We would like to invite you to join us and Crown Office Chambers at a seminar on Thursday 13th June.

With the increasing and perhaps sometimes worrying trend of PI claims in the supply chain being used to maximise contract values in difficult times, guest speakers Anna Laney and Elizabeth Boon from Crown Office Chambers take up the topic of professional negligence to look at the perennial problem of Economic Loss.   

This talk will consider the common (and not so common) pitfalls associated with recovering damages in respect of a professional’s breach of duty and offers practical guidance to seek to ensure the damages claimed are, in fact, recoverable.

If you would like to attend, please contact Fay Daniels on fay.daniels@bpe.co.uk or 01242 248290 to secure your place.

We look forward to seeing you there.

Construction Team
BPE Solicitors LLP.

Speaker bios

Anna Laney

Anna was called to the Bar in 1998. Anna has established herself a domestic and International practice centered upon construction disputes, whether they be traditional contractors, employers claims, professional negligence or insurance related. Anna is an experienced advocate appearing regularly in the High Court and in domestic and international arbitrations as well as within the alternative dispute resolution forums of mediation and adjudication.

Elizabeth Boon

Elizabeth was called to the bar in 2006. Elizabeth’s practice focuses on construction, property damage claims, professional negligence and Insurance matters.

Paragraph 1.1 of the protocol states that “This Pre-Action Protocol applies to all construction and engineering disputes (including professional negligence claims against architects, engineers and quantity surveyors).” Note that it does not expressly state that it covers professional negligence claims against building surveyors, for instance, which appears to be somewhat of any anomaly.

Paragraph 1.2 makes it clear that parties does not need to comply with the various steps for the purposes of adjudication enforcement, proceeding with the trial of an adjudication decision, any application for summary judgement or where it may be appropriate and necessary to apply for interim injunctive relief.

The protocol goes on to say that at least substantive compliance is required and that pre-action correspondence should be keep proportionate to the value and complexity of the matter.  Have a read for yourself at http://www.justice.gov.uk/courts/procedure-rules/civil/protocol/prot_ced. There is provision for the parties to meet on a without prejudice basis as well. All sounds eminently sensible, doesn’t it? But it’s not without its critics as some commentators have complained that the protocol increases costs – not saves them – and leads to a protraction of proceedings, not a shortening of them.

Is this fair?

Most practitioners believe that the protocol remains an effective tool for resolving matters before the expense of litigation, especially when adjudication is not available or appropriate for whatever reason. It is true to say that the chances of resolution are increased when as much care is put into a pre-action letter and response as would be if the parties were drafting proceedings. The issue arises when one party or another uses the protocol as a tactical tool and simply pays lip-service to the whole exercise.

In those circumstances, some comfort can be found in paragraph 1.4 of the protocol which states, “The court will look at the effect of non-compliance on the other party when deciding whether to impose sanctions.” Invariably, this means costs awarded against a party. It doesn’t help the fact however that the complying party is then forced to issue proceedings, exchange pleadings and attend the first case management conference in order to get to a stage whereby a judge can impose those sanctions. All this comes at an upfront cost to the ‘innocent’ party.

What can be done in such a scenario? Well, you could try to convince the other party that the pre-action meeting should be substituted by mediation.  The intervention of a third party is often of more use than the parties meeting on their own but this is a judgement call and relies upon the other side seeing the benefit of mediation at that time. A common refrain is that it is too early to mediate. Counter that with the fact that both the TCC expects the parties to have given at least serious thought to mediation and case law provides very narrow circumstances for when it may be reasonable to refuse to mediate. Pandora’s box can be left shut on that particular debate for another time.

Forcing compliance?

Ultimately, however, if the non-complying party digs its heels in, you could look to take out After the Event Insurance to insulate yourself from the risk of incurring the other side’s costs if you are not successful at court. You may even find a product that covers your own legal costs as well. Shop around – policies do vary and some even have deferred premiums which themselves are insurable against loss. But the sting is that insurers increasingly want Counsel’s Opinion to back up your and your legal representative’s assessment of the merits. This may mean that you have to incur further cost upfront depending on the circumstances but it could represent a worthwhile investment as well as an early sense-check of the strength of your case.

If you are faced with a party that issues proceedings with blatant disregard for the protocol, your remedy is in court imposed sanctions in due course. You are likely to be awarded at least a proportion of your costs if it would have been reasonable for the other party to have complied with the standards laid out in the protocol. Having said that, I have experienced more than one case whereby the judge has chosen to ignore any previous breach and then proceeded to replicate the pre-action process in his subsequent directions leading up to trial. I have also seen claimants treat matters as a straightforward debt action in an attempt to circumvent the timeframes stipulated in the protocol and, conversely, attempt to lengthen the time of response by arguing the longer period of 3 months for responding found in the protocol for general negligence claims should apply.

Although still unsatisfactory, a party faced with a claim form straight away should experience lower relative costs than a party who has engaged but has been given the run-around by a non-compliant opponent before it can do something about it. The issue is still however of costs incurred dealing with that miscreant and whether, if proceedings are subsequently issued and a party successfully defends the claim, those defendant pre-action costs can be recovered.

Can I get my pre-action costs?

On this issue the courts have taken a somewhat fact sensitive approach. It is established law that a prospective claimant should not be at risk of incurring a defendant’s costs at pre-action stage provided the enquiries are within the reasonable scope of the relevant protocol (McGlinn v Walters Contractors [2005]).  Rule 44.3 CPR also states (i) that the court must have regard to whether a party has succeeded on part of his case, even if he has not been wholly successful (Rule 44.3(4)(b) and (ii) that the Court must have regard to “conduct”, in particular “whether it was reasonable for a party to raise, pursue or contest a particular allegation or issue” (Rule 44.3(5)(b)). There are however instances of this being interpreted quite broadly by the judiciary.

For example, in the non-construction related but still High Court case of Citation Plc v Ellis Whittam Limited [2012], the judge did not order the claimant faced with a strike out of its injunction claim for alleged defamation to pay the defendant’s pre-action costs. It would appear that the judge felt that the claimant had some merit to its claim but that it was adequately protected by other means and that the injunction was not necessary. The defendant therefore did not obtain any cost relief prior to issue even though it had technically won the action.

It is clear that the cost of a defence, even at pre-action stage, can remain quite high depending on the nature of the case. On the whole, pre-action correspondence does remain beneficial and does allow the parties flexibility to resolve their disputes by a number of other means. For those that believe the protocol extends the life of a claim, they need only look at standard directions handed down by a judge leading up to trial 9 months hence to know the timescales could be a lot worse and the impetus for a commercial settlement lost in the sea of disclosure and witness evidence. Then claims take on a life of their own as the stakes increase.

As with most things in life, prevention is better than cure even in an imperfect system and, to that end, at least protocol promotes constructive dialogue at a relatively early stage. And no-one can deny that effective dialogue by all parties is key to the effective resolution of most commercial disputes.

Jon Close

Presented with the news that there is to be £1bn extra public funding on transport schemes, starting in two years’ time, the question on all contractors’ lips must be “how do I get involved?”. 

Transport for Gloucestershire held a “call for schemes” exercise from January – March 2013 and identified 17 schemes which meet the eligibility criteria.  Despite positive reports in the local press it is highly unlikely that more than half of these will actually receive funding before March 2019.  Some of these schemes may have been backed by contractors who assisted scheme promoters in submitting their bids, perhaps meaning less avenues of opportunity and more culs-de-sac!  However, it certainly appears that most of the schemes will be subject to the usual OJEU rules and so the door may be open for all contractors to tender. 

In a further twist, we understand that the Transport for Gloucestershire is considering lowering its minimum cost for schemes from £5m to £0.5m, meaning that many schemes receiving LTB backing may fall below the OJEU notice threshold. 

So to answer the question “how do I get involved?” it appears your options are: either invest time and money assisting a “scheme promoter” in submitting a proposal to the LTB even though, at best, there is a 50:50 chance that your scheme (even if eligible) will receive funding before March 2019 and even if it does, if there is an OJEU process you may not win the contract award anyway….. or, maintain the status quo and keep an eye on Construction News and the OJEU notices and tender for work in the usual way.

Finally a further word of caution: LTBs will not be the only source of funding for local transport schemes.  Readers of this newsletter who keep abreast of the Gloucestershire news may recall the reports in March that funding has been confirmed for changes to the C&G roundabout in Gloucester.  This is nothing to do with the LTBs but in fact the funding comes from a central government pot called “Pinch Point”.  So in fact, whilst the LTBs may have significant powers and may present numerous profitable opportunities for contractors, do not let your attention be distracted from the avenues you usually explore for transport work.

Whilst we may appear cynical here, the bottom line remains that £1bn investment in transport and infrastructure, with decisions made at local level, must be a positive thing for the construction industry and we look forward to hearing stories of success from our readers in due course.

Anna Wood

The problems of delay when there are “unexpected” discoveries in construction works has been further highlighted when a plague pit, containing victims of the Black Death was discovered by engineers working on London’s Cross Rail.

The contractor undertaking the work will have to balance the commercial demands of completing the project to the required standard and within the required timetable, whilst at the same time needing to comply with archaeological, public health and other concerns.

This is the kind of extension of time demands faced by contractors on a regular basis. By way of a reminder, how do these work?

The way extensions of time are dealt with depends on the type of construction contract. It goes without saying that to turn a profit the contractor must have considered some risk of delay when pricing for the works. Time and money considerations are some of the most important factors for a contractor to consider.

Proper record keeping is important as there are often obligations with severe time restrictions and often the familiar spectre of liquidated damages claims for contractor culpable delay. During the construction phase, more than one project has been threatened by a contract administrator failing to give a decision (or a reasonably made decision, depending on which side of the fence you’re on) as to who bears the risk of particular delay.

It is paramount that clear contract provisions are agreed and in force. Believe it or not, even standard form contracts in an un-amended form can cause confusion between the parties – especially when an inappropriate form of contract has been used for the particulars needs of a project.  

Some of the basics are worth reiterating:

1. Where no completion date is mentioned or inadvertently omitted, it is implied that a contractor will complete the works within a reasonable time (s14 Supply of Goods and Services Act 1982 and at common law);
2. Not all delays are the contractors’ responsibility – such as when an employer is unable to provide site access to a contractor by a specific date;
3. Time can be ‘at large’ where a delay event occurs and the contract does not make provision for that event or the provisions are void for uncertainty. In such circumstances, the original completion date falls away and the contractor is under an obligation to complete the works within a “reasonable” time. If your contract does not mention who is responsible for archaeological discoveries, then this could be relevant to you!

Using Cross Rail as an example, a “plague pit” is such a rare discovery that it is unlikely the parties would have made a specific allowance for it in the contract but they could provide for it as a wider class of event giving rise to time and cost relief. This sort of instance wouldn’t automatically constitute force majeure so resolution may come down to the common sense of the contract administrator as much as the strict wording of the contract.

