The giant retailer, Marks & Spencer, removed a brewery themed garment from sale after being accused of ‘ripping off’ a London craft beer chain brand.

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:-

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

 

 

A sanction is an adverse consequence imposed on a party for failing to comply with a rule, practice direction, or a court order.

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

When bringing a claim, claimants are subject to limitation periods depending on the type of claim brought to the court. Any claim action must be issued within the relevant timeframe and failing to do so would give the defendant a way to raise the defence of limitation. For example, the following limitation periods apply:

A claimant must also take into consideration how to calculate the date on which a claim is brought and the Court of Appeal clearly established in the case St Helens v Barnes [2006] EWCA Civ 1372 that a claim is brought to the court when the court received the claim form and not when the claim form is sent.

Once a claim is brought to the court and the defendant uses the limitation period defence, it is up to the claimant to prove that the time has not expired. This is one of the argument raised in the case involving the Duke of Sussex, Sir Elton John and five other claimants against the publisher Associated Newspapers Ltd.

On 29 March 2023, the BBC reported on the above mentioned claim where the claimants sued the publisher for illegally obtaining their personal information and using it for Daily Mail and Mail on Sunday stories. David Sherborne who represented the claimants argued that they have all been victim of “numerous unlawful acts” which include intercepting telephone conversation; illegally bugging cars and homes and obtaining private information such as bills or medical records. Mr Sherborne pointed out that these unlawful acts happened through a vast period from 1993 to 2011 and beyond until 2018.

On the other side of this case, Associated Newspapers Ltd is seeking for the case to be thrown out as groundless. Among other arguments, the publisher relies on the fact that the claims were based on non-credible evidence as these were depending on a private investigator’s statement who has served a prison sentence. Furthermore, the barristers representing the publisher argued to the High Court that the claimants have now run out of time to bring their claim as it has been now over six years and the claimants should have complained when the articles were published.

It is now up to the claimants to prove that the time has not expired for them to bring their claim. They are arguing that the Mail’s editor swore an oath at the Levenson Inquiry in 2011 according to which no illegal methods of gathering information were used and that this prevented legal actions. Moreover, they are arguing that further evidence came to light which reset the clock for bringing the claim.

The BBC also reported that two other private investigators have made statements to the court supporting the claimant’s case in that they admitted their role in obtaining information illegally and reporting to journalists at the Daily Mail and Mail on Sunday.

The parties were present in court throughout the end of March and beginning of April to present their case in front of Judge J Nicklin and when decided, this case should give further clarity over the issue of limitation periods.

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

Worcester Warriors, the Premiership rugby club, have been suspended from playing and will be put into administration after failing to meet a Rugby Football Union funding ultimatum.

The Department for Digital, Culture, Media and Sport, one of the main guarantors of a loan through Sport England, said it had agreed to the directors’ request to place the club into administration.

A statement added that it was “in order to give the club the best possible chance of survival, and to protect a significant taxpayer investment”.

What happens next to the club is unclear but it is hoped that a buyer can be found as soon as possible, with the club potentially able to resume matches if the suspension is lifted.

The Warriors are not the only Premiership club struggling financially, with fellow Midlands side Wasps announcing their intention to appoint administrators to “protect the club’s interests”.

The case of the Warriors highlights the administration process.  Administration is a procedure which allows for the reorganisation of a company or the realisation of its assets under the protection of a statutory moratorium, which prevents creditors from taking action to enforce their claims against the company during the administration process and so hamper the implementation of a strategy for the company’s rescue or asset realisation.

In the vast majority of cases, administration is used to reorganise or realise the assets of insolvent companies.  When a company enters administration, an insolvency practitioner is appointed as the company’s administrator.  The administrator takes over the control of the company’s business and assets from the company’s directors, in order to achieve one of the statutory purposes of administration.

When a company enters administration, it becomes subject to a statutory moratorium that prevents creditors enforcing their claims against the company.  Essentially, the statutory moratorium provides a company in administration with a “breathing space” during which the administrator can reorganise the company’s affairs or conduct an orderly realisation of the company’s assets, without pressure from creditors of the company.  The moratorium restricts the ability of third parties to enforce their rights against the company, without the prior consent of the administrator or the consent of the court.  It also prevents the commencement of alternative insolvency procedures in respect of the company.

If you are a director of a company which is potentially facing insolvency, we can provide focussed advice to you with the aim of assisting you and mitigating your potential personal exposure.  Likewise, if you are an insolvency practitioner and require legal assistance on any insolvency law issues, we regularly assist insolvency professionals too.

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

The Government has now brought to an end the previous temporary restrictions surrounding a creditor’s ability to present a winding up petition against a corporate debtor.

 Under previous restrictions, a creditor was only able to present a winding up petition against a corporate debtor where:

These restrictions came to an end of 31st March 2022.  As such, from 1st April 2022, it is once again possible for winding up petitions to be issued against a corporate debtor for debts that exceed only £750 and it will not always be necessary for prior notice to be given to the petitioned company.

For further information on insolvency law related issues please contact our Business Services Team on 01908 660966 / 01604 828282 or by email info@franklins-sols.co.uk.

