Between 2018 and 2020, the football club and JD Sports had an arrangement to fix replica kit prices. In particular, they agreed the following:

• JD Sports would stop selling Leicester City branded clothing online for the 2018/2019 season;
• JD Sports would not undercut Leicester City when it came to online sales for the 2019/2020 season. A delivery charge was applied to the orders, setting aside the company offer of free online delivery for all orders over £70.00; and
• JD Sports would continue to apply the delivery charges by July 2020 for the 2020/2021 season.

The above continued until January 2021.

Arrangements which have for object or effect the prevention or restriction of competition within the UK are strictly prohibited by competition law.

The CMA Executive Office of Enforcement found that because of the club and retailer’s behaviour, fans may have ended up paying more than they would otherwise have done.

Although both parties have now admitted their involvement, JD Sports initially reported the illegal conduct. By doing so, JD Sports received immunity from penalties as part of the CMA’s leniency policy. Such a policy provides immunity from penalties, or significant reduction in penalty, to a business that has been involved in a cartel and who has reported the cartel activity as well as assisted the CMA with its investigation.

As a result of the above JD Sports will not receive a fine for its involvement. On the other hand, the Football Club received a fine of £880,000.00.

The rules around competition law are strict and aim to promote and maintain market competition. This is implemented by regulating anti-competitive behaviour. Our commercial solicitors provide assistance to businesses on issues involving competition law and would be happy to assist you on any related issues.

For further advice and assistance please contact our Commercial team on 01604 828282 / 01908 660966 or email info@franklins-sols.co.uk

One option to parties to settle a claim before going to court is a ‘Part 36 offer’. This is a form of offer used to settle all or part of a dispute between parties in civil litigation, which is governed by Part 36 of the Civil Procedure Rules (CPR).

The Part 36 offer must be put in writing and is required to state whether the offer is to settle either all or only part of the claim. A breakdown of how the settlement figure being offered has been reached is not a necessary requirement to be included in the offer.

If the offeror makes a Part 36 offer that is not accepted and the offeree fails to obtain a more advantageous judgment when the case reaches trial, then generally the offeror will be ordered to pay the offeree’s costs from the date of expiry of the offer. Therefore, if the offer is not accepted, the receiving party of the offer has a significant risk as to costs and interest.

It is important for the Part 36 offer to be clear as to whether it relates to the whole of or part of the claim. If the latter then it needs to be clear as to which part of the claim it relates to so that there is no opportunity for the offeree to be confused. The offeree may require clarification regarding the matter rather than just accepting or rejecting it. If the offer is particularly badly drafted then the offeree may send a “without prejudice save as to costs” or “Calderbank” letter to advise that no offeree could reasonably be expected to accept such a badly drafted offer and make a counter-offer. This puts the pressure back on the offeror to reach an agreement based on the offeree’s clearer terms. The offeree could not rely on the ambiguity of the offer if they did not reply within 7 days of the offer being made to advise that it wasn’t clear enough to be accepted. There is nothing to state within Part 36 that the offeror must provide the requested clarification, however the offeree can request that they do so under CPR 36.8(2), although a refusal to provide clarification will be a factor that the court considers when making the usual costs order.

If the offer is not accepted, it will need to be frequently reviewed to assess whether it should remain on the table or whether it should be revised or withdrawn. Unless it is a time limited offer, the offeree can accept the offer at any time prior to trial unless a notice of withdrawal has been served on the offeree. It is important to withdraw the offer as the case progresses if the offeror’s circumstances change. If subsequent offers are made and the original offer has not been properly withdrawn then the offeree is entitled to accept the original offer regardless of the further offers being made.

Once a Part 36 offer has been accepted, it cannot be withdrawn or revised (pursuant to CPR36.9(1)). This is with the exception of the following circumstances; if the claim is by or against a protected party, then the court has to approve the claim even if it has been accepted by the protected party. In the event that the offer had an obvious mistake in it and the offeree appreciated this at the time of the acceptance, this can invalidate the offer.

Time-limited Part 36 offers came into force under the revised Part 36 on 6th April 2015. The advantage of a time-limited offer is that it puts the offeree under pressure to accept the offer but the disadvantage is that if not accepted within the expiry period, then the offer will be automatically withdrawn and will not have the same Part 36 consequences on the offeree. The court will “have regard” to the offer when assessing the costs in the matter, but no more than that.

