International law from CCW

Avrio in Amsterdam

So, why did 75 odd (yes – some very odd) lawyers and spouses/partners meet at the start of October in Amsterdam?

Well, obviously, for the beer, jenever (Dutch gin) and haaring (raw herring, Dutch style – better with every jenever taken…). But, from what I can remember (after all that jenever) it was a very successful meeting of Avrio Advocati, the international legal group where we are the only Scottish members. We talked quite a bit about how all markets, but the legal market in particular, are changing quickly – and how things might look completely different in 5 years’ time.

That seems to be particularly the case in terms of employment/engagement (and expect to hear more on this from Donna in the future). According to the Dutch academic addressing us, people now can expect to have multiple jobs, both consecutively and concurrently – but also that people may be hired by project. I’m still trying to come to terms with what that means for career development, employment related benefits (just think of health cover in the US) and so on. If anyone thinks, they know – let me know.

As important as the formal part of the meeting was, the informal part was excellent. That’s where we really get to know our colleagues – and that’s important for you, because if I have to refer your problem to one of my colleagues I think it important that you know the person responsible for your work. My experience is that, bad as it is having to deal with lawyers (the kind, cuddly people that we are…) it is much more stressful to have to do that in a strange place and another language. So, if we can help by introducing you to the people and practice, that should help.

So, please look on our friends in Avrio as a resource for you to use: only a few of them really bite!

Orange isn’t the new black? Specsavers v Asda trademark dispute

Orange isn’t the new black?

The final outcome of the Specsavers v Asda trademark dispute saga has finally been decided and the point concerning the validity of the use of marks in colour which have been registered in black and white comes into play again.

Previously, if you registered a trademark in the UK or EU in black and white, but then used the same mark in colour (like the specsavers logo), the mark in colour was automatically protected by the mark registered in black and white – but not anymore!

Back in April this year, the trade mark offices of the EU opened a can or worms by publishing a “common communication on the Common Practice of the Scope of Protection of Black and White Marks” which concluded the following:

  • A trade mark in B&W is not identical to the same colour unless the differences in colour are insignificant (an insignificant difference means a difference that a “reasonably observant consumer” will only perceive only upon side by side examination of the marks).
  • Priority cannot be claimed either unless the difference is insignificant.
  • A change only in colour does not alter the distinctive character of the trade mark as long as the following requirements are met:
    • the word/figurative elements coincide and are the main distinctive elements;
    • the contrast of shades is respective;
    • colour or combination of colours does not possess distinctive character in itself; and
    • colour is not one of the main contributors to the overall distinctiveness of the mark.

This new approach took effect in the European Office on 2nd June and in the UK on 15th July.

If you have a UK trade mark already registered before 17th July, you should be safe from this new application of “practice” (unless you are unlucky enough that someone takes proceedings against you).

If you are going to register a trade mark in black and white in the UK or EU with the intention to use it in different colours take care and ask yourself… is the change insignificant?

– See more at: http://www.ccwlegal.co.uk/law-news/orange-isnt-the-new-n10242-s11.aspx#sthash.PTv3d5sM.dpuf

Round up of Changes to Intellectual Property Law in 2014

In current times, IP infringement (such as online piracy) has become commonplace and law-makers have struggled to come to terms with how to combat this. There have been various calls for modernisation of the law, but despite lots of debate, very little has actually come into force. However, this year has seen a few minor developments, which are small steps in the right direction.

