Professor Mark Engelman is a highly respected barrister with expertise in intellectual property, defamation and media law, commercial disputes, and contract drafting and negotiation. He has represented internationally recognized brands, high-profile individuals, and businesses of all sizes—ranging from multinational corporations to SMEs—both through solicitor instructions and on a direct access basis.
With a distinguished reputation in intellectual property law, Professor Engelman advises on patents, trademarks, copyright, trade secrets, and internet privacy, among other areas. His extensive experience in complex litigation and strategic advisory work makes him a trusted counsel for clients seeking robust protection and enforcement of their rights.
Associate Member
With a background in research pharmacology and extensive legal expertise, Professor Engelman brings a uniquely interdisciplinary approach to patent law. He is well-positioned to represent clients from the UKIPO through to the High Court and beyond. His strengths lie in analysing the technical complexities of inventions and the surrounding prior art, and in applying the relevant legal framework with precision.
He advises companies on a broad spectrum of patent issues, including ownership, portfolio management, exploitation, and licensing. He represents clients throughout the lifecycle of a patent, from drafting and prosecution to litigation. Notably, he acted in the six-year High Court dispute Professor Geoffrey Goldspink v University College London & UCL Business Plc, involving the breach of a global agreement concerning the exploitation of Mechano Growth Factor, a proprietary tissue growth agent.
Professor Engelman offers authoritative advice on all aspects of copyright law, with a particular focus on complex infringement claims. His practice includes drafting legal documentation, advising on strategic next steps, and full representation from issuance of proceedings to appeal.
In a landmark case, he successfully established a non-textual copyright infringement in Jacobs v Rowling, concerning alleged copying in Harry Potter and the Goblet of Fire. His practice covers unauthorised use of images, downloads, and reproduction of works, including issues surrounding counterfeit goods and logo misuse. With over three decades of experience in copyright law, he provides thorough, strategic guidance on every stage of the process.
As a recognised expert in trademark law, Professor Engelman advises on the creation, protection, enforcement, and commercial exploitation of trademarks, including clearance searches, registrability, branding strategy, and franchising. He also handles contentious proceedings, from oppositions to High Court litigation.
His seminal case Intel Corp v CPM UK Ltd (C-252/07) before the Court of Justice of the European Union is a cornerstone authority on trademark dilution and has been cited extensively across European jurisdictions. He has advised global brands including Dunlop, Slazenger, The Body Shop, and Specsavers, managing large-scale international trademark portfolios and disputes.
In the field of design rights, he advises on ownership, licensing, and enforcement—whether registered or unregistered—and has acted in numerous design infringement matters. His case for Monsoon against Primark involved the protection of multiple iconic fashion designs.
Protecting commercially sensitive information is central to Professor Engelman’s practice. He provides strategic advice on the identification and safeguarding of trade secrets, drawing on expertise from adjacent fields such as cybersecurity and data protection.
He advises on internal policies, contractual protections, and risk mitigation strategies, and represents clients in both arbitration and litigation when trade secrets are compromised. He recently acted for a national government in an arbitration concerning confidential technical designs for a marine radar system.
Professor Engelman offers strategic and technical expertise in defamation, trade libel, and reputational harm – particularly where these intersect with intellectual property, GDPR, and trade secrets. He assists clients with drafting key legal documents and navigating disclosure, evidence, and procedural strategy.
In Sube v Newsgroup, he addressed the implications of GDPR in the context of online newspaper comments, and clarified the definition of “serious harm” under the Defamation Act 2013 – a definition ultimately adopted by the UK Supreme Court.
Professor Engelman is widely recognised for his expertise in data protection and GDPR compliance. He advises on data processing policies, data controller/processor agreements, employee data, and risk management. His work includes regulatory disputes involving the Information Commissioner’s Office (ICO).
In Cortes v The Information Commissioner (Upper Tribunal, 2023), he successfully argued a leading authority now frequently cited in data protection proceedings, clarifying the ICO’s statutory limits when responding to complaints about data controllers. His role in Sube v Newsgroup further demonstrates the practical impact of GDPR on media and online platforms.
