[lawmarkuk]

Going Dutch?

Dell Inc. v. Holland [2019] DRS 22018

Who owns, or is entitled to own, a particular .uk domain name defines the work of Nominet’s Dispute Resolution Service.

They recently considered a complaint by Dell relating to the registration of the ‘dellspares.co.uk’ domain.

Although satisfied that Dell had ‘shown rights in respect of a name or mark which is identical or similar to the domain name’, the adjudicator was not satisfied that the registration was an ‘abusive registration’.  

In coming to this conclusion, the adjudicator considered that the use of ‘Dell’ was not automatically unfair.  There was no evidence of actual confusion being caused: the target website was not being used to sell any competing products; there was no unfair advantage; nor did it attempt to disrupt Dell’s business.

Accordingly, Dell’s application was refused, with the registration remaining with the Respondent.

This case highlights that not all similar registrations are necessarily an abuse and perhaps imitation is indeed the sincerest form of flattery? 

[lawmarkuk]

What is Airbnb?

Well, it isn’t Uber according to the Court of Justice of the European Union (CJEU) which has previously ruled that Uber was not an ‘information service provider’ rather a ‘transport service’ which fell within domestic legislation.  

In the instant case, the French tourist board, Association pour un Hébergement et un Tourisme Professionnels, complained that Airbnb, an unlimited company registered in Ireland, did not hold the requisite real estate licence to conduct its business in France.  

Applying the rationale of the Uber judgement, it was contended that Airbnb was an integral part of the overall service being provided – namely accommodation rather than as an ‘information society service’ under the E-Commerce Directive 2000/31/EC.    

The CJEU took a different view in concluding that Airbnb was a ‘service normally provided for remuneration, at a distance, by electronic means and at the individual request of a recipient of services’ – in other words, an ‘information service provider’.  

Consequently, the free movement of such services between one Member State (Ireland) and another (France) could only be restricted in accordance with the E-Commerce Directive or indeed not at all in the instant case.

[lawmarkuk]

Back to porridge: oats... and other ingredients

Prep Time: 10 min 

Cooking Time: 50 min

Ingredients

A. Neill’s Coarse Wholemeal Flour (1lb)

B. Flahavan’s Porridge Oats (2oz)

C. Wheat Bran (2oz)

D. Wheat Germ (2oz)

E. Sugar (1 tsp)

F. Salt (2 tsp)

G. Bicarbonate of Soda (2 tsp)

H. Buttermilk (1 pint)

I.  Egg (x1)

J. Toasted Sesame Seeds (1/2 oz) 

Method

Mix dry ingredients (A-G) in bowl

Add (H.) Buttermilk 

and (I.) Egg

Mix well with a wooden spatula

Transfer to 2x lightly oiled 1lb baking tins

Dust top with (J.) Toasted Sesame Seeds

Bake in a preheated oven at 180oC for 40 mins

Turn loaves in baking tins and bake for further 10 mins 

Wrap loaves in a moist tea-towel to cool 

... Enjoy!

[lawmarkuk]

Pensions equality

Miller v Ministry of Justice [2019] UKSC 60

The Supreme Court in London recently considered when the clock starts ticking in employment law claims. 

The applicants were four judges who had previously been engaged in various fee-paid part-time judicial roles without any formal contracts of employment.  They sought equal treatment for pension rights under the EU Part-time Workers’ Directive.

The Employment Tribunal took the view that, as their claims had been lodged more than three months after the end of their part-time appointments, they were out of time.  This position was adopted by the Upper Tribunal and then by the Court of Appeal without any substantial degree of legal scrutiny.

In a unanimous decision, the Supreme Court determined that the relevant time limit ran from when the benefit was to be drawn down rather than the conclusion of the part-time appointment. Although judicial officers are not employed under a contract of employment, the Part-time Workers’ Directive must be construed in an artificial context by analogy. The term ‘qualifying judicial office’ may well include several different appointments. Lord Carnwath noted that this approach 'accords with the common sense of the matter'.