Copyright

There are a broad range of small changes to the law of copyright. These mainly relate to the exceptions from copyright infringement that are deemed to be “permitted acts”, and result from many years of lobbying by interest groups. Here are some highlights:

  • Disability

There had previously been an exception which covered blind and visually impaired people, but this new provision extends the exception to all disabled people whose access to the relevant work is impeded by reason of their disability. Unless accessible copies are commercially available, copies can be made by disabled persons (including by someone on their behalf) or educational establishments and not for profit organisations for their use. The changes should improve access to books for those with dyslexia, subtitles for the deaf and audio description for those with visual impairment. [in force from 1 June 2014]

  • Research, education, libraries and archives

There are many minor changes under the exceptions here, but of most note is the extension of the exception for research and private study to all copyright works. This now includes sound recordings, films and broadcasts for the first time. A similar change was made to the education exception and antiquated limitations prohibiting “reprographic copying” have been removed. These changes expand the range of resources available for educational purposes and should reduce some of the burden on educational bodies and students alike. [in force from 1 June 2014]

  • Personal copies

To the surprise of many, making a personal copy of a copyright work (such as a music CD) that you own for your own use was previously an infringement of copyright. In recent times, technology has meant that personal copying, in particular format-shifting, has become very commonplace. However, copying your music CD to your iPod has only been permitted since 1 October 2014. The new exception extends to other copyright works, but not to computer programs. It is carefully and strongly drafted, however, so copying a friend’s CD or making your own copy and passing on the original is still an infringement. [in force from 1 October 2014]

  • Parody and quotation

Another new exception is for the use of copyright works in caricature, parody and pastiche. This has long been sought and should make life much easier for comedians, who previously had a minefield to negotiate with such works. A related provision allows for greater use of quotations from works, which were previously only permitted for news reports, etc. Where a work is already in the public domain, it can be quoted by another for any purpose. However, there are several safeguards in place for this, and it will be interesting to see how the courts interpret these rules which will inevitable be tested by people such as those in the music industry. [in force from 1 October 2014]

A theme through the various exceptions is the fair dealing qualification. This applies to many copyright exceptions and is not a straightforward test. It relates primarily to the extent of the copying (e.g. the size or importance of the part of a work copied) and to the extent which the copy competes commercially with the original. Therefore, there will be a degree of uncertainty with many of these new exceptions until they are tested in court.

Orphan works

One final point of note is the planned changes in relation to orphan works. In simple terms, orphan works are copyright works whose owners are unidentifiable or cannot be located. This has caused headaches in the creative industries in particular, as many useful works were unable to be legitimately used. Without a licence or other permission to use a work, the user could be open to infringement actions. The new provisions came into force on 29 October 2014 implement a system whereby a Registry will maintain a register and licensing system which allows people to legally use an orphan work for a reasonable licence fee. The Registry retain these fees and pay them over to the owner, should it be identified.

Design Rights

Design rights are a little known IP right to many, but they are the main way in which non-patentable designs can be protected. One anomaly that existed for design rights was that, unlike other IP rights, the first owner of a work was deemed to be the commissioner, rather than the creator. This position has been reversed in the new Intellectual Property Act 2104 from 1 October 2014.

Several other changes were also made to bring design rights into line with other IP rights, including introducing criminal sanctions of deliberate copying of registered designs; extended exceptions to infringement for private acts, experiments and teaching; and the power to create an opinions service (similar to that already in place for patents).

These changes help recognise the growing significant and reliance on this right and have generally been welcomed.

Patents

Some minor changes have been made to patents law. Of great practical importance to patent users, the rules requiring a patent notice to deprive infringers of the “innocence defence” have been altered. No longer must the rights holder list the patent numbers on the relevant item, but they may instead indicate a website address where information of relevant patents and their numbers is located. This is particularly useful for small items which are subject to many patents.

On the procedural side of things, the IPO opinions service has been extended and the Comptroller General’s powers to revoke invalid patents. This could pose greater problems for patent holders, who are currently only subject to invalidity challenges from third parties. However, the removal of invalid patents from the register is to be welcomed by those seeking to make advancements which such registrations currently thwart.

What’s next?

Although most of these changes are very much welcomed and have been sought for many years, they are still very small steps towards bringing our IP system into the 21st century. Tackling online piracy is still a very real problem, and only a few months ago the government “shelved” the Digital Economy Act regime designed to combat this very problem. There are a raft of reforms being debated at EU and UK level, which may or may not become reality in the coming months and years. In the end, maintaining the balance between the aims of having IP rights, individuals’ human rights and the interests of society as a whole is an incredibly difficult job, and making any progress, such as the items listed above, is to be applauded.

