Registration of a trademark

  • Registration of a trademark

2.1 In the UK a trade mark must be registered, and the responsible authority within the United Kingdom is the UK Intellectual Property Office.[1] As stipulated under the 1994 Act[2] a registered trade mark is a right in property, and thereby provides the owner of that trade mark the rights and remedies contained under the 1994 Act.

2.2 The registration of a trade mark can be refused however, as stipulated under the 1994 Act. There exist absolute[3] and relative[4] grounds for refusal of registration. The absolute refusal may stem from the non-conformity of the requirements set out in s. 1 (1) of the 1994 Act, the lack of distinctive character and more reasons contained in Part I of the act. Relative grounds of refusal include the similarity that the non-registrable trade mark may share with an already existing trade mark.

  • Common law development

3.1 The tort of passing off has been well established through case law to protect the goodwill of traders, which is illustrated in the case of Consorzio del Prosciutto di Parma v Marks & Spencer[5] as detailed by Lord Oliver, there are three requirements to be met in a passing-off case to succeed, namely – (1) establish a goodwill or reputation attached to the goods or services; (2) demonstrate a misrepresentation by the defendant to the public; (3) demonstrate that he suffers or, in a quia timet action, that he is likely to suffer damage by reason of the erroneous belief engendered by the defendant’s misrepresentation.[6] The case of Francis Day[7] contains within it a concise and clear statement of an overall indicator for a passing-off case – “The thing said to be passed off must resemble the thing for which it is passed off.” This serves as an indicator that similarity is a basic requirement between trade marks in a passing-off case and the case also implies the factor of consumer confusion on a large scale.

3.2 Recently however the boundaries of this common law concept have been broadened as found in the case Cadbury-Schweppes v Pub Squash[8] wherein the confusion arising from an alleged similarity of trade marks had been “more than momentary and inconsequential.” Furthermore, initial interest confusion[9] has now also been found to being able to constitute passing-off, as indicated by the case of Och-Ziff v Och Capital.[10]

[1] Official website – < https://www.gov.uk/government/organisations/intellectual-property-office > Accessed: 27 March 2017

[2] Trade Marks Act 1994 c. 26, s. 2 (1)

[3] ibid. s. 3

[4] ibid. s. 5

[5] Consorzio del Prosciutto di Parma v Marks & Spencer, 1991 R.P.C. 351, 368

[6] ibid. para 20, Study guide from abogados de accidentes office

[7] Francis Day & Hunter Ltd v Twentieth Century Fox Corp Ltd 1940 A.C. 112

[8] Cadbury Schweppes Pty Ltd v Pub Squash Co Pty Ltd [1981] 1 W.L.R. 193

[9] Initial interest confusion – allows for a finding of liability where a plaintiff can demonstrate that a consumer was confused by a defendant’s conduct at the time of interest in a product or service, even if that initial confusion is corrected by the time of purchase. Definition provided by the International Trademark Association <http://www.inta.org/Advocacy/Pages/InitialInterestConfusion.aspx > Accessed: 27 March 2017

[10] Och-Ziff v Och Capital [2011] F.S.R. 11

Relationship between a bank and its customers

Q5. The relationship between a bank and its customers has been analysed as one of depositor/dispotee, principle/agent, of a fiduciary nature, or between creditor debtors. Explain these relationships applied to the banking contract. ( Courts dealing with concept of Fairness of terms and conditions) Abbey v National plc 2009. This post is sponsored by Notary public central London

Agent/Principle

An agent is a person who has the power to represent another legal party (the principal) and brings the principal into a legal relationship with a third party.
An insurance agent (or insurance broker) creates a legal relationship between yourself (principal) and the insurance company (third party)

Common law is the main source of law of agency, however the Commercial Agents ( Council Directive) Reg 1993 contains a number of special rules which apply to agency relationships.

How is an agency relationship created?  

