Tuesday 2 April 2024

Fiduciary Duties and Trade Marks - The Appeal in Quantum Advisory Ltd. v Quantum Actuarial LLP.

UK Trade Mark 3320701

 








Jane Lambert

Court of Appeal (Lord Justices Newey and Nugee and Sir Christopher Floyd) Quantum Advisory Ltd v Quantum Actuarial LLP [2024] EWCA Civ 247 (14 March 2024)

In Quantum Advisory Ltd v Quantum Actuarial LLP [2024] EWCA Civ 247 (14 March 2024), the Court of Appeal heard appeals by both the claimant and defendant against orders made by His