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A B C D E F G H I J K L M N O P R S T V W Y

International Bulletin

Welcome to the launch issue of Brabners' International Bulletin for global firms with UK law requirements. In this issue we have updates on a variety of UK law issues and developments including the importance of filing national trade marks in the key countries where businesses trade, the latest developments this year in UK employment law and a look at our corporate deals involving international companies. 

Top ten points for international claimants to consider when deciding whether to sue someone in England and Wales

Wednesday 22nd June 2016

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There are many important points for a party based overseas to consider before taking the decision to commence court proceedings in England and Wales. Here are our top ten. 
 
1. Where is the jurisdiction of my claim?
 
Probably the most important issue to consider at the outset is whether the Courts of England and Wales have jurisdiction to determine your claim. Well-drafted commercial agreements should contain a jurisdiction clause but when they don’t, there are lots of different factors that the Courts here will consider in deciding whether they can hear the claim. These include where a contract was entered into, where damage was sustained in a tortious claim, and whether there is another more appropriate forum.
 
2. Which law will apply to my claim?
 
As well as the question of jurisdiction you should consider which country’s law will apply to your dispute. As with jurisdiction, this is often dealt with in a governing law clause in a commercial contract. It is one of the factors that the Court in England or Wales will consider in determining whether it has jurisdiction to deal with the claim.
 
3. How do I start my claim?
 
Court proceedings are commenced by filing the Claim Form at Court with payment of the claim issue fee. Depending on where the Defendant is based it may be necessary to apply for permission to serve the claim outside of the jurisdiction. The sealed Claim Form should then be served on the Defendant with the Particulars of Claim document and response pack.
 
4. Can I give an address for service that is outside of the jurisdiction?
 
The Claim Form document must include an address for you for the service of documents relating to the proceedings. Part 6.23 of the Civil Procedure Rules states that the address for service must be in the UK or in any other EEA state. It may be the business address of your solicitor.
 
5. Can I get extra time to comply with case management directions?
 
You are not automatically entitled to additional time to comply with directions such as the disclosure of documents and exchange of witness statements, unlike a Defendant based outside of the jurisdiction who is entitled to a longer time period to respond to the claim.  However if you need additional time this should be requested in draft directions with the Directions Questionnaire document and at the Costs and Case Management Conference Court hearing if one is listed. Provided that a reasonable explanation is provided as to why additional time is needed, and that the extra time is in itself reasonable, the Courts are usually prepared to accommodate such requests.
 
6. Will I have to pay security for costs?
 
An order of security for costs requires a party to make a payment into Court, or to provide some other form of security such as a bond or guarantee, as security for their opponent’s legal costs. Part 20.7(2) of the Civil Procedure Rules provides that one of the conditions under which the Court may make such order is that the Claimant is resident outside of the jurisdiction (but not in a Brussels Contracting State, a State bound by the Lugano Convention or a Regulation State as defined in the Civil Jurisdiction and Judgments Act 1982). However the Court has a discretion and in deciding whether or not to make the order the Court will also consider all the circumstances of the case and whether it is just to order security for costs.
 
7. How will I give evidence in Court?
 
Usually a witness will give a written witness statement and then attend Court for cross-examination at trial. If the witness doesn’t attend Court (and the Defendant does not agree to take the statement ‘as read’) usually no weight will be attached to their witness statement.  When witnesses are based overseas you can apply to the Court for permission for their evidence to be given using video conferencing facilities. Such an Application should be made as early as possible and in considering the Application the Court will consider issues such as the proportionality of attendance in person and any prejudice caused to the Defendant by not being able to cross-examine the witness in person. Facilities will need to be checked with the Court in advance and arrangements made for the hearing bundle of documents and giving of the oath by the witness. Annex 3 to Practice Direction 32 of the Civil Procedure Rules provides guidance on the use of video conferencing. 
 
8. Can I use an interpreter?
 
The Directions Questionnaire document at the case management stage includes a question whether any of the witnesses require an interpreter. If an interpreter is required you should make the necessary arrangements as far in advance of trial as possible.
 
9. Where will my case be reported?
 
You can make an Application to Court for hearings to take place in private and this may be appropriate where there are issues of confidentiality. Otherwise Court hearings will be open to the public and may be reported by the press on the internet so there is still a risk of negative publicity in your home country. Cases involving interesting or important points of law may also be reported in the legal press and law reports and again will be available online.
 