For further advice and assistance please contact our Litigation and Dispute Resolution team on 01604 828282 / 01908 660966 or email info@franklins-sols.co.uk

Inheritance tax is an unavoidable reality for many individuals when passing on their assets to loved ones. However, there are legal avenues that allow individuals to minimise this tax burden. One common misconception is transferring property to family members before death. While this may seem like a straightforward solution, it is crucial to recognise the complexities involved and the significance of seeking professional legal advice. This is highlighted by the case of Norma Gibbons, 82, who gave her £1.4 million family home to her daughter Dawn Gibbons for ‘inheritance tax reasons’ and was later kicked out following a relationship breakdown.

In this blog post, we will explore the importance of taking legal advice before transferring property to family members as a means to mitigate inheritance tax.

Understanding Inheritance Tax in the UK:

In the UK, inheritance tax is a tax on the estate of a deceased individual. The threshold for inheritance tax is currently set at £325,000, known as the “nil-rate band.” Any amount above this threshold is normally subject to a 40% tax rate. For those with considerable assets, this can amount to a substantial tax liability.

There is also the availability of the Residence Nil Rate Band where certain conditions are met. Where applicable, a further threshold of £175,000 can be claimed.

Transferring Property to Family in the UK:

Many individuals in the UK consider transferring property to family members in an attempt to reduce their inheritance tax liability. However, there can be many unintended consequences and this process requires careful consideration and adherence to UK legal regulations. Seeking legal advice from professionals such as our team at Franklins Solicitors, is crucial to ensure compliance and prevent unintended consequences.

How can a solicitor help?

Expert Guidance: A solicitor who is an expert in inheritance tax can provide expert guidance tailored to your specific circumstances. For example, our Wills & Probate team has an in-depth understanding of UK inheritance tax laws and regulations, ensuring that you receive accurate and up-to-date advice.

Personalised Strategies: Our legal experts can assess your situation, taking into account your assets, family dynamics, and future goals, to provide tailored solutions that are both effective and legally sound.

Maximising Exemptions and Allowances: Our experienced solicitors have in-depth knowledge of the various exemptions and allowances available for inheritance tax purposes. They will explore every available option, such as the residence nil-rate band or business property relief, to maximise tax savings for your estate.

Structuring Property Ownership: We can guide you in structuring property ownership in the most tax-efficient manner. We’ll consider trusts, joint ownership, or lifetime gifts, ensuring that you protect your assets while complying with UK tax laws.

Peace of Mind: By seeking legal advice, you can have peace of mind knowing that your assets are safeguarded. Our expertise and attention to detail will help you navigate the complex legal landscape, minimising the risk of errors or unintended consequences.

Conclusion:

When it comes to minimising inheritance tax liability through property transfers to family members, seeking professional legal advice is paramount. Our team of experienced solicitors possess the expertise and knowledge to provide you with tailored advice specific to your circumstances.

By engaging with a solicitor, you can ensure compliance with UK inheritance tax laws, explore available exemptions and allowances, and structure property ownership in a tax-efficient manner. This proactive approach not only safeguards your assets but also provides peace of mind, knowing that you have taken the necessary steps to protect your legacy and maximise the value you pass on to your loved ones.

For further advice and assistance please contact our Wills & Probate team on 01604 828282 / 01908 660966 or email info@franklins-sols.co.uk

It is always worth asking around for recommendations. Without one though, most people will start with Google, typing in the question at the start of this blog. Have a look at the firms that come up, consider their websites, and try to get a feel for the firms you find and whether you like the look of them. Ideally, you should look for a firm of solicitors with a “Family Team” – a team that specialises in only family work. You may find firms who specialise in only family work. Be aware though, that means if you want to update your Will or sell your property, which you may well do in the context of divorce, you will need to go to a different firm for that.

Once you have found a firm or firms you like the look of, you need to get in touch with them. This can be by phone, or sometimes via a website chat facility which allows you to message instantly with your details and start the ball rolling, like Franklins does. Quite soon after your initial enquiry though you should be speaking with a real person. Most firms offer an initial meeting, with no obligation to instruct after that. Here at Franklins we offer an initial fixed fee appointment for £195.