– See more at: http://www.ccwlegal.co.uk/law-news/round-up-of-changes-n10241-s11.aspx#sthash.pZxnhDa2.dpuf

Business Owners and Employers are invited to our free seminars

As part of Fife Business Week 2014, we are delighted to be offering two free seminars –‘Getting Your Business Ready for Sale’ and ‘Employers: The questions you were afraid to ask’ on the 13th and 14thof November respectively, 12 – 2 pm at our Dunfermline Office.

Delivered by Business Gateway Fife on behalf of the Fife Economy partnership and supported by Fife Council Economic Development, Fife Business Week is now in its fifth year and supports local business in their efforts to progress, network and develop. Details of this year’s programme of events and networking can be found here. While non of these events are to be missed, if you attend anything made sure it’s one or both of our events. Places are limited so make sure you book your place soon. Lunch is provided.

 

Employers: The questions you were afraid to ask

“It might be said that it is the ideal of the employer to have production without employees and the ideal of the employee is to have income without work” E.F. Schumacher

 

Sadly, unless someone makes an offer for your business you can not refuse, or your numbers come up on the lotto, you do not live in an ideal world and you must navigate a complex web of seemingly endless employment laws and HR best practice. Even the most savvy and cautious employer can easily trip up – and we know that there are some employees who are deliberately trying to trip employers up. So, come armed with your questions and we’ll give you the answers to some of the questions you always wanted to ask about employing staff. We’ll also list some of the questions you shouldn’t ask your employees.

 

Getting Your Business Ready for Sale

If you run your own business, you will most likely focus your time on making that business profitable. However, unless you plan to work until you keel over, an exit plan is required. That might be to train up a family member or colleague to take over one day, but you may very well intend to sell your business to fund your retirement or your next venture. It’s never too early to start preparing your business for sale, and in this seminar we will help you understand what steps you should take to do that and what to expect when the time comes to sell up. The key topics covered will be:

 

  • How to get your business in good shape for potential buyers.
  • What the typical types of business or company sales are and what they typically entail.
  • The standard steps in the process of selling your business.

YOUR employment forum: social media in the workplace

There was little disagreement from those who attended our forum on managing social media in the workplace that social media and its use has grown rapidly and has fundamentally changed the way many businesses operate. Indeed, many of us sitting round the table said we actively encouraged our employees to make use of social media as a marketing tool. However, everyone was agreed that given the speed with which information and opinions can be shared and the fact that once the information is ‘out there’ it is almost impossible to permanently delete, it can leave employers horribly exposed.

The most obvious risk is that posed by the employee who uses social media to engage in inappropriate conduct. For example, social media has, sadly, brought with it bullying in a different form. Such conduct might breach an employer’s Bullying and Harassment Policy and so should be treated in the same way. But what can an employer do when faced with bullying (or any other misconduct) by their employees out with working hours or away from the workplace? It’s important to remember that employees can be disciplined or dismissed for criminal and non criminal misconduct outside of the workplace.

The key issue for employers to consider is whether or not the misconduct in question affects their employee’s ability to do their job or the employer’s reputation or relationships with clients/customers. And even if the misconduct is ostensibly private (for example, a closed group on Facebook) the very fact that it has come to the employer’s attention would suggest that it is not in fact private in nature.

However, be warned that any argument made that the damage caused by the employee to the employee’s reputation or its relationships must be more than a fanciful one, or the Employment Tribunals will give it short shrift. While some comments may be so harmful to the business or demonstrate beyond doubt the unsuitability of an employee to do the job so as to justify dismissal, if the potential readership is limited or has in fact only been viewed by a very small number of people (regardless of how many could have viewed it) this will be directly relevant to the seriousness with which the employer may treat the misconduct in question and any subsequent dismissal may well be unfair. It was clear from the experiences shared by those attending our forum that this is a particularly tricky issue that they have had to grapple with at one time or another.