10. How will I enforce Judgment?
 
Whilst this point is numbered 10 in our list, in many ways it is the most important. Before commencing Court proceedings you should consider how you will enforce an award of damages or costs should you succeed in the claim. Enforcement options differ in respect of individuals and companies but can include a bankruptcy petition, winding up petition, charging order application, order for sale or bailiffs. You should also consider where the Defendant is.  If the Defendant too is based outside of this jurisdiction then enforcement action will involve registering the judgment in the relevant jurisdiction and the options available under their legal system.
 
Need advice or wish to talk to us?
 
If you would like to discuss any matters about a dispute you may have please do not hesitate to contact us.
 
Associate, Dispute Resolution
Tel: 0151 600 3060
 

Use it (throughout Europe) or lose it

Thursday 12th November 2015

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International Bulletin - Issue 1

The importance of national trade mark protection as well as European Union trade mark protection

Brabners always recommend filing national marks in the key countries in which businesses trade in Europe as well as central Community Trade Marks (CTMs) which cover the 28 Members States of the European Union. Two recent decisions in the UK, give further reason for the importance of national protection.

Background

Although generally trade mark law is intended to be harmonised across Europe, the European legislation allows for, and national law includes, particular nuances from country to country which may mean there is a benefit in having a national mark over a European mark and vice versa. By way of example in the UK, owning a UK registered trade mark is an specific statutory defence to infringement of an earlier UK registered trade mark (but it is not expressly (either in the legislation or case law) a defence to infringement of an earlier CTM and nor is owning a CTM a defence to infringement of an earlier UK registered trade mark). In addition, during examination, the same mark with the same specification may be objected to by the European Trade Mark registry (OHIM, the Office for Harmonization in the Internal Market) but not by a national office and vice versa. Similarly, marks may be opposed by a third party in one territory but not in another. Further owners of an earlier national right in one EU jurisdiction can oppose a European trade mark application based on their earlier right, but could not oppose a national application in a different EU territory based on the same right. For these reasons alone we recommend filing both a CTM and national marks in the brand owners’ key European territories.

Recent cases

His Honour Judge Hacon in the Intellectual Property Enterprise Court (IPEC) issued two decisions (less than a week apart) in the UK earlier this year which give further reason why owning national marks as well as CTMs can be critical.

In the first case (The Sofa Workshop Limited v Sofaworks Limited) The Sofa Workshop Limited owned two registered CTMs for the word mark SOFA WORKSHOP (one registered with effect from 1996 and the other registered with effect from 2005). The marks were challenged for non-use, a CTM is revocable if it is not used within a period of five years following registration (this also applies to UK trade marks). While the evidence was able to demonstrate use in the UK, there was little or no evidence of any trade or use outside the UK. The Sofa Workshop Limited argued that use in the UK was sufficient.

Previous case law, in particular Leno Merken BV v Hagelkruis Beheer BV (C-149/11) [2013] and Now Wireless Ltd v OHIM (T-278/13) [2015], had indicated that use in one member state may “in certain circumstances” be sufficient. However, Judge Hacon summarised this ruling that “genuine use” is “for the purpose of maintaining or creating market share within the European Community”, and “will in general require use in more than one Member State”, although this “will depend on all relevant facts and circumstances” the only exception to this that Judge Hacon found was “where the market for the relevant goods or services is restricted to the territory of a single Member State”. As the market for sofas was not restricted to the UK, in order to prove genuine use in the European Community, use outside the UK was required and this had not been shown. Accordingly the CTMs should be revoked in full for non-use.

The CTMs had separately been challenged as non-distinctive as they were descriptive. Although it was not necessary to determine this point (as they were already revoked for non-use), Judge Hacon agreed that the mark SOFA WORKSHOP was descriptive and therefore inherently non-distinctive and in order to be a valid trade mark The Sofa Workshop Limited would need to show acquired distinctiveness.

Following the case of Enterprise Holdings Inc v Europcar Group UK Limited, in order to establish acquired distinctive character for a CTM, it is necessary to show distinctiveness has been acquired through use of the mark in the part of the Community in which it was descriptive and non-distinctive. In this case as SOFA WORKSHOP is descriptive in the English language, it was necessary to show acquired distinctiveness among European English-speakers. OHIM often limits this to the territories of UK, Ireland and Malta. Judge Hacon (following the case of New Look (T-435/07) thought a wider territory should be considered including Scandinavian countries, the Netherlands, Finland and Cyprus. In broadening the territory, the evidence burden required to prove acquired distinctiveness of a CTM is significantly increased. Given that use had not been established anywhere other than the UK, Judge Hacon determined that acquired distinctiveness was not established in any territory other than UK and as such the CTM did not have acquired distinctiveness in Europe and was invalid.

