A Rose by Any Other Name

Is your product a huge success?  Does everyone want to buy one?  Then be careful that its name does not become the commonly-accepted name for that particular item.

A recent European Court of Justice ruling is a warning to all those businesses who have achieved success with their products.  In fact, if you have achieved such a huge success that everybody is calling that type of product by your brand name, then you could have some difficulties protecting it. In the easily-pronounced, “springs off the tongue”, nattily-named case of Backaldrin Osterreich The Kornspitz Co GmbH v Pfahnl Backmittel GmbH (Case C-409/12); [2014] WLR (D) 112, the European Court had to address the issue of the “inactivity” of the owner of a trade mark.  The trade mark was “Kornspitz” which was registered for baked goods.  The owner produced a baking mix which it sold to bakers who turned it into a particular bread roll which was oblong in shape with pointy ends.  The owner consented to the use of the trade mark by the bakers and the distributors for the sale of the bread roll.  Their competitors, however, realised that the general public were using the trade mark as the name for a roll of that shape (as an example, think of a certain vacuum-cleaner brand whose name passed forever into the English language as a verb for vacuuming the carpet!) and filed an application for the trade mark to be revoked. 

The case went to appeal and the revocation of the trade mark was upheld.  They said that, from the viewpoint of the end-user, the distinctive character of the trade mark had been lost and the owners of the trade mark had not done enough to protect it.  Although the sellers (the bakers and food distributors) were aware that the name was a trade mark, they did not inform their customers that the name was a trade mark and, therefore, contributed to the name becoming common usage.   The owners of the trade mark failed to encourage the sellers to make sure that the trade mark was pointed out to their customers which could be classified as “inactivity” and the law said that the “inactivity” of a proprietor of a trade mark which has become a common name for a product, could make that trade mark liable to revocation. 

So beware and if you produce a roll of sticky-backed plastic for repairing ripped paper or you are a courier company for sending parcels around the world, or even a world famous search engine, unless you are happy for your brand name to become a household name that anyone can use, take precautions to ensure that all users know that it is your trade mark.

Let's be careful out there!

The Crusader

www.john-kennedy.co.uk

Go Placidly Amid the Noise and Haste

In the modern world that we live in, many of us suffer from noise nuisance.  Most of the time we just have to put up with the constant sound of moving traffic on nearby roads, aeroplanes  passing overhead every 10 minutes or so, high-speed trains roaring past occasionally sounding their horns and the noise from nightclubs, pubs and private parties.  How many times have you heard people say – “well, it’s their fault for moving to this area – they should have known about the noise from such and such”?

In a recent case in the Supreme Court (which used to be the House of Lords) (case citation Lawrence and another v Fen Tigers Ltd and others [2013] UKSC 13;  [2014] WLR (D)100), or Coventry and others (Respondents) v Lawrence and another (Appellants)  it has been decided that it does not matter if you move into the noise nuisance area, what is important is that the noise is a nuisance!  Their Lordships held that it is no defence to a claim of noise nuisance that the claimant moved into the area where the noise was already being made.  A nuisance is a nuisance and the remedy in cases like this is usually an injunction to restrict the activities of the noise-maker and damages to compensate for past noise nuisance.  However, an injunction is not always necessarily the right solution.

The defendants ran a speedway stadium and motocross track.  They had applied for and received planning permission to do so.  Their Lordships said there were many aspects to take into consideration when it came to NOT ordering an injunction against the perpetrators of the noise.  The planning permission was taken into consideration as well as whether the noise was within specified decibel levels included in the planning permission.  They would also take into consideration whether the activity making the noise was from a socially beneficial activity to the community and whether an injunction would cause the perpetrators of the noise to close their business thereby losing employment opportunities.  They also considered the fact of whether damages would compensate the claimant as opposed to an injunction.

The outcome was that they reinstated the decision of the Judge at first instance which awarded damages to the claimants for past nuisance suffered and imposed an injunction on the defendants to prevent them making the noise.  They did, however, point out that the Court had the discretion of not awarding an injunction where there was a noise nuisance taking into consideration all of the aspects of the case and that the defendants were at liberty to apply to have the injunction lifted and pay damages instead.

If, therefore, you are a noise-maker take note that just because you are doing it now, does not mean that you can do it forever.  As Max Ehrman said “Go placidly amid the noise and haste, and remember what peace there may be in silence”

If you are suffering a noise nuisance, you may be able to get help on a no win no fee basis.  Go to www.john-kennedy.co.uk or call Tina Morgan on 01707 69718601707 697186

The Crusader

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Picking on an ex-employee

A recent case from the Court of Appeal has said, in no uncertain terms, that if you give an ex-employee a bad reference (or even no reference at all) because of the fact that they have started employment tribunal proceedings against you after they have left your employment (for whatever reason) you could find yourself in deep water.  They have ruled in the case of Rowstock Ltd and another v Jessemey [2014] EWCA Civ 185;  [2014] WLR (D) 101 that, despite the fact that it does not specifically state post-termination victimisation is not allowed in the Equality Act 2010, it should have said it.  The employee in question was dismissed for the heinous crime of turning 65.  This is against the age discrimination rules and the Court has said that his employer then victimised him by giving him an unfavourable reference as he was taking them to the tribunal.  

By the way, just for the sake of clarity, victimisation in an employment situation does not simply mean "picking on someone".  It means treating someone in a detrimental way because they have exercised their legal rights ie brought proceedings for discrimination or other such legal rights.

The Crusader