This may be brought about by a formal agreement (written contract) but more usually by implication from the conduct of the parties. No written contract is required. Agents authority may be express, implied or apparent.

Agent’s duties to his Principal: The agent’s duty may be divided into non-fiduciary or fiduciary duties.

The first non f duty imposes an obligation on the agent to follow the principal’s instructions. If the principal’s instructions are unclear then he is not liable.  Regulation 3(2)c of the regulations impose this.

Gilmour v Clark 1853

In this case it was held that if an agent breaches the instructions of the principle, he is liable in damages for any loss suffered by the principle.

Second duty, the agent must exercise skill and care performing his obligations. Where he fails to meet the standard he will be in breach of his duty.

The final non f duty is that an agent is to keep accounts in writing or in some informal medium, depending on what was agreed between and p.

Fiduciary Duties;

Law recognises relationship between A&P is one of mutual trust and good faith. Thus, the principle duty is for the agent to act in good faith and disclose all facts and circumstances with regard to principles business (Bell principles S22)

Regulation 3(1) – builds on the common law duty of good faith, all agents must look after interests of their principles and act dutifully.

Regulation 3(2) – agent must make proper efforts to negotiate, and where appropriate, concluding the transactions he is instructed to take care of and communication all necessary info to principle

The first fiduciary duty is to consider the agents duty to account to the principle in respect of all benefits received in connection with the principles business. An agent cannot take commission without knowledge or consent from principle.

Commonwealth oil and gas v Baxter 2010

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Customer Insurance question

Q2. The Consumer Insurance (disclosure and representation) act 2012. Explain the principles which apply to a business applying to entering into a contract of insurance in relation to disclosure of information.

Insurance is mostly governed by the common law, although the Marine Insurance Act 1906 restated and codified much of the common law for marine insurance purposes. Insurance contracts are carefully worded and the insurer’s liability often depends on whether the situation giving rise to a claim falls within the ambit of the words chosen. Customer insurance is covered by Unfair Contract Terms Act by commercial insurance isn’t. The insurance industry is generally regulated by the Insurance Companies Act 1982.

The contract of insurance is described as a contract uberrimae fidei, or involving the utmost good faith in relation to consumer insurance contracts.

Like the duty of good faith, the duty of disclosure is mutual, although few cases exist that explore the duty as it applies to the insurer. The duty of good faith is wider in ambit than the duty of disclosure. Good faith applies at all times during the insurance contract: during negotiations; the currency of the insurance contract; and the date when a claim is made.

By contrast, the duty of disclosure applies during negotiations, but only up until a binding insurance contract is formed. It revives when the insured renews the contact. Usually annually. There is, however, no obligation on the insured to disclose factors increasing the risk during the course of the insurance contract.

There are three elements of good faith

  • Duty of disclosure of all facts which are material to the risks insured in the insurance policy;
  • Duty not to misrepresent facts
  • Duty not to make a fraudulent claim on the policy.

There are two important issues to consider in the context of disclosure;

  • The state of knowledge or belief of the insurer about the relevance of certain facts to the risk insured; and
  • The test of what is “material” fact to the risks insured in terms of the insurance contract.

The first issue concerns the thorny problem of how the law treats the situation where the insured did not disclose a material fact but was unaware of the fact at the formation of the contract. In such cases it is important to distinguish between a consumer insurance and commercial insurance.

Consumer insurance the law asks: “Did the insured disclose what he knew or did he wilfully turn a blind eye or conceal the factual position?” If he did not disclose what he did not know, the insurer is unable to avoid liability.

In the case of Joel v law union insurance 1908 & Economides v commercial union assurance plc 1998 – held, that the insurer will be under a duty to indemnify the insurance in circumstances where the insured did not know of the material fact and did not turn a wilful blind eye to the matters.