This reasoning was followed in the second recent case by Judge Hacon, (The Ukulele Orchestra Of Great Britain v Erwin Clausen and Yellow Promotion GmbH & CO. KG t/a The United Kingdom Ukulele Orchestra) concerning a CTM for THE UKULELE ORCHESTRA OF GREAT BRITAIN. In this case, because the mark had been rejected by the German Trade Mark registry for descriptiveness (although not by OHIM, the European Trade Mark registry), Judge Hacon considered the relevant public for which it was necessary to show acquired distinctiveness included the same English speaking territories as for SOFA WORKSHOP and German speaking territories, Germany, Austria, Luxembourg and Belgium. Judge Hacon held that although acquired distinctiveness was shown in UK and Germany there was not sufficient evidence to show acquired distinctiveness in all these relevant Member States (and certainly not in Malta or Cyprus (where there was no use), Denmark (one example of use) or Luxembourg (two examples of use)). Accordingly the mark had not acquired distinctiveness and was invalid.

Perhaps a little surprisingly, it was not all bad news for The Ukulele Orchestra of Great Britain and The Sofa Workshop Limited. Although their CTMs were invalid and/or revoked, and they did not have UK registered rights, both were successful in their claims under the law of passing off which protects unregistered rights.

Conversion

These cases give brand owners further incentive to file national rights as well as CTMs to ensure that when it comes to enforcement in a particular territory the CTM is not vulnerable to challenge due to non-use or non-distinctiveness. That said, there is a conversion process which enables CTMs, which are not registerable in Europe due to a problem only in one or certain countries, to be converted into individual national trade mark applications in other countries not affected by these grounds where it would be considered valid. While this may be a useful solution, it will mean delays and additional costs required when seeking to enforce a brand owner’s right.

Conclusion

Accordingly, these recent cases reaffirm our advice to file both CTMs and national marks (especially where use is limited to certain member states or where the mark could be considered non-distinctive in certain member states). We understand a recent hearing with a different judge has also considered this point further and there may be an update and clarification to the position in the near future. We await this further decision with interest.


Note: On a separate note, the terminology CTM (Community Trade Mark) is now an outdated misnomer as the European Community actually ceased to exist in 2009, when it was dissolved into the European Union by the Treaty of Lisbon in 2009. This is one of a number of changes due to be made to the Trade Marks Directive (89/104) and the Community Trade Mark Regulation (207/2009), in which the European Trade Mark Registry (OHIM, the Office for Harmonisation of the Internal Market) will be renamed the European Union Intellectual Property Office (EUIPO, not to be confused with the European Patent Office, EPO) and the CTM will be renamed the European Union Trade Mark (EUTM).

If you would like more information or to discuss any commercial or intellectual property matters you may have please contact:


Colin Bell

Partner, Commercial & Intellectual Property
Tel: 00 44 151 600 3281
Email: colin.bell@brabners.com


Five key developments in UK employment law

Thursday 12th November 2015

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International Bulletin - Issue 1

UK employment law continues to be an area of significant development and change and businesses have had to respond to a number of challenges over the past 12 months. Employment issues also came to the fore in the recent general election and we can expect the newly elected Conservative government to press forward with the key aspects of their manifesto.

Here, Brabners award winning employment team list five of the most significant challenges which employers are currently having to meet in the UK:-

1. Calculation of Holiday Pay

In the case of Bear Scotland v Fulton and another, the Employment Appeal Tribunal (EAT) considered whether holiday pay should include overtime (in respect of the minimum four weeks’ statutory annual leave required by the Working Time Directive). The judgment was released on 4 November 2014 and the EAT held that if overtime is ‘normally received’ and must be included within holiday pay then non-guaranteed overtime must also be included in holiday pay.

Holiday pay has not previously been a controversial topic, but this decision has left many employers in the UK, who often rely on overtime to ensure that they have the flexibility of resource to meet demand, with significant additional and unbudgeted salary costs. Employers are being advised to manage their resources much more carefully controlling overtime and when employees take their holidays.

2. Changes to the Immigration Rules

Immigration and visa requirements play an important role in an employer’s ability to recruit key personnel and in April 2015, significant changes to the Immigration Rules came into effect.