If not addressed correctly, extensions of time debates can result in a situation where neither employer nor contractor is satisfied with the outcome. Whilst it is extremely unlikely that you will find Richard III in a car park (particularly as he has already been found) the impact of other archaeological discoveries could be so catastrophic to the delivery of the project that a mechanism for this class of discovery should be included in any contract where the risk is a significant possibility.

It comes down to thinking about project specific risk before drafting contracts for each job. The required mechanism may end up proving vital for both parties.

Nick Price

With its wealth of historic houses, Gloucestershire attracts a high number of cash buyers. It is by no means on its own.

When investing in a property of this type, a buyer will usually have a survey carried out. Without the guiding hand of a mortgage company, it may however be less well informed about the type of survey needed. 

A number of people buying older properties also have significant cash set aside to renovate and/or modernise their new home.  Whilst the budget for renovation may be large in some instances and the extent of renovation significant, such buyers still want certainty as to the condition of the house they are buying. 

With a cash buyer, therefore, it is more important than ever that surveyors clearly agree the scope of the survey and have written terms of engagement with their client.  The RICS guide to surveys is an obvious framework for such services but not every survey fits neatly into one of the RICS categories – particular for large historic houses. 

In addition, there can be complications where a property is seen to be “unique” and therefore there are time pressures on the buyer to commit to an offer.  Add to this the fact that the buyer may not live locally and so there is no opportunity to meet with them (at the site or at your own offices) and there is a potential recipe for problems.

No surveyor wants to face even the hint of a negligence claim, particularly when they know they have done a good job but there has simply been a misunderstanding on the part of the client about the scope of services to be provided.  We have found that surveyors and their clients sometimes encounter problems agreeing the amount of time required to undertake a survey and the amount of detail that will be contained in the written report. 

We suggest therefore that a clear list is agreed: what will you survey and report on, and what will you omit from your services?  In addition, remember to be extremely clear as to your duty of care, i.e., that you will be taking reasonable steps and that you do not have an absolute duty to identify all defects.

Whilst homebuyers may incorrectly believe that any unpleasant surprises are the fault of the surveyor and they may (also wrongly) conclude that they are entitled to recover the cost of unexpected repair costs from you, the fact that you are able successfully to defend a claim does not mean that you will avoid the management time (and hassle with your PI insurer) involved in dealing with such issues. 

Diminution in value claims may be expensive and time-consuming to run but where you are dealing with a client who has the resources to pursue a claim, it is even more important than usual to take steps from the outset to avoid the issue: simply doing your job and doing it well may not be enough.

In order to protect your good name, apply the “stitch in time” rule and ensure that you have signed T&Cs with a clear scope as to your services agreed before you attend site to carry out the survey.  If a client will not agree with your expert recommendation for the scope of the survey, consider carefully whether the instruction is worth taking at all. 

Anna Wood

Working at height can prove to be dangerous at the best of times but when hampered by the efforts of a gas heater, the results can be disastrous. That was certainly the case for both parties involved in this case, not to mention Central Roofing’s insurers.

Facts

Central Roofing was contracted by Mueller to refurbish the roof of their factory. This involved removing asbestos containing material and replacing the roof panels.  Of course, refurbishing a roof can be disruptive if trying to work below it, however, Central Roofing agreed to use a birdcage scaffold so as to be able to move from one area to the next easily with as little disruption as possible to Mueller’s factory process.

The birdcage scaffold was boarded and sheeted with combustible materials. The factories gas powered radiant heaters were suspended from the roof. Combustible materials and radiant heaters don’t mix. When a heater directly above the birdcage scaffold was operated, a fire started, causing the roof to collapse with damage to the fabric of the factory and its contents.

The contract itself cost just over £2 million. The damage caused by the fire? Just over £20 million.

Allegations

It was not in dispute that the fire had been started by the radiant heaters. It seemed likely that one of Mueller’s employees had turned them on, but this does not mean that blame followed flame.

Central Roofing had assumed that Mueller had isolated the radiant heaters but had never expressly requested them to do so. Mueller had assumed that Central Roofing had isolated them. In the absence of agreement, the contract became key.

Breach

Both parties were found to be in breach of the contract; Central Roofing for working without ensuring the heaters were isolated and for failing to report earlier incidents, and Mueller for failing to isolate the heaters when provided with the health and safety plan from Central Roofing.

Mr Justice Stuart-Smith considered the heaters an “obvious fire hazard, which should have been appreciated by anyone who turned their mind to the question”. He did however note that all three methods, any of which could have isolated the individual heaters, (and not the entire factory) were all located at roof level where Central Roofing had been working.

Interpretation of contract

To determine who was responsible for the losses caused, it had to be shown which breach was the effective or dominant cause of the fire. The parties put forward arguments as to how the contract should be interpreted. The judge considered that, where a number of documents are used to make up the contract, a specific restrictive definition is likely to be applied. To determine the meaning of a clause which is not agreed can be determined by checking its consistency with other clauses in the contract and the contractual purpose as a whole.

On this basis, taking into account other clauses in the contract, Mr Justice Stuart-Smith found that the contract was clear and that Central Roofing was responsible for the safe carrying out of works at all times. Theirs was the effective or dominant cause of the fire. Mueller would only have been responsible had they been notified by Central Roofing that isolation of the heaters was required.

Waiver

In any event, Central Roofing put forward an argument that Mueller had waived their right to claim breach of contract by not complying with Mueller’s method statement. On the basis that complying with the method statement did not form part of the contract, could not be found to have waived Central Roofing’s breach by so not complying.

Contributory Negligence Deduction

Central Roofing also argued that, if they were found liable, the fact that Mueller had turned on the heaters should reduce their liability. However, as Mr Justice Stuart-Smith had found there to be a breach of contract which required no failure to exercise reasonable care, Central Roofing was held to be strictly liable for the entire loss and could not request a deduction to take account of negligence on the part of Mueller.

What can be taken away from this ruling?

Definitions in a contract are vital to avoid the risk of a detrimental interpretation. Further, if a contracting party is required to follow a certain procedure, (in this case the method statement) ensure that this is incorporated into the contract.

And finally, where no failure to exercise reasonable care is present, a breach of contract will not result in a reduction in liability for losses.

Lloyd Anthony

Mr Lewis owned a property in Knightsbridge. Whilst he lived in the property, he engaged the services of Westfields for the refurbishment of the house. After the contract was agreed, Lewis moved out of the property, having made it clear to Westfields that it was to be his intention to let the property to tenants. Lewis then refused to pay Westfields for the work done under the contract. Assuming the contract to be a construction contract, Westfields sought an order from an adjudicator. The adjudicator ordered Lewis to pay the amount claimed – the princely sum of £17,391 plus interest – within seven days.

Argument

Naturally, the adjudicator’s order was not favourable to Lewis and he disputed it on the grounds that the adjudicator did not have the power to make such an order. Unfortunately, whilst the contract was a written one, it made no express reference to adjudication (a point to bear in mind). Lewis’ argument was that, without express reference, statutory adjudication could only apply to a construction contract, which was not what he had entered into. As a result of section 106 of the Housing Grants, Construction and Regeneration Act 1996, (the 1996 Act) Lewis did not have to bow to the adjudicator’s authority.

Section 106 of the 1996 Act (not amended by subsequent re-enactment) excludes from the definition of construction contracts, any contracts where one of the parties occupies or intends to occupy its property. As Lewis was occupying his property at the time the contract was entered into, he argued that it was not a construction contract and adjudication was not applicable. Unfortunately for Lewis, the honourable Mr Justice Coulson did not agree.

Judgment

Mr Justice Coulson conceded that the time at which a contract was entered into may be relevant, however, it is not in any way determinative. The occupation of a property is an on-going process and the fact that Lewis was no longer living in the property was also relevant. Mr Justice Coulson also considered the 1996 Act’s wording in relation to “intention to occupy”. Lewis had made it clear that he was intending to let the property once the works had been carried out. Westfields had even suspended works to allow prospective tenants to view the property. Thus, with Lewis not in actual occupation and with no intention to occupy, Coulson J found that the exclusion given by section 106 did not apply. As a result the contract was deemed a construction contract and the adjudicator’s award could be upheld.

As an aside, Mr Justice Coulson was not entirely impressed with Lewis’ evidence or his general dealing with the matter. That Lewis had filed four witness statements and caused one adjournment due to a late change of case clearly did not impress. Being described as “argumentative and condescending” as well as “cavalier with the truth” cannot have helped Lewis’ case.

Future abolition of the section 106 exclusion?

What is clear, however, is that the court is happy to keep a broad band around what can be defined as a ‘construction contract’. Indeed, Mr Justice Coulson went further to suggest that the s106 exclusion be done away with.

In this regard, opinion remains divided. Does a small two-day decorating contract dispute warrant the need (and cost) for adjudication? In any event, simply living in a property at the time of the making of the contract is certainly no longer enough to escape the definition of a ‘construction contract’ and all that comes with it.

Lloyd Anthony

Considering fire prevention at the building services stage of a new development could save the hassle and expense of costly upgrades later in the life of a building project.

Indumission, a Cheltenham-based company established by experienced electrical engineers Dave Heathcote and Ian Appel, Managing Director of Ilec Ltd and Imec Solutions Ltd, has created a new range of electrical fire safety products which looks set to transform fire safety.

Many fire safety products currently on the market, such as sprinklers and extinguisher systems, are designed to limit the damage once a fire has taken hold.

Indumission’s Thermarestor system provides a unique pre-ignition solution to electrical fire safety. With the Thermarestor system, electrical connections and accessories are prevented from reaching a temperature which would cause a fire.

Loose or poor electrical connections can cause heat capable of starting a fire. Safety devices like fuses, miniature circuit breakers and residual current devices are unable to disconnect the electrical supply because they cannot sense heat within a circuit.

The Thermarestor system’s unique heat sensing capabilities works alongside the Residual Current Device to disconnect the electrical supply before a fire takes hold. Its precision design and manufacture means that it can operate at a temperature well above normal ambient before it activates, but low enough to ensure there is no risk of fire ignition to surroundings.

Unlike a traditional thermostat or thermal link, the Thermarestor system prevents the faulty electrical connection or fitting from being reintroduced to a live circuit, creating a need for investigation and replacement by a competent electrician rather than attendance by the local Fire Officer following a fire.

Client feedback on the Thermarestor system has been extremely positive and a number of fire prevention teams located within Fire and Rescue Services across the UK are particularly interested in its’ development.

"Following a comprehensive risk assessment we identified the need to upgrade our fire safety systems. The installation of the Thermarestor system has provided a cost- effective, unobtrusive addition to our fire safety strategy."

Fire Safety Officer, Cottsway Housing Association.

Indumissions’ Thermarestor system was designed by highly experienced electrical engineers and manufactured and tested by Vishay, the world leader in component technology and production. It is protected by a worldwide patent, and is probably the most significant electrical safety innovation since the introduction of the Residual Current Device itself.