With hundreds of judicial claimants waiting in the wings, it has been reported that this decision could cost the Ministry of Justice up to £1billion.

[lawmarkuk]

Shnuggle. Munchkin.

Shnuggle Ltd v Munchkin Inc [2019] EWHC 3149 (IPEC)

When does a design become more than just similar? This is a question with was recently considered by the Intellectual Property Enterprise Court in London.

By way of background, the Claimant (‘Shnuggle’) – a Newtownards-based husband and wife led team who featured in BBC2’s ‘Dragon’s Den’ in 2017 – designs, manufactures and sells baby products.  The Defendant (‘Munchkin’) is a large US corporation in a similar line of business.  

Shnuggle holds two registered Community designs:

SHNUGGLEBABYBATH (‘Mk 1’)

ShnuggleBath (‘Mk 2’)  

Additionally, Shruggle claims unregistered design rights under the Copyright Designs and Patents Acts 1988 in respect of certain elements of their Mk 1 and Mk 2 designs.  

The Mk  2 product, building on their Mk 1 design, achieved significant commercial success internationally.  

Munchkin introduced their ‘Sit & Soak’ product to the UK market in January 2019 which appeared remarkably similar to Mk 2.  

Shnuggle sued Munchkin alleging infringement of (a) registered Community designs and (b) unregistered design rights.  Munchkin counterclaimed seeking a declaration that one of the registered Community designs was invalid.

It was conceded at Trial that Mk 2 had been a point of reference in the Munchkin design.  Munchkin, however, challenged the validity of the registered Community design in respect of Mk 2.  

The judgement provides a useful treatise on design rights before concluding that Mk 2 registration was invalid as in lacked ‘individual character’ to distinguish it from Mk 1. Essentially it was an evolution rather than a revolution over the initial registered Community design.  In the alternative, it was held that the Munchkin design was sufficiently different from Mk 2 so as not to constitute a breach.

What steps can your business take to protect its intellectual property?

[lawmarkuk]

Counting the cost of non-compliance

European Commission v. Ireland (C-261/18)

Those in the know will tell you that they are not windmills; they are wind turbines. You know what I mean, though.  The residents of Derrybrien, Co. Galway certainly do. 

In 2003, in the course of the construction of a 70-turbine wind farm in the Slieve Aughty mountains, there was a landslide which is believed to have killed up to 100,000 fish along a 10-mile stretch of water running to Lough Cutra.

The Court of Justice of the European Union (CJEU) held in 2008 that Ireland had infringed Directive 85/337/EEC on the assessment of the effects of certain public and private projects on the environment.  

It became apparent that construction commenced without a prior environmental impact assessment having been carried out as required under the Directive. Although Ireland subsequently introduced a retrospective regularisation procedure, it was never actually implemented in respect of Derrybrien.

This week, the CJEU revisited the issue concluding that it was incumbent on the Member State ‘to take all measures necessary to remedy the failure to carry out an environmental impact assessment.’

Given the ‘seriousness and duration’ of the breach, the Court imposed a fine of €5 million with a further daily penalty of €15k until such times as the 2008 ruling is complied with.

At that price, the distinction with windmills will be all too apparent on the Irish taxpayer.

[lawmarkuk]

£15k award over racial abuse

Anysz v. Sizzlers NI Limited (The Industrial Tribunals, 28 October 2019) 

It is difficult to construe ‘go back to your own… country’ as anything other than harassment on the grounds of race.

This was the very language used in a Magherafelt kitchen (albeit peppered with a few profanities!) and directed at the Claimant, a Polish national, employed as a chef by the Respondents.  

The Industrial Tribunal in Belfast heard how the Claimant was subjected to verbal abuse by a co-worker who also started a ‘whispering campaign’ to isolate him from the rest of his colleagues.

It was found that the restaurant proprietor permitted the situation to continue, be repeated and to escalate. This included separate incidents where the co-worker deliberately collided with the Claimant while carrying a metal tray, and slamming his arm in the door of a fridge.  