Professor Engelman has extensive experience in drafting and negotiating commercial agreements involving intellectual property – licensing, assignment, joint ventures, R&D collaboration, and confidentiality arrangements. He ensures contractual frameworks are robust and future-proofed, particularly regarding IP ownership, usage rights, and data compliance.
His detailed understanding of how IP law intersects with corporate and regulatory obligations makes him a valued adviser for businesses at all stages of innovation and growth.
Instituto De Salud Para El Bienestar v Viva Enterprises Ltd & Anor [2024] EWHC 1152 (Ch) (15 May 2024) – International Sale of Goods – Ventilators to the Government of Mexico
Lidl Logistics Ltd Lidl Stiftung and Co KG [2023] EWHC 2760, [2024] FSR 7 – company name registration
Cortes v Information Commissioner (UA-2023-001298-GDPA) applied 18 times in 2023 -2025 – The extent of the ICO’s handling of a Complaint under the Data Protection Act /General Data Protection Regulations – lead authorities now applied 18 times.
Instituto De Salud Para El Bienestar v Viva Enterprises Ltd & Anor [2023] EWHC 3377 (Ch) (20 December 2023) -International Sale of Goods – Ventilators to the Government of MexicoSystema Nova – UKIPO-O-84856 – 05.04.23
Araliya – UKIPO- O-/988/22-15.11.22 – Consolidated Proceedings concerning the trade mark
Route Note Ltd v Alexandre Mishuk & other – successful service out of jurisdiction of Part 8 proceedings upon unknown defendants with unknown addresses but served by alternative means on a US attorney without authority to accept service [2021] – unreported
Delta Air Lines Inc v Ontro Ltd – Appeal – Appointed Person – acting for Ontro in defeat of Delta’s appeal to the Appointed Person against Trade Mark Office decision on SkyClub trade mark registration in the name of Ontro Ltd [2021] unreported
Sube v News Group Newspapers Ltd Queen’s Bench Division [2020] EWHC 1125 – claims of unlawful publication of blogs by newspapers as lead counsel
Molavi v Hibbert Chancery Division [2020] EWHC 121 (Ch) 27 Jan 2020 – claims of copyright infringement in “Silent Witness”
Sube v News Group Newspapers Ltd [2018] EWHC 1961 (QB) 27 Jul 2018. – Defamation. Act, Equality act, Harassment Act, Data Protection Act – liability of newspaper publishers
Sube v News Group Newspapers Ltd Queen’s Bench Division [2018] EWHC 1234 Defamation. Act, Equality act, Harassment Act, Data Protection Act – liability of newspaper publishers
No Fixed Abode London Ltd v Gianni Versace SpA – Intellectual Property Enterprise Court [2018] EWHC 3221 (IPEC) 12 Nov 2018 – prosecuting claims of design right infringement by Versace
Apple Inc v Swatch AG Chancery Division [2017] EWHC 713 (Ch) 10 Apr 2017 – Acting as standing counsel for Apple, Inc. in a trade mark dispute over “Iwatch”.
Apple, Inc v Arcadia Trading Ltd Chancery Division [2017] EWHC 440 (Ch) – acting for Apple, Inc. in trade mark entitlement dispute.
Rabbit v EUIPO – DMG Media (rabbit) T-4/16-General Court of the European Union – Dispute over rights to the TV dating site “Rabbit”.
Deep Purple v Richard Blackmore T-328/16 (1 of 3 appeals) –General Court of the European Union- acting for the band, Deep Purple in a trade mark rights dispute against its guitarist Richard Blackmore.
Ukulele Orchestra of Great Britain (A Firm) v Clausen Intellectual Property Enterprise Court [2014] EWHC 3789 (IPEC) 23 Sep 2014 – acting for the British orchestra against a German “tribute” orchestra.
Sahin v Havard Court of Appeal (Civil Division) [2016] EWCA Civ 1202 – EU Motor Insurance Directive
Ukulele Orchestra of Great Britain v Clausen Intellectual Property Enterprise Court [2015] EWHC 1772 (IPEC) 2 Jul 2015 – registered trade mark infringement nad passing off proceedings between famous rival musical groups
New Tasty Bakery Ltd v MA Enterprise (UK) Ltd Intellectual Property Enterprise Court [2016] EWHC 1038 (IPEC) 13 Apr 2016
Apple Inc v Wapple.net Ltd (Supplemental Decision) Trade Marks Registry (Appointed Person) [2013] 7 WLUK 437 15 Jul 2013 acting for Apple, Inc. in a dispute over the Wapple trade mark.
