Feeling a little lost when it comes to law fairs?  I expect you are not alone.

Having attended a number of law fairs as a student, I know that the experience can be quite overwhelming and it can be difficult to know where to start. But for me, visiting these fairs was a positive experience and definitely helped to kick-start my law career, having first met Michelmores at the Cardiff Law Fair in 2011.

Law fairs are not just about re-stocking your stationary pot with branded pens and USB sticks (although this is a definite perk), they are much more valuable than this. They are an opportunity for selling. Recruiters strive to sell their firm to the best quality candidates and equally, students want to sell themselves to potential employers.

To help you calmly navigate your way around the maze of recruiter stands, I’ve put together a short guide on how to get the most out of a law fair.

Before the law fair

Yes, I know you’ve heard it all before, but preparation is important. Unless you already have an excellent knowledge of the law firms attending, I recommend conducting some background research:

1. Review the list of exhibitors (your university will normally have a list online)
2. Shortlist potential ‘target’ firms.  It is very unlikely you will have time to talk to everyone so make a list of a half a dozen or so which particularly interest you
3. Research the firms on your shortlist.  The Lawyer recommends identifying the following:

where the firm is headquartered;

• how large it is in terms of partner numbers and turnover;
• how many overseas offices it has, if any;
• how many trainees it typically recruits; and
• the practice areas it focuses on.

As a bare minimum you should review the firm’s website but I would also suggest browsing legal press such The Lawyer and Lawyer2B, the firm’s presence on social media, rankings in Chambers and Partners (in order to find out in which areas of law your chosen firm has its strengths), Lex 100 (for trainee perspectives on life at the firm) and for a bit of light-hearted insider gossip, RollonFriday.

At the law fair

Walking into a room filled with 40+ exhibitors can feel overwhelming. However, armed with your new list of targets, you should feel much more focused and able to confidently approach delegates with a decent knowledge of their firm  Some points to remember:

• Arrive at the law fair early. Presuming that not everyone will take this advice, law fairs tend to get very busy a few hours in and you may have to queue to talk to exhibitors
• Approach exhibitors on your own. As tempting as it is to walk around with your friends, this will only hinder your ability to get the information you want and stand out as an individual
• Ask the delegates interesting questions. As a student I was told not to ask a question if I could find the answer to it online − and remember thinking this was an impossible task given that you can find out almost anything online! Having said that, there should be at least a few points raised from your research that you would like to know more about, be it the firm’s ‘ambition’, it’s clients, sectors or secondments. If you are really stuck, remember that at least one of the delegates is usually a future or current trainee – this is essentially you in a few years time, so asking the trainee how they are getting on is an excellent way to find out about your potential future career
• Take a pen and paper and make a note of the people you have spoken to. This will come in handy when it comes to making applications for Vacation Schemes and Training Contracts
• Dress smartly.  This should go without saying but all too often I have seen people turn up in joggers and UGG boots. Although a good first impression will probably not result in an immediate job offer, many firms make a note of people that impress them. If your application is one out of hundreds, even thousands, this might be the difference that gets you an interview.

After the law fair

Hopefully, the law fair will have helped you identify the firms which you would like to work for, but it is important that you do not sit on this information until the last minute. Here are some things you might want to consider:

• Be aware of the opening and closing dates for applications to your chosen firms. Many firms accept Vacation Scheme applications from November so you may be able to apply straight away
• If you are in a position to make an application, why wait? Deadlines for Vacation Schemes often fall in January, amid coursework and/or exams, so if you can submit an application now, this will save you stress later on
• If you feel that you are not in a position to make an application now, ask yourself “why not?” and seek to remedy this. If you think you are lacking in work experience, make a conscious effort to gain more experience between now and the application deadline. Get involved in your Law Society, do some voluntary work – it doesn’t have to be legal, just something to make your application stand out!
• Finally, if appropriate, mention who you spoke to at the fair in your application as this will help demonstrate your interest in the firm.

This year, I will be attending the Reading Law Fair on 5 November 2014 and my fellow trainees Holly Dobbins and Sarah Duke will be at the Cardiff Law Fair on 4 November 2014, along with Kim Tomlinson and Gabby Essame from Michelmores HR team. If you are interested in finding out more about life at Michelmores, please do come and say hello!

Michelmores has advised Barnstaple based engineering business J+S Ltd in the sale of the company to SEA, a trading subsidiary of Cohort Plc, for £12 million.

J+S Ltd operates from sites in Barnstaple and Aberdeen, and is a leading UK supplier of independent engineering solutions and in-service support operating within the naval support, marine renewable and oil and gas sectors.  Earlier this month J+S announced that it has been selected to supply the Torpedo Launcher System for the new Royal Malaysian Navy.

Michelmores has acted for J+S Ltd since 1999 when the firm advised the management-buy-out team and subsequently acted for the company in its refinancing and share buy back transactions in 2002 and 2008.

The business originally specialised in supplying defence equipment to the Royal Navy including sonar systems and weapons handling and discharge systems but in recent years has successfully diversified into the oil and gas sector and marine renewables

Michelmores partner Samantha Billingham, said:

“J+S Ltd are a very dynamic and profitable business and a real asset to the South West economy. It has been ranked as one of the region’s top performing companies and is amongst Devon’s largest employers.

“Michelmores has had a long journey with J+S and we are all delighted to have been associated with this latest successful transaction.”