To further ensure quality, all Thermarestor products are installed using fully trained and certificated electrical engineers. The technical competence of our network is capable of installing in any environment to provide peace of mind that the system is fitted correctly.

"Thousands of fires break out in premises each year – many of them are as a result of faulty electrics. Investing in the Thermarestor system gives property owners the assurance that they have done all that they can to limit the risk of fire sweeping through their properties", said Ian Appel.

"The Thermarestor system is a new innovation to the marketplace which has enabled us to engage with blue chip clients to promote and install our products in establishments such as schools, residential care homes, housing associations, hotel chains and major retailers".

We have already successfully launched three products in the Thermarestor range and can see the same patented device being applied to many different situations throughout the electrical industry and ultimately changing the attitude to fire safety." added Ian.

For detailed information on the Thermarestor range of products, visit our company website at www.indumission.co.uk

The most recent case that deals with sponsored advertising infringement is the Interflora Inc. (2) Interflora British Unit v (1) Marks & Spencer Plc. (2) Flowers Direct Online Ltd [2010] EWHC 925.            

The claim was adjourned in 2009 pending the preliminary rulings from the Court of Justice of the European Union on 10 questions of law referred up by the High Court. In 2011, the High Court received the preliminary rulings and the claim is now set for trial in April 2013. The decision will shape the application of European law on sponsored advertising infringement and what constitutes trade mark infringement.

What is trade mark infringement? 

Registered trade mark infringement occurs where a registered trade mark is used without the proprietor's consent in any of the following circumstances: 

1. The sign used by the infringer is identical to the registered trade mark and is used in relation to goods or services which are identical to those for which the trade mark is registered (section 10(1) of the Trade Marks Act 1994 and Article 9(1)(a) of the Community Trade Mark Regulation).

2. The sign used by the infringer is identical to the registered trade mark and is used in relation to the goods or services which are similar to those for which the trade mark is registered, or the sign is similar to the registered trade mark and is used in relation to goods or services which are identical or similar to those for which the trade mark is registered, and in each case there exists a likelihood of confusion on the part of the public, which includes a likelihood of association (section 10(2) of the Trade Marks Act 1994, and Article 9(1)(b) of the Community Trade Mark Regulation).

3. The sign used by the infringer is identical or similar to the registered trade mark, the trade mark has a reputation in the UK, and the use of the sign, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark (section 10(3) of the Trade Marks Act 1994 and Article 9(1)(c) of the Community Trade Mark Regulation).

Who can bring registered trade mark infringement proceedings?

A claim for trade mark infringement can be brought by the trade mark owner (see section 14 of the Trade Marks Act 1994). In the event the registered trade mark is co-owned or has more than two owners, proceedings can be brought by any of the proprietors, but cannot continue with the action unless all owners of the registered trade mark are joined into the proceedings (as either the claimant or a defendant) or unless the court has given permission to do so (section 23 of the Trade Marks Act 1994).

A claim for registered trade mark infringement can also be brought by a licensee in his own name provided:

1. It has requested the proprietor to bring proceedings, but the proprietor has either (a) refused to do so; or (b) failed to do so within two months (section 30 of the Trade Marks Act 1994). Often drafted in agreements is the exclusion of this right. In the event of an exclusive licensee, it would have the same rights and remedies as if the licence had been an assignment (see section 31 of the Trade Marks Act 1994). In this situation, the exclusive licensee's rights are identical to and run concurrent with the owner/proprietor of the registered trade mark.

2. The position for licensees of Community trade marks is slightly different to the UK. Licensees are only permitted to bring registered trade mark infringement proceedings if the Community trade mark owner consents to the action (see Article 22(3), Community Trade Mark Regulation). In the event the licensee is exclusive, the licensee can only bring registered trade mark infringement proceedings if the owner ‘does not himself bring infringement proceedings within an appropriate period’ (see Article 22(3) of the Community Trade Mark Regulation).

Interestingly, the High Court has ruled that a registered trade mark license for a Community trade mark, which was formed and accepted by parties orally, can sue for infringement (see case of Jean Christian Perfumes Ltd and another v Thakrar [2011] EWHC 1383 (Ch).

Where can claims for registered trade mark infringement be brought?

Registered trade mark infringement claims can be issued in the High Court, Chancery Division and the specialist Patents County Court or any district registry of the High Court (Birmingham, Bristol, Cardiff, Leeds, Liverpool, Manchester and Newcastle - see High Court and County Courts Jurisdiction (Amendment) Order 2005 (SI 2005/587).

There have been many recent develops to the Civil Procedure Rules (see Rule 63 which concerns Intellectual Property claims) and the Patents County Court Guide. One such development on

14 June 2011 was the implementation of an upper limit of £500,000 on the value of claims that can be heard in the Patents County Court. Then on 01 October 2012, a small claims track was formed and introduced, which saw a new small claims track available in the Patents County Court for straightforward claims with a financial value of £5,000 or less. Following the 60th update of the Civil Procedure Rules (and Lord Justice Jackson’s reform on costs) on 01 April 2013, Rule 63 was further amended, so that the lower limit for small claims for claims in the Patents County Court has been increased from £5,000 to £10,000. Of course it remains open for litigants to bring proceedings for registered trade mark infringement (or other intellectual property rights) in the High Court’s Chancery Division.

BPE specialise in intellectual property litigation and have experience in the full range of contentious intellectual property matters. Our areas of work include advising and representing clients in relation to registered trade mark infringement, registered and unregistered design infringement, copyright infringement, passing off, seizure of counterfeit goods and domain name recovery.

Our intellectual property team here at BPE Solicitors LLP, consists of four partners and associates, two solicitors and a one paralegal. We represent clients from SMEs to PLCs and individual to famous household brands.

For more information about our intellectual property service, please visit the intellectual property section of our website by clicking here. Please feel free to call us on 01242 248498 or email us.

This article contains general information or opinion only and does not constitute legal advice. You should seek advice from BPE Solicitors LLP directly for any specific legal matter that you may have.

The seven-strong team assisted the Gloucester based building support services group with the purchase of Scottish Business ILS Group Limited, who provide high quality community-based care services to approximately 3,400 service users.

Chief executive officer of Mears, David Miles, commented: “The acquisition will provide Mears with the platform to provide higher acuity home services across the UK, complementing and developing our existing care capabilities. The team at BPE supported us through every aspect, with their expertise and experience clearly visible. I would not hesitate to recommend them to others.”

Mears added that they had bought the Scotland based business, which turned over an estimated £24.4 million before costs last year, on a debt-free, cash-free basis.  The purchase also included an £18.1M fundraising and placing for Mears.

“Fundraising for a PLC adds its own complexities to the deal and this transaction is indicative of the complex type of work BPE is able to deal with," explained Tim Ward, Partner in the Corporate team at BPE.  "Large acquisitions, and associated fundraising is becoming an increasingly common requirement from our clients, who benefit from our competitive fee structure, without a loss of expertise.  This acquisition is possibly the biggest for a Gloucestershire firm this year and follows on from a recent AIM floatation and fundraising."    

The purchase of ILS Group Limited, comes hot on the heels of the recent £24 million purchase of Morrisons Facilities Services in 2012, which BPE also advised on.

Read the full article here http://www.quolux.co.uk/blog/2013/03/law-and-reorder/

From left to right: Tiina Pukk, Jason Stratford-Lysandrides, Iain Garfield, Kathryn Johnston, John Beevor, Matthew Jackson and Edwina Young

March traditionally sees thousands of visitors pass through Cheltenham, but one special guest at a law firm based in the town, is staying for that little bit longer.         

Tiina Pukk, a Solicitor from Estonia is spending four weeks in the UK, working at BPE Solicitors, primarily in its six-strong Commercial team. Tiina, who works for law firm LEXTAL specialises in Commercial law, and has a particular interest in intellectual property rights. She is taking part in an exchange scheme that has been running at the Gloucestershire law firm for around 12 years, and will return to Estonia on 6th April, alongside one of BPE’s Solicitor’s Edwina Young, who will then work at LEXTAL during her four week trip.    

Iain Garfield, Partner and Head of the Commercial team, commented, “We have strong links with Estonia through our Commercial Consultant John Beevor, who is the Estonian Honorary Consul in Cheltenham. We have been part of several exchanges before, but this is the first one we have participated in for a number of years. Now, with the ever increasing demand for legal Commercial Services, it seemed like the perfect time to welcome Tiina over to the UK, for her to gain invaluable experience working in a busy British law firm.”

Tiina will also spend time working in the Employment and Litigation teams during her month’s placement.     

Tiina commented, “Working at BPE for four weeks will be great experience for me, giving me the opportunity to see how everything works in a UK legal firm. I am looking forward to a fresh challenge, before taking Edwina to Estonia, to see how we do things over there.” 

The team, who have been praised in legal directories as ‘outstanding’ with ‘first class lawyers’, completed deals for both Spires and Hartwell Ltd and Venn Engineering Services Limited last week.     

Spires and Hartwell Ltd, a family owned haulage contractors in Evesham acquired Spencer Commercial Services Ltd, a maintenance and servicing company, also based in Evesham.           

“The merger with Spencer Commercial Services Ltd has broadened and added value to the type of service we can offer to our clients”, explained Chris Hartwell of Spires and Hartwell Ltd. “The team at BPE used their vast experience and meticulous attention to detail to complete the deal on time, on budget and with agreeable terms for each side – we were very happy with the service we received.”

Venn Engineering focuses on delivering high quality services in Project Management, Project Control and Technical Consultancy to customers including EDF Energy and Magnox Ltd. Effective from the 7th March, the company has merged with Oxand Group, an international engineering and consulting firm.

Venn Engineering Directors expect this merger to increase their customer base from Energy and Transport, to include Oil and Gas and will result in job creation in and around the Gloucestershire area.

Bob Swenson of Venn Engineering commented,”BPE worked very hard in delivering an all-round commercial deal on budget, without getting bogged down in unnecessary points. We found them hands on, responsive, accessible and proactive and would not hesitate to recommend them to others.”

Tim Ward, Partner at BPE Solicitors, who lead the deal commented, “This was a cross border transaction and demonstrates that for a strong management team in the right business there are still real opportunities. The team had built up a very strong business and I look forward to the partnership with Oxand creating an even stronger organisation – they have much to be proud of.”

By Riyaz Jariwalla       
11 March 2013

The question of costs is often one of the main reasons why proceedings are settled or withdrawn. The question of who pays the costs of proceedings is usually not determined until the claim (including any counterclaim) has been disposed of by virtue of a consent order, an interim process or trial. The general rule in court proceedings in England and Wales is that the loser is ordered to contribute towards the winner’s legal costs.  If any party is unsuccessful during the course of proceedings it will (on most occasions) have to contribute to the other side’s costs as well as having to pay its own costs in full.  It is for this reason why parties are not generally allowed to ask for an interim order that their opponent provide funds as security to pay the seeking parties’ costs of the action if successful. However, there is an exception to this rule.      