Meemi Ltd v Wardrobe (Beautiful Clothes) Ltd Chancery Division [2012] EWHC 3617 (Ch) 18 Dec 2012 – Trade Mark infringement proceedings through the Chancery Division to the Court of Appeal.
Fred Perry (Holdings) Ltd v Brands Plaza Trading Ltd (t/a Brands Plaza) Court of Appeal (Civil Division) [2012] EWCA Civ 224 1 Feb 2012 – Trade Mark Infringement and Strike Out in the Court of Appeal as leading counsel, the first of the Denton line of authorities.
Samuel Smith Old Brewery (Tadcaster) v Lee (t/a Cropton Brewery) Chancery Division [2011] EWHC 1879 (Ch) 22 Jul 2011 – “War of the Roses” dispute over the trade mark, the emblem of York, on the labels of competing beers.
Allen v J.K. Murray Bloomsbury Publishing Plc Court of Appeal (Civil Division) [2011] EWCA Civ 943 – Non-textual copyright infringement over “Harry Potter and the Goblet of Fire” against JK Rowling and her publisher
Apple Inc v OHIM-T-448/10-Court of First Instance – acting for Apple Inc in dispute over Iphone trade mark.
ARGYLL ARCADE [2010] Lexis Citation 3581 – Trade Marks
Allen v JK Murrray and Bloomsbury Publishing Plc Chancery Division [2010] EWHC 2560 (Ch) 14 Oct 2010 – interim dispute over the copyright to “Harry Potter and the Goblet of Fire” against JK Rowling and her publisher.
Nanjing Automobile (Group) Corp v MG Sports & Racing Europe Ltd Chancery Division [2010] EWHC 270 (Ch) 19 Feb 2010 – dispute over the rights to the MG badge on motor cars following the purchase of the MG Rover Group by Nanjing.
Martin v Channel Four Television Corp Queen’s Bench Division [2009] EWHC 2788 (QB) 6 Nov 2009 – Dispute over the consent to broadcast a TV program against Channel 4.
ACTIVINTEL – [2009] Lexis Citation 3788 -Appointed Person
Intel Corp Inc v CPM United Kingdom Ltd (C-252/07) – Lead case on the meaning of trade mark dilution concerning the “Intelmark” trade mark, a dispute which was appealed from the UK Intellectual Property Office to the High Court, Court of Appeal, on a reference to the Court of Justice of the European Union and then back to the Court of Appeal.
Munroe v Intel Corp Trade Marks Registry (Appointed Person) [2008] 11 WLUK 626 24 Nov 2008 – Trade Mark Dispute over the “Intel” trade mark on appeal from the United Kingdom Intellectual Property Office to the Appointed Person.
Bignell (t/a Just Employment) v Just Employment Law Ltd Chancery Division (Patents Court) [2007] EWHC 2203 (Ch) 2 Oct 2007 – Trade Mark dispute over the name of an employment specialist law firm’s name “Just Employment”.
Intel Corp Inc v CPM United Kingdom Ltd Court of Appeal (Civil Division) [2007] EWCA Civ 431 15 May 2007 – Lead case on the meaning of trade mark dilution over the “Intelmark” trade mark, a dispute which was appealed from the United Kingdom Intellectual Property Office to the High Court, Court of Appeal and then referred to the Court of Justice of the European Union – defining the reference questions. Applies over 100 times by the Court of Justice of the European Union and General Court of the European Union.
