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

Non-lawyers do not always find legal documents easy to understand – no kidding!!

Who, in a company, has the authority to instruct solicitors and when do the solicitors need to take care that they have given the proper advice to their client?  The following case says that the executive directors of a company usually have the authority to act on behalf of the company but that solicitors should take extra precautions to make sure that their client (the company) is fully advised if the executive directors have a personal interest in the outcome of the advice.

The company who owned Newcastle airport needed new contracts drafted for their executive directors who were both employed by them.  The company’s board had a remuneration committee which had a chairwoman.  One of the executive directors instructed Eversheds (solicitors) to draft the new contracts to include bonuses to be paid to them for completing the refinancing of the company’s debt.  The draft contracts went to and fro between the solicitors, one of the executive directors and the chairwoman of the remuneration committee.  The executive director was heavily involved in the drafting of his own contract.  Eventually, a final draft was sent to the remuneration committee chairwoman for authorisation.  No written summary was provided by the solicitor as to the nature and effect of the changes to any earlier drafts.  The chairwoman reviewed the draft contracts and then signed them after which they were accepted and signed by the executive directors.

In due course, it became apparent that the executive directors were to receive massively larger bonuses than was anticipated by the remuneration committee due to the drafting of the contracts and so the company decided to sue the solicitors.  One of their claims was that the executive directors had not had the authority to instruct the solicitors to produce the draft contracts.

The judge in the first case found that the executive directors did have the authority to act on behalf of the company and, therefore, the solicitors’ advice given to the executive directors was given to the company itself.  The judge was critical of the chairwoman and found that even if the solicitors had supplied more information regarding the final contract, she would not have read it or understood it.  The claim was dismissed but the company appealed.  They said that there was a conflict of interest as the solicitors had taken their instructions from the executive directors who had an interest in the terms of the contract.  They said the solicitors should have recognised the conflict of interest and dealt directly with the chairwoman or should have supplied a written summary of the changes incorporated into the final draft.

The Court of Appeal said that usually if a company authorised one of its executives to instruct solicitors (in a matter in which the executive had no personal interest) that would be sufficient for the solicitors to deal only with the executive.  In this case, however, the solicitors treated the matter as advice given to the executive director was advice given to the remuneration committee.  This relied on the committee being equal to carrying out an unaided review of the solicitors’ work without any kind of oral explanation or written summary to assist them.  This “ignored the basic consideration that non-lawyers did not always find legal documents easy to understand” [http://www.lawgazette.co.uk/law/law-reports/negligence/5039090.article].  The solicitors had a duty of care to ensure that their client, the company, properly understood the effects that the new contracts would produce and they had a duty to ensure that their client (the company) had been properly advised.

Nevertheless, the judge had been critical of the chairwoman’s approach to reading documents and so, even if the necessary information had been provided by the solicitors, it is likely that the contracts would still have been signed.  The outcome of this case, therefore, was that there were no winners.  The solicitors had breached their retainer but that breach had not caused the company’s loss.  The solicitors would have to pay nominal damages to the company for breach of the retainer.  (Case reference:  Newcastle International Airport v Eversheds LLP: Court of Appeal, Civil Division 28 November 2013)

Go to www.john-kennedy.co.uk

The Crusader

Do Anything You Have To Do!

Why would you get into a contract, not stick to the requirements and then have to try to wriggle your way out of it when it goes horribly wrong?  It’s amazing when you read some of the cases that go through the Courts, as to how many people or businesses get into a contract which, although it suits all of the parties involved at the time, when it then goes wrong (perhaps through no fault of anyone but just unfortunate circumstances like the insolvency of a client) they have to try and pick up the pieces.  Often, the contract states quite clearly what is supposed to happen.  For instance, there might be a clause saying that you will go to arbitration or you may have a contract with someone from overseas which states that the Courts of England and Wales will be correct place to bash it out.

I was just reading a case whereby there was a company complaining about losing their equipment when a lease of a building they were occupying was terminated.  The odd thing about this case to me was that the company had 28 days in which to go in and remove their equipment.  They didn’t do so and therefore lost the right to either get the equipment or to get compensation from the landlord when he leased the place to someone else.  I don’t know all the circumstances of the case but it just goes to show how easily things can go wrong.  Looking in from the outside, you wonder why they didn’t get round to removing their equipment – after all, 28 days is quite a long time.  But there you go…they didn’t and they ended up unsuccessfully taking the landlord to Court to try and get some compensation.  In trying to win, they used obscure legal arguments which failed to impress the Judge.

The lesson is – try your best to comply with the terms of all of your contracts otherwise you could end up dangling on a string trying to make it right when it is much too late.  Trying to use clever arguments to compensate for poor operational decisions is not the best way of spending your company’s budget.  Litigation can take out your bottom line.  If, however, you’ve already gone past the point of no return and you are going to have to go to Court, don’t forget that you may be able to get a solicitor to do it on a no win no fee basis.  Check out my website for some help with that.

Tina Morgan    www.john-kennedy.co.uk

Legal-easy

Everyone’s gotta tale to tell

It’s amazing but as soon as you start to talk to people about what you do (or more precisely what I do) they have their own story to tell. It seems that people all over the country (nay all over the world) are regularly being treated abominably in their relationships with other people or businesses. What’s even worse, is that the ones that come off badly tend to be the smaller guy; the underdog; the little businesses. I think you know what I mean. I do a lot of networking and generally, every time I go to a meeting (and usually over breakfast) somebody will tell me their own sad story of being poorly dealt with by a big company.

Quite often they are stonewalled or they get the usual response “the cheque is in the post”. And while we are talking about “being in the post” isn’t it surprising how many documents, that are important to you, go missing in the post. “Oh I’m sorry, the refund for our appalling service defect is in the post”; “the information you require has been put in the post. I did it myself yesterday”; “the complaints form you requested is on its way” etc etc ad nauseum. But when it comes to a demand for payment, a big fat bill, a letter requiring you to perform an obligation – well, that always arrives on time, doesn’t it?

Enough ranting, I was talking about sad stories. I was told a story about a supplier who installed some very expensive technical equipment into the premises of a big company. You know what it’s like – you don’t dare ask for too much payment up front otherwise they go elsewhere. When it got to the end of the job, the big company was invoiced but refused to pay. The result of this was that although the supplier did not go “bust” they had to seriously downgrade their workforce and people lost their jobs and therefore the ability to pay their mortgages, go on their annual holiday to Benidorm, buy the kids a new bike for Christmas and run a decent car.

How many of you have been done down by a big, bad bully? If you have a story to tell, please let me know. I’d love to hear it.

Tina Morgan   www.john-kennedy.co.uk

Legal-easy