The court, pursuant to CPR Part 25.13 (1) and CPR Part 25.13 (2)(a) – (c), has the jurisdiction to order security provided it is satisfied, and having regarded all the circumstances of the case, that it is just to make such an order against the paying party. The court must satisfy itself that where the claimant is a company there is a reason to believe that it will be unable to pay its opponent(s)’ costs of proceedings if such an order was made against it. Once the court is satisfied, it has the discretion (see Sir Lindsay Parkinson and Co Limited -v- Triplan Limited [1973]) whether to make an order for security and the amount, if any.

The case of Keary Developments Limited -v- Tarmac Construction Limited [1995] provides useful guidance as to the criteria the court should consider when deciding whether an order for security for costs should be awarded against a company.

Pursuant to (b) above, when considering all the circumstances, the court will have regard to the paying party’s prospects of success ^[2] but will not go into the merits of success in details unless the defending party can show that there is a high degree of probable failure.

Pursuant to (d) above, the court will also perform a balancing exercise – on the one hand it will weigh the injustice caused to the paying party (often the claimant) if it is prevented from being able to pursue a claim caused by an order for security for costs, against the weight of the injustice caused to the applying party (often the defendant) if no security is ordered and at trial the claimant’s case fails and the defendant is unable to recover funds incurred in dealing with defending the claimant’s case.

During the assessment, the court will assess that the power to award an order for security for costs does not get used as an instrument of oppression or stifle a genuine claim ^[3], especially ‘…the failure to meet that claim might in itself have been a material cause of the plaintiff’s impecuniosity’ ^[4] but it will also be equally reluctant to order security if it considers that it might be used as a weapon whereby the impecunious party exploits its inability to pay the other party’s costs as a means of putting unfair pressure on the defending and prosperous party.

Known as After the Event (“ATE”) insurance, when taken out (usually associated with conditional fee agreement) the insurance covers legal costs and disbursements (e.g. solicitors fee, court fees, barrister’s fees etc.) relating to civil proceedings. With the popularity of ATE insurances rising, the courts have had the opportunity to consider whether and under what circumstances ATE insurance is a form of providing security for costs. In Nasser v United Bank of Kuwait [2001] EWCA 556 Mance LJ made these obiter comments:

In the High Court case of Al-Koronky and another v Time-Life Entertainment Group Ltd ^[5], the Claimants appealed against a decision ^[6] ordering it to give security in relation to costs of the defendants in a libel action. The Claimants had a conditional fee agreement with their solicitors but no ATE insurance was in place until the time of its appeal. In the Court of Appeal judgment, Sedley LJ said:

In other words, a claimant's (or a defendant's) engagement with its solicitors on a CFA has by itself no influence or impact on the court making an order for security for costs. However, in line with the decision in Campbell v MGN Limited (No.2) ^[7] if a claimant has in place satisfactory after the event insurance, provided that the insurance cover gives the defendant appropriate security and financial protection, the claimant may be able to resist an order being made against it for security for costs.

In the case of Michael Phillips Architects Limited v Cornel Clark Riklin and Susan Oglesby Riklin ^[8] the strength of after the event insurance was tested. The claimant told the court that it had adequate ATE insurance and therefore it should follow that security for costs should not be awarded. However, the court heard that the claimant’s policy could be ‘voidable’ or the ‘cover ineffective’ if their ‘eventual liability for costs is consequent upon [the claimant] not having told the truth’.

The High Court’s Akenhead J said:

The approach adopted by the court when deciding an application for security

In Belco Trading Co v Kondo [2008] EWCA Civ 205 the Court of Appeal was asked to consider an order for security for costs which ordered the Claimant to make a monetary payment into the court funds account, or to secure an insurance policy which gave the Defendant an equal or better security for costs than the funds that the claimant would place on account. The Court of Appeal analysed the approach taken by the first instance judge and provided a valued insight into the approach adopted by the courts when dealing with an application for security for costs when the paying party has in place after the event insurance. The key elements of the case can be summarised as follows:

However, notwithstanding the above, Akenhead J from Michael Phillips Architects Limited v Cornel Clark Riklin and Susan Oglesby Riklin concluded by saying that he sees no reason why ATE insurance which is taken out by the claimant to cover its costs liability to the defendant, provided the terms are adequate, could not provide a suitable and sufficient element of security for costs to the defendant. However, proper analysis of the terms of the ATE policy would be required.

This is because, ATE policies will always be a lesser form of protection when compared with payments into court or bank bonds or guarantees. This is because ‘…insurance policies are voidable by the insurers and subject to cancellation for many reasons, none of which are within the control or responsibility of the defendant, and because the promise to pay under the policy will be to the claimant.’.

If the claimant is resisting an application or security for costs on the basis that it has an adequate policy, the claimant should focus its evidence, under the application, to demonstrate that it does in fact provide proper security.

This article contains general information or opinion only and does not constitute legal advice.  You should seek advice from BPE Solicitors LLP directly for any specific legal matter that you may have. 

 
In a decision that has shocked construction lawyers, the Court of Appeal has recently ruled that a developer is entitled to recover from a consulting engineer who caused delay to a residential development, losses relating to the drop in value of the houses which were completed after, rather than before, the 2008 property crash. 
 
Mr Gubbins is a farmer who obtained planning permission in August 2006 to develop affordable housing on one of his fields in Cornwall.  The value of the development was expected to be in the region of £3.8m.  The planning permission came with requirements under s.38 of the Highways Act 1980 in relation to the road and drainage to serve the new dwellings.  Mr Gubbins therefore engaged John Grimes Partnership (JGP) to design the road and drainage scheme for a fee of £15,000.  It was agreed that they would produce the design by March 2007 and it was clear that these works were an essential part of the overall residential development scheme.  In fact, with fees of just under £20,000 having been paid, JGP did not produce the designs until February 2008 and even then there was work outstanding.  Mr Gubbins engaged an alternative engineer who completed the work within two months and the plans were approved, finally, in June 2008 some 15 months late. 
 
Had JGP been on time with their designs, the development would have been complete by June 2008 but in fact it was not complete until July 2009, by which time the overall value of the houses had fallen by £398,000.  JGP pursued Mr Gubbins for unpaid fees of just over £2,000 and he counterclaimed for the losses stemming from their delay, measured as diminution in value of £398,000.
 
The Court of Appeal confirmed the earlier Court’s decision that (a) it had been established that JGP caused Mr Gubbins’ loss and, most surprisingly, (b) the loss wasnot too remote.  The Court said that the fact that the losses were disproportionate to the amount of JGP’s fees for the job was not relevant and that they were liable to Mr Gubbins for his losses of £398,000. 
 
It seems fair to say that the property crash of 2008 clearly came as a shock to most ordinary people (even those of us working in the construction sector) and the fact that house prices fell by c.14% in 15 months was not widely predicted.  The Court of Appeal’s finding that this fall was “reasonably foreseeable” will therefore no doubt shock and alarm construction professionals.  Even if projects in 2008 went to plan, it seems that whenever we escape the current recession, when the inevitable bust follows the inevitable boom, this problem could become reality for construction professionals.  No doubt PI insurers will predict this risk and start increasing premiums now!
 
So why did the Court think this was predictable and is there any light at the end of the tunnel?  The Court looked at “fast moving” and “slow moving” markets – comparing the rapid changes in prices in the commodities markets with the slower changes in property prices.  Both Courts who considered this case focused on the length of delay caused by JGP: in fact the County Court Judge described the delay as “egregious”.  It was perhaps the length of delay, which meant that the downturn in the property market resulted in a demonstrable and quantifiable loss for Mr Gubbins,  that prompted the Courts to find against the consulting engineers.  Perhaps a shorter delay and a smaller loss would have been treated differently but construction professionals must note that where they cause or contribute to lengthy delays on a project, they may find themselves compensating the developer for losses beyond their control.

Dale, who joins as a Partner of the Gloucestershire based solicitors, will be a core part of their seven-strong Corporate team, specialising in work including acquisitions and disposals, restructuring and private equity.

Anthony Rudge, Head of the Corporate team, commented, “Dale joins us at a time where there is increasing demand for Corporate and Commercial services. His extensive knowledge of the legal field, coupled with his links in the local business community, means he will be a great asset to the team and firm as a whole.”

Having previously worked for Rickerbys in Cheltenham and most recently, Lodders in Warwickshire, Dale has vast experience in dealing with both private and public company clients.    

He said, “Joining BPE will be a fresh challenge for me. The team have some influential clients, with an ever growing need for Corporate services and I am looking forward to working with them.”

Carl von Clausewitz, "On War"

Carl von Clausewitz was a leading military thinker during and immediately following the Napoleonic wars. His text, "On War", is still acknowledged as one of the principal works on the strategy of conflict: Eisenhower referred to it almost daily, both during his time in the military and as US President. Many of the messages that it contains are relevant to the types of legal conflict that we are now starting to see. In particular, these questions of the goal of litigation and how the litigation is to be conducted are vital to any claimant. Even where the legal and factual issues are straightforward, the dynamics of the claim can be complicated. Those dynamics evolve and change over time, meaning it is impossible to predict every eventuality at the outset. But a claimant that has thought ahead, that has addressed what it intends to achieve and how it is to go about it, is far more likely to be successful. Consider the following questions, and how they relate to one another.           

What steps should you be taking first?

This question needs to be broken down into internal and external steps.

• It is important immediately to suspend any document destruction policy that may affect material that can be called for on disclosure. Few things will annoy the court more than to find out that a party, knowing litigation was coming, has destroyed relevant evidence. Disclosure is something that a solicitor should raise at an early stage with his client.
• Privilege immediately becomes an issue. The legal or litigation privilege of documents that have been and will be created is important; no assessment of the merits, strengths or weaknesses of the case should be created outside of a privileged context. Again, the question of when privilege arises and when it might be lost depends upon the forum. Always think broadly in assessing threats to privilege. Remember that you may not always find yourself litigating in the UK. To the extent that claims may arise elsewhere, what are the risks of a disclosure application there?
• What must you do before you can commence proceedings? Is there an obligation to enter into talks? What about mediation? To the extent that you want to bypass those steps, is that possible? Once again, where you intend to sue may well drive the answer to these questions. If a claim is brought in England, an obligation to enter into talks is not enforceable whereas an obligation to mediate is But where the claim is before the courts and there is an application for summary judgment, you may be able to avoid even the obligation to mediate.
• Do you want to bypass these preliminary stages? Maintaining a dialogue can be the most efficient and effective way of resolving a dispute, even after the commencement of litigation.

Where do you sue?

The steps we have looked at so far have pointed to this as a significant early question. A number of factors will determine the answer.