This article was first published in Private Client Adviser on 22 August 2014 and is reproduced by kind permission (www.privateclientadviser.co.uk)

Following Macfarlanes’ announcement last month of their plans to leap aboard the innovative bandwagon that is CV-blind interviewing, I felt that this new practice needed considered analysis. The way in which law firms recruit candidates for training contracts is understandably a ‘hot topic’ of trainee-focussed literature, and having penned several blogs providing tips on getting a training contract, it seems prudent to consider whether CV-blind interviewing will affect the current advice that is available to applicants. My concerns centre on how the scheme will actually operate in reality and what, if any, benefits it will provide to candidates and employers.

Firstly, how will the graduate recruitment team ‘vet’ applicants for the interview shortlist? How can the risk of human bias be removed from this stage and not from the interviewers’ panel? In reality, doesn’t this mean that prejudice still occurs, just at an earlier juncture? Further, how will the ‘information gap’ between the graduate recruitment team and the interviewers be dealt with – will there be some form of Chinese wall in place to ensure information that may cause bias is not relayed? And what information will be allowed through, if any?

Surely it is only by gaining an understanding of an applicant as an individual that any interviewer can truly ascertain whether they are right for the particular firm? This means that essentially, aside from having the requisite qualifications, the context of an applicant’s educational background can be disregarded. Are interviewers really so blinkered that the very sight of a CV would limit their ability to see beyond it? I would argue that the exercise of going beyond the person on paper can, and should, be achieved without taking the paper away altogether.

This is my primary concern about the CV-blind process and the resulting ‘anonymous applicant’. Applications are not simply a box ticking exercise; rather they require not only detailed, but personal answers which help to convey unique information at the initial selection stage. Will interviewers still see the applications? Will the format of the application change to exclude background details and/or will there still be an opportunity to include anecdotes in your application form as it is only the interview that is ‘blind’?  There is a clear risk of an individual’s ‘application merits’ being lost in translation if this is the case. A meeting between those who vet the applications (the CV-sighted) and the interviewers (the CV-blind) would be required to facilitate a ‘joining up’ of minds in making a final decision.  However, doesn’t this negate the objective of the scheme? Or is the aim to provide a CV-blind vacuum in which the interviewers can formulate an unbiased opinion, to then be updated with pertinent application/CV information afterwards and as appropriate?

This brings me to another question that perhaps is too wide for proper analysis here: can you really tell if someone has been privately or state-educated? More importantly, if a distinction can be made, what exactly is it that you can deduce aside from the fact that their family had/did not have the money/desire to send them to a private establishment? It is commonly accepted that first impressions are formed in less than 30 seconds. However, this is within 30 seconds of meeting someone, not from finding out where they went to school. Further, although the school you attended may not be relevant at interview, surely the university is? ‘Lower ranked universities’ are indicative of an applicant’s calibre (and of school grades, which in themselves are indicative of commitment, capacity etc) and if the university admissions process is unbiased, then a first from Oxford is infinitely more impressive than my own 2:1 from Southampton!

Is it really impossible for people to simply make a conscious effort not to judge someone on their background? CV-blind interviewing purports to counter the bias within our psyche of which we aren’t even aware. Surely, when making a conscious effort not to judge, the remaining, uncontrollable bias of which you are unaware of is almost imperceptible in its nature? In my opinion, a CV ‘partially-sighted’ scheme might be more favourable, where information that is deemed relevant to inviting someone to interview is relayed, but information that is both non-essential and introduces a risk of bias is not.

In conclusion, the human element of the interview process means that there is always going to be scope for interviewers not only to infer things about people from their backgrounds, but also infer things about their backgrounds from their personalities. Will the absence of a CV really preclude this?

Richard Cobb interviews Simon Cornelius-Light, Divisional Director of ES Group (Exeter Branch) regarding the use of online and traditional auctions in the manufacturing industry, here is what he had to say…

Across our Machinery and Business Assets (MBA) team at ES Group, we have seen exponential growth in online auctions, over the past 5 years or so. We currently estimate that the ratio of physical to online sales sits in the region of one in every hundred sales.

Underlying economic factors have undoubtedly accelerated this growth in online auctions but the primary motivation is undoubtedly something more prosaic, linked to the basic practicalities of online versus traditional auctions.

Online auctions – pros and cons

Economically speaking, online auctions tap into a growing international audience attracted by the fluctuating pound. Interest from both European purchasers and emerging markets is sustaining values for second hand machinery, for example, where UK sales figures have been hit over in the past.

While these economic factors won’t last forever, the practical benefits of online auctions will. These include:

• an increasing familiarity of online auction systems, such as Ebay and others
• the trust that auctioneers have built up in the accuracy of their lot descriptions
• The ability and feasibility to market individual pieces of equipment which will benefit from the same extensive marketing exposure, as a collective sale
• intrinsic benefits to vendors of online auctions – indeed, having built up targeted sector-specific UK and international databases at ES Group over the past years, we can now market kit to the right people and secure quick, effective sales to an international market

The latter is perhaps the most important ‘pro’ point; where clients are still looking for timely and efficient returns for the sale of their surplus plant & equipment – and this is where online auctions come into their own.

Technology faults can have a detrimental impact on the success of an online auction, however very rare these days but as a factor this is largely insufficient to outweigh the reduction in client management and risk offered by:

• longer market exposure
• extended bidding times
• reduced cost
• reduced clearance periods
• ease of controlling defaulters

Traditional auctions – pros and cons

Compared with online auctions, live sales incur notably higher sale costs and resource issues. Live auctions require considerably more client management time, more purchaser site visits and have longer clearance periods. Returns are also often affected by buyers’ unwillingness or inability to attend.