Before you speak with anyone though, give some serious thought to the kind of solicitor and firm that you want to work with. You should be trying to get a feel for:

• Attitude – from the moment you start speaking with people at the firm, whether that be the receptionist, the senior partner or the solicitor who would be taking on your matter, try to get a feel for their attitude and whether you feel they represent the right “fit” for you and your family;
• Approach – legal knowledge should be a given – you need to try to get a feel for how your matter will be handled. Most people want to keep things amicable and an aggressive approach is one that can cause problems many years after the legalities have been dealt with. Ask the solicitor why they practice family law and what motivates them and why you should instruct them instead of someone else;
• Affordability – you will want to understand the basis for charges both for the initial meeting and onwards – and overall what the costs are expected to be for what you need the firm to do for you; and
• Aim – a good family solicitor should be able to advise in your first meeting what you should be aiming for, and how you might get there. In time, you will need to go into more detail but if you provide a summary of your financial circumstances there is no reason why an experienced family solicitor should be reluctant to advise in your initial meeting on what are, and are not, going to be important factors when looking at your family finances and how they can be divided.

At the beginning it can all feel rather overwhelming. Remember though that this will be all in a day’s work for the solicitor you instruct and that first contact and first meeting is not going to be nearly as awful as you think if you instruct the right firm and right solicitor.

If you feel Franklins might be the right firm to help you with your divorce, please contact our Family Law team on 01604 828282 / 01908 660966 or email info@franklins-sols.co.uk

‘Texas Guns And Roses’ is a Texas based online store that sells firearms, ammunition related apparel along with flowers. The American rock band, Guns N’ Roses (GNR), has filed a trademark infringement claim against the store for damages whilst alleging the store created its name “for the purpose of confusing consumers into believing that it was connected or associated with, or licensed by, GNR.”

Local newspapers have stated that despite GNR’s numerous attempts of sending cease and desist letters to the store in 2019, the store continues to “intentionally trade on GNR’s goodwill, prestige and fame without GNR’s approval, license or consent”. The store’s attorney has told local news that “There’s never been any confusion and they have no evidence of confusion. This is an attempt to run up costs and burn us out“. However, GNR have requested the store to change its name and pay damages for the alleged trademark infringement.

What is a trademark?  

A trademark is any sign which can distinguish the goods and services of one trader from those of another. A sign can include for example, words, logos, pictures, or a combination of these. A trademark is essentially a badge of origin which is used so that customers can recognise the product of a particular trader. They are therefore closely associated with business image, goodwill and reputation which is demonstrated in the Guns N’ Roses case mentioned above. Amongst many others, top trademarks include Apple, Microsoft, Coca-Cola and Kellogg’s.

Trademark Infringement

The Trade Marks Act 1994 (TMA) implemented the 2008 Trade Marks Directive and the 2015 Trade Marks Directive. A simple explanation of a trademark infringement is where a registered trade mark is used in the course of trade without the proprietor’s consent. The TMA uses the following instances as examples:

Section 10 (1) Trade Marks Act the sign used by the unauthorised third party is identical to the registered trade mark and is utilised in relation to goods or services which are identical with those for which the trade mark is registered.

The sign used by the infringer is:

• identical with the registered trade mark, and used in relation to goods or services which are similar to those for which the trade mark is registered;
• or similar to the registered trade mark and used in relation to goods or services which are identical with or similar to those for which the trade mark is registered.

Section 10 (2) Trade Marks Act in each case mentioned above, there exists a likelihood of confusion on the part of the public, which includes a likelihood of association. In the case of GNR mentioned above, GNR did not want to be associated with the defendant given the nature of Texas Guns and Roses’ business. 

Section 10 (3) Trade Marks Act where the trademark used by the infringer is identical with 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.

To establish infringement, it is necessary to establish the following key elements:

• use of a sign e.g. affix the sign to goods or their packaging, use the sign on business papers and in advertising or offer or expose goods for sale.
• in the course of trade i.e. in the context of any commercial activity with a view to economic advantage, as opposed to for private or domestic purposes.
• in relation to goods or services i.e. use that jeopardises or is at risk of jeopardising one of the essential functions of a trade mark.