However, in the case of marine insurance (commercial nature) the law is as set out in s18 (1) of the Marine Insurance Act 1906. Here, the question becomes “Did the insured disclose what he knew or ought to have known?” Moreover, in terms of s18 (1) the insured is deemed to know every circumstance which, in the ordinary course of business, ought to be known to him.

The test for Materiality – with regard to the test, there are two possible interpretations. Have a look at Notary public London for additional help

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Limited Liability – Corporate law revision

  1. “…the most direct response to abuses of limited liability is to remove the veil of incorporation and make the shareholders (or directors) liable for the debts and other obligations of the company where abuse occurs.” (Gower & Davis, Principles of Modern company law, 2008, Thomson/sweet and Maxwell p 1999)

Discuss the circumstances in which the corporate veil may be lifted citing appropriate case law.

https://www.incorporate.com/limited_liability_company.html

Before lifting the corporate veil, it is important to distinguish between whether the court is applying the terms of a statue or a contract at common law. When dealing with statutory cases, an important factor is to assess cases where courts disregard the separate legal personality of a company. This essentially allows the court to look at the underlying details of a company. The rationale behind this is that the law will not allow the corporate form to be misused or abused. In those circumstances in which the Court feels that the corporate form is being misused it will rip through the corporate veil and expose its true character and nature.

The salmon principle was established by the HOL in Salmon v Salmon 1897. It was states that once a company is incorporated, it becomes a legal entity separate and distinct from its shareholders. What this means that under UK company law, a company is to be treated like any other independent person with rights and liabilities appropriate to itself.

The test applied by the courts to lift the veil is when there is an indication the company is trying to conceal true facts of the business or there are signs it is mere facade. This principle was laid down in Woolfson v Strathclyde Regional Council 1979. In this case, it involved compensation payable due to a compulsory purchase of land by local authorities.  The business was called Campbell ltd which W had 999 shares and his wife 1. He also owned Solfred Ltd. He argues that, W, C and S should be treated as a separate legal entity and that he should be regarded the owner for compensation purposes. He relied on the case of DHN v Tower Hamlets BC stating they were similar situations. However, Lord Keith refused to follow this judgement based on the fact W, did not own all the shares of the business. Woolfson holds two-thirds only of the shares in Solfred and Solfred has no interest in Campbell. In my opinion there is no basis consonant with principle upon which on the facts of this case the corporate veil can be pierced to the effect of holding Woolfson to be the true owner of Campbell’s business or of the assets of Solfred.

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Company law revision questions pt.1

Q1) Explain the duties owed by the partners of a firm to each other AND                                                                B) the factors which might be construed as indicative or otherwise of the existence of a partnership by implication. And how they exist!

Definition of partnership s1

It can consist of two or more parties. Previously there was an upper limit on membership under s. 716 Companies Act 1985. A partnership must be formed for “business” “every trade, occupation or profession” as per s.45 of the 1890 Act. Partnerships must have “a view to make profit”. Does not need to be an “actual” profit but merely an intention to make a profit. Does not apply to Limited Partnerships, at its root a “partnership” is a contract.

The fundamental problem here is that, in the eyes of the law and in particular s.1 of the 1890 Act, “A partnership is a relationship that is determined by the substance of the interactions between the parties, and not by their conscious wishes or the designation which they choose to apply to that relationship.”

Rules for determining existence of partnerships. Among the different rules in s2, s2(3) is the most important. Despite the confusing words used, s2(3) is believed to mean that the court has to find a partnership if the receipt of profits is the only evidence. In reality, the court has always found other relevant evidences to consider and if so, the assistance of s2(3) would be minimal. Thus, the usefulness of s2(3) is clearly in doubt as shown by case laws and the Law commission has even suggested that the whole s2 be repealed from the Act.

Guidelines to determine if a Partnership exists s2 of 1980 act

Sharpe v  Carswell 1910, Lord  Ardwall:

“In short, joint owners are not partners, but are separate individuals holding definite shares in a common subject, but this does not render them either partners or joint adventurers.”

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