It’s important to acknowledge, however, that for some vendors and buyers nothing beats the face to face contact offered by an onsite auction, the buzz of the auction room, and the skill of an auctioneer. And for some asset classes, notably agricultural and some stock type sales, the traditional auction will be the best disposal method, but these sales are becoming very far and few between and the traditional Auctioneer is becoming a rare breed.

For these both practical and nostalgic reasons, there will always be some onsite auctions – but the online alternative is here to stay. The auction houses that build the confidence of vendors and purchasers in online sales, and who use and build strong and targeted international databases of purchasers, will fuel this continued rapid online growth well into the future.

If you have a requirement to dispose or value your surplus machinery & business assets, please contact Simon Cornelius-Light, Divisional Director, ES Group (Exeter Branch) at simon.cornelius-light@es-group.com or 01392 880180

One of the fundamental questions you need to ask yourself when choosing the area you wish to qualify into is whether you prefer contentious or non-contentious law. Doing a seat in the area which combines the two may help you to understand which comes more naturally to you. This is the upshot of my current seat in Construction where my time is divided between transactional construction work and construction litigation.

The transactional (non-contentious) work involves procurement advice (how to set up the contracting structure for a project) as well as drafting and negotiating contracts and preparing other legal documents required for a project. As a firm we advise on insurance, environmental matters, insolvency, health and safety and all other considerations that crop up in construction.  As a trainee I review and amend drafts, attend meetings with clients and prepare advice which is then finalised by the partner. Amendments are made against underlying standard contacts and because there is a fair variety of them, every other draft I prepare is a completely unknown setting. It is a very scrupulous work and it is much more exciting than it sounds! Very rewarding too as once the contract is executed you know that you have achieved the result sought by your client.

Contentious construction is about providing advice if things go wrong because (generally) the contract wasn’t properly put in place and solving arguments over construction work and housing through litigation, mediation, adjudication or arbitration. The type of work I do involves drafting letters of claim and claims, preparing various court applications, taking witness statements, etc. Very conveniently, this could qualify as a litigious seat for qualification purposes provided that a certain amount of hours has been dedicated to litigious work. There is an opportunity to sit in Court with our partner Gerald Offen who is also a Deputy District Judge.

The two sides of my construction seats are very different not only as far as the type of work is concerned but also in terms of communication styles. My natural style is a more litigious one and it is very appropriate whenever I need to, for example, write a protocol letter before action to a negligent architect. It is, however, totally unsuitable for a letter to solicitors who are negotiating a contract with our client on behalf of their client-contractor. I had therefore to develop ability to adapt and change styles along with changing my contentious and non-contentious “hats”.

Clients are also very different.  For transactional work we act for project owners, subcontractors, surveyors, engineers, architects, who are planning, buying, funding, building, designing construction projects. They all are usually businesses – all generally sophisticated and each with a distinct set of risks in a project. They know their objectives much better than I do and working with them is really challenging. Getting to interact with a wide range of professionals is a great opportunity for a trainee as it provides an understanding of the industry’s needs from different perspectives. This comes with an extra requirement of being organised and diplomatic.

On litigious side we act not only for professional players but also for private individuals facing issues with their properties. Unfortunately this often happens because of devious cowboy builders and may be fairly emotional. As much as there are areas where lawyers deal with even gloomier situations, still, falling floors and rotten corners in somebody’s home does have a direct effect on people’s lives, their health, their long-term plans and definitely on their finances. We are there to help and we of course are expected to be as efficient and proactive as possible. Trips to building sites or to the clients’ properties in a disastrous condition can occur relatively often and having a spare pair of flat shoes in the office is a good idea! It is an ideal area of law for lawyers who do not want to be confined to offices all day.

Construction is considered a niche area in law and it is not an easy area at all. I have not studied construction during my degree or my LPC – and many of you would not; for this reason at the start of the seat most trainees know very little about this type of law and its intricacies. But not to worry – your firm will be aware of this and will give you necessary time to do some basic reading to acquire an initial feel of it. I have been gradually developing an understanding of the building industry and even of basic engineering with the help of a supervising partner, Brian Hitchcock, who trained and qualified as an engineer before becoming a lawyer. This is a completely new knowledge for me – as it would be, I imagine, for many of you as most of us were doing purely humanitarian subjects from post GCSE age. It is an intellectually challenging area but surely we all like challenges – otherwise why choose law in the first place?

My final hint – this area is a strategically wise choice. The construction industry faced difficulties during the recent credit crunch, which caused a decrease in the number of lawyers qualifying into construction law. The industry has substantially picked up lately and continues growing but there are not enough newly qualified construction lawyers out there. Isn’t that a good enough reason to consider construction law as a potential speciality?

A growth in counterfeit goods was widely reported in the run up to Christmas last year. If you have a strong brand for your products or if you are selling products that are leading brands, you cannot afford to ignore the risks of counterfeit products appearing within the markets in which you operate.

There are a number of measures that can be taken to prevent counterfeiting.

Protect your intellectual property rights

The first step in preventing counterfeiting is to make sure that your intellectual property rights are protected.  If you have not done so already, you should obtain legal advice to ensure that you are adequately protected.

Intellectual property is a collection of distinct legal rights, each protecting different components of the creativity, innovation and investment which its owner’s work represents.

As a simple rule of thumb:

• patents apply to inventions only, and not names, titles, logos or literary or artistic works;
• trade marks protect names or logos;
• designs protect the outward appearance of your product and packaging, including colours, shape, texture, decoration, lines and materials;
• passing off aims to prevent anyone falsely presenting their goods or services as someone else’s goods or services;
• copyright protects literary and artistic works, as well as films, television programmes and music.