Breach of Trademark Law

There are a vast range of remedies available to the proprietor of a registered trade mark if successful in proving trademark infringement. These include:

• damages or an account of profits
• an order for erasure, delivery up or destruction of infringing goods, materials, and articles as appropriate
• an injunction to restrain future acts of infringement
• dissemination and publication of judgment
• contribution to legal costs

 Defences to Trademark Infringement Claim

The TMA, specifically s.11 provides exceptions to trade mark infringement claims which could apply even if the trade mark is already registered. In other words, you may be able to use a trademark and successfully defend an infringement claim. These include the following:- 

• the use of your own registered trade mark for goods/services for which the mark is registered
• the use of your own trademark which is the name and address of the company – this must be in accordance with honest practices in industrial or commercial matters and only applies to an individual’s name and not the name of a company
• the use of signs or indications which concern the characteristics of goods/services e.g. quantity, quality, intended purpose, value, geographical origin, time of production (provided the use is in accordance with honest practices in industrial or commercial matters)
• if the name is for the purpose of identifying or referring to goods or services as those of the registered trade mark, in particular where that use is necessary to indicate the intended purpose of a product or service (provided the use is in accordance with honest practices in industrial or commercial matters)
• use of an earlier trade mark e.g. EU trademark which has already existed prior to the filing of a UK trade mark i.e. in a particular locality

 For further advice and assistance please contact our Business Services Team on 01604 828282 / 01908 660966 or email info@franklins-sols.co.uk

Facts

Alpha Panareti Public Limited (APP) marketed luxury properties in Cyprus and appointed agents and salesmen to market the new build properties to investors residing in the UK. APP coupled this with a mortgage scheme whereby a Cypriot bank (Alpha Bank Cyprus) offered the investors low-interest mortgages denominated in Swiss francs. The properties were advertised as ‘armchair’ investments with the view of letting the properties in return for anticipated rental income to cover the mortgage repayments, specifically due to the stability of the Swiss francs. Unfortunately, economic changes resulted in significant falls in the exchange value of the Cypriot pound and sterling against the Swiss franc. This in turn spiralled up the mortgage costs whilst the properties in which the claimants had invested were incomplete, leaving the investors severely indebted to the Cypriot bank. As a result, the investors did not receive the completed properties or the anticipated rental income.

Mr Andreas Ioannou was a director of APP and the “driving force” behind the company’s scheme, although he had no direct involvement with the investors. The investors, including Mr Barclay-Watt, sought recovery of the sums spent on buying the properties. At first instance, the investors issue proceedings against APP and Mr Ioannou and successfully claimed that APP failed to warn the investors of the risks around the currency fluctuations, but the investors were unsuccessful in a claim against Mr Ioannou as director of the company.

The investors appealed to challenge the decision that Mr Ioannou was not personally liable, specifically on the basis that Mr Ioannou was jointly liable as an accessory to APP’s negligence in accordance with the principles set out in the case of Sea Shepherd UK v Fish & Fish [2015]. Hacon J summarised them as follows: “… in order to fix a joint tortfeasor with liability, it must be shown both that he actively co-operated to bring about the act of the primary tortfeasor and also that he intended that his co-operation would help bring about that act (the act found to be tortious).”

Court of Appeal Decision

The Court of Appeal dismissed the appeal, reiterating that whilst APP had a relationship with the investors and thereby assumed responsibility towards them, Mr Ioannou was not liable to the claimants for the failure to advise them on the currency fluctuation risks and therefore there was no assumption of personal liability. It also held that Mr Ioannou was not an accessory to APP’s negligence in accordance with the principles set out in the above-mentioned case and therefore was not liable to the investors as a joint tortfeasor.

Two-stage test

The Court of Appeal applied a two-stage test from Lifestyle Equities CV v Santa Monica Polo Club Ltd ([2021] EWCA Civ 675).

1. The first stage is to consider whether the individual substantially assisted in the commission of the tort by the company under a “common design” by both parties. In other words, whether the individual’s participation and conduct in the wrongful act was sufficient to consider them a joint tortfeasor.
2. The second stage is to consider if the director’s position afforded the individual ith a defence. Lifestyle Equities confirms that an individual may have a defence by virtue of their directorship status if their conduct amounts to no more than carrying out their constitutional role in the governance of the company. Similarly, a director will not be treated as a joint wrongdoer if the conduct in issue merely consists of voting at board meetings (MCA Records Inc v Charly Records Inc [2001] EWCA Civ 1441).  