• A choice of forum clause in any contract will clearly be significant;
• Think about what law you want to govern the dispute. Choice of law rules may vary from forum to forum. Even if those differences are only subtle, they may be critical. Commencing your claim in a different jurisdiction may help you to secure your preferred choice of law;
• Look at the question of costs: how expensive will this be, and are costs recoverable. The total cost will turn, in part, on how long proceedings are likely to take, the scope of disclosure that will be ordered and the availability of summary remedies, such as summary judgment or strike-out;
• Consider who the likely parties are and whether any of them are necessary. If there are necessary parties, it may be easier to commence proceedings in a jurisdiction where they can easily be sued;
• How important is disclosure to you? Consider both the disclosure you will be seeking from the other side and the disclosure they might seek from you, since disclosure obligations tend to be the same on both sides (a fact that can be overlooked). Deposing the other side’s key witnesses may be very attractive; deposition of your own may not. You may feel that the other side has documents that you would like to see, but are there documents in your own files that you need to protect from disclosure? Also keep in mind that the timing of disclosure may be important − can you apply for pre-action disclosure, orders and the like? Do not be afraid to revisit your answers. Different systems have different approaches; where you end up may drive, and be driven, by your document retention policy.
• Where are the documents and witnesses located? This will turn, possibly in large part, on the issue of what you are suing for, and so again you need to be thinking ahead to your cause of action. If witnesses have to travel some distance for a hearing, the cost and inconvenience (particularly if visas are involved) will escalate. Such costs may or may not be recoverable;
• Consider what remedies you are seeking, both interim and final, especially if it is proprietary in nature. Availability of remedies will turn in part on the basis of your claim and in part on where you bring it: certain jurisdictions simply do not recognise certain remedies. A related question is whether you will be awarded compound or simple interest. Particularly in litigation which has been on-going for a number of years, this can be a very sizeable difference. Finally, look at where the defendants’ assets are located and consider how easy it will be to enforce any judgment once you have it.

• By and large, the fewer defendants that you have, the more straightforward the jurisdictional and choice of law issues become, the cheaper the proceedings are and the quicker you can have them resolved. At the same time, should you miss any necessary party, and find that they are not amenable to the jurisdiction you have selected, your entire case may fall apart.

• One often hears lawyers talking about a contract claim or a tort claim or a restitution claim, as if that claim could have been brought in no other way. That is rarely the case, however. The facts underlying the claim are set; they have happened in the past and cannot be changed. But the same facts can give rise to a variety of legal consequences. Take as an example the situation where there has been a misrepresentation made before the contract that is then repeated as a warranty in the contract. Is your claim for pre-contractual misrepresentation or for breach? It is important to consider all of the consequences of bringing your claim on a particular basis before doing so. Think of how it will affect the choice of law (and how that plays into the forum equation, what remedies might be available which will be a further factor driving your choice of forum). Keep in mind, also, that the basis of the claims may shift the focus and scope of disclosure and witness evidence because it may shift the time period that is relevant, in our example, from the period prior to formation, in the case of pre-contractual misrepresentation, to the point of formation and beyond, for breach.

• Some types of proceedings are confidential; many are not. Keep in mind that there may well be a PR angle to all this that will need to be managed and managed well. A party that sues because it has suffered considerable losses on an investment product may find itself the subject of intense speculation in the markets. How will that speculation be handled? The party that alleges that it has been misled in making its investment decisions may, to the extent that it has passed on that misleading advice, find itself facing claims on the basis of those same misrepresentations.

• For a book entitled "On War", possibly the most striking point does not concern any military resolution at all: "the original means of strategy is a victory − that is, tactical success; its ends … are those objects which will lead directly to peace." There will be times, particularly in the context of insolvency or fraud, where settlement is simply impossible and the parties will need court resolution to their dispute. Such cases should be the exception. Litigation is expensive, attritional and demanding on the parties' resources. However good your case, however good your advocates, there is always uncertainty and this promises to be a period where that uncertainty is particularly acute. In any dispute, therefore, making the room and the time for a dialogue to continue is extremely valuable. Remember that you may well have to deal with the same people that you are now suing for the next five, ten or twenty years. Whilst no-one is yet sure what the future economic landscape will look like, we are all sure that there will be one. Alienating your future business partners is unlikely to make it any more hospitable.

Conclusion

The claimant, then, has much to think about before beginning any action. Moreover, the various elements, as we have seen, are inter-linked. The question of where you sue will depend, in part, on the remedies that are available to you; the remedies that are available will depend upon the law governing the contract; the law governing the contract will be determined by the choice of law rules in the forum where you have sued. The inter-connection is almost endless. The key, as von Clausewitz noted, is preparation. Be clear both what you intend to achieve through any claim and how you intend to go about that. You should aim to leave as little strategic ground open to the defendant as possible. As we will see next month, defendants have their own tactics for resolving the dispute, and they present a very different picture to that set out by the claimant.

Source: Practical Law

“BPE has assisted Jelf over many years and their latest acquisition will see them expand still further their offering of both commercial and personal insurance products,” said Rachael Reeves, corporate lawyer providing support on the deal.     

Tim Ward, Corporate Partner at BPE is very upbeat about the deal, “the return of Jelf to the acquisition trail is a symbol of the increased activity in the corporate market.  Business remains difficult, but for well-run companies there is increasing interest from buyers who have weather the economic storm and are looking to continue their expansion plans, and have the finances to support their plans.

Jelf's chief executive Alex Alway added, "Jelf has developed a menu of products and services that provide an integrated offering to meet the needs of a wide client base – and we are looking forward to working together with the Howell Shone team to introduce this proposition to our new clients."

The acquisition is part of Jelf’s expansion plans, bringing the company’s successful business model to more clients.  With the arrival of Howell Shone into the Jelf Group, they now have over 27 offices across the South, Midlands and Wales.

There could be several reasons why to date none of the priorities set out by Lord Hunt have yet resulted in legislative change by the Government, but an absence of discussion is not one of them. There have been several exercises, seemingly endless consultations and reviews, the highest profile of which was the Beecroft Report delivered in 2012. There was also the recent headline-attracting statement by the Chancellor of the Exchequer on an intention to create a new class of ‘employee-owners’, which essentially involves businesses offering shares in exchange for employees abandoning certain, limited employment rights.

Meanwhile a new consultation exercise has begun into the Transfer of Undertakings (Protection of Employment) Regulations (“TUPE”). That is one piece of legislation that has been unpopular since at least 1981 (let alone 2010), when the UK could no longer delay implementing Europe’s Acquired Rights Directive into domestic law.

TUPE is perceived by lawyers and non-lawyers alike as being complex, although in their favour there has really only been one major revision in the past three decades (in 2006) which suggests that the Regulations may at least be familiar to employers even if they are unpopular. Perhaps that is one reason for maintaining the status quo: no-one has proposed a way to make those essential ‘core-provisions’ contained in the Acquired Rights Directive easier to implement and complicated TUPE Regulations are perhaps preferable to complicated and unfamiliar alternatives, with further litigation over the interpretation of the same.

Where there is potentially some room for change (and hence the consultation exercise) is that TUPE may go further than was intended by the European legislation. For example, there is no reference to “service provision changes” in the Acquired Rights Directive and it will potentially be removed from TUPE as a result (subject to the outcome of current consultation). Should such “service provision change” transfers be removed from the wording of TUPE, this would not, however, mean that outsourcing situations could be free from TUPE’s shadow. Instead, we would revert to the old case law on this topic which was far from straight forward. There is a real danger therefore that by attempting to simplify the wording of TUPE, any reforms could actually create further complications.

Notwithstanding the above, the so-called “gold-plating” of TUPE seems an obvious place to start, but in reality probably does not go anywhere near as far as advocates of change would desire.
 

Other proposals in terms of removing gold-plating include:

• Making it easier to change contracts of employment after a TUPE transfer – at present employees’ contractual terms are preserved on a TUPE transfer. It has been proposed that only those changes which are because of "the transfer itself" will be void, as opposed to the current situation where changes that are "connected with" the transfer may also be void.  However, the Government has suggested that changes purely for the purposes of harmonisation of terms and conditions of employment are unlikely to be possible.
   
• Allowing dismissals arising from a change of workplace location after a TUPE transfer to not be automatically unfair.
   
• The consultation also asks whether a transferor (i.e. the business from which employees are transferring) should be able to rely upon the transferee’s (i.e. the business to which employees are transferring) justification in respect of any pre-transfer dismissals.
   
• Clarifying that transferees may, in certain circumstances, be able to commence collective redundancy consultations with affected employees prior to a TUPE transfer.
   
• A possible repeal of the current 14 day rule for the provision of employee liability information to the transferee and replacing it with a requirement for the transferor to disclose information where it is necessary for the transferee and transferor to carry out their information and consultation duties.
   

Consultation closes in April 2013, but no date has been provided as to when any changes will be implemented.

Leaving TUPE aside, in some areas the time for talk is over as recent consultation has resulted in actual changes to the law. When it comes to the introduction of fees in the Employment Tribunal this marks quite a departure from the current system.

Since their inception it has always been the case that there has been no fee to bring a claim in an Employment Tribunal. Historically this was justified by the sentiment that money would be scarce for an individual who has just lost their job and so fees would be an unfair barrier for seeking “justice”. However, the perception of many employers is that even a Claimant with a weak claim is in a strong bargaining position as it will cost the employer something to defend its position regardless of whether the Claimant is successful or not (in comparison to it potentially costing the Claimant nothing to bring the claim unless they decide to get representation). Added to which Tribunals sometimes seem frustratingly reticent to award costs against Claimants.

However, from summer 2013 a Claimant will have to pay an issue fee at the point of bringing a Tribunal claim and a hearing fee if the matter proceeds. There are two ‘levels’ of fees but for most claims (including unfair dismissal, discrimination and whistleblowing) it will cost £250 to issue the claim and £950 for the hearing. The stated purpose of this is not to deter the vexatious or unmeritorious claimant, but rather it is an austerity measure to ensure that users of the Tribunal share some of the costs. This seems slightly tokenistic as the cost to the Tribunal of administering and holding even a one-day hearing is going to exceed £1,200 and it is going to provide little comfort to the employer who will invariably have spent more than this in defending the proceedings. It is also not clear how the fee-remission scheme will interact with the newly introduced Universal Credit (i.e. the new single benefits payment for people who are looking for work or on a low income), but the proposal seems to be for recipients of the benefit to get a complete fee remission.

For those Claimants who have to find the fees themselves, the fact that they have had to do so may create a barrier to settlement (or at the very least reimbursement of the fees may have to be factored into any negotiation).

It will be interesting to see how the new fee regime works in practice - it could be that the fears are unfounded and the introduction of fees marks a positive turning point. However, any comparison with the County Court system suggests this may be optimistic as it has both an established fees structure and a robust costs procedure and yet it takes more than its fair share of weak, unmeritorious and sometimes vexations claims.

Only time will tell whether the proposed changes to TUPE and the new fee system will have a positive effect on the economy (which after all, is the Government’s key aim).

Stephen Woodman Employment Solicitor stephen.woodman@bpe.co.uk Phone: 01242 248283

Mr Cook was employed by Liddell’s coaches as a bus driver.  Liddell’s had won five contracts to transport children to other schools in the area, while their school was being rebuilt.  These contracts began in 2011, but Liddell’s was invited to bid for further one-year contracts, covering the period up to the scheduled opening of the new school. Liddell’s won only one of these extended contracts, and the others were awarded to another company, AC Ltd.