Finally, the issues of confidentiality of contact lists and ownership should not be overlooked. LinkedIn for instance, creates a list of business contacts – to whom do they belong, is this information still confidential when made public in this way and what can an employer do to ensure it can access this information?

Employers can answer many of these questions for its employees with clear provisions in its contracts of employment and policies. These can provide that: contacts remain company property; information stored on such media must be returned and then deleted; passwords must be handed over; etc. Traditional post-termination solicitation and dealing with clients and prospects clauses can also be adopted to address the risks posed by social media.

If you would like any further information about managing social media in your workplace then please contact Donna Reynolds

It’s good to talk, but not if it’s discriminatory

People with mental health issues should feel as comfortable talking about it as they are talking about a sprained ankle is the message from the Deputy Prime Minister, Nick Clegg. However, employers must not take this message literally – at least not with job applicants.

Before a job offer (conditional or unconditional) has been made it is unlawful under the Equality Act 2010 for an employer to ask a job applicant (or their previous employer by way of a reference request) about their health other than when the question(s) are necessary for the purpose of:

  • Establishing if the applicant will be able to comply with a requirement to undergo an assessment (i.e. an interview or other process designed to give an indication of their suitability for the work), or establishing if a duty to make reasonable adjustments is (or will be) imposed on the employer in connection with that assessment.
  • Establishing if the applicant will be able to carry out a function that is intrinsic to the work.
  • Monitoring diversity.
  • Taking permitted positive action.

Once the job offer has been made the employer can then ask health questions. However, care should be taken as to how these questions are framed – are you clear that the questions you want to ask about previous and current health are relevant to the job and necessary in order to understand whether or not the application can do the job with reasonable adjustments? And care should be taken as to how the answers are used – are you confident that withdrawing a job offer in reliance on the answers given will not leave you at risk of a claim of direct discrimination?

If you would like any further information, or any help framing questions or deciding what to do with the information your questions have thrown up, please contact Donna Reynolds.

CCW appoints new associates

CCW is delighted to announce that, with effect from 1 November 2014, both Caroline Maher and Emma Arcari are to be appointed as Associates of the firm. Both Emma and Caroline have been valuable members of our team for a number of years and thoroughly deserve their promotions.

Caroline works in our property and employment teams. She recently joined the board of West Fife Enterprise and has extended her expertise to pregnancy and maternity discrimination, successfully bringing and settling two claims in as many months.

Emma is part of our commercial contracts team. She has recently helped several clients to launch distribution networks throughout Europe and beyond. She is regularly published in the Journal of the Law Society of Scotland, and her most recent article covers the possible benefits the new Scottish procurement Act may bring to suppliers.

CCW 10k and Fun Run

CCW fun runThe CCW Linlithgow 10k and Fun Run took place on Sunday, 28 September 2014, and was a great success. The event took over the historic town for the day with around 1000 people participating: including adult runners, junior runners and volunteers. Local scouts, guides, rotary club, churches and many other local businesses and groups played their part in the day, which attracted runners and spectators from as far as Liverpool and the Highlands to participate.

Team CCW all successfully made it to the finish line, raising more than £500 for MS Society. There were many charity runners on the day, but the sharp end of the race was also hotly contested. The overall 10k winner, Paul Sorrie of Shettleston Harriers, was neck-and-neck with eventual runner up, Ryan Beattie of Falkirk Victoria Harriers, until the last few hundred metres. The ladies’ winner, Catriona Probert, won by a clear margin from local runner, Charlotte Fortune of Linlithgow AC.

The Fun Run enjoyed over 200 participants this year, aged seven to fourteen, who were all included in the official chip timing of the event. The winners of the 1.5k race were Lewis Pentecost of Falkirk Victoria Harriers and Emily Jamieson of Linlithgow AC with very impressive times of 6:29 and 7:25 respectively.

CCW’s Donna Reynolds held the finish tape for the winners and Alison Marshall (after completing the race herself) presented the prizes to top off a great day. CCW are proud to have sponsored the event and would like to thank Linlithgow AC for staging such a wonderful day.