Patents, trade marks and registered designs must be registered in order to obtain protection.  Having a registered intellectual property right can make enforcement of your intellectual property rights easier.

An appropriately qualified lawyer can work with you to create a system of checks that allow new intellectual property to be identified early, protected through confidentiality and, where possible, registered.

Create an awareness of intellectual property rights in your organisation

Raising and maintaining awareness of issues relating to intellectual property is essential.  Your staff will then have a better understanding of how the products that they sell and/or manufacture are protected.  They will also be better able to recognise when intellectual property laws are being broken and this may help to increase awareness of any counterfeit products that may be being sold.

Managing supply chain

You should use business information agencies and Companies House (or its equivalent in other countries) to check your suppliers, manufacturers, subcontractors, distributors are legitimate and of good standing.

Make sure that you only buy genuine materials and goods and keep records of your purchases.  Advise your suppliers that you only accept genuine materials and goods.

You should use contracts in your supply chain to protect your rights and to control the risk of counterfeiting. It is always important to start thinking, at an early stage, how your rights will be used.  Licensing provisions in agreements should determine the scope of their permitted activities and will allow the owner of the intellectual property rights to control how their rights are used.

Once contracts are signed the work should not stop.  Regularly check compliance.  For example, you can use “mystery shopping” to buy back products that you have sold to distributors and check that the products are priced, packaged and labelled correctly and lawfully.

Ensure that waste products are securely disposed of and destroyed to avoid them being used to develop or sell counterfeit products.

Regularly check well known internet sites, for example auction sites, and report anyone breaking the law on counterfeiting to the owner of the sites.

Packaging and product design

It is important that products and their packaging are designed so that they cannot easily be copied.  This can include complicated labels or parts that are difficult to produce.  This can increase production costs, but this can be balanced with losses that you may suffer from counterfeiting.

Customers are increasingly adept and using packaging and design to identify and authenticate products to ensure that they are buying a genuine article.

Also clear and distinctive packaging with contact information will help police and other enforcement agencies to look out for counterfeiters’ products.  Counterfeiters may seek to cut costs in areas of packaging and labelling – enforcers often look out for poor quality printing and packaging to distinguish between the fake and the genuine.

It sounds obvious, but you should also ensure that the information is free from grammatical and spelling errors – these are common on counterfeit goods!

Educate your customers

Imitation is a form of flattery.  It shows that you have a leading brand.  Customers will want to “buy into” the exclusivity of that brand.

Businesses are, therefore, increasingly educating their customers about the existence and dangers of buying counterfeit products.  You can find ways of reassuring customers that the products that they are purchasing are genuine. Business such as Uggs provide guidance on websites to warn people of the risks and dangers of purchasing counterfeit products and identifying ways in which genuine products can be distinguished from counterfeit products, by reference to the design of the product and packaging.

Notify appropriate authorities of any suspicions

You should get the appropriate authority involved as soon as possible if you suspect counterfeiting.  In the UK, counterfeiting may involve a number of crimes being committed, so there are a number of ways that criminal law may be applied.  The main authorities are the police, trading standards (local government officers) and customs (as appropriate) and/or the United Kingdom Border Agency.

If you would like more information in relation to any of the issues discussed in this article, please contact Tom Torkar, an Associate in the Technology, Media and Communications Team, at tom.torkar@michelmores.com.

Anyone who works in HR will know how quickly changes come about in Employment Law, and how hard it is to keep up with them all. With that in mind, the Michelmores Employment Team has created a weekly newsletter that encapsulates the most significant Employment Law developments of the last 7 days. The Weekly Update will be sent out around midday on Monday, so be sure to keep an eye out for it!

Employer Failed to Make Adjustments to Redeploy Potentially Redundant Employee

London Borough of Southwark v Charles [UKEAT/0008/14]

Background

Employers have a duty to make reasonable adjustments to help disabled job applicants and employees in certain circumstances. It is for an Employment Tribunal to determine, objectively, whether a particular adjustment would have been reasonable to make in the circumstances.

Facts

The Claimant was employed by London Borough of Southwark (‘Southwark’). He was informed that his role was redundant and he commenced the process of applying for alternative jobs within Southwark. During this time, he was diagnosed with a sleep disorder, and was signed off sick for three months with resulting depression. Southwark was informed of the Claimant’s disability and referred him to its occupational health provider, which advised that the Claimant was ‘not fit to attend administrative meetings’.

However, despite the above, Southwark required the Claimant to attend interviews in order to decide whether he was suitable for the alternative jobs on offer. When the Claimant did not respond to these requests, Southwark confirmed that his employment would terminate ‘in the absence of receiving an expression of interest from you regarding vacancies’ and ‘no indication as to whether you are able to attend interviews’.

The Claimant brought claims for unfair dismissal and disability discrimination, the latter of which was successful at Tribunal.

Judgment

The Employment Appeal Tribunal (‘EAT’) dismissed Southwark’s appeal, and held that Southwark’s practice in requiring those in the redeployment pool to attend interview for potential redeployment posts was a practice which put the Claimant at a substantial disadvantage, because he could not attend interview to demonstrate that he was qualified for the jobs available. Southwark knew that the Claimant suffered from a significant disability in the form of an inability to attend administrative meetings, which the EAT deemed to include interviews for jobs.

