The Scope of an Expert’s Authority: A brief note on Great Dunmow Estates Ltd v Crest Nicholson Operations Ltd [2019] EWCA Civ 1683

8th November 2019

The two parties (Great Dunmow Estates & Crest Nicholson) were in dispute over a specific term in a sales contract relating to the correct way to determine the value of a property. Being unable to resolve this matter (between themselves or in the lower Courts), this matter recently appeared before the Court of Appeal (2019 – EWCA Civ 1683). An expert had been appointed in order to provide a valuation to the disputed land. Pursuant to Clause 6.2 of the Contract, the “Valuation Date” had been defined as the “Challenge Expiry Date or if later, the date of the Valuation”. The former (Challenge Expiry Date) had expired and so, the Expert considered the Valuation Date to the the correct date for the valuation. The Parties Surveyors then produced a Statement of Agreed Facts which note the Valuation date was the date of the Valuation. At the point of instruction, Counsel was asked to consider a peripheral point when he determined that the expert’s literal interpretation of the clause was in fact incorrect. On learning of this, the Claimant applied to set aside the valuation on the basis that the Expert (the Valuer) did not have the jurisdiction to determine the contractual valuation as this was a point of law and so, should only be determined by the Court, not by an expert. The lower Courts agreed with the Claimant that the Expert had no jurisdiction to make a binding decision on the construction of the clause in the contract and determined that the Valuation Date should in fact be the Challenge Expiry Date, however, given that the Parties had agreed to be bound by the Statement of Agreed Facts, the lower Courts considered that it had to be correct tha the Valuation Date was the date of the valuation. This decision was appealed. On appeal, the Court of Appeal held that the Judge was correct in determining that the Expert did not have the exclusive jurisdiction to decide the valuation date issue. Patten LJ confirmed in his judgment that “[t]he balance of authority is… now firmly in favour of preserving access to the courts to determine this legal issue going to jurisdiction”. This case is a reminder of the extent of the expert’s jurisdiction and that ultimately the courts will have the final say when determining the construction of a contract (and rightly so). However, if the parties wish or intend for the expert to be the sole arbiter, then any contractual agreement must be clear in defining the extent of the expert’s role.

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Put your red shoes on…

15th February 2019

Christian Louboutin, Christian Louboutin SAS v Van Haren Schoenen BV C‑163/16 Background: Christian Louboutin applied for the trade mark as pictured, with respect to “footwear other than orthopaedic footwear” The mark is described as follows: ‘The mark consists of the colour red (Pantone 18‑1663TP) applied to the sole of a shoe as shown (the contour of the shoe is not part of the trade mark but is intended to show the positioning of the mark)’. In 2012, Van Haren, which operates shoe retail outlets in the Netherlands, sold high-heeled women’s shoes with red soles. Then, on 10 April 2013, the registration was amended to cover ‘High-heeled shoes (other than orthopaedic shoes)’. In 2013 Christian Louboutin issued proceedings on the basis that Van Haren had infringed the mark. The Netherlands judge hearing the dispute issued a default judgment in favour of Christian Louboutin. Van Haren challenged this decision on the basis that the mark was invalid because shape gave substantial value to the product. The court deferred to the Court of Justice (CJEU) for a preliminary ruling – and the CJEU concluded that trademarks must be interpreted as meaning that a sign consisting of a colour applied to the sole of high heeled shoe does not consist exclusively of a shape. On that basis the trade mark is valid, and Van Haren infringed the registered trade mark. Our comment: We are not so sure that this is the end of the road for Louboutin’s red sole mark – but if you have a particular question regarding obtaining trade mark protection for colour marks then please do not hesitate to contact us.

