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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12th September 2019

WHAT HAPPENS TO YOUR IPR WHEN (IF) BREXIT HAPPENS? Trade Marks Currently, whilst the UK is a member of the EU it is possible for UK Companies (including partnerships, LLPs and sole traders) to apply for and obtain a Community Trade Mark (or a European Union Trade Mark as they are now known). The Community Trade Mark (“CTM”) enables the proprietor to secure registration protection in each member state in one ‘swoop’ rather than making 26 independent applications. 26 derives from the other member states, as it is assumed that the applicant would have secured protection on a domestic level in the first instance, albeit this is not always the case. In circumstances where the UK leaves the EU, then technically, any trade mark owner who has failed to obtain a “domestic” Mark within the UK will lose the rights and privileges afforded to trade mark owners. Of course, it is entirely conceivable that nothing will happen. CTMs are currently registered at the European Patent Office (a non-politicised, non-EU organisation) and so, you could argue that nothing would happen because the UK isn’t leaving the EPO. This of course, is unlikely to be the position. It has been stated that any non-UK trade mark that doesn’t have a reciprocal registration within the UK will not have the benefit of being able to rely upon its Community registration. However, as a means of obviating the ambiguity surrounding this, the UK Government confirmed in February this year that EU Trade Mark owners would have a 9-month period to convert their Marks (into UK marks). As a Mark owner (and in circumstances where you trade with the EU and/or have a significant online presence), it is sensible to assume that the EU will impose a similar ‘grace period’ on any UK Mark holders that haven’t secured a European Union Trade Mark. If owners fail to do so (in either way of registration) then it is likely that they will lose the benefits of the registered trade mark (“RTM”) and so, steps should be taken in order to try and secure a EUTM as quickly as practicable. Of course, you don’t need to have a registered trade mark in the UK. The UK is a common law jurisdiction and so, trade mark owners can rely upon the tort of passing off without the need to register the Mark and although such protection is sufficient, it is not as sufficient as holding a Trade Mark Registration Certificate as the burden is much more on you as owner to evidence the “trinity” (compared to simply advancing the registration certificate and seeking damages / an account of profits. Not all EU countries operate a common law jurisdiction and so, in circumstances where you lose your registration because of Brexit you may well lose your rights! Registered Designs: The UK government has confirmed that all Registered Community Designs (“RCD”) will be granted an equivalent status within the UK post Brexit. This equivalent status permits for an automatic cloning of an existing registration into a UK Design. It is said that there is no charge for this, and proprietors […]

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What is Article 13?

28th March 2019

The aim is to update the existing copyright laws for the internet age and put responsibility on YouTube, Facebook and Twitter, etc, to make sure that copyrighted material isn’t being illegally shared. This new law will shift the onus from copyright holders (to enforce copyright protection) to those of major platforms – i.e. making it these platforms responsibility to police the use of copyrighted materials and have mechanisms in place to deal with unauthorised use. It is thought that these mechanisms will involve the implementation of automated filters, however keeping these filters updated to recognise what is and not copyright infringement is the biggest challenge facing all these platforms….but of course the larger platforms will have more financial resources to hand. Comment – this isn’t law yet… and whether it will have effect upon UK Copyright law is still to be determined as Brexit negotiations continue. These new rules require approval by the European Parliament, which is likely to meet in March or April 2019, and each member state will then be given 24 months to adopt these new rules into national laws. A directive sets out a goal that all EU member states must achieve, however it is up to the individual country how they will implement them, as Copyright law varies country to country. So, whether this new Article 13 really helps the copyright owners remains to be seen? Of course, we must keep up with the technology advancements – however it will be very interesting to see if the actual implementation of this new directive standardises Copyright laws across Europe. The main question is how this Directive will affect the UK post Brexit? Currently the UK and other EU member states are party to the main international treaties on copyright and related rights – and these are not dependent upon the UK being a member state of the EU. In addition, there are EU cross border copyright mechanisms that go beyond these international treaties (e.g. Sui generis database rights; portability of online content service and country-of-origin principle for copyright clearance in satellite broadcasting). After April 12th, 2019, if no deal is reached the UK membership to these international treaties will remain unchanged. However, the EU cross-border copyright mechanisms will extend only to member states of the EU or EEA – so on exit the UK will be treated by the EU and EEA as a third country and the reciprocal element of these mechanisms will cease to apply to the UK. It is not clear at the time of writing if and when the new copyright directive will be passed, but if passed on exit day – or in the transitional period but with a deadline date after exit day – then the UK would have an option to make it UK law or not. The UK is now at a crossroads and a lot hinges on whether a deal or no deal is reached, but whatever the UK decides the EU has played a very important part in shaping our copyright laws to date. If you have any concerns or questions regarding copyright law in the […]

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It doesn’t always ends in smiles…

