Mark Engelman

Call:1987

Introduction and Contact details

“... brings a refreshing and highly energetic approach to those matters entrusted to him.” – Chambers UK (2009)
“He has ‘an exceptionally detailed knowledge of all aspects of IP’ and ‘tends to win more cases than he loses.” – Chambers UK (2009)
“... incredibly bright and quick on his feet.” – The Legal 500 (2008)

Mark is currently ranked in both of the leading legal directories and continues to moved up the bands. In the 2009 edition of the Legal 500 he moved in Band 2 of the leading IP juniors.

Mark Engelman heads the IP group at Hardwicke. His practice covers both contentious and non-contentious work in all areas of intellectual property law including copyright, trade marks, patents, design right and registered designs, internet law, domain name disputes, pharmaceutical matters, breach of confidence, confidential information and privacy, data protection, IP licence agreements, passing off, misleading advertising, sports, media and entertainment law.

Mark’s non-contentious practice covers the drafting of sponsorship agreements, trade mark licensing agreements, publishing and authorship agreements, employee-related IP matters, mergers and acquisitions, franchise agreements, marketing agency agreements, design contracts and joint venture agreements.

Mark has experience of running businesses, having been the sole in-house counsel to Dunlop Slazenger and Head of IP for The Body Shop International plc before joining Hardwicke. He is and has been standing counsel for a number of floated multi-national companies and SMEs, including as non-executive director of Alexander McQueen’s haute couture operation.

Mark has been appointed to the Bench of Gray’s Inn in 2009, one of the youngest benchers of the independent practice bar to be appointed, within 10 years of commencing independent/self employed practice.

Tel:  020 7242 2523 (Switchboard)
Fax: 020 7691 1234
Email: mark.engelman@hardwicke.co.uk

Commerical

Mark Engelman provides a practice which encompasses the totality of commercial disputes but with a specific emphasis upon intellectual property and scientific subject matter. Previously as Head of Intellectual Property at The Body Shop International Plc, he drafted large numbers of commercial agreements, and during his last 10 years in practice, litigated many highly complex commercial agreements on occasion involving £1 billions, including, a global pharmaceutical exploitation agreement. Similarly, outside the contractual context, his IP disputes simply involve similar sums, including the right to copyright in the famous Harry Potter series, the rights associated with the Intel trademark, the rights associated with the MG sports car badge rights. His work crosses borders, often instructed to provide English pleadings in US courts and within OHIM and ECJ, as templates for disputes in other jurisdictions.

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.

Intellectual Property

Mark Engelman trained as a research pharmacologist then practised as a solicitor at Clifford Chance and Denton Wilde Sapte. He was formerly lead counsel at Dunlop Slazenger and Head of the Intellectual Property team at The Body Shop International Plc. Mark was also a non-executive director of Alexander McQueen’s haut couture operation. 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 over the fame of the Intel brand.

Recent Reported cases include

Martin v Channel Four Television Corporation and others [2009] All ER (D) 80 (Nov) a case determining whether a 14-day prior written notice of broadcast of matters alleged to be in breach of confidence and privacy operates as a “threat” for the purpose of conferring jurisdiction of the Court in interim injunctive relief  proceedings.

Intel Corp v Gary Munroe [2009] RPC 1 Appeal to the Appointed Person concerning the human rights of litigants in person when defendant opposition proceedings against other Appointed Persons acting as counsel in those proceedings; Appointed Person

Paul Allen v Bloomsbury Publishing Plc, reported globally in the national press concerning infringement of the Claimant’s copyright in a literary work by Bloomsbury’s publication of JK Rowling’s Harry Potter and the Goblet of Fire. High Court

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-usewhen 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. High Court