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Interesting IP Decisions…

5th February 2019

Luen Fat Metal and Plastic Manufactory Limited v Jacobs & Turner trading as TRESSPASS [2019] EWHC 118 (IPEC) Background: Luan Fat Metal and Plastic Manufactory Limited (LFMPM) owned a UK Trade Mark Registration for FUNTIME, FUN TIME, FUN-TIME covering “Games, toys and playthings; electronic games”. LFMPM also owned an EU Trade Mark registration for FUNTIME for the identical goods listed above. The EU registration included a note: “The trade mark was inherently distinctive, but evidence was submitted to show that, by the date of application, the mark has in fact acquired a distinctive character as a result of the use made of it.” LUMPH alleges that Jacobs & Turner use of a number of signs infringed its marks – as pictured – so Douglas Campbell QC had to decide on the following questions; Were the trade mark registrations for FUNTIME distinctive and valid either inherently, or if the marks had acquired distinctiveness through use? Whether Jacobs & Turner use of the words FUN TIME amounted to trade mark infringement? Did the FUNTIME marks have a reputation in the UK? Campbell found the answer to be “yes” to all these questions and the reasoning is summarised below. The FUNTIME mark has a low degree of inherent distinctiveness, because it does make an indirect allusion to a characteristic of the goods. In view that the mark was found to be distinctive, the test for acquired distinctiveness wasn’t examined to any length other than reference was made to number of different retailers that sold FUNTIME toys including Amazon, Morrisons and The Entertainer. Consideration was given then to TRESPASS mark being present on the packaging and if that could prevent the likelihood of confusion.  Campbell did not think so and concluded that even if TRESSPASS was well known the average consumer would still probably have thought that FUNTIME was owned by TRESSPASS, or at least some economic connection between the two.  Campbell concluded that there was likelihood of confusion and therefore the requirements for infringement had been met. Campbell also concluded that FUNTIME marks do have a reputation in the UK and the use by Jacobs & Turner gave rise to a link in the mind of the average consumer – and this use causes detriment to the distinctive character of the FUNTIME mark and took unfair advantage of the distinctive character without due cause.  Comment: This is an interesting recent case for several reasons, as it shows the importance of clearing a potential mark for use and /or registration before going to market. A clearance search will flag up any potential obstacles, because the use of a house mark does not necessarily prevent or limit any likelihood of confusion on the part of the public. If you have any questions or would like further information about clearing potential signs, then please contact me via email at [email protected]

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On the (Trade) Mark about Brexit…

5th February 2019

If 29th March 2019 presents a ‘No Deal’ scenario, registered European trade marks and registered community designs will continue to have effect in the UK. These registered rights will be duplicated onto the UK registers and enforceable on that basis. They will be treated as UK rights and therefore will become subject to renewal requirements in the UK. They will be treated as independent rights from the EU and can be assigned and licensed on that basis. They can be used as a basis for proceedings either before the UKIPO or the courts. Any business/ owner not wanting a cloned UK right can opt out. Please also note that a registered EUTM will continue to be valid in the remaining EU member states. Pending European Trade Mark Applications on 29 March 2019 On exit day the applicant of a pending European trade mark application can make a new application for a UK trade mark application and the UKIPO will recognise filing dates and claims to earlier priority and UK seniority recorded on the corresponding EU application. There is a period of nine months from 29 March 2019 to make such an application. If the UK and European markets are increasingly important to you, then we can help you consider the best filing strategies available to you. Feel free to contact us on by emailing [email protected] or telephone 0116 268 8963.

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Recent changes to UK Trade Mark law…