As a result, Liddell’s no longer required Mr Cook’s services after July 2011, but argued that his employment had transferred to AC Ltd, under the TUPE Regulations. Naturally AC Ltd denied liability for Mr Cook’s employment and Mr Cook brought a claim in the Employment Tribunal for unfair dismissal. 

The Tribunal found AC Ltd had no liability for Mr Cook’s employment, on that grounds that the relevant “service provision change” was excluded from the scope of TUPE by a specific section of these Regulations which provides that no “service provision change” occurs if a client's intention is that the activities being contracted for will be carried out “in connection with a single specific event or task of short-term duration”.  AC Ltd successfully argued that the contracts for 1 year amounted to a “single specific event”. 

The Tribunal referred to guidance issued in 2006 by (the then) Department for Trade and Industry (“DTI”) to the effect that the Government's intention was that an event or task would have to be both “single specific” and of “short-term duration”, to be excluded from TUPE. The Tribunal found that the “single specific event” was the rebuilding of the school, and that in the particular circumstances, given that that transport contracts were typically awarded for three to five years rather than just one, it was correct to see the 2011/12 contract as one of short-term duration. As a result, this meant that liability for Mr Cook’s dismissal rested with Liddell’s alone as his employment (or rather the liability for his employment) did not transfer to AC Ltd.

When Liddell’s appealed to the Employment Appeals Tribunal (“EAT”), they were unsuccessful.  The EAT agreed that the Tribunal had reached the right decision, though it did not fully support its reasoning. The EAT’s view was that “single specific events” stand apart from “tasks of short-term duration” as distinct categories of excluded transfers. In short, this means that short-term duration tasks can be excluded from TUPE, independently of whether or not they relate to a single specific event.

Whilst this decision could provide another way to argue that TUPE does not apply, it does arise from a specific set of facts and so may not be easily replicated.  In many industries it is not unusual for contracts to be for short periods and where a dispute arises, it is likely that Tribunals will need to carefully consider the particular circumstances of each contract.

Chris Aldridge Employment Solicitor chris.aldridge@bpe.co.uk Phone: 01242 248431

The Trust attempted to defend Mr Piper’s claim on the basis that the effect of the appeal outcome was to remove the earlier dismissal and so the Tribunal did not have jurisdiction to hear his complaint. The Tribunal ultimately agreed with the Trust and rejected Mr Piper’s claim. 

Mr Piper subsequently appealed this decision to the Employment Appeal Tribunal (“the EAT”), which reviewed the Trust’s own disciplinary and appeal procedure.  Within this procedure, it stated that the employer was not entitled to impose a lesser penalty without an employee’s agreement. With this in mind, as Mr Piper never gave his agreement to his dismissal being revoked the EAT concluded that it still stood.

The above case is fact specific and it fell very much on the appeal policy set out in the Trust’s disciplinary procedure.  However, as a learning point, employers would be well advised to ensure that training is given to anyone dealing with disciplinary or appeal hearings, and that they bear in mind what the procedures say and what sanctions are available to them.  In order to ensure flexibility when dealing with staff, employers should also take note of perhaps having a wide range of sanctions available to them.

Pav Clair Employment Solicitor pav.clair@bpe.co.uk Phone: 01242 248221

Traditionally, the trend in social media cases where an employee is known to work for a certain employer or where the employer is named in the employee’s social media bio (such as the Facebook biography page) has been that any posts which cause distress to fellow colleagues or bring the employer into disrepute could in turn lead to potentially justifiable disciplinary or dismissal proceedings. However, the Smith case has reminded employers to think carefully before they act in such situations.

Mr Smith commented on a news article about “gay marriage to get the go ahead” by posting an opinion on his Facebook page that this was “an equality too far”. The posting was then seen by his employer and colleagues and resulted in Mr Smith being found guilty of misconduct and being demoted with a 40% reduction in salary.

As a result, Mr Smith brought a claim in the High Court for breach of contract as he was out of time to raise a claim in an Employment Tribunal. The High Court found that although Mr Smith did identify his employers on his Facebook bio page, his comments were made in a purely personal capacity and any observer could clearly see that they were not made on behalf of his employer. Further, it was clear from his previous posts that his Facebook account was for personal use only and was not intended to be an extension of his work with THT. These conclusions are a complete reversal of previous Tribunal findings relating to social media.

In response to THT’s argument that Mr Smith’s comments would offend or cause distress to colleagues and customers, the High Court reminded the employer that, due to diversity in the workplace it would be extremely difficult to avoid conflicts in political and religious views held by colleagues. As long as such views had not been expressed in an offensive way, this was a necessary price to be paid (in the High Court’s view) for freedom of speech.

Whilst this case represents somewhat of a departure from previous case law, it is to be noted that each case would be judged on its own facts and the Smith case does not provide a carte blanche for employees to post harmful or discriminatory comments on their social media pages without the risk of consequences.

It is a further reminder to employers to have in place a carefully drafted social media policy which can be referred to by all employees.

Steve Conlay Employment Legal Assistant steve.conlay@bpe.co.uk Phone: 01242 248444

When Stringfellows told Miss Quashie that it no longer wanted her to work in its club, she brought an unfair dismissal claim. However, an Employment Tribunal found that she was self-employed and so said that it did not have jurisdiction to hear her claim. However, Miss Quashie was not deterred by this because, as we highlighted last year, she decided to appeal to the Employment Appeals Tribunal (“EAT”).

Taking a different approach the EAT decided that Miss Quashie was an employee because Stringfellows was required to offer her work (on the dates in the rota), and she was required to perform this work personally. In addition, Stringfellows had control over her work activities, and imposed “fines” on her for breaching club rules.

Since our last article, Stringfellows has challenged the EAT’s findings and the case was recently heard by the Court of Appeal.

After revisiting the facts, the Court of Appeal has restored the Tribunal’s original decision by concluding that Miss Quashie was self-employed. The key factors in reaching this decision were:

• Stringfellows were under no obligation to pay Miss Quashie anything at all - she negotiated her own fees with clients and only received from Stringfellows monies received from her clients (after deductions).
   
• Miss Quashie took an economic risk in performing her work - she was often out of pocket at the end of a night’s work.
   
• The Club Agreement specifically confirmed that Miss Quashie was self-employed, paid her own tax and did not receive sick or holiday pay, and there was no suggestion that the Agreement was a sham.

The journey of this case through the Courts shows the complexity of determining employment status, as it can be difficult to apply the general principles to each set of unique facts. If in doubt, seek legal advice!  

Sarah Lee Employment Solicitor sarah.lee@bpe.co.uk Phone: 01242 248261

The above decision arose from a case involving a 21-year-old (known throughout the proceedings as "T"), who received warnings from Manchester Police when he was 11 years old in connection with two stolen bikes. When applying for a job at a local football club, aged 17, and later for a university place, he was forced to reveal the warnings under the Criminal Records Bureau (“CRB”) rules, even though the warnings had no relevance to the job or position he was applying for.

Civil Liberties campaign group, Liberty, took up T’s case arguing that such blanket checks were incompatible with Article 8 of the Human Rights Act. At the Court of Appeal, all 3 Judges hearing the case unanimously agreed with Liberty on this point.

So what does this case mean for employers? At the moment nothing has changed. The Law surrounding CRB checks is governed by the Police Act 1997 and the Rehabilitation of Offenders Act 1974 (Exceptions) Order 1975 and this has, at the time of writing, not changed.

However, should the Government either concede defeat, or lose its Supreme Court appeal hearing, it would be required to amend the above Acts in order to comply with the Human Rights Act. Such changes would need to be introduced as soon as feasibly possible.

It is anticipated any such amendments to the Acts would include changes to the current system to enable the filtering out of minor or irrelevant convictions from CRB search results.

If/when such changes are announced, company policy and procedure on CRB checks will need to be checked and relayed to all staff. We will naturally keep our readers updated of further developments.

Steve Conlay Employment Legal Assistant steve.conlay@bpe.co.uk Phone: 01242 248444

Since the results of the last WERS, conducted in 2004, job satisfaction amongst employees has apparently jumped by 4% from 16% to 20%*. In addition, committed employees who “share the values of their organisation” leapt from 55% to 65%. Not bad in times of potential economic meltdown.

For those who like the less cheery side of things, it was also revealed that 39% of managers have had reason to discipline an employee and 17% of managers had felt the need to dismiss an employee. Welcome news that us employment lawyers are not out of a job yet!

A further breakdown of the figures will be available in November 2013 when the Government release its “Employment Relations in the Shadow of Recession” findings.

On an unrelated note, after yet another consultation exercise, BIS has also published the draft The Trade Union and Labour Relations (Consolidation) Act 1992 (Amendment) Order 2013. Whilst this does not sound particularly exciting, these are the draft Regulations which aim to shorten the consultation period for proposals to make 100 or more people redundant from 90 days to 45 days, and bring fixed-term employees into the headcount. The proposed trigger date for the new period is when the proposal to make 100+ people redundant occurs on or after 6th April 2013.

And finally (finally)…………, the new limits on certain Employment Tribunal awards came into effect on 1 February 2013.  The two key changes are:

• The limit on the compensatory award for "ordinary" unfair dismissal increased from £72,300 to £74,200; and
   
• The maximum amount of a week's pay for the purposes of calculating statutory redundancy payments and the basic award in unfair dismissal claims increased from £430 to £450.

These new limits will apply to dismissals which take place on or after 1 February 2013.

*We are reliably informed that not all of the 20% of employees were questioned at 16.59 on a Friday.

Matthew Burton Employment Partner matthew.burton@bpe.co.uk Phone: 01242 248281 Mobile: 07801 216971

Edwina is a solicitor in the commercial department and has additionally worked closely with the litigation team in relation to various IP transactions. She has for a number of years supported clients with trade mark and brand protection issues, including licensing agreements, trade mark opposition matters and in connection with foreign organisations seeking brand protection throughout the EU. Additionally Edwina assists clients with domain name matters, e-commerce obligations, online trading requirements, as well as privacy, data protection and freedom of information responsibilities.

Edwina regularly supports the management of client IP portfolios, IT matters and has particular experience with three well-known UK retail businesses.

Commercial  /  Intellectual Property

Matt is a solicitor in the commercial department with a particular specialism in intellectual property and IT matters. Matt has acted for a number of well-known high-street brands in a variety of commercial matters. Matt regularly advises clients on brand protection strategies, including trade mark registrations in the UK, throughout the EU and via WIPO, copyright ownership and infringement, design right registrations, unregistered designs, as well as confidential information and trade secrets.

In addition Matt also advises clients in relation to IT matters, including distance-selling obligations and complicated software development agreements.