Tips for Employers

This case demonstrates that a requirement to attend an interview has the potential to disadvantage a disabled employee. It also raises the question as to how an employer can make reasonable adjustments to remove that disadvantage. The EAT has made it clear that an employer does not need to automatically appoint the employee to the post. It will be for the employer to consider how it can assess the disabled employee alongside other candidates.

TUPE: Service Provision Changes

Horizon Security Services Limited v (1) Ndeze (2) The PCS Group

The Facts

PCS, a security contractor, was engaged by Workspace Plc to provide security services on land owned by the London Borough of Waltham Forest (‘the Borough’). The Borough subsequently reclaimed the site from the company and engaged a new security contractor (Horizon) to look after the site, for a limited period of 8 to 9 months, pending its demolition.

The question put to the EAT was whether this amounted to a Service Provision Change (‘SPC’) under Regulation 3(1)(b).

The Judgment

The EAT held that there was no SPC. A fundamental rule relating to SPCs is that the client for whom the services are provided must be the same. In the present case, the client had changed. The original security contractor, PCS, was working for Workspace Plc. However, PCS’s replacement, Horizon, was working for the Borough, which was a different legal entity. Therefore, the SPC rules did not apply and the employees of PCS were not entitled to transfer to Horizon.

The EAT further stated that SPC TUPE transfers cannot occur where the client intends the contract to relate to an event or task of short term duration. The contract that had been given to Horizon was of limited duration, in order that the site was looked after pending its demolition. This was a second reason why there was no SPC in this case.

Tips for Employers

This case is a useful reminder for employers that there will be no SPC where the client, to whom services are being provided, has changed.

Injury to Feelings Award of £10,000 was Not Supported by Facts

The Cadogan Hotel Partners Ltd v Ozog [UKEAT/0001/14]

Background

The Equality Act 2010 states that compensation for discrimination may include compensation for injured feelings. However, the legislation provides no guidance as to how a Tribunal should evaluate injured feelings.

The leading case of Vento v Chief Constable of West Yorkshire Police [2002] EWCA Civ 1871 set clear guidelines for the amount of compensation to be given for injured feelings and set out three bands of potential awards.

The Facts

The Claimant was employed by Cadogan Hotel Partners Ltd (‘Cadogan’). She alleged that the new head waiter had touched her inappropriately by kissing her arms, asked her whether she had a boyfriend, and had approached her with his trousers undone, asking her “Do you want this body?”

At the Employment Tribunal, the Judge had made an award for injury to feelings which fell into the middle Vento band. However Cadogan felt that the Tribunal had made an excessive award which did not correlate with the effect that the acts had made to the Claimant’s feelings. Cadogan appealed to the EAT.

The Judgment

The EAT found that the Employment Tribunal had incorrectly focused on its own view of the discriminatory conduct, rather than looking at the effect it had actually had on the Claimant, which had never gone beyond making her feel ‘very uncomfortable’.

The EAT highlighted that awards for injury to feelings should be compensatory and should not be used to punish employers. Therefore, the EAT reduced the original award for injury to feelings that the Employment Tribunal had awarded.

“More efficient”. “Clearer”. “More accessible”. These are the aims of the new Intellectual Property Act 2014 (the “Act”), due to come into force in October 2014. Having received royal assent on 14 May 2014, the Act comes as the response to the Hargreaves Review of IP and Growth in 2011, which set out recommendations for the modernisation of the Intellectual Property (“IP”) system in the UK.

Many of the provisions, which focus predominantly on patents and designs, will align IP law in England and Wales with European (“EU”) law and provide for ever increasing harmonisation in the future.

Some of the key provisions of the Act are set out below.

Patents:

• The introduction of a single ‘unified’ patent to be obtained across the 25 participating EU states through one application process.
• More efficient communication between the UK Intellectual Property Office (“IPO”) and its counterparts overseas, to enable offices to share unpublished patent information.
• The ability to mark a product with a website link which specifies its patent number, reducing the likelihood of successful defences of ‘innocent’ infringement.
• Expansion of the remit of the IPO’s Opinions service to provide impartial assistance in relation to a greater range of issues.

Unregistered design rights:

• A designer is to be the owner of unregistered design rights rather than the commissioner (excluding employer) of the design.
• Greater clarity in respect of the qualifying countries in which the ‘commonplace’ aspect of designs is to be assessed.
• Limitation of the definition of unregistered design to prevent protection of ‘trivial’ features of a design.
• Extension of the concept of ‘qualification’ of creators of unregistered designs to cover all those who are economically active in the EU.

Registered designs:

• Deliberate copying of a UK or EU registered design, in certain circumstances, will now be a criminal offence.
• New limited defence of ‘prior use’ to allow good faith third parties to continue using their designs, notwithstanding any subsequent registration by a third party.
• Exemption from copyright infringement for legitimate use of registered designs.
• New IPO Opinions service, similar to the non-binding service available for patents, to cover registered designs, with the possibility for this to also be extended to unregistered design rights.
• Limitation of the defence of ‘innocent infringement’, to allow registered design owners to make a claim for some or all of the profits gained by the infringing party.
• New enforcement powers for Trading Standards in relation to design offences, to tally with the powers already in place for copyright and trade marks.

The Department for Business, Innovation and Skills anticipates that the Act will “help businesses to better understand what is protected under the law, reduce the need for costly litigation and provide greater certainty for investors in designs and technologies”. Certainly the removal of unnecessary ‘red tape’ and the introduction of more efficient online services will be welcomed by businesses across the UK, who invest heavily in IP protection and lament the uncertainties fostered by the current system.