Ratiopharm GmbH’s Trade Mark Application Trade Marks Registry (Appointed Person) [2007] 3 WLUK 387 14 Mar 2007 – Trade Mark Appeal on a clash over the name of the pharmaceutical “Plendil”
THE DRUNKEN MONKEY (series of 3 marks) [2007] Lexis Citation 4163 – Trade Mark Office
CICA [2007] Lexis Citation 4158-Trade Mark Office
SYNERGY [2007] Lexis Citation 4046- Trade Mark Office
Kindermusik [2007] Lexis citation 4234- Trade Mark Office
Fleet Mobile Tyres Ltd v Stone Court of Appeal (Civil Division) [2006] EWCA Civ 1209 31 Aug 2006 – franchise agreement dispute – acting for successful franchisee against Etyres franchisor.
Intel Corp Inc v CPM United Kingdom Ltd Chancery Division [2006] EWHC 1878 (Ch) 26 Jul 2006 – Lead case on the meaning of trade mark dilution, appealed from the United Kingdom Intellectual Property Office to the High Court.
Fleet Mobile Tyres Ltd v Stone Queen’s Bench Division [2006] EWHC 1947 (QB) 19 May 2006 – franchise agreement dispute – acting for successful franchisee against Etyres franchisor.
Mastercard International Inc v Hitachi Credit (UK) Plc Chancery Division [2004] EWHC 1623 (Ch) 8 Jul 2004 – Acting for Mastercard on appeal from UKIPO on a relative rights case over the right to the word “Master” in MasterCard.
m.d.e.m (Application/Trade Mark No: 2269373 and 2269371) [2005] Lexis Citation 3726 – Trade Mark Office
Tripp Ltd v Landor & Hawa International Ltd Chancery Division [2004] EWHC 1564 (Ch) 24 Jun 2004 – Acting for the luggage maker concerning the trade mark and the statutory ground for security for costs
LOGICA [2003] Lexis Citation 3640 Intellectual Property Office- Appointed Person – Registration of a series of dominan names
First Church of Christ, Scientist v OHIM ( CHRISTIAN SCIENCE) – Court of First Instance and European Court of Justice – landmark case concerning the right to have a European trade mark, “Christian Science” granted for “religious services”.
ABSOLUTE RIGHT [2003] Lexis Citation 3784 – UKIPO – Trade Mark Case.
Harrison v Teton Valley Trading Co Ltd Chancery Division (Patents Court) [2002] EWHC 3009 (Pat) 19 Dec 2002 – lead case on the meaning of filing a trade mark, “China White” in bad faith in trade mark disputes.
FORMULA ONE; FORMULA 1 [2002] Lexis Citation 4214 – UKIPO – Trade Mark Case
Ghazilian’s Trade Mark Application Trade Marks Registry (Appointed Person) [2001] 11 WLUK 742 28 Nov 2001 – lead case on applying for an immoral trade mark, “Tiny Penis”.
CB Richard Ellis Inc v Groupement Carte Bleue Trade Marks Registry [2001] 11 WLUK 193 7 Nov 2001 – lead case on strike outs in the United Kingdom Intellectual Property Office for failing to demonstrate a factual basis for a claim to use through an overseas website.
Sun Microsystems Inc’s Trade Mark Application – Trade Marks Registry [2000] 11 WLUK 643 21 Nov 2000 – Acting for Sun Microsystems in a Trade Mark prosecution.
McQueen Clothing Co [2001] Lexis Citation 4855 – Acting for McQueen’s Autumn Paper Ltd
Old Bike Mart [2001] Lexi Citation 4939 – UKIPO-trade mark case
Crystal [2001] Lexis Citation 4634 – UKIPO-trade mark case
DONUTS ‘N’ COMPANY [2001] Lexis Citation 4715 UKIPO-trade mark case
CIFUENTES WINKS [2001] Lexis Citation 4681 UKIPO-trade mark case
Sun Microsystems Inc’s Trade Mark Application Trade Marks Registry [2000] 11 WLUK 643 21 Nov 2000
MEDIABASE Intellectual Property Office [2000] Lexis Citation 7225 UKIPO-trade mark case
JINA Trade Mark Application [2000] Lexis Citation 7459 UKIPO-trade mark case
SALVITA [2001] Lexis Citation 4787 UKIPO-trade mark case
Logical [2000] Lexis Citation 7435 UKIPO-trade mark case
KINGFISHER & DEVICE [1999] Lexis Citation 7483 UKIPO-trade mark case