In Barclay-Watt, the conditions specified in Fish were not met. In particular, the Court held there was no “common design” as it was APP that was marketing the properties to the investors and the claimants contracted with APP. In other words, APP committed the tortious acts and not Mr Ioannou personally. As Mr Ioannou was not personally liable, the court did not need to consider the second stage of the test. The Court of Appeal concluded that to allow the claim would lead to an “unduly wide view of the personal liability of directors”.

Conclusion

Whilst the term ‘separate legal personality’ is still a fundamental principle of Company Law, the Court of Appeal made it clear that the assessment of joint liability is highly fact specific. It also emphasised the court’s reluctance to impose personal liability on individuals acting on behalf of a company.

For further advice and assistance please contact our Business Services Team on 01604 828282 / 01908 660966 or email info@franklins-sols.co.uk

The dispute between the two personalities began in 2019 when Coleen Rooney accused Rebekah Vardy of leaking posts from her private Instagram account to The Sun. Vardy subsequently sued Rooney for libel in 2020 and the case was heard in May 2022. Unfortunately for her, Vardy’s claim was dismissed by the court on the basis that Rooney’s statements were substantially true. The case was widely relayed by media as the parties are what the British media called “WAGs” (Wives and Girlfriends of high profile sportsmen) and, because of the steps taken by Rooney to investigate, the case became popular and known as the “Wagatha Christie” case.

The BBC reported that following her defeat in July 2022 when the case was dismissed, Vardy decided to trademark the phrase “Wagatha Christie” and applied for it to be registered in the UK in August 2022. The trademark was then officially registered in April 2023 and includes everything from broadcasting to beauty lotions to stationery, jewellery or even fashion design.

In simple words, a trademark encompasses a wide range of different distinguishing signs such as any words, phrase, symbol, design or a combination of all of these that identifies a good or service. Registering a trademark provides the owner with an exclusive right to use the registered trademark and it can be licensed to someone else in exchange of payment. The owner of the trademark will also have legal certainty in the event of dispute.

By registering the “Wagatha Christie” trademark, Vardy managed to pay off her legal costs from the trial as it was reported that the court ordered her to pay 90% of Rooney’s legal fees of circa £1.5million. This is because anyone who wishes to use the expression in a commercial way will have to get Vardy’s permission and pay her and this dispute was not only reported in the news, it was also adapted into a play and a TV show called “Vardy v Rooney: a courtroom drama” on channel 4.

This is a great example of how registering a trademark could be useful in protecting its owner’s rights but also turn out to be quite lucrative.

For further advice and assistance please contact our Buisness Services team on 01604 828282 / 01908 660966 or email info@franklins-sols.co.uk

In Bathgate v Technip UK Ltd [2022] EAT 155, the Scottish Employment Appeal Tribunal (EAT) held that section 147 of the Equality Act 2010 does not allow a qualifying settlement agreement to settle future claims that are unknown to the parties at the time of entering into the agreement. In other words, a settlement agreement cannot waive future claims that have not happened yet.

In the aforementioned case, Mr. Bathgate accepted voluntary redundancy and signed a settlement agreement which provided for an enhanced redundancy payout and notice payment. In addition to these payments, the agreement referred to a potential “Additional Payment” to be paid at a later stage. The Additional Payment was to be calculated by reference to a collective agreement. However, the collective agreement predated age discrimination legislation and its terms stated that the payment would only be made to employees who had not yet reached the age of 61.

Despite Mr. Bathgate being 61 at the time of signing the agreement, he was under the impression that he was due to receive the Additional Payment. When his employer decided not to pay the Additional Payment to employees who were 61 or over at the time of their dismissal, Mr. Bathgate brought a claim of age discrimination.

The settlement agreement between the parties provided that the terms were in full and final settlement, and this included waiving claims for direct and indirect age discrimination under the Equality Act 2010. The employer therefore submitted that Mr. Bathgate had compromised his right to pursue a claim and argued that Mr. Bathgate’s age discrimination claim has already been validly settled under the terms of the settlement agreement. The Employment Tribunal sided with the employer and rejected Mr. Bathgate’s claims.

Mr. Bathgate appealed the tribunal’s decision and argued that as he did not know of the age discrimination claim at the date of signing the agreement, he was unable to waive the right to bring a future claim to the tribunal. The appeal was allowed.