The main changes included the 12 month cooling off period being removed for Tier 2 visas issued for up to 3 months. This allows employers to sponsor interns for a short assignment and then bring them back to the UK for a permanent job within a year without invoking the cooling off period. This will help global businesses that need to send employees to the UK for short periods each year.

3. Shared Parental Leave

A new system of shared parental leave has been introduced and is available to parents of children due to be born or place for adoption after 5 April 2015. This allows mothers or primary adopters to share up to 50 weeks of their maternity leave and 37 weeks of their maternity pay and enables them to return to work before the end of their leave without sacrificing the rest of the leave that would otherwise be available to them.

While the use of the shared parental leave has been relatively low, a properly thought out enhance scheme can assist with both attracting and retaining the best talent.
The government recently announced it will extend shared parental leave and pay to working grandparents. Consultation on the details will be carried out in the first half of 2016 with a view to the legislation coming into force by 2018.

4. Zero Hours Contracts

On 26 May 2015 a ban on exclusivity clauses in zero hours contracts came into force. This renders unenforceable any provision in a zero hours contract which prohibits a worker from:

  • Doing work or performing services under another contract or under any other arrangement.
  • Doing work or performing services under another contract or under any other arrangement without the employer’s consent.

The ban follows significant media coverage concerning their apparent abuse by some employers.

5. National Living Wage

As part of the July 2015 Budget, the government announced that it would introduce a premium, over and above the National Minimum Wage, for workers aged 25 and over. This is known as the National Living Wage and will be implemented through the National Minimum Wage Regulations in the same manner as the National Minimum Wage uprating in October 2015. National Living Wage rates will be debated in both Houses of Parliament in time to come into force on 1 April 2016. Expect considerable debate on the level of rates set and what is and is not included in the National Living Wage (allowances, bonuses, tips etc).

In addition, from 26 May 2015 the National Minimum Wage Act 1998 was amended to allow for the maximum £20,000 penalty for non-payment to apply in respect of each worker who has not been paid the National Minimum Wage.

If you would like more information or to discuss any employment law matters you may have please contact:


Brendan McAleese

Solicitor, Employment & Pensions
Tel: 00 44 151 600 3067
Email: brendan.mcaleese@brabners.com


International corporate deals

Thursday 12th November 2015

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International Bulletin - Issue 1

Our Corporate practice operates throughout the United Kingdom on behalf of both UK and overseas clients. As the world economy recovers, we have found that an increasing proportion of our work is for overseas clients transacting in the UK or UK clients dealing with overseas counter parties. We undertake corporate work for public and private companies, private equity investors, banks and other financial institutions, business angels, management teams, founder shareholders, public sector, government and educational bodies and charities.

In particular, we act for both buyers and sellers in a lot of deals in which US corporates acquire UK businesses and use them as a basis to expand into the European mainland. In these transactions we are happy to work on the instructions of business owners, in-house counsel and overseas law firms: whatever gives clients the most seamless outcome. We are consistently amongst the most prolific corporate practices based outside the City of London, delivering transactions at more cost-effective fee rates, with a high level of quality and service.

We are delighted to have been shown by Experian’s Market IQ database to be the most active law firm by deal volume in the North West for the first half of 2015, as we have been for the last three calendar years. We have also been reported to be the tenth most active law firm in the UK for the first half of 2015.

 

If you would like more information about our corporate work and how we can help you with your requirements please contact either:

Mark Rathbone
Head of Corporate - Liverpool
Tel: 00 44 151 600 3124
Mobile: 00 44 7787 564 001
Email: mark.rathbone@brabners.com



David Bowcock
Head of Corporate - Manchester
Tel: 00 44 161 836 8948
Mobile: 00 44 7775 585 489
Email: david.bowcock@brabners.com


UK “non-dom” tax regime update

Thursday 12th November 2015

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International Bulletin - Issue 1

The UK’s “non-dom” tax regime has been under close scrutiny for a number of years, and could have been abolished altogether had the Conservative Party not secured a majority government in the last General Election.

As it is the “non-dom” tax regime has survived, however the 2015 Summer Budget has added further restrictions on its availability, particularly in relation to UK residential property.

  1. UK residential property, held by “non-doms” through offshore companies or trusts, will now be subject to inheritance tax.
    The proposed changes, effective from April 2017, are intended to bring the UK inheritance tax rules into line with existing capital gains tax rules (where the “annual tax on enveloped dwellings” regime has been introduced to discourage individuals holding UK residential property via offshore companies).
     