31st January 2019

Here are the key changes you need to be aware of – and we can help with… Graphical Representation When filing a UK trade mark application, it is no longer a requirement to provide a visual/graphical representation of the mark – instead an applicant can provide MP3 / MP4 formats. The reasoning given to this is to make it easier to apply for sound and movement marks. This means that the representation of the mark can be filed using one of the following formats: – Shapes: OBJ, STL and X3D – Figurative, pattern, colour: JPEG – Sound: MP3 – Motion, multi-media and hologram: MP4 Limitation of this type of application is that the application can only be made online and this change in practice applies to UK trade mark applications only. A Madrid Protocol Registration based upon UK trade mark application/ registration still requires a graphical representation.  We can assist with filing strategies – and if a Madrid Protocol is the best way forward when considering trade mark protection outside the UK. Absolute Grounds objection extended The absolute grounds objection that the shape of the goods cannot be accepted as trade mark – if the shape is a result of a technical function, adds substantive value, or as a result of the shape itself – has now been extended to cover any characteristic which is intrinsic to the goods applied for. Going forward this will be an interesting ground of refusal and I suspect there will be very inventive arguments raised to overcome such an objection. Notification of Earlier Rights The UKIPO will only notify an applicant of a new trade mark application of live registered marks that are identical or similar to mark that you are applying for.  Previously the UKIPO would notify the applicant of marks that were registered but have since expired. Beware though, it is possible to resurrect some marks that have been expired within the last 12 months of the last renewal date – and these registrations can then act as a potential bar to your use and registration. We can help with conducting a full trade mark clearance on your behalf, before filing a new trade mark application, to ascertain any potential obstacles to your use and/or registration. Opposition Proceedings The onus is upon the owner of an earlier trade mark registration to file an opposition against a later filed trade mark application. Before filing an opposition, the owner of the earlier trade mark needs to consider if its registered rights have any vulnerabilities.  The owner of the earlier registered right needs to be aware that if its mark has been registered for longer than five years a third party could challenge the registration on the basis of non-use – with a view to having the mark revoked. If you are looking to challenge a new trade mark application and your registration is older than five years, it is vital that you can prove use of your mark or give proper reasons for non-use. Plus, the calculation of this five-year period regarding filing potential oppositions has changed too. Again, we can help with this and advise […]

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Expanding our Intellectual Property…

28th January 2019

Leicestershire’s newest niche commercial law practice has appointed a specialist Intellectual Property (IP) lawyer to further boost its expertise in this burgeoning sector.   Sarah Dacre (age 45) joins city-based Southall Hathaway & Co LLP as an Associate and is a leading Chartered Trade Mark Attorney and European Trade Mark and Design Attorney with some 20 years experience both domestically and internationally.   Her experience is both varied and exceptional and includes senior strategic management of Barclays Bank’s trade mark portfolio and associated foreign agents, plus as a trade mark advisor for global alcoholic beverage company Diageo, as well as IP Officer for the major international pharmacy-led health and beauty company Boots.   Sarah explains: “My career to date spans both the private sector and in-house, so I’m well versed in understanding corporate risk appetites, plus advising (and educating) top directors on maximising their business assets and the likes of co-branding and joint venture strategies, but especially brand protection and enforcement – including both clearance and registration.   “But now is the right time to get in at the start of something new, fresh and forward thinking, because Southall Hathaway& Co is that rare breed of niche practice that concentrates on what it’s good at and where it can make a real difference. I have a real and personal opportunity to input and contribute to the growth and direction of the company and further develop myself, as our close knit IP team aims much higher in this increasingly important/diverse area of law.”   The firm’s owner and managing partner, Stuart Southall (who is an IP litigation specialist himself and an Allied Member of the Chartered Institute of Trade Mark Attorneys), adds: “Sarah is a kindred spirit and I have no doubt her considerable knowledge, drive and determination can help make Southall Hathaway & Co a major player in Intellectual Property law. What she doesn’t know about the complexities and business worth of designs, copyright and trade mark security isn’t worth knowing – and her appointment greatly excites me.   “With the surge in technological advances, IP has never been more important – because apart from properly protecting your assets it maximises business opportunities and can also generate further and additional revenue streams. Trade Marks can also have exponential value, if used correctly, through licensing and franchising, plus being used as security for raising capital.”

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Exciting new re-brand…

22nd November 2018

Leicestershire’s newest niche commercial law practice is rebranding as it seeks to further establish its own real identity. As of 1st January 2019, ehl Commercial LLP (which only recently separated out from long standing practice Edward Hands and Lewis Limited following the acquisition of the commercial arm by Stuart Southall) will become Southall Hathaway & Co LLP to boost growth and direction and help eliminate any confusion of the two firms. The name change references both surnames of the new firm’s partners – Stuart Southall as owner, Managing Partner and Member, plus Emeritus Senior Partner Jason Hathaway – as it continues to build an exceptional team of specialists against much larger competition. Stuart Southall explains: “Whilst I am very proud to have been a Partner at Edward Hands and Lewis and the reputation that firm has, in order to assist this new firm in growing and forging a standalone identity, this is a natural progressive step – and what better day to change your name  than 1st January. I very much believe that it will further assist us in attracting the right calibre of clientele and finest legal talent around, so that we can grow and develop quickly as a bespoke and boutique commercial practice. “To some extent, it also adds a  legacy to my grandfather’s firm Southall & Co (where my father also worked and assisted in developing my love for the law) which for 50 years, prior to his death, was a leading  Midlands practice whose standing and reputation is still recognised and respected by clients and professionals alike.” Mr Southall adds: “Whilst our name may be changing, the ethos and principles that we have remain the same and we will still be seeking to challenge the norm and the traditional perception of lawyers and law firms. Our dynamic team are all endeavouring to be leaders in their fields and to do this they only practice in their area of law. This helps us, as a firm, drive forwards to offering quality, bespoke and practical advice at competitive prices.”