The employer’s reliance on the fact that age discrimination complaints had been included in the long list of claims being waived by way of the Settlement Agreement was not allowed. In other words, it did not mean that this particular age discrimination complaint had been identified in the settlement agreement. The EAT reiterated the provisions of s. 203 of the Employment Rights Act, specifically that settlement agreements should only be able to settle a particular complaint (s.147 of the Act) that has already arisen between the parties. Mr. Bathgate could not be expected to sign away his right to claim age discrimination before he knew whether he had a claim or not.

Although such a strict interpretation may be inconvenient where both parties wish to avoid future claims, the Parliament did not consider this desirable, and it had legislated to prevent it. 

 Implications and practical considerations

Although the decision in Bathgate v Technip UK Ltd and others was handed down by the Scottish EAT, the case creates a binding precedent for Tribunals in England and Wales. In light of this recent development, employers should be cautious that settlement agreements may not always achieve the desired ‘clean break’ outcome. To mitigate potential litigation risks concerning settlement agreements, employers should explicitly set out the circumstances that have led to the settlement agreement and capture any specific complaints in as much detail as possible. In any event, the employer is still left with the risk of an employee bringing a claim that exists outside the scope of a settlement agreement. Therefore, in practice, it is very unlikely for there to be a significant change in the way settlement agreements are drafted.

 Nonetheless, an employer may still wish to follow practical steps to avoid future litigations concerning settlement agreements. These include seeking a warranty from the employee to confirm that there are no additional claims that the employee is aware of and has no intention of bringing any additional claims in the future. It may also be prudent to resolve any contentious points between the parties prior to entering the settlement agreement so as to avoid the possibility of any future dispute. This includes specifying details of payments and any conditions attached to it to avoid any confusion at a later stage. In addition, if there is a gap between the employee signing the settlement agreement and the employee’s termination date, it is recommended that the employee signs a reaffirmation letter on or shortly after the termination date to re-confirm that they waive the claims specified under the agreement.

For further advice and assistance please contact our Employment Law team on 01604 828282 / 01908 660966 or email info@franklins-sols.co.uk

Martin Hayes, the founder of Craft Beer Co, set up in Clerkenwell in 2011 was surprised to hear that a £16 T-shirt was on sale with his pub’s name in graphic print. Martin pointed out the use of its name to M&S in a tweet, attracting the public’s attention immediately, especially since the Colin the Caterpillar feud between M&S and Aldi. M&S responded to confirm that they have removed the item from sale while the accusation is being investigated.

A M&S spokesman said: “We take intellectual property very seriously and, while the t-shirt was designed in good faith, we’ve taken the decision to remove the product from sale so we can investigate further.”

Martin confirmed to the BBC that Craft Beer Co will not be taking any legal action and confirmed “I’m not angry about it, but it is a little annoying”. He also added “We’re a relatively small business so I don’t think we’ll be taking on a PLC. This isn’t Aldi versus Marks and Spencer“.

Aldi, who lost the infamous public legal battle with M&S after being accused of copying the M&S’s iconic ‘Colin the Caterpillar’ trademark, could not resist joining in on the tweets. Despite Aldi reaching a confidential settlement out of court with M&S, the German retailer amusingly responded to the Craft Beer Twitter campaign by tweeting “OH HOW THE TABLES HAVE TURNED.”

Passing Off

A claim in passing off is about stopping the infringer from selling their goods or services by making unfair use of the claimant’s reputation. A common scenario is where the defendant adopts some mark, sign or other distinguishing feature; for example the appearance of the packaging of the goods which customers associate with the claimant. They use this, or something confusingly similar to it, for their own goods or services, with the result that customers are misled into thinking they are buying the claimant’s product. To establish this right of action, the claimant must show three elements often referred to as the ‘classic trinity’ first established in the House of Lords decision of Reckitt & Colman Products Ltd. v Borden Inc. [1990] 1 WLR 491 (also known as the Jif Lemon case). The three elements are:-

1. Goodwill
2. Misrepresentation
3. Damage

Goodwill refers to the reputation of the business whereby the goods or services are recognised and distinguished from competitors e.g. the plastic lemon in the Jif Lemon case mentioned above. The distinguished feature can also be a name, logo, shape, style or packaging e.g. the classic Coca-Cola bottle.