Given the extensive changes to come into force from October 2014, it is important that businesses fully acquaint themselves with the provisions of the Act and understand how these will affect them. Whilst the Act introduces several new protections, it also establishes numerous restrictions (including criminal sanctions) which businesses must consider in order to avoiding falling foul of the changing legal landscape.

Now is an ideal time for businesses to undergo an IP ‘health check’, prior to the scheduled October changes. This will help to ensure that their intellectual property portfolio is best protected and their key personnel are up to date with the new legislation. By being fully informed, businesses can then make the most appropriate choices about how to deal with their IP rights and respond proactively in the event their own rights are infringed or they are accused of infringement themselves. Although the IP system can be complex, with the right advice, businesses can simply and effectively use the legislative framework to their legal and commercial advantage.

For further information on the issues raised in this article, please contact Tim Richards, (Partner) at tim.richards@michelmores.com or David Thompson (Associate) at david.thompson@michelmores.com

Search engines obliged to remove links to inadequate, irrelevant, no longer relevant, out of date, inaccurate and / or excessive personal data

The Google Spain decision has confirmed that search engine providers must take down or erase information and links if a data subject complains that the personal data therein is inadequate, irrelevant, no longer relevant, out of date, inaccurate and / or excessive. This applies irrespective of whether the personal data was lawfully posted on a third party website and / or the data subject has been prejudiced by the information or link. The only exemptions to this in the UK are the pre-existing exemptions under the Data Protection Act 1998 (“DPA”) and if there is an overriding public interest in the personal data remaining in the public domain. The Information Commissioner’s Office (“ICO”) has suggested that such overriding interest depends “on the nature of the information in question and its sensitivity for the individual’s private life. It will also depend on the interest in communicating the information to the public, an interest which may vary, according to the role played by the data subject in public life”.

The Google Spain decision is seen as a landmark case as it confirms that:

• search engines are not a neutral intermediary – they are data controllers subject to data protection laws; and
• non-EU operators with a small branch or subsidiary in the EU are covered by EU data protection legislation. This may be the main effect of the Google Spain case. Google unsuccessfully argued that as the physical server processing data was located outside Europe, EU data protection rules did not apply to the search engine.

Google have published an online form for disgruntled data subjects to complete if they want links removed. This includes the data subject explaining how the URL “in search results is irrelevant, outdated or other inappropriate”. Google suggest there is a public interest in “information about financial scams, professional malpractice, criminal convictions, or public conduct of government officials” remaining in the public domain.

The ICO has made clear that:

• search engine providers will have a “reasonable time to put their systems in place and start considering requests”;
• if the search engine provider refuses to remove a link, the data subject should contact the ICO to determine if the search engine provider is lawfully maintaining the link;
• it will initially focus on “concerns linked to clear evidence of damage and distress to individuals”. This is significantly narrower than the European Court of Justice (“ECJ”) judgement. The ECJ specifically ruled “that it is not necessary….that the inclusion of the information in question in the list of results causes prejudice to the data subject”; and
• the original newspaper articles will remain in the public domain. It is simply the Google and other search engine links to the articles that are to be erased. This has prompted the ICO to advise that “A ‘right to be forgotten’ will still be difficult in practice….we have to be realistic about how difficult it can be to completely remove all traces of personal information online”.

Nathaniel Lane is a Solicitor in Michelmores’ Technology, Media and Communications Team who has an ISEB Certificate in Data Protection. For further information on this matter or data protection generally, please contact Nathaniel at nathaniel.lane@michelmores.com or on 0207 788 6313.

On Friday 31 January 2014, House of Fraser lost its trade mark dispute with Jack Wills over the use of logos on its ‘Linea’ brand of casual clothing. The Jack Wills logo in question comprises a silhouetted side profile of a pheasant wearing a top hat and holding a cane. The judge held that the use of House of Fraser’s own logo, a silhouetted side profile of a pigeon wearing a top hat, was an infringement of Jack Wills’ registered UK and Community trade marks.

To successfully protect its trade mark and prove infringement, Jack Wills had to prove the satisfaction of six conditions under Article 5(1)(b) of the European Parliament and Council Directive 2008/95/EC to approximate the laws of the Member States relating to trade marks (the ‘Directive’):

• there must be use of a sign by a third party within the relevant territory;
• the use must be in the course of trade;
• it must be without the consent of the proprietor of the trade mark;
• it must be of a sign which is similar to the trade mark;
• it must be in relation to goods or services which are similar to those for which the trade mark is registered; and
• it must give rise to a likelihood of confusion on the part of the public.

The judge, Mr Justice Arnold, had to decide whether House of Fraser’s use of its pigeon logo was an infringement of Jack Wills’ trade mark rights. In considering the infringement of a registered trade mark, he acknowledged that a claim for passing off ‘stands or falls’ in line with the Article 5(1)(b) criteria so made no further references to passing off in his judgment. Mr Justice Arnold made the following observations:

• in deciding whether there was likely to be confusion, the average consumer varied “in age and socio-economic class”;
• the Jack Wills logo had acquired distinctiveness to a proportion of this class of people, which would increase confusion, although the average consumer class must be looked at as a whole;
• the court could consider the objective effect of the use of a similar sign (i.e. reputation and goodwill), not only the subjective intention to exploit the logo; and
• positive evidence was not required to show economic activity of consumers was affected, logical deductions could be made.