The Tribunal concluded that the abusive behaviour of the co-worker was ‘vocal contempt for the claimant's foreign origin, and the fact that he had come to Northern Ireland to live and work’.

The Respondents’ failure to deal with these incidents ‘was not an omission, but part of a deliberate course of action, resulting in the behaviour continuing’.  The restaurant has since ceased trading.

An award of £14,000 was made for injury to feelings with a further £1,204.88 for the failure to provide the Claimant with a written statement of terms and conditions.  

What steps has your business taken to foster a culture of dignity at work?

[lawmarkuk]

Covert recordings: ‘reprehensible …but admissible’

Mustard v Flower [2019] EWHC 2623

Can covert recordings ever be admissible in evidence? This was a question recently considered by a Master of the Queen’s Bench Division in London.

In January 2014, the claimant’s stationary Honda Jazz was impacted from behind by the Defendant’s Fiat Punto.  Liability is not in issue.  The claimant was 34 years old at the time and employed as a Quantity Surveyor.  The case turns on the extent of the injuries sustained with marked differences between the various experts engaged by the respective parties.  The claimant’s case is that she sustained a sub-arachnoid brain haemorrhage and a diffuse axonal brain injury such as to have left her with cognitive and other deficits. The defendant’s experts maintain that the claimant suffered only minor brain injury, if at all.

The claimant was examined by the defendant’s experts.  On the advice of her solicitor, she recorded these examinations on a digital device.  This included covert recordings of her encounters with the defendant’s neurosurgeon and orthopaedic surgeon.  In addition, the claimant inadvertently recorded the entirety of her consultation with the defendant’s neuropsychologist beyond their express consent.

The defendant was aware of this practise and invited the claimant to also record her encounters with her own medical experts.  These encounters were not, however, recorded.

Master Davison rejected arguments that the recordings were contrary to the Data Protection Act.  He ruled the evidence admissible but was critical of the claimant’s ‘reprehensible’ actions which ‘lacked courtesy and transparency’. That said, Master Davison noted that covert recordings had ‘become a fact of professional life’ and he went on to suggest the Association of Personal Injury Lawyers and Forum of Insurance Lawyers work together on a protocol for the recording of medical examinations.

It is [in] the interests of all sides that examinations are recorded because from time to time significant disputes arise as to what occurred… In that situation, it is important to have a complete and objective record of the examination, which is subject to appropriate safeguards and limitations on its use. It is desirable that the parameters of such recording should be on an “industry-wide” agreed model.

[lawmarkuk]

Vauxhall. Cavalier?

The Manchester Ship Canal Company Ltd v Vauxhall Motors Ltd [2019] UKSC 46

A forfeiture clause in a licence was the subject matter of a recent case before the Supreme Court in London.  The case turned on an equitable remedy developed at common law.

Vauxhall’s Ellesmere Port plant is beside the Manchester Ship Canal.  When it was being built in the 1960s, they entered into a contract with the Manchester Ship Canal Company to allow them to drain surface water and treated effluent into the Canal.  In consideration of this, Vauxhall agreed to pay an annual licence fee of £50. Under the agreement, there was a clause allowing the Canal Company to terminate the licence if Vauxhall did not pay the annual rent within 28 days of in being demanded.  

In 2013, due to ‘an administrative oversight’, Vauxhall failed to pay its rent within 28 days of a demand. The Canal Company, therefore, served notice terminating the Licence.  This put Vauxhall in the position where they would have to renegotiate the Licence if they wished to continue to operate. The market rate for such rights could have been in the region of £400,000.

At first instance, the Court granted ‘relief from forfeiture’ and effectively reinstated the Licence subject to the arrears being paid. This position was upheld by the Court of Appeal.  The Canal Company appealed to the Supreme Court.  

Dismissing their appeal, Lord Briggs reviewed the historic case law and noted that there may be ‘forms of possessory rights in relation to land which are not perpetual, but which might nonetheless qualify for equitable relief from forfeiture.’ This is an equitable remedy developed by common law rather than a creature of statute.  