Commercial  /  Intellectual Property

Iain has worked for a large variety of clients in the retail sector, providing commercial and related IP support and commercial contracts with a particular expertise in the IT and technology sectors. Such work has included joint ventures, website developments and IT systems. Iain’s client base is spread across the globe, ranging from sole traders, high street brands, FTSE-listed companies and includes advising a European government on defence-based technology contracts. Internationally work has included various agency and distribution agreements and anti-competition issues, including foreign jurisdictions throughout Europe, Canada, US and Russia. He also regularly advises retail clients in connection with online sales platforms such as Amazon and eBay, as well as supply chain contracts (from manufacturers, distributors and carriers), numerous IT contracts in relation to websites and online payments.

Iain supports clients with their respective agency and distribution agreements whether in the UK or overseas, management of IP portfolio across the globe, including brand management, trade mark infringement and copyright infringement issues.

He is a regular speaker and trainer on commercial issues, is a member of the British Computer Society, the Society for Computers & Law and the Chartered Institute of Purchasing and Supply.

Commercial  /  Intellectual Property  /  Dispute Resolution

Philip’s intellectual property experience includes a number of reported cases including those in connection with registered and unregistered design infringement; obtaining summary judgment relating to parallel importation of pharmaceutical products; as well as injunction and speedy trial applications relating to the successful defence of patent infringement. He is responsible for the firm’s Litigation team, having trained in accountancy and law and joined BPE as a partner in 1998.

Philip Radford, has a ‘forensic ability to pick apart and analyse documents’
Legal 500

Philip is also a qualified Accredited Mediator working with national mediation group, Talk Mediation.

Litigation  /  Intellectual Property  /  Commercial

Jason has particular expertise within the field of intellectual property law and throughout his career he has advised a wealth of private and public sector clients on issues relating to brand protection, copyright, confidentiality, designs, domain name disputes/recovery, licensing, trade marks (including passing off) as well as internet-related matters. He is a highly experienced commercial, IP and technology lawyer and over the years has acted for a number of UK superbrands, a well-known US electronics brand, a well-known US software brand, as well as undertaking IP work on behalf of a top ten global brand, public sector organisations and providing particular IPR advice to science and technology-based businesses in addition to a number of the leading scientific academies and learned societies in the UK.

His strategic advice comprises IP management and protection extending to a wide range of UK/EU and global matters, including acquisition, clearance/freedom to operate advice, commercialisation, competing market entrants, new product launches, strategic IP auditing, dispute resolution and enforcement. Jason has regard to a client's development and understanding of IP on a national and global basis, including liaising with in house counsel and providing general in house style services as required. Jason regularly represents clients before the UK IPO, OHIM and WIPO as well as supporting clients before numerous intellectual property offices overseas. His practice has included representation before the County and High Courts and the General Court in Luxembourg.

Jason is also a member of the Society for Computers and Law and is BPE’s member representative for the Intellectual Property Lawyers’ Association.

Commercial  /  Intellectual Property  /  Dispute Resolution

Riyaz specialises in IP litigation with experience in the full range of contentious IP matters. His areas of work includes registered trade mark infringement, registered and unregistered design infringement, copyright infringement, passing off, seizure of counterfeit goods and domain name recovery. His experience extends to proceedings in the High Court and the specialist Patents County Court and trade mark and design oppositions and challenges, both at UK and EU level, before the UK Intellectual Property Office and the Office of Harmonization for the Internal Market.

Clients include those in the media, fashion and technology industries. His clients have included a well-known UK entertainment and leisure brand, a high street retailer and fashion brand, a well-known drinks and beverage brand and a well-known publication.

Riyaz is also a qualified Accredited Mediator.

Litigation  /  Intellectual Property  /  Mediation  /  Dispute Resolution

Various systems of protecting your intellectual property assets are available including the registration of rights, thereby providing legislative protection for your organisation. These include trade mark registration, design registration and patent registration. In some countries (notably the United States) copyright registration is available. Such registered systems vary depending on the nature of your intellectual property and the territories in which protection is sought. Moreover, registered rights in one country may also be utilised to extend those rights into foreign territories, which is especially important when exporting, distributing and licensing products abroad. A number of international conventions are therefore available for exploitation to assist with the effective commercialisation of your products.

Consider trade mark registration, design registration and patent registration as relevant for your organisation and its assets. Take advantage of the Madrid Application and Madrid Protocol for extending your trade mark rights overseas. Utilise the Hague Agreement for the international registration of designs. Benefit from extending your patent rights into foreign markets via the Patent Cooperation Treaty.

Whether you are a national UK organisation seeking protection within the UK, EU or overseas, or indeed a non-UK entity requiring protection within the UK or EU you should understand and appreciate your intellectual property and determine what rights can be registered as relevant for your market and future growth. A strategic intellectual property audit will assist you to identify your intellectual property and assist you to protect and exploit such rights effectively.

Your Inner Circle

Iain Garfield		Jason Lysandrides		Riyaz Jariwalla		Matthew Jackson
Partner & Member		Partner		Associate		Solicitor

“If you know the enemy and know yourself, you need not fear the result of a hundred battles…” Sun Tzu

Irrespective of the strength of your organisation, its products, assets and market you will need to be mindful that on today’s world stage effective competition and leading businesses recognise the value and advantage of owning and leveraging intellectual property rights. Therefore if you trade you stand in the modern day Roman Arena. With this in mind it will be too your advantage to ensure that your organisation, including its assets, do not infringe upon the intellectual property rights of another. A Clearance Search or Freedom to Operate Search are examples of the due diligence that can be undertaken to assist you in understanding the risk that another’s intellectual property may have upon your business strategy.

Crucially a Clearance Search or Freedom to Operate Search in appropriate circumstances can insulate your organisation against enhanced legal remedies in particular jurisdictions in the event of infringement proceedings.

Your Inner Circle

Iain Garfield		Jason Lysandrides		Riyaz Jariwalla		Matthew Jackson
Partner & Member		Partner		Associate		Solicitor

Supporting the Corporate team, pragmatic and commercial legal advice is provided to you throughout all stages of your life cycle. We will undertake appropriate due diligence in respect of intellectual property rights in connection with:-

• the establishment of a business
• structuring and restructuring a business
• shareholder agreements and ancillary documentation
• joint ventures
• R&D and collaborative arrangements
• raising money for a business
• banking work
• buying and selling businesses
• floating a company on the stock market
• insolvency
• Bona Vacantia and liaising with the Treasury Solicitor
• closing a business
• off shore arrangements

Your Inner Circle

Iain Garfield		Jason Lysandrides		Edwina Young
Partner & Member		Partner		Solicitor

Litigation: Your last resort, not first.
BPE: Your first resort, not last!

Infringers are finding new ways to copy, imitate and free ride. The methods of policing infringement both online and offline is now more complex than ever before. The need for lawyers to understand the legal framework is a must, but to also know your business and the technology you adopt is added value.

Our litigation team has over 50 years of combined experience relating to specific complex areas of law. Our lawyers have experience in other sectors including finance, IT, web design and property. Our industry experience allows us to provide our clients with better practical and commercially sensible solutions.

We are fast to identify what measures our clients need to take to ensure that their rights are being safeguards and that infringers are targeted and the unlawful activities stopped. We offer real-time commercial solutions dispensed to you definitively and comprehensively but specifically crafted for you or your business.

Cases

Guccio Gucci SpA v Shipton & Heneage Ltd [2010] EWHC 1739 (Ch)
Spraymiser Ltd v Wrightway Marketing Ltd [2000] E.C.D.R. 349
Doncaster Pharmaceuticals Group Ltd v Bolton Pharmaceutical Co 100 Ltd [2006] E.T.M.R. 65
Cintec International Ltd v Parkes (t/a Dell Explosives) [2004] EWCA Civ 449

Your Inner Circle

Philip Radford		Iain Garfield		Riyaz Jariwalla
Partner & Member		Partner & Member		Associate

Disputes are time consuming, stressful and it is easy for parties to be consumed by emotions. The law is vast and complex so the obvious solution is to find a clear route through the issues and resolve the dispute with the least amount of stress, the least amount of distraction and for the least amount for money – We aim to do this but without compromising on client care, client’s instructions, client’s expectations and actual results.

Why are we different?

We give clear, rational and direct advice from the start. We are transparent with our approach from the very start regarding timescales, costs, and procedure. We take hold of the reins and resolve the dispute effectively and efficiently. We tailor our approach depending on the dispute - sometimes responsive and sometimes aggressive.

Your Mediators

Philip Radford		Riyaz Jariwalla
Partner & Member		Associate
Accredited Mediator		Accredited Mediator

"The Trojan scans the victim’s IP address, tells him the message is from police, and then accuses him of an offense he very well may have committed without even knowing it. Unlike older ransomware threatening fines for [adult content], this particular Trojan focuses on copyright infringement. It’s highly effective.”
– (Softpedia)

With the rapid growth of technology and the globalisation of business, infringers are finding new way to copy, imitate and free ride. The methods of policing infringement both online and offline is now more complex than ever before. The need for lawyers to understand the legal framework is a must, but to also know your business and the technology you adopt is added value.

We are fast to identify what measures you need to take to ensure that your rights are being safeguards and that infringers are targeted and the unlawful activities stopped. We offer real-time commercial solutions dispensed to you definitively and comprehensively but specifically crafted for you or your business.

Cases

Interflora Inc v Marks & Spencer Plc [2012] EWCA Civ 1501
Starbucks (HK) Ltd v British Sky Broadcasting Group Plc [2012] EWHC 3074 (Ch)
Specsavers International Healthcare Ltd v Asda Stores Ltd [2012] EWPCC 14
Westwood v Knight [2012] EWPCC 14

Your Inner Circle

Philip Radford		Iain Garfield		Jason Lysandrides		Riyaz Jariwalla
Partner & Member		Partner & Member		Partner		Associate

“A man is not to sell his own goods under the pretense that they are the goods of another man…he cannot therefore be allowed to use names, marks, letters, or other indicia…" (Perry v Truefitt) (1842).

Your trade mark, reputation of your business and the quality of your goods and services are all valuable assets, all equally worth protecting, exploiting and enforcing. Letting others use your valuable assets may dilute or even tarnish the attractive force that you have built.

We understand the value of brands and how important it is for you and your business. We provide practical commercial solutions for your specific issue.

Cases

Interflora Inc v Marks & Spencer Plc [2013] E.T.M.R. 11 E.T.M.R. 56
EMI (IP) Ltd v British Sky Broadcasting Group Plc [2012]
L'Oreal v Bellure [2010] C-487/07 R.P.C. 1

Your Inner Circle

Philip Radford		Iain Garfield		Jason Lysandrides		Riyaz Jariwalla
Partner & Member		Partner & Member		Partner		Associate

Domain names are the virtual gateway to millions of businesses wide world. What was once thought to be ‘a waste of money’, domain names are now recognised as a highly valuable asset. They are at the centre of brand development strategies and can increase traffic and visibility of online presence within hours if marketed properly.