This judgment clarified several aspects of trade mark infringement case law. Mr Justice Arnold took the opportunity to articulate the characteristics of unfair advantage and moved away from previous case law, which focused on the intentions of the defendant, towards the objective effect of the trade mark’s use (i.e. that the trade mark is used to take unfair advantage of the previous well-known mark).  The judge also revisited the concept of the ‘average consumer’ in relation to confusion, as he did in the 2013 case of Interflora Inc v Marks & Spencer plc. He held that the average consumer must still be viewed as a whole (in this case a consumer of clothing), despite the differing demographic of consumers for the brands in question. On that basis, the judge rejected House of Fraser’s submission that the ‘average consumer’ was ‘a 16-24 Jack Wills devotee’. This reaffirmed the clear message that the definition of ‘average consumer’ is broad when considering a likelihood of confusion.

As Jack Wills had registered the logo in dispute as a trade mark, it could rely on the Directive and did not have to fulfil the higher evidential burden required for a passing off claim.

The three requirements of the ‘classical trinity’ test for passing off, as set out in the ‘Jif Lemon’ case Reckitt & Colman Products Ltd v Borden Inc., are as follows

• goodwill or reputation attached to the goods or services;
• misrepresentation by the defendant likely to lead to confusion of the public; and
• damage to the claimant as a result of the defendant’s misrepresentation.

To fulfil this test, claimants seeking to rely on passing off must first prove ownership and a significant established goodwill in the unregistered trade mark which members of the public associate with the owner’s business. In contrast, for registered trade marks, only a likelihood of confusion must be proven, the first two limbs of the ‘classical trinity’ test fall away.

The requirements for passing off place a heavier burden on the owners of unregistered trade marks and therefore this is an incentive for manufacturers and retailers to use registered trade marks to protect their intellectual property rights. Although not discussed in the judgment, it would have been interesting to see whether Jack Wills would have been able to make against House of Fraser.

Trade mark protection is a key consideration for manufacturers and retailers and should always be investigated. Preventative measures, such as trade mark searching and raising brand awareness, should be considered to strengthen a business’ position. We would recommend all businesses, large and small, remain vigilant to competitors’ activities and always seek advice at an early stage.

For further information on the issues raised in this article, please contact Tim Richards, Partner at tim.richards@michelmores.com or Associate David Thompson at david.thompson@michelmores.com.

The Michelmores and Western Morning News Property Awards are the region’s premier property competition, showcasing the very best in West Country property projects, buildings and firms.

The Residential Project of the Year 40 Units and Under category is sponsored by Taylor Lewis. Gilbury Hill, Lostwithiel, Cornwall was annouced the winner at a Gala Dinner at St Mellion International Resort on May 8th 2014.

Watch what our judges had to say…

Shortlist 2014

Gilbury Hill, Lostwithiel, Cornwall

Nominated by Wycliffe Estates

Project Value: £4.1m

Gilbury Hill is a development of 32 houses and apartments on the outskirts of Lostwithiel.  The aim of the project was to provide affordable homes to families with a local connection to the town.  To ensure the homes truly were affordable, 16 were sold at 50% discount with no shared equity and no claw back agreement. These properties remain saleable but only at the same restricted percentage of the current open market value, and only to families with local connections to Lostwithiel.

There was no design or material difference between the open market and affordable properties on the development, and all homes built exceeded Code for Sustainable Housing Level 3.  This makes all the homes sustainable and environmentally-friendly.

A strong palette of materials includes stone, slate, render, a grey finish to windows and doors, and external fittings of stainless steel or aluminium attempt to create a timeless look. The properties use underfloor heating and air source heat pumps help to make each economic and efficient to run. The design of the buildings and the flow of the site have created a real sense of community and village feel. By not being overly dense, the scheme has achieved a high level of natural openness and light. All the properties have large gardens and the apartments benefit from an abundance of open space.

By helping local people to move out of rented accommodation or family homes into their first wholly owned home, the development has enabled Lostwithiel to keep young professionals within the community, supporting local business and schools.

Castle Gardens, Shaftesbury, Dorset

Nominated by Blue Cedar Homes

Project Value: £6m

Castle Gardens is a scheme that is unusual in its concept and unique in Shaftesbury. The development provides nine freehold houses of varying sizes, together with six spacious apartments specifically designed for people aged 55 years and above.

The properties are designed to be readily adaptable for the changing needs of older residents, whilst appealing to a wide spectrum of ages and lifestyles for people of retirement age. The design philosophy within the properties ensures that all the rooms are well proportioned and spacious in order that downsizers do not have to compromise in terms of their accommodation, when they simply need fewer rooms rather than smaller ones. Each house is designed so that the ground floor can readily be adapted to create a self-contained living area with a bedroom and shower room, suitable for someone in a wheelchair.

Externally, the combination of natural stone, render, slate and conservation style tiles fits extremely sensitively into the Conservation Area. A major benefit of the site is the setting of substantial trees around the entire development, and these were sensitively dealt with to create a mature setting for the buildings and both the communal and private gardens.

Castle Gardens is located at the same level as Shaftesbury’s High Street, providing a very short and level walk through the adjoining park to all the shops and facilities of the town. The scheme benefits from excellent views across Blackmore Vale, and part of the communal gardens are located within the grounds of the adjoining Protected Ancient Monument known as “The Castle”.

Meadow Flats, St. Ives, Cornwall

Nominated by Poynton Bradbury Wynter Cole Architects

Project Value: £4.6m

Meadow Flatscomprises sheltered accommodation units at Porthmeor Beach, St Ives consisting of 26 two-bedroom accessible homes with rooftop residents’ lounge and underground parking.