In the instant case, the Licence did, however, grant ‘possessory rights’ to Vauxhall with virtually exclusive possession and a high degree of control in perpetuity.  Accordingly, Vauxhall was entitled to the relief sought.

From a landlords’ perspective, this case highlights the benefits of including a review mechanism for any licence fee particularly where the licence of a long-term nature.

[lawmarkuk]

The outstanding benefit of innovation

Shanks v Unilever Plc [2019] UKSC 45

Who owns the rights to an invention: its inventor or the employer of that inventor?  This is a question that was recently considered by the Supreme Court in London.

The Appellant, Professor Shanks, worked for a subsidiary of the Respondents.  In the course of his employment, he conceived an invention to allow diabetic patients to monitor blood glucose levels in 1982.  The rights to the ‘Devices for Use in Chemical Test Procedures’ belonged to his employer under the Patents Act 1977 (‘the Act’). Over time, the Respondents derived a net benefit from the Shanks patents’ of approximately £23.4 million.

In 2006, the Appellant sought compensation under the Act on the basis that the Shanks patents had been of ‘outstanding benefit’ to the Respondents and he was entitled to his fair share.  This claim was rejected at first instance in 2013 on the basis that the benefit was not ‘outstanding’ for the Respondents given the nature and size of their business.  This position was upheld by the High Court and the Court of Appeal.

The Supreme Court allowed the Appellants appeal.  The provisions of the Act allow for an employee who makes an invention which belongs to the employer from the outset and for which a patent has been granted to be entitled to compensation if they can establish that:

the patent is, having regard among other things to the size and nature of the employer’s undertaking, of outstanding benefit to the employer; and

it is just that he or she be awarded compensation.  

Delivering judgement, Lord Kitchen, determined that Professor Shanks was entitled to his fair share of £2m.

[lawmarkuk]

Spooked!

Buchanan v. Courtney [2019] NIQB 84

The High Court in Belfast recently considered the question of liability for a workplace accident.

By way of background, the Plaintiff is an experienced horsewoman who was employed by the Defendants. Their business includes looking after circa 30 horses. 

In the course of her employment, the Plaintiff was exercising one of those horses, ‘Kate’, noted for its good temperament. Kate was travelling at a ‘slow trot’ when it became spooked by a piece of blue plastic bale wrap lodged in a hedge. As a result, Kate fell on the Plaintiff causing her substantial injury.

Another employee gave evidence contradicting the Plaintiff’s account. Specifically, it was claimed that an inspection had taken place immediately prior to the incident and that no specific hazards were noted. Further, it was alleged that a system for dealing with bale wrap, a recognised spooking risk, was in place. There was no documentary evidence to support this assertion.

The Court held that:

The defendant owed a duty of care to the plaintiff, as an employee, to take reasonable care in the circumstances. …The breaches of the defendant’s duty of care, both in respect of the absence of a system for dealing with debris from opening bales of fodder and in relation to the inspection of the route to be taken by horses within the enterprise, in the court’s estimate, on the balance of probability, caused the risk to transpire, with the result that the plaintiff sustained substantial personal injuries as a result of the accident.

Damages were agreed in excess of £90k.

What steps has your business taken to mitigate hazards in your workplace?

[lawmarkuk]

Forget me? Not.

Lloyd v Google LLC [2019] EWCA Civ 1599

The Court of Appeal in London recently considered the use of Third-Party Cookies placed on a user’s device to identify and track internet activity.  

Google used their ‘DoubleClick Ad cookie’ through Apple’s Safari browser. Google were able to bypass the default settings on the browser to place their cookie without the users’ knowledge or consent. This enabled them to target advertisements based on the users browsing habits.

The innovative class-action, led by former Which? Director, Richard Lloyd, on behalf of more than 4 million iPhone users, seeks a uniform amount of damages without seeking to prove actual damage for each individual.