The second element is misrepresentation leading to confusion. The defendant misrepresents his goods or services, either intentionally or unintentionally, where the public may have the impression that the offered goods or services are those of the claimant. There must be a misrepresentation made by the defendant during trade. In the Jif lemon case, the misrepresentation was the use of the plastic lemon. In most passing-off cases, there is a deliberate attempt by the defendant to ‘ride on the back’ of the claimant’s success.  A well-known example is the Colin the Caterpillar case also referred to above, where M&S claimed that the Cuthbert cake product allowed Aldi to “ride on the coat-tails” of M&S cake’s reputation. It is not enough that there is confusion between the claimant’s and the defendant’s product. Customers must believe that the defendant’s products are associated with the claimant and must lead to confusion of customers or potential customers.

The third element is that the claimant must show damage or the likelihood of damage. The main types of damage are loss of profits or loss of reputation. It follows that if you make a potential customer or recipient of your services think you are another party, that person has a right to claim compensation for losses suffered by the deception. Remedies for passing off can include an injunction, damages and/or an order to cover up marks or repackage. A claim in passing off is now often used as an additional remedy to trademark infringement claims, as it is more flexible in approach than a trademark claim.

Evidently, accusations in relation to the use or misuse of logos has become an increasingly litigious area over the last few years. Unfortunately, there is no one size fits all approach when it comes to dealing with copyright infringements. However, there are several key brand protection strategies for brand owners to consider:-

• ensure you have adequate intellectual property protection: alongside registering your trademark and designs, brand owners should ensure appropriate measures are in place to protect their domain names, app icons and other elements of a brand’s online presence.
• monitoring the market: brand owners should consistently monitor the market, especially the online market for unauthorised use of trademarks and/or product names.
• Swift Action: brand owners should be prepared and equipped to take action at the earliest opportunity and therefore it is imperative that they are familiar with the various notice and takedown procedures available e.g. cease and desist letter as well as collating documentary evidence of alleged infringements to substantiate any claims. In some instances, it is more appropriate to send correspondence i.e. letters of claim before formally commencing proceedings, with a view of resolving disputes in this way and thereby avoiding recourse to court proceedings.
• the power of social media: be cautious of getting caught in a social media battle, while many businesses may see litigation as the only option, it is important to consider with whom you are dealing with and the potential fallout it may cause.

For further advice and assistance please contact our Business Services Team on 01604 828282 / 01908 660966 or email info@franklins-sols.co.uk

Sanctions can arise following a court order as a result of an unless order or imposed by the rules or practice directions due to a failure to take a particular step as directed. An automatic sanction can be imposed following a breach of the Civil Procedure Rules. This would encompass breaches in relation to court documents which have not been served within the specific timeframe. Alternatively, other sanctions can be imposed on a party and the court can either specify a sanction or make an unless order.

If a sanction is imposed on a party, then it should not be ignored and either an agreement is reached between the parties or an application for relief can be filed to the court.

a. Reaching an agreement

One of the options a party has would be to try and reach an agreement with the other side. This would be done by way of proposing a consent order for relief and usually offer to pay the other side’s costs for considering the order. A consent order does not necessarily have to deal with liability for costs. However, when a party is trying to agree an order for relief, it would be wise to consider conceding paying costs.

Once the consent order has been approved by both parties, then the court will then consider it. However, it is important to note that the court is not obliged to approve the order, although it is unusual for the court to refuse.

b. Application for relief

Following the Jackson/civil litigation reforms in April 2013, there has been a change in the court’s case management culture in that the court became less tolerant when it comes to delays and breaches of rules.

Sanctions are dealt with in Part 3 of the Civil Procedure Rules. According to rule 3.9, the court will consider various elements when deciding on an application for relief from sanction. This includes the need for litigation to be concluded efficiently and at proportionate cost; and the need to enforce compliance with rules, practice directions and orders.

When making an application for relief from sanctions, a party applies for a court order and follows the procedure under Civil Procedure Rules 23 and Practice Directions 23A.

When it comes to relief from sanctions, parties must be conscious not to either unreasonably withhold consent nor to concede unnecessarily.  

Hopefully, you will never find yourself in a position where you need to make this application. If however you do, it is best to act promptly and quickly in order to minimise the damage.

For further advice and assistance please contact our Litigation and Dispute Resolution Team on 01604 828282 / 01908 660966 or email info@franklins-sols.co.uk