedings concerning the famous MG badge right and counterclaim for invalidity.
  • Arcardia Group Plc v Retailer (acting for Arcadia in the High Court)
  • Associated Newspapers Limited v Rabbit, Inc (High Court cross jurisdictional)
  • Daniel Galvin Junior Limited v Medichem Limited (PCC)
  • Professor Gabbay v Oxford University Press (PCC)
  • Meemi Ltd v Wardrobe Beautiful Clothing Ltd (Court of Appeal)
  • Viglen Ltd v Hewlett Packard Plc (High Court)
  • Eon AG v Hyundai (Appeal)
  • Saul Zaentz Company v Success Story Management Ltd (UKIPO) Acting for the Estate of JR Tolkien (UKIPO).
  • International Commercial Arbitration concerning £20 million scientific subject matter.

Franchising

Mark Engelman appeared for Stone and Ashwell in Fleet Mobile Tyres-v-Stone and Ashwell. He has been involved in franchising commercially heading up the IP department of The Body Shop International Plc.

He has drafted and negotiated franchising agreements for the likes of Marks & Spencer, Simon Carter Accessories Limited and acts for numerous retailers including Monsoon, McQueen, Ted Baker, Office Shoes, and Iceland.

Directory recommendations

Mark is recommended for intellectual property work by Legal 500 and has been for many years.

  • Very personable but tenacious and valued for his ability to think outside the box.’ (Legal 500)
  • “He has a first-rate mind and is incredibly sharp” (Legal 500)
  • “Mark Engelman..is a talented and well-liked IP specialist who is known for his work at the commercial end of the field.  He is tenacious and certainly not one to give up easily. Commentators single him out for praise on account of his ability to provide practical, realistic and value-orientated solutions”. (Chambers UK)

Professional associations

  • Intellectual Property Bar Association
  • International Trade Mark Association

Publications

Author of “Engelman’s Intellectual Property Update” – Bloomsbury Publishing

Qualifications

  • BSc (Pharmacology)
  • Dip Law
  • MA (Cantab)
  • Appointed Research Associate to St. Edmunds College, Cambridge on Theology and Intellectual Property Law
  • Associate Professor to Notre Dame University
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