Mark Wilden > Chambers of David Berkley KC > Oxford, England > Barrister Profile

Mark Wilden

Work Department

Intellectual Property; Commercial

Position

Mark Wilden is a specialist Intellectual Property and commercial barrister.

Mark acts in the High Court, IPEC, County Court and IPO and accepts instructions in contract, copyright, trade mark, passing off, database, designs, confidential information and related matters.  He joined 3PB after completing pupillage at 8 New Square Chambers, where he worked on high profile IP matters for clients including Apple, BBC, Ferrari, Google, Microsoft, Next, Peloton and Tesco.

Mark came to the Bar after a successful 15-year career as an audio producer, sound engineer and musician.  He worked in house at Oxford University Press for eight years and qualified as a PRINCE2 Project Management Practitioner in 2007.  He also played drums professionally, performed as a DJ and produced music podcasts through the 2000s.

Mark drawns upon a wealth of commercial, technical and creative experience in music and publishing.  While at 3PB he has acted for clients across the creative and entertainment industries including in fashion design, film-making, football and music, including musicians, record labels and concert promoters.  Mark hosts regular pro bono advice clinics in Bristol for musicians and for SMEs in the creative industries.

He also worked for a year with Carpmaels & Ransford LLP on a range of matters including protection of design rights in consumable parts of complex products in Hypertherm v B&Bartoni R 2843/2019-3 (EUIPO), literary copyright infringement in Anna Pasternak v Lara Prescott [2022] EWHC 2695 (Ch), and pharmaceutical patents in Fibrogen v Akebia [2020] EWHC 866 (Pat).

He regularly writes articles and presents seminars on intellectual property issues, and volunteers in the High Court as part of the Chancery Litigants in Person Support Scheme (CLiPS).  Mark takes a practical approach to advice, pleading and litigation strategy, and has been described as “a diligent and talented lawyer and a pleasure to work with”.

Intellectual Property

Mark accepts instructions in all areas of Intellectual Property.  He has worked on copyright, trade mark, design, patent and breach of confidence actions in the Chancery Division, IPEC, UKIPO and EUIPO.

Examples of recent work

Pasternak v Prescott [2022] EWHC 2695 (Ch): analysis and drafting of defence in high-profile copyright infringement claim.

Z v R (IPEC): defending individual in claim for alleged piracy of internet pornography.

M v CFC (IPEC): negotiated settlement terms for claimant football club in a passing off claim against a rival club.

James v Mitchell & Borabeads (IPEC): successfully represented claimant in a trial for passing off of jewellery brand.

R2843/2019-3 B&Bartoni v Hypertherm (EUIPO): written submissions for successful appeal on the invalidity of registered design protecting a consumable part of a complex product.

Re. “LOVE UR CURLS” (IPO): successfully represented trade mark applicant in overcoming objections of three examiners under s.3(1)(b) of the Trade Marks Act 1994 on the basis that the mark was inherently distinctive and was not merely generic text-speak.

I v C (IPEC): acting for defendant to claim for trade mark infringement and passing off.

Re. “EONX” (IPO): acting for registrant defending trade mark opposition based on four earlier marks and an unregistered sign on grounds under ss.5(2)(b), 5(3) and 5(4) of the Trade Marks Act 1994.

Re. “TMKONNECT” (IPO): acting for opponent in trade mark opposition on s.5(2)(b) grounds.

Re. “GAY STAR NEWS” (IPO): acting for opponent in trade mark opposition on s.5(4) grounds.

Drafting particulars of claim for passing off of a car fleet management brand.

Advisory work including: 

• Copyright infringement issues including unlicensed use of photographs on non-commercial websites.
• Trade mark opposition and infringement issues relating to unlicensed resale of own-brand products, restaurant services, hot tub cleaning products and insurance brokering services.
• Confidential information and database rights issues arising from the use of data by ex-employees working for commercial competitors.
• Domain name disputes and use of the Nominet Domain Dispute Resolution Service.

Commercial 

Mark accepts instructions on contractual disputes, especially in cases involving the entertainment industries, intellectual property rights and technology-related issues.

Examples of recent work

S v S (County Court): Obtaining summary judgment and strike-out for concert promoter in claim for breach of joint venture agreement.

A v A (County Court): Acting for defendant in film financing claim.

C v T (County Court): successfully represented claimant in a trial for non-payment of invoices for provision of cloud computing services, including beating the claimant’s Part 36 offer.

Re. Petropavlovsk (Ch D): Representing shareholders in the disputed insolvency of a Russian gold mining company as part of CLiPS Scheme.

Advisory work including:

• Potential liability for interception of data by ‘data sniffing’.
• Music licensing, including advice on the nature and scope of relevant rights.
• Negotiation and interpretation of contractual terms.

 

Career

Year of Call: 2018

Memberships

• Chancery Bar Association
• IP Bar Association
• Advocate
• PRS For Music: writer member
• PPL: performer and recording rights holder member
• British Literary & Artistic Copyright Association

Education

• LLB (Hons) (1st class), Open University with University of Law
• BPTC LLM (Distinction), University of Law
• Postgraduate Diploma in Intellectual Property Law and Practice residential school, University of Oxford