Copyright is defined as “a type of intellectual property that protects original works of authorship as soon as an author fixes the work in a tangible form of expression”. Different types of works are protected including paintings, photographs, illustrations, musical compositions, sound recordings, computer programs, books, poems, blog posts, movies, architectural works, plays, and more.

Determining originality is not an easy task as various influences converge to create original works and expressions. Where these works and expressions are so similar that they need to be closely examined in a court to determine if they infringe copyright laws, the services of a trained solicitor and a supportive law firm are needed.

Ed Sheeran has just won a copyright infringement suit brought against him by Sami Chokri who performs under the alias Sami Switch. Ed Sheeran had been accused of plagiarising part of a track called ‘Oh Why’ by Sami Chokri, along with two of his co-writers – Snow Patrol’s Johnny McDaid and producer Steve McCutcheon.

Sami Chokri had claimed that Sheeran’s 2017 hit infringed “particular lines and phrases” of his 2015 song and he and his co-writer Ross O’Donoghue further alleged that the main “Oh I” hook in ‘Shape Of You’ is “strikingly similar” to the “Oh Why” refrain in their own song. Chokri had further claimed that he and Sheeran had “overlapping circles” of artists, writers and producers in common, stating that there had been a “concerted plan” to bring ‘Oh Why’ to Sheeran’s attention, which claims were denied by Ed Sheeran’s party.

Ed Sheeran and his co-writers launched legal proceedings in May 2018, requesting that the High Court declare they had not infringed copyright. In July that year Sami Chokri and Ross O’Donoghue lodged their own claim for “copyright infringement, damages and an account of profits in relation to the alleged infringement”.

Ed Sheeran and his co-authors denied all allegations of copying, claiming that they did not remember hearing ‘Oh Why’ before the claims were lodged.

After an 11 day trial, Justice Zacaroli ruled that Ed Sheeran “neither deliberately nor subconsciously” copied a phrase from ‘Oh Why’ when writing ‘Shape of You’.

Justice Zacaroli did acknowledge there were “similarities between the one-bar phrase” in ‘Shape Of You’ and ‘Oh Why’, but added that “such similarities are only a starting point for a possible infringement” of copyright.

In reacting to the judgment, Ed Sheeran stated that “It is so painful to have to defend yourself against accusations that you have done something that you haven’t done and would never do”, and called on all artists to continue to support each other in a spirit of creativity.

For further information on copyright law related issues please contact our Business Services Team, on 01908 660966 / 01604 828282 or by email info@franklins-sols.co.uk.

Where a company goes into insolvent liquidation, section 216 of the Insolvency Act 1986 restricts its directors and shadow directors from being involved in Insolvency signanother company with the same or a similar company name as the company in liquidation.  If this restriction is breached, the person concerned will be personally liable for certain debts of the second company (as well as anyone acting on their instructions).  A breach of section 216 may also lead to criminal liability.  As such, it is important for directors to take appropriate legal advice.

A name is prohibited in relation to someone to whom the restriction applies either if it is the same as the name of the liquidated company or if it is so similar as to suggest an association with that company.  Here, the court will make a comparison of the names of the relevant companies in the context of all the circumstances in which they were actually used or were likely to be used, the types of products/services dealt in, the locations of the business, the types of customer dealing with the companies, and those involved in the operation of the two companies.

Where the section 216 restriction applies, the director needs to obtain court permission to act in a manner that is otherwise prohibited by section 216, except in two other situations.  The first of these situations is where the insolvent company’s business is sold to a second company under arrangements put in place by the liquidator and notice is given to creditors of the insolvent company before the person acts in contravention of section 216.  The other situation is where a second company that has a prohibited name has been known by the prohibited name for at least 12 months before the insolvent company goes into liquidation.

Where it is necessary to apply to court for permission, this needs to be done within 7 business days from the start of the insolvent company’s liquidation.  If this is done, the applicant may act despite the section 216 restrictions between the start of the liquidation and the earlier of either the day falling 6 weeks after the start of the liquidation or the day on which the court decides the application for permission.

For further information on insolvency law related issues please contact Christopher Buck, Associate Partner and Solicitor, on 01908 660966 / 01604 828282 or by email at Christopher.Buck@franklins-sols.co.uk.

Standard terms of business are only effective if they are properly incorporated into the contractual relationship with a customer. Clearly it is best Terms of businessto have customers expressly sign terms of business or confirm acceptance of them in writing. However, in practical terms, this is not always achievable. As such, it is often the case that other incorporation strategies need to be relied upon.

It is possible for a supplier to effectively incorporate terms of business into their contractual relationship with customers without them always having to expressly sign them or agree to them if they sufficiently notify customers that they conduct business on their terms of business and make those terms available to customers. It is well established that terms and conditions will be effectively incorporated into the relevant contract so long as reasonable steps are taken to bring the existence of the terms and conditions to the notice of the other party before the transaction is concluded. Once drawn to the attention of the other party, incorporation will take place if the latter proceeds in such a way that they are deemed to have accepted the terms (for example, they proceed without raising any objections). By way of example, these principles are general enough to apply to the incorporation of terms and conditions into a contract by means of a reference to where they can be found (such as on a website).