The race to register the next million-dollar .com means that valuable names get registered rapidly, often by the wrong person with the intention to hold it to another’s ransom or to frustrate the business of another.

Disputes arising from abusive registrations of domain names (also known as cybersquatting) can be addressed by expedited administrative proceedings governed by the Uniform Domain Name Dispute Resolution Policy, proceedings that a trade mark rights holder initiates before an approved dispute-resolution service provider.

We have over 15 years of collective experience dealing with domain name disputes, drafting formal complaints with approved dispute-resolution service providers, drafting responses to complaints all concerning the recovery or prevention of a domain name.

Your Inner Circle

Jason Lysandrides		Riyaz Jariwalla
Partner		Associate

With the advancements of technology and the speed at which sophisticated scanners and printers are now able to reproduce or imitate an original product, the cases of infringement and counterfeit goods within the marketplace is at its high. Counterfeiting has vastly moved on from imitation handbags and designer clothing. With the costs of 3D printers now becoming affordable, more and more people are taking the opportunity to stand under the coat tails of successful brand owners and their successful brands.

Furthermore, today’s infringers are using powerful computers and techniques to target carefully selected goods that if not detected may impose a health and safety risk to consumers. Examples include imitation alcohol that contain high doses of chemicals that can be deadly; poor quality parts for the automotive and aviation industry, and in the pharmaceutical industry, drugs are being made and sold with the inappropriate levels of ingredient (in some case no or wrong ingredients) which can have a serious risk on consumers who depend on the drugs or are not made aware of ingredients that would otherwise be avoided.

Our solicitors are able to deploy quick anti-counterfeiting measures to prevent the introduction of infringing and counterfeit products from entering into your territory, the UK and even the EU. We also have the experience and contacts with HM Customs and Revenue’s Intellectual Property Authorisation Unit to cease and destroy products as they arrive into UK and EU ports/customs. We have litigators who can apply for an emergency order for an injunction, search order, freezing order or delivery up of products.

Our specialist Intellectual Property Solicitors are able to advance and invoke both the civil and criminal sanctions for infringement of intellectual property rights that counterfeiting involves. Legislation includes, but not limited to, the Trade Mark Act 1994, Copyright, Designs and Patents Act 1988, The Olympic Symbol Protection Act 1995, Goods Infringing Intellectual Property Rights (Customs) Regulations 2004 and the Counterfeit and Commission Regulation (EC) No 1172/2007. Comprehensive and working knowledge of these legislations is key to providing our clients with accurate and focused advice every time.

Cases

L'Oreal v Bellure [2010] C-487/07 R.P.C. 1

Your Inner Circle

Philip Radford		Iain Garfield		Jason Lysandrides		Riyaz Jariwalla
Partner & Member		Partner & Member		Partner		Associate

With the globalisation of commerce and the ability to set up a dot.com business over night, more and more businesses are turning to the internet to source products, often to save money. A parallel import is the importation of goods (that are protected by a patent or trade mark) from the country where the rights owner has already introduced the goods - meaning that the rights have been exhausted.

Owners of products covered by intellectual property rights have the exclusive right to put such products on the market. On the other hand, there is little doubt that once the owner of an intellectual property right has put such goods on the market either himself or with his consent, there is little he can do about further acts of commercial exploitation, such as re-sale, etc., on the domestic market.

If products sold or imported by third parties fall within the scope of patents, trade marks or copyright in this particular country, such sale or importation by third parties is generally deemed infringing.

Cases

Your Inner Circle

Philip Radford		Iain Garfield		Jason Lysandrides		Riyaz Jariwalla
Partner & Member		Partner & Member		Partner		Associate

Coming up with a new brand name, trade mark, slogan or a sign is often easy. However, can you be sure that someone has not beaten you to the finish line and come up with that ‘name’ before you and already started trading!

Sure, you can do a quick GoogleTM search, or WHOIS search to check to see if the domain name is available, or better still a Companies House search (or equivalent) to check if there are any identical companies already trading using the same brand name or trade mark. This is not enough. You still run the risk of infringing someone else’s registered rights in a brand name, trade mark or slogan. One way to be confident that your proposed brand name, trade mark, slogan, or sign is free to use in the course of trade is to perform a trade mark search. 

The search checks the official Registries’ databases for pending and registered trade marks and our expert solicitors can advise you whether to proceed or not proceed with the proposed brand name, trade mark, slogan or sign.

If you are considering applying for a trade mark, a trade mark search can be used to give the applicant of a trade mark an early indication towards the likelihood of the trade mark application succeeding to registration – therefore saving on wasted fees if the application fails on the ground that there exists a conflicting (similar or identical) trade mark already on the database. You may also be close to committing your brand, trade mark, slogan or sign to stationery, signage, packaging and so on, which could all need re-branding if later on it is discovered you are infringing another’s registered trade mark rights.

It is advisable to perform a trade mark search in whichever territory you are seeking protection under or intending to trade under to identify and/or discover whether there are any potential threats, conflicts, risks, bars involved with your application to register a trade mark or use of the brand name, trade mark, slogan or sign.

We are able to perform trade mark searches in over 90 countries across the world. Our trade mark search reports can usually be delivered to you within 24hours from being instructed. 

Your Inner Circle

Iain Garfield		Jason Lysandrides		Edwina Young		Matthew Jackson
Partner & Member		Partner		Solicitor		Solicitor

A trade mark, such as a word or a logo (or both) are essential parts of identifying the goods and services or traders. Trade marks play a vital role in communicating and marketing to consumers. Provided a trade mark can be graphically represented there are a variety of trade marks that can registered, examples include words, logos, shapes, sounds, and 3D objects. Trade marks are territorial and can be obtained on a country by country basis or using an international filing system whereby multiply territories can be secured simultaneously.

The Office of Harmonization in the Internal Market ("OHIM” – responsible for promoting and managing Community Trade Marks (and other intellectual property rights) within the European Community) has recently reported that it has registered more than 1 million Community trade marks to date for traders throughout Europe but also include those organisations based outside of Europe who have an interest in trading within the European Community.

Our solicitors are qualified to represent clients before the UK’s intellectual property office and before OHIM and the World Intellectual Property Organisation (WIPO). Our solicitors have also provided search and strategic filing advice on more than 2,000 trade mark applications. We have also advised and continue to advise SMEs to PLCs on the full range of contentious matters ranging from trade mark oppositions, obtaining a declaration that a trade mark is invalid or should be revoked to registered trade mark infringement and passing off.

Your Inner Circle

Iain Garfield		Jason Lysandrides		Edwina Young		Matthew Jackson
Partner & Member		Partner		Solicitor		Solicitor

A registered trade mark has a basic duration of 10 years from the date it was filed. However, a trade mark registration can be renewed every 10 years for a further 10 year period indefinitely. A trade mark registration that is not renewed will expire and will no longer be afforded a monopolistic right.

Your Inner Circle

Jason Lysandrides		Edwina Young		Matthew Jackson
Partner		Solicitor		Solicitor

In 2012, 88,394 Community trade mark applications where filed, of which 57% were word only applications. This figure has been on a steady climb since 1996 and continues to rise. With the increasing number of trade mark applications, the options to oppose available to third parties is becoming an important part of companies’ police and protect strategy.

When a trade mark application has successfully completed the examination process it is accepted and published in the on-line Trade Marks Journal/Bulletin. It is then open to any third party (an opponent) to oppose the application on either absolute and/or relative grounds. It is also possible to oppose an application for a trade mark for only some of the goods and services.

We have experienced and skilled intellectual property solicitors who have opposed trade mark applications and resisted trade mark opposition proceedings on behalf of SMEs to PLCs. We are well versed with the current rules, legislations and case law to best represent you and your rights.

Your Inner Circle

Jason Lysandrides		Riyaz Jariwalla		Matthew Jackson
Partner		Associate		Solicitor

Even though a trade mark is registered, at any time during its life, the right conferred by a trade mark can be revoked or declared invalid. It is usual for applications for revocation or invalidity to be made to the IPO of the country where the trade mark is registered. However, courts also have jurisdiction to hear claims and applications to revoke or invalidate a registered trade mark. We have specialist litigators that can draft and issue such claims and applications.

For example, a registered trade mark may be revoked if as a consequence of action or lack of action by the proprietor, the trade mark has become generic in respect of the goods and services it is registered for, to illustrate the point, consider the following brands: VELCRO, SELLOTAPE, ESCALATOR, BAND-AID.

or

For example, A registered trade mark may be declared invalid if another identical or similar earlier right exists in a same territory as the registered trade mark. This involves, in particular, goodwill, rights to a name or brand, personal name rights and copyright.

We have successfully acted for clients who are both the rights holder and the party seeking to invalidate or revoke another’s registered trade mark. We have represented our clients before the UK Intellectual Property Office, the Office of Harmonization in the Internal Market, in Alicante, Spain, the Patents County Court and the High Court in London.

Cases

Anheuser-Busch Inc v Budejovicky Budvar Narodni Podnik (Application for Revocation) [2002] EWCA Civ 1534

Your Inner Circle

Jason Lysandrides		Riyaz Jariwalla		Matthew Jackson
Partner		Associate		Solicitor

Applying for a design can be risky. If you do not perform a search before applying you run the risk of losing your fees if the application is not granted. If you have already started using your design you could run the risk of publishing your design before you have sought appropriate protection in other territories across the globe – thus preventing you from obtaining registered rights elsewhere. Strategy is key! Also, if your design gives an identical or similar overall impression to an already registered right you could provoke an action against you for registered design infringement or if your design is registered, an application for invalidity.

It is of course advisable to perform a search of the register (of whichever territory you are seeking protection under) to identify and/or discover whether there are any potential threats, conflicts, risks, bars in involved with your application to register a design. We are able to perform searches and our search reports can usually be delivered to you within 24hours from being instructed.

Your Inner Circle

Iain Garfield		Jason Lysandrides		Edwina Young		Matthew Jackson
Partner & Member		Partner		Solicitor		Solicitor

A design right is a legal registered right obtained by application which affords protections to the overall visual appearance of a product or a part of a product. The Registered Designs Act 1949 and the EU Design Directive (Directive 98/71/EC of the European Parliament and of the Council 13 October 1998) defines a design as:

‘…the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation.’

As such protecting the overall appearance of a product may well be more valuable than the mechanics within which, for whatever reason, cannot benefit from intellectual property protections (lacks novelty, rights have expired, already under a license).

Designs are territorial and can be obtained on a country by country basis or using a European filing system where multiply territories can be filed simultaneously.

Our solicitors are qualified to represent clients before UK’s intellectual property office and before OHIM. Our solicitors have also provided search and strategic filing advice on more than 500 design applications. We have also advised and continue to advise SMEs to PLCs on the full range of contentious matters ranging from oppositions, obtaining a declaration that a design is invalid to registered design infringement and passing off.

Your Inner Circle

Iain Garfield		Jason Lysandrides		Edwina Young		Matthew Jackson
Partner & Member		Partner		Solicitor		Solicitor