  2. “Non-dom” status will only be available for UK tax purposes for the first 15 years of residence in the UK.
    From April 2017, “non-dom” status will fall away after 15 years of residence in the UK, because such long term UK residents will be deemed UK domiciled for tax purposes under the new rules. Existing financial charges which are paid in order to opt in to the “non-dom” regime will remain in place (although the top level charge of £90k for those resident in the UK for 17 years will eventually become redundant).
     
  3. Some individuals who are born in the UK but subsequently move abroad may be prevented from achieving “non-dom” status when they return to the UK.
    These changes will affect individuals born in the UK, to UK-domiciled parents, who then leave the UK and acquire a “domicile of choice” abroad.

These new restrictions are in addition to the changes imposed in April 2015, pursuant to which non-UK residents need to notify HMRC whenever UK residential property is sold (and may need to pay UK Capital Gains Tax on the gains made).

The continuing focus on the tax treatment of “non-doms” and non-resident individuals, and in particular their UK residential property assets, means it is now vital to consider how offshore structures are used to hold assets.

Excluded property trusts look set to remain an important planning tool for “non-doms” for most asset classes. Those wanting to buy a residential property in the UK however may well just decide to keep things simple and buy in their individual names. That will necessitate making a UK will and may encourage use of borrowing and/or life insurance to address inheritance tax.

If you would like more information about these changes or to discuss any taxation matters you may have please contact:


Mark Whiteside

Partner, Corporate
Tel: 00 44 151 600 3269
Email: mark.whiteside@brabners.com


 

If you wish to discuss any UK will requirements please contact our Private Client team.


Brabners goes INTAnational

Thursday 12th November 2015

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International Bulletin - Issue 1

In May 2015 the International Trade Mark Association (INTA) held their 137th annual meeting in San Diego, California.  With 9,875 registered attendees (and many more unregistered) the event was the largest annual meeting in the Association’s history.

INTA has more the 6,500 member organisations, represents 30,000 trade mark professionals from 190 countries from around the globe and is dedicated to supporting trade marks and related intellectual property.

Brabners LLP has been a member of INTA for a number of years, through which we have developed long-standing relationships with many foreign attorneys, particularly in the US and Europe.

Colin Bell and Hayley Morgan attended the 2015 conference from our IP team in our Liverpool office and maintained these business relationships with foreign attorney colleagues as well as attending many other meetings and events.

This year the key note speaker was Walter E. Robb, Co-CEO of Fortune 500 Company Whole Foods Market who focussed on ‘building brands’ in his Keynote Address. Surrounding the conference there were demonstrations from external parties regarding the release of the new gTLDs and in particular .sucks which provided a good topic of discussion for all those present, especially whether brand owners should be registering .sucks domain names to prevent third parties from being able to register them and attempt to establish genuine critical commentary websites.

Colin and Hayley went to a seminar on Managing Multi-Jurisdictional Trademark Disputes which is particularly relevant to our internationally-present clients.  They also attended the What is Parody? and received useful information on the Italian position from Noemi Parrotta, an attorney at Studio Legale SIB.  This area is likely to become more relevant to our clients following the recent inclusion into UK law of a parody defence to copyright infringement.

Hayley is a current member of the INTA Bulletin Committee and she attended her annual committee meeting while in San Diego.

More than 3,000 trade mark professionals are part of 37 committees. These volunteers contribute to the advancement of INTA’s collective objectives and help to shape the development of trade marks and related IP globally.

Both Colin and Hayley have been selected to serve on volunteer committees for the next term – Colin is now part of the Non-Traditional Marks Committee which helps to shape the development of these specific types of marks; and Hayley is part of the Public Information Committee which focuses raising public awareness of the importance and relevance of trademarks and IP. Their appointments will commence on 01 January 2016 and last for 2 years.

Brabners will be attending INTA 2016 in Orlando from 21-24 May and we look forward to meeting up with our contacts and other international attorneys and brand owners while there.

If you would like more information about INTA or for help and advice regarding trade marks please contact either:


Colin Bell

Partner, Commercial & Intellectual Property
Tel: 00 44 151 600 3281
Email: colin.bell@brabners.com

 


Hayley Morgan

Intellectual Property Executive and Part-Qualified Trade Mark Attorney
Tel: 00 44 151 600 3466
Email: hayley.morgan@brabners.com


International

Welcome to the new International Bulletin.