Constructed on behalf of Devon and Cornwall Housing Association, Meadow Flats are located adjacent to Tate St Ives on a highly restricted site. The buildings were all designed to high sustainability standards meeting the Code for Sustainable Homes Level 4.

The aim of the project was to create accessible, affordable homes for the most vulnerable elderly residents in St Ives. Meadow Flats replaces a series of smaller sheltered accommodation units, constructed in the 1960’s that were suffering from subsidence and damp, compounded by poor access.

The project addressed St Ives’ chronic shortage of sheltered accommodation while at the same time providing quality accommodation and an undisrupted sea view putting older members of the community in the very highest standard of accommodation.

The Meadow Flats Project has become a ‘game changer’ for rented sheltered accommodation in the area. It demonstrates that apartments with shared facilities offer a great way for older members of the community to enjoy life to the full. This includes space for mobility scooter parking, lifts and level access decks with shared courtyard spaces. The project has also enabled Tate St Ives to expand on the land to the rear.

Because of the stunning sea views, the award entry concludes: “Visitors are astounded to learn that the apartments provide sheltered accommodation rather than ‘millionaires’ penthouses.”

The Chardstones, Chardstock, Devon

Project Value: £2.5m

Nominated by Jameson Homes

The Chardstones comprises a scheme of ten individually designed homes on two sites within the picturesque village of Chardstock, near Axminster.

The aim of the project was to deliver high quality residential developments which seamlessly integrate into and enhance the village, providing homes designed with individuality and top-end specification and construction throughout.

Two shared ownership affordable homes have been provided as part of the project specifically to meet identified housing need within the village.

The external appearance was crucial to the success of the overall project, drawing on traditional features and blending vernacular architecture with modern construction techniques and materials. Individuality and attention to detail were carried throughout the interiors of each plot with the inclusion of bespoke kitchen and bathrooms.

The scheme provides a diverse mixture of housing in terms of size, design, price and tenure, with both sites adjoining the boundary of the village Conservation Area. The challenge to the designers was to deliver a development of the highest quality, blending traditional features with the contemporary elements of light airy spaces and open plan living.

The developers opted for a simple palette of traditionally and locally sourced materials, principally natural chert stone and a mixture of roughcast and smooth colour washed render to provide subtle variety and an individual identity to each dwelling. Limited elements of rustic horizontal weather boarding were also introduced to complete the rural appearance.

Summary

This year’s enforcement action at the Information Commissioner’s Office (“ICO”) has continued to largely focus on breaches of the 7th data protection principle (“7th DPP”), which provides for appropriate technical and organisational measures to be taken against unauthorised or unlawful processing of personal data.

Enforcement Actions

The British Pregnancy Advice Service (“BPAS”) was issued with a monetary penalty notice (“MPN”) of £200,000 for not knowing the personal data it held, and allowing a malicious hacker to exploit security vulnerabilities in their website to access the names of 9,000 people who had sought the BPAS’ advice on abortion, pregnancy and contraception. The BPAS obtained an injunction to prevent publication of the information. Nonetheless, the BPAS’ actions breached the 5th data protection principle (governing how long personal data may be held) and were a serious breach of the 7th DPP.

The Department of Justice Northern Ireland (“DoJ NI”) was issued with an MPN of £185,000 due to a failure to check what was in a locked filing cabinet that the DoJ NI sold without a key. This re-enforces previous MPNs, confirming that data controllers must check that any electronic or physical equipment does not contain any personal data or sensitive personal data before it is disposed of or sold.

Kent Police was issued with an MPN of £100,000 for failure to remove highly sensitive information from an old police station. As per the Stockport Primary Care Trust MPN, data controllers must, at the very least, fully clear premises of all personal data (particularly sensitive personal data) where those premises are being decommissioned, vacated or sold.

The need for guidance and training on how sensitive personal data should be handled and kept secure when taken outside of the office was illustrated by the undertaking Neath Care was required to provide to the ICO following a member of the public finding the files of 10 vulnerable and elderly people in the street.

The ICO issued enforcement notices against Isisbyte Limited and SLM Connect Limited for making nuisance calls while failing to correctly identify themselves.  Companies making live marketing calls breach the law by ringing individuals registered with the Telephone Preference Service.

There have also been prosecutions regarding failure to register as a data controller (which itself is a criminal offence) and unlawfully obtaining personal data.

Lessons for data controllers

It goes without saying that you can learn from the mistakes that others have already made. The MPNs show that regulatory ‘hot spots’ include accidental loss or theft of data, human error, lack of training, misdirected communications and lack of sufficient policy.  Data controllers should use the subject matter of MPNs and undertakings to:

• ascertain the types of data being handled;
• understand the legal obligations regarding such data and have appropriate guidance, procedures and training in place to mitigate risk; and
• avoid breaching the DPA (particularly the regulatory ‘hot spots’) and ensure there is an effective recovery plan in place in the event a data protection breach arises.

The BPAS MPN shows cybersecurity is likely to be increasingly important in the ICO’s eyes. The Sony and BPAS MPNs should act as warnings to all data controllers that fines for breaching the 7th DPP are not limited to misdirected communications and stolen or lost data (including use of unencrypted portable electronic devices).

If the proposed Data Protection Regulation is passed by the Council of Ministers with no or minor changes, the regulatory sanctions will be even more severe.

Nathaniel Lane is a Solicitor in Michelmores’ Technology, Media and Communications Team who has an ISEB Certificate in Data Protection. For further information on this matter or data protection generally, please contact Nathaniel at nathaniel.lane@michelmores.com or on 0207 788 6313.