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New Leicester law firm proving good sports…

11th September 2018

LEICESTER’S latest law firm is enjoying a summer of sporting success after forging strong relationships with some leading, regionally-based but nationally relevant sports brands. EHL Commercial LLP, which has recently broken away from long standing practise Edward Hands and Lewis Limited to create a separate arm, counts sports law (through Managing Partner Stuart Southall) as one of its specialisms – and is the preferred legal partner for the Loughborough-based and government-backed charity Youth Sport Trust (YST), as well as the Leicester Falcons American Football team, who play their matches at Hinckley’s Leicester Road Stadium. Guy Kersey, Chairman of the Leicester Falcons, explains: “EHL and the Falcons share a desire to continually develop, innovate and drive for success. They’re ambitious and want to be the best in their field, just like us, so there’s a natural synergy and the same ethos/approach. Stuart and his team have provided continual legal support throughout this season, such as assisting with contracts, properties and structure of our organisation. “Helping us set up as a professional club has really moved us forward and positioned the Falcons as one of the best outfits in the country. We’re now at the forefront our American Football’s rapid expansion in Britain – and with EHL Commercial we have the perfect partner to grow and win with.” For Youth Sport Trust, EHL handle anything corporate or commercially orientated (including contracts, franchises, etc) and they undertake it as part of their corporate social policy. It’s prestigious work too, with YST playing an increasingly important role in respect of identifying and encouraging sport to be considered as a key component in today’s society, plus having very strong links to every governing sporting body within England. Kate Platts, Commercial Director at the YST says: “We are absolutely delighted to be working with EHL Commercial as our preferred legal partner, because they have proven their commitment to, and understanding of, the landscape in which the Youth Sport Trust operates. Their expert advice and support will be invaluable as we enter a new strategy era with a heightened focus on organisational sustainability and diversification of income.” Stuart Southall, Managing Partner of EHL Commercial LLP, adds: “Our excellent relationships with the Leicester Falcons and the Youth Sport Trust are helping us further comprehend and master the burgeoning sporting arena and the particular nuances associated with being a specialist sports lawyer. It’s big business and the role now covers a variety of matters – everything from contracts, tort, intellectual property and image rights, brand protection, representation (for agency and employment matters) personal injury, media deals, tax issues and defamation, etc.” Pic shows l to r: Guy Kersey (Chairman Leicester Falcons), Stuart Southall (Managing Partner EHL Commercial), plus Falcons players Richard Swain, Taylor Brown, Matthew Neville, Ryan Cummings, plus Vlad Maximov (front).

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SO HOW BLURRED IS “BLURRED LINES”:

14th August 2018

In a west coast American Court, a jury determined that the 2013 hit “Blurred Lines” infringed the melody of the 1977 Marvin Gaye hit “Got to give it Up”. The US legal system insofar as copyright is concerned, is hugely different to the UK. To qualify for copyright protection in the US, it is a pre-requisite that the works are registered with the US Patent & Trade Mark Office. In the UK, any qualifying works will obtain automatic protection. Under UK law, qualifying works are defined as “original works capable of being represented in a literary, artistic, musical, dramatic format and/or sound recordings, films, broadcasts or cable programmes and/or the typographical arrangement of published editions”. It is rare (to the point of almost being uncommon) for civil matters to be determined by a Jury as was the case here. If this dispute had been brought within a Court of England and Wales, it would have been determined by a Judge. As such, would a Judge hearing the same evidence have reached the same conclusion as the jury did? Copyright law is governed by the Copyright, Designs and Patents Act 1988 (“CDPA”). Given the nature of this dispute, the Court would have undoubtedly been directed to Section 17(2) CDPA which states “Infringement of copyright by copying..copying in relation to a literary, dramatic, musical or artistic work means reproducing the work in any material form. This includes storing the work in any medium by electronic means”. What this means is UK law determines infringement on a qualitative basis and not a quantitative basis and so, irrespective of whether or not the infringement is a few seconds or an undetermined length of time, the Court may well take the view that infringement will have occurred. It is understood that Pharrell Williams admitted in Court that he was a fan of Marvin Gaye and that his music [regularly] influenced him but had not in this instance. It may well be the case but what the Court would have to consider is whether or not Pharrell’s sub-conscious was ‘alive enough’ to create a rhythm / beat that was qualitatively similar to Marvin Gaye’s hit? Whilst no musician, it appears if you play the “Blurred Lines” melody over the “Got to give it up” melody, musically, in my view, it doesn’t fit. If this is the case, how was the Jury able to find that the same infringed? Based on the [limited] reporting to date, it appears that the finding was based on the conceptual basis that the songs “felt” the same. Perhaps Pharrell’s admission of wanting to pay homage to Marvin Gaye is what persuaded the jury. What is interesting to consider is whether or not a Judge determining this matter would have come to the same decision when applying the rules and the appropriate legislation. My view is that the decision would have found in favour of Williams and Thicke and not the Gaye family. Whilst the outcome itself is prejudicial to Pharrell Willams and Robin Thicke (in that they have to pay around $7,000,000.00 to the Gaye family), it is the implications of […]

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Brexit – How will it effect your business’ branding?

14th August 2018

The Issue In March 2019 the UK will leave the European Union. The effect of this being that the UK Parliament will regain sovereignty and the UK will be dependent on domestic legislation. In order to protect a brand, business may look to register their intellectual property (IP) in order to protect it. Currently, it is possible to register a trademark within the European Union. The effect is that a trade mark can be protected in multiple Member states. Post-Brexit there are questions as to how IP rights such as trademarks will continue to be protected, such as: How will IP rights which have already been registered, continue to be protected in (1) EU rights in the UK and (2) UK rights within the EU? What will the process be for ensuring protection throughout the UK and the EU? How will parallel imports be affected? This has already been in the news this week surrounding the ‘Schweppes’ brand and how such IP rights may be exhausted. What the EU wants On 6 September 2017 the European Commission released its comments on how it wishes intellectual property to work post Brexit. The paper called ‘Intellectual Property Rights (including geographical indications) sets out five general principles that the Commission wish to include  in order to create certainty. These are: Automatic recognition of IP rights in the UK – following the break from the EU, there will be an automatic division of IP rights. The UK and the EU, therefore, are to have corresponding registered rights; Ongoing applications entitled to keep benefits – at the point of leaving the EU, the applicant should be entitled to keep the benefit of any priority date when applying for equal rights within the UK; Entitlement to Supplementary Protection Certificate (or an extension) – this applies to pharmaceutical or plant protection products where the active ingredients are patented, the SCC therefore makes up for any delay in using the patent. The Commission’s position is that this should continue post-Brexit with an equivalent right in the UK; Legal protection of databases – Rightholders of databases should continue to enjoy protection in Member States under Article 7 of Directive 96/9/EC; and Exhaustion of rights – IP rights exhausted prior to the withdrawal date shall continue to be exhausted in both the EU and the UK post Brexit. The Commission also wish for the conditions concerning IP to be those defined by EU Law. What steps can your business take to prepare? Register IP rights – when protecting branding it will be necessary to consider where it needs to be protected. Post-Brexit it is likely that the UK will implement some form of system that allows for European trade marks to either have a new application for corresponding rights within the UK or convert its current rights. If your business only intends to use a mark in the UK, then it would be simpler to register the mark solely within the UK. The UK will remain a member of the World Intellectual Property Organisation (WIPO), therefore if your business intends to use a mark in the UK, across the EU and potentially further afield, using WIPO to […]

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