27th March 2019

UKIPO Decision BL Number O/ 113/19 Background: SK SMILEYGROWTH INT’L CO LTD filed a UK trade mark application for SMILEYGROWTH; however this application was opposed by THE SMILEY COMPANY SPRL – who relied upon an EU trade mark registration for the mark SMILEY. Both marks covered general household, dining, kitchen and personal care items. Main points from the decision: THE SMILEY COMPANY SPRL had to prove genuine use of its mark SMILEY. The hearing officer accepted that the opponent operates as a licensing company and it licenses use of the earlier mark SMILEY to licensees who manufacture and sell the goods. Genuine use of the earlier mark by licensees and with the consent of the proprietor is also deemed to be genuine use by the proprietor. There was likelihood of indirect confusion between the marks and that average consumer instinctive reaction, when faced with the applied mark in the purchasing process, will therefore not simply be to bring to mind the earlier mark – but will be to assume there is an economic connection between the two undertakings. The additional GROWTH component will be seen as a variant brand. The opposition was successful and the registration for SMILEYGROWTH was refused. Comment – this case is interesting because use by licensees is treated as equivalent use to that of the licensor. If you are looking to franchise your brand, then please come and speak to us, as we can help with the drafting of suitable licenses to meet you everyday needs.

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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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Award-winner boosts Litigation prowess

11th February 2019

Leicester-based niche commercial law practice Southall Hathaway & Co LLP has retained an award-winning trainee solicitor as a Commercial Litigator.   Neusha Mazaher (age 28 from Birstall) is due to be admitted as a Higher Court Solicitor Advocate (Civil) next month (March 2019) – having recently completed her Post Graduate Diploma/Legal  Practice Course at De Monfort University and being awarded their Irwin Mitchell Prize for Best Overall Performance. A delighted Neusha, who has been with the company in its various guises as Edward Hands and Lewis and EHL Commercial since leaving university in 2014, says: “Working a full-time job and studying was difficult at times, but the journey taught me a lot about myself and the profession. Winning the LPC award was a bit of a shock, but a great feeling, and it shows that hard work and dedication really does pay off. “I can’t wait to be admitted and having completed the additional Higher Rights of Audience course too, I’ll be able to offer a complete service to clients by representing them through their entire case and then advocating on their behalf at trial. I’m so looking forward to my new chapter as a fully qualified Solicitor Advocate and 2019 feels like a fresh and exciting start for the new Southall Hathaway & Co too. I’ve no doubt it will be a positive and successful year for the business and feel privileged to be a part of it.” All trainee solicitors must undertake training in at least three distinct areas of law to enable them to qualify as a Solicitor. Neusha began in the Advisory & Dispute Resolution department dealing with breach of contract claims, insolvency matters, possession proceedings and boundary disputes. A seat in the Employment department followed, which proved to be a great transition as the Employment Tribunal runs very similar to the way the Civil Courts do. Latterly, Neusha has been completing her final seat in the Commercial Property department, assisting on the sale and purchases of commercial properties and reviewing leases. Neusha has also been engaged on Commercial matters including drafting terms and conditions and shareholders agreements. Neusha adds: “I’m due to qualify into my preferred Advisory& Dispute Resolution department and will continue to work alongside owner and managing partner Stuart Southall on a number of matters going forward. He’s both an excellent litigator and mentor and has greatly helped develop my skills as a lawyer – and I’m looking to repay his faith in me straight away.”

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Good (trade mark) housekeeping…

6th February 2019

To set the scene you have received your trade mark registration certificate and have been told that the trade mark registration is valid for ten years and renewable thereafter every ten years. As the owner of a registered trade mark you have exclusive rights in the trade mark, which are infringed by use of the trade mark in the United Kingdom without your consent. Now consider the following; you are notified of a later filed application for a mark that is similar or identical to yours for goods and services that are identical or similar to yours.  The onus will be on you to file opposition proceedings against this later filed application. However, before proceeding you need to consider the following: once your trade mark has been registered for five years it becomes vulnerable to a non-use challenge. An application to revoke a trade mark registration on the grounds of non-use can be made by anybody.  So, if you file the opposition the applicant may choose to file a non-use cancellation action in return. The burden will be upon you to file evidence of “genuine use” with respect to the goods and services the mark has been registered for. In the recent case of SuperMac’s (Holdings) Ltd v McDonalds International Property Company Ltd, SuperMac made an application to have MacDonalds’ trade mark registration for BIG MAC cancelled in its entirety on the basis that MacDonalds had not put the mark to genuine use for a continuous period of 5 years for the goods and services it was registered for.   What is genuine use?  Genuine use of a trade mark exists where the mark is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered. It requires actual use on the market of the registered goods and services and does not include token use. When assessing whether the use of the trade mark is genuine, regard must be had to all the facts and circumstances relevant to establishing whether commercial exploitation of the mark is real, particularly whether such use is viewed as warranted in the economic sector concerned to maintain or create a market share for the goods or services protected by the mark. The burden of proof lies with the proprietor which in this case was MacDonalds. On that basis, MacDonalds submitted 3 affidavits, brochures and advertising materials showing the BIG MAC sandwiches, as well as links to websites and print out from Wikipedia. The cancellation division found the evidence submitted insufficient to establish genuine use of the BIG MAC trade mark.  This decision is open to Appeal and time will tell if MacDonalds decide to appeal it? Comment – we think that a valuable lesson can learned from this case about good housekeeping with respect of having a good archive of evidence of use that is constantly kept updated. This will help going forward should a third party look to cancel your registration or to support opposition proceedings. If you have any questions relating to trade mark matters, please do not hesitate to get in touch […]

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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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