Whilst standard terms and conditions of business are generally used more by a supplier, it is becoming increasingly common for customers, especially larger corporations, to adopt their own standard terms of purchase (whether of goods and/or services). This is something which suppliers will need to be mindful of as if both the supplier and the customer purport to impose their own standard terms and conditions, difficulties can arise in determining which terms will prevail and which will therefore be enforceable. In practice, the courts take the view that the last set of terms despatched before either acceptance or performance of the contract will usually prevail. However, because this is an issue of interpretation this will not always be the case and the court can choose not to follow this rule if it appears to be inconsistent with the parties’ intentions. With this in mind, suppliers should check customer orders for reference to any other terms and conditions and, if they contain the same, acknowledge the order and confirm it is accepted subject to their own terms of business.

For further information on commercial law related issues please contact Christopher Buck, Associate Partner and Solicitor, on 01908 660966 / 01604 828282 or by email at Christopher.Buck@franklins-sols.co.uk

The Government has, in part, brought to an end the previous temporary restrictions surrounding a creditor’s ability to present a Business in debtstatutory demand and winding up petitions against a corporate debtor.  Previous restrictions, which were introduced under the Corporate Insolvency and Governance Act 2020 in a response to the Covid 19 pandemic, were in place from June 2020 and expired at the end of September 2021.

From 1st October 2021, those restrictions have been replaced by new measures brought about under the Corporate Insolvency and Governance Act 2020 (Coronavirus) (Amendment of Schedule 10 Regulations 2021) (the Regulations).

Under the Regulations, which are temporary and due to last until 31st March 2022, a creditor will be able to present a winding up petition against a corporate debtor where:

Ordinarily all four Conditions must be satisfied.  A creditor can apply to the Court for an order stating that Conditions B and C do not apply or that the 21 day time limit set out in Condition C can be shortened.  However, it remains to be seen on what basis a Court will grant a creditor relief from those Conditions.

The written notice referred to in Condition C must contain prescribed information surrounding the creditor, the debt, a statement that the creditor is seeking the company’s proposals for the payment of the debt and a statement that if no satisfactory proposals are made within 21 days the creditor intends to present a winding up petition against the company.

There is no provision within the Regulations for what constitutes “satisfactory” repayment proposals and so therefore this appears to remain subjective and at the creditor’s discretion.  However, a creditor must explain in any petition they subsequently present why the proposals are not to its satisfaction and hence a creditor should be dissuaded from exercising its discretion arbitrarily.

If a winding up petition is to be issued, the Regulations provide that additional wording must be included within the petition under rule 7.5(1) of the Insolvency (England and Wales) Rules 2016.

There is a notable exception to what debts a petition can be presented in respect of, specifically commercial rent or any sums payable under a relevant business tenancy.  If those debts are not paid because of the Covid pandemic, then those debts will be classed as ‘excluded debts’ and a petition cannot be presented in respect of them even if they exceed £10,000.

The Regulations will be welcome news for small businesses, seeing the threshold for a creditor’s debt which allows them to present a petition effectively jump from £750 to £10,000.  However, clearly they will prove unwelcome news for landlords looking to try and recover rent arrears from tenants accrued since or because of Covid, as well as creditors in general.

Time will tell if the Regulations will be extended at the end of March 2022.  This is what happened on several occasions to the temporary restrictions initially brought under the Corporate Insolvency and Governance Act 2020.  As such, this is a distinct possibility.  So watch this space.

For further information on insolvency law related issues please contact Christopher Buck, Associate Partner and Solicitor, on 01908 660966 / 01604 828282 or by email at Christopher.Buck@franklins-sols.co.uk.

The High Court has held that a supplier’s standard terms and conditions were incorporated by reference when the customer signed an electronic order form, Terms and conditionsbut that an onerous and unfair cancellation fee could not be enforced against the customer as it was not effectively incorporated into the contract.

In Blu-Sky Solutions Ltd v Be Caring Ltd [2021] EWHC 2619 (Comm), the supplier sent an electronic order form to its customer stating that all orders and contracts were subject to its standard terms and conditions set out on its website.  The customer signed the order form but later withdrew its order.  The supplier sought to enforce a cancellation fee payable under its standard terms and conditions but its customer argued that the clauses relied upon by the supplier were sufficiently unusual and onerous that they should have been brought to its attention fairly and reasonably by the supplier.

It was held that while the supplier’s standard terms and conditions had been effectively incorporated into the contractual relationship between the parties by reference, the clauses relied upon were not incorporated because, given they were unduly onerous, they should have fairly and reasonably been brought to the customer’s attention.

The decision makes it clear that where a signed contract incorporates terms by reference, where the terms are unduly onerous they need to be brought to the specific attention of the signing party.

For advice on contractual matters, including effective incorporation strategies, please Christopher Buck, Associate Partner and Solicitor, on 01908 660966 / 01604 828282 or by email at Christopher.Buck@franklins-sols.co.uk.