As a preliminary point, permission is required to serve proceedings outside of the jurisdiction on Google in the USA. This was refused by the High Court in October 2018.  The Court of Appeal has now overturned this decision with Sir Geoffrey Vos, Chancellor of the High Court, describing it as a claim:

…to call Google to account for its allegedly wholesale and deliberate misuse of personal data without consent, undertaken with a view to commercial profit.

The case will now proceed to trial. If successful, a suggested tariff of £750 per user could place Google’s potential liability in £billions.  

That said, given these high stakes, it seems unlikely that this will be the end of the matter.  Although the Court of Appeal refused permission to appeal the point, it seems likely that Google will seek to petition the Supreme Court directly.

[lawmarkuk]

Indirect discrimination: a bitter pill...

Pharmaceutical Assistants Association Co. Ltd. & Ors v The Pharmaceutical Society of Ireland & Ors [2019] IEHC 663

Pharmaceutical Assistants in the Republic of Ireland have challenged proposed new rules to restrict their role.

They are currently permitted to carry out the what of a pharmacist during his or her ‘temporary absence’. There’s is a distinct profession, governed by statute, and within the purvue of the Respondents.  No new Pharmaceutical Assistants have qualified in Ireland since 1985, with the majority of post-holders being female and aged 55+.    

At present, Pharmaceutical Assistants are permitted to cover short absences of the pharmacist such as lunch hour, two half days or one day per week as well as unscheduled short absences and the standard annual leave of the pharmacist, not exceeding 14 days in any single absence.  

These rules are to be amended, subject to Ministerial approval, to restrict the ‘temporary absence’ that can be covered to one hour per day.  The Applicants are seeking to challenge this by way of judicial review.  

The Respondents sought to split the issues into two separate hearings.  Refusing their application, Mr Justice Barr said:    

It seems to me that it would be a much better use of time and money to have all the issues argued at the one hearing, rather than having the administrative law issues determined first and then possibly having another full-blown hearing a number of months later on the constitutional issues.  

The case is to proceed to full hearing on all matters.

[lawmarkuk]

What does your email signature say about you?

Neocleous v. Rees [2019] EWHC 2462 (Ch) 

A Court in Manchester recently considered whether a binding contract for the sale of land in the Lake District could be formed on foot of an email chain including a solicitor’s email signature.

It is well established that a contract for the sale of land requires the essential ingredients of offer, acceptance, consideration and an intent to create legal relation.  Further, it must be in writing, incorporating the terms expressly agreed, and be signed by, or on behalf, of each of the parties.

By way of background, it related to the settlement of a right of way dispute and the Defendant has given their solicitor express instructions to accept the offer. The Defendant later attempted to renege on this for technical reasons. There had been an email chain, which identified the property and included an agreed price. The issue was whether such email where ‘signed’ for the purposes of forming a contract.  

It was held that the existence of an automated email signature was sufficient to comply with the formalities required to form a binding contract between the solicitors’ respective clients:

the footer was present because of a conscious decision by the sender to insert the contents;

the sender was aware that their name was being applied as a footer;

the use of ‘Many thanks’ before the footer, showed an intention to connect the name with the contents of the email; and

the name and contact details in the signature were in the conventional style of a document signature.

This is a case that essentially turned on its own facts with evidence of an intention to create a contract, in writing, being concluded by a sign off from a solicitor.  It seems unlikely that a similar conclusion would have been reached in the absence of such formalities.

That said, there is no harm in reviewing your current email signature to ensure that you don’t find yourself in a situation such as this.

[lawmarkuk]

Spoiler Alert: You are going to die

You may well be a fan of the BBC’s ‘Heir Hunters’, now in its 13th series.

One case that might not have made the cut was that of former model and socialite Teresa Amstell, who died in 2011 at the ripe old age of 98 – seemingly without making a Will. Her apparent intestacy was picked up by an heir hunting company who managed to track down around 30 distant relatives likely to inherit.

It subsequently came to light that Mrs Amstell had apparently made a Will in 2009 – favouring a particular nephew – which had seemingly been ‘misplaced’.  

Central London County Court heard that the heir hunters had proceeded ‘with gusto’ to take control of the estate and benefit from £75k in commission.  This included changing the locks on her home and clearing it out before incurring significant costs to challenge the Will on the grounds of the deceased’s capacity. 

This exercise was considered ‘pointless’ by the trial Judge who found in favour of the nephew who was able to produce a copy of the Will:

The decision not to disclose the material was a conscious and deliberate decision, which was unjustified in the circumstances. [The heir hunter] treated this as a commercial venture and... acted in a belligerent and provocative manner which appears to be intended to run up costs and bring pressure to bear on [the rightful beneficiary] to withdraw or settle the claim. There was a specific and deliberate intention to run this litigation as disproportionately, obstructively and expensively as possible.

As Northern Ireland is a comparatively small jurisdiction, where it can often seem that ‘everybody knows everybody’, the role for heir hunters may be somewhat limited.  That said, in the words of Benjamin Franklin (1706-1790):

‘...in this world nothing can be said to be certain, except death and taxes.’

You can, of course, avoid all of these difficulties by simply making a Will…

[lawmarkuk]

‘Time and tide wait for no man’

Geoffrey Chaucer (1343-1400)

Zulu & Gue v. Ministry of Defence (Employment Tribunals, 5 September 2019)

The Employment Tribunals in London recently considered a series of complaints of discrimination, harassment and victimization on grounds of race made by two former paratroopers.

By way of background, the Claimants, both of black African origin, alleged that they had been subjected to harassment for several years. Many of their claims were, however, ruled inadmissible due to the passage of time. It should be noted that, in Northern Ireland, most tribunal claims must be made within three months, but this can vary. 

Complaints that fell within the jurisdiction of the tribunal included an incident in January 2018 when photographs of the Claimants displayed outside their rooms, in an area of the barracks accessible only with a key, were defaced with Nazi symbols and derogatory comments. 

Judge Baty presiding concluded that this was ‘unquestionably related to race’ and must have been carried out by a member of their own battalion:

… with the purpose of violating the claimants’ dignity and creating an intimidating, hostile, degrading, humiliating and offensive environment for them…   The conduct was unquestionably unwanted; the graffiti in question was of the most unpleasant nature, set out on… personal photographs and was racially highly offensive.

The Claimants are reported to be pursuing a claim for compensation on foot of the ruling. 

In the meantime, the Secretary of State for Defence commissioned a review of armed forces culture which reported in July 2019 and made various recommendations to address systemic discrimination, bullying and harassment.

[lawmarkuk]

Rates relief and ‘qualifying facilities’

Department of Finance v. Quinn [2019] NICA 41

The Court of Appeal in Belfast recently considered the question of rates relief for persons with disability.

By way of background, the Applicant had applied to the Department for special rates relief in the form of Disabled Persons Allowance.  The application was refused on the grounds that there were no ‘qualifying facilities’ in her home.  The Applicant’s appeal to the NI Valuation Tribunal was successful on the basis that the ramps to the front and back door of her home were facilities necessary to meet her needs and that they were ‘qualifying facilities’ for the purposes of the relevant legislation.  

The Department appealed this decision by way of Case Stated to the Court of Appeal.  

The case turned on the construction of the term ‘including’ in the legislation:

This Article applies to—  (a)  a hereditament in which there is a facility which is required for meeting the needs of a person who resides in the hereditament and has a disability, including a facility of either of the following descriptions— (i)  a room, other than a kitchen, bathroom or lavatory, which is wholly or mainly used (whether for providing therapy or for other purposes) by such a person; or (ii) an additional kitchen, bathroom or lavatory… [emphasis added] 

‘Hereditament’ is a fabulous term derived from the Latin ‘hereditare’ meaning to cause to inherit, in this context, real property.

The Court of Appeal considered at length whether the list of facilities specified in the legislation should be construed as exhaustive, before concluding that it was: the purpose of the legislation was to provide rate relief where the rateable value of the property is increased by the presence of the facility required to meet the needs of the person with disability.  

Accordingly, a ramp can not be considered as a ‘qualifying facility’.