Archive for the ‘Commercial Litigation’ Category

Trade Mark – Whole, Not Parts of Whole, is What Matters

The High Court has confirmed that a trade mark refers to the general impression given by the mark, not to the details of the mark and this can include auditory and conceptual factors as well as purely visual ones.
The important issue is whether the average consumer would be misled bearing in mind that the mark is perceived as a whole, not by its individual parts.
Merely creating a mark that is subtly different from a trade mark may well be insufficient to prevent an action for violation of the trade mark or ‘passing off’ (deriving an economic benefit from it) if the overall impression is similar. For advice on all trade mark and other intellectual property matters, contact us.

Reasonable Approach Pays in Court

Keeping your head (and thereby taking a reasonable approach) when all about you are losing theirs can pay dividends in court.

In a recent case involving the break-up of a limited liability partnership (LLP), a partner who had been effectively expelled by the other members made an offer to them, in open correspondence (correspondence which is not legally privileged), that they should buy out his share in the LLP at fair market value.
The offer was rejected. When the case went to court, the court ordered that the ex-partner’s share should be bought out by the other members of the partnership at fair market value.
Because he had made the offer in open correspondence, the court ruled that the ex-partner’s costs should be settled on an ‘indemnity’ basis, which means he will receive approximately 90 per cent of his costs from the losers. Normally, the winner can expect to receive about 70 per cent of their costs from the loser.
The courts generally react favourably to litigants who are shown to have tried to adopt a reasonable approach.
We can help you negotiate a successful outcome to your commercial dispute.

Trade Mark Infringement Can be Based on Sound

Infringement of a trade mark need not be a visual issue: a trade mark can be infringed when the sound of the trade mark is infringed..

The case arose when the international toy manufacturer Hasbro alleged that its trade mark ‘PLAY-DOH’ had been infringed by a company selling ‘Play Dough’, an edible dough for children. The marks were not similar in appearance, nor were the products physically identical.
The defendants argued that PLAY-DOH had become synonymous with modelling clay and was thus so generic in meaning that it had lost its distinctiveness. It would not therefore qualify for trade mark protection. They also argued that if the words PLAY-DOH could be extended to cover ‘Play Dough’, then they lacked ‘distinctive character’, which is a necessity for a trade mark to be enforceable.
The court rejected both arguments.
It is good sense to make sure that you research trade marks before you start to use any trading style.We can assist you to make sure that you do not infringe others’ trade marks, and help you to protect your own trade marks and the rights attached to them.

Email Terms Apply in Contract

A recent case in the Court of Appeal has demonstrated that terms agreed by email can amount to a contract despite a formal contract referred to in the emails remaining unsigned. The case concerned a commodities trader and a fuel storage company that had entered into negotiations for the provision of a facility to store 3,000-4,000 cubic metres of derv fuel.

In October 2008, the commodities trader Clear plc made enquiries concerning the availability of storage capacity at Immingham Storage Company Ltd.’s facility in Immingham, Lincolnshire. Following an exchange of emails, it was established that the required storage capacity would be available from 1 May 2009 and a quotation for the storage service was sent to Clear by email.
The quotation included details of the storage availability and stipulated a minimum 12-month contract with 6 months’ notice of termination. It was stated that the quotation was subject to tankage availability and the approval of the Immingham Board. The quotation was also subject to ‘General Storage Conditions’, which were also attached to the email.
The final sentence of the document was ‘A formal contract will then follow in due course’. It was signed on behalf of Immingham and contained space for a signature from Clear under the words ‘we hereby accept the terms of your quotation subject to your Board approval’.
Included in the email was a request that the quotation should be signed and returned by fax not later than the 3 January 2009 in order for the storage capacity to be allocated. In the event, the document was signed with the approval of various officers of Clear and faxed back to Immingham on 5 January 2009.
Receipt of the fax was acknowledged by Immingham and a subsequent email noted its acceptance of Clear’s offer to take up 4,000 cubic metres of storage capacity at Immingham’s depot starting no later than 1 May 2009. It was also stated that a further confirmation contract would be drawn up and forwarded for signature. This was done on 23 January, when a legal adviser employed by Immingham wrote to Clear with a contract document enclosed and stating that ‘the contract will formalise the existing situation between us as detailed in our quotation to you’. The letter requested the document be signed and a copy returned.
Despite acknowledging receipt of the document and stating that it would be signed and returned within the week, the contract was never returned. Clear was unable to source the fuel and so made no delivery to Immingham. The storage facility was kept available for May and June, with Immingham sending invoices on 1 May and 1 June. On 25 June 2009, Clear denied the existence of any agreement, stating that acceptance of the quotation did not constitute a formal contract.
During the initial court hearing Clear argued that return of the signed quotation was not an offer capable of acceptance as a contract because of the inclusion of the words ‘A formal contract will then follow in due course’. This argument was rejected by the trial judge, who quoted established precedent for so doing. Clear was ordered to pay damages of some £197,000.
On appeal, there was further discussion over whether the existence of a contract between the two parties was conditional upon the later provision of a subsequent ‘full contract’. The Appeal Court held that the language of the relevant emails was quite explicit in being a ‘contract confirmation’ and in the acceptance of a contractual offer. The Court also noted that there was nothing in the signed quotation stating that it was ‘subject to contract’. It follows that the subsequent formal contract, had it been signed, would have been no more than ‘further confirmation’ of the contract that already existed.
The appeal by Clear was thereby dismissed.
It is a popular myth that a contract must be agreed in a written document.The fact is that terms agreed by correspondence, including emails, can constitute a legally binding contract. Businesses that don’t want to be caught out in this regard should seek expert legal guidance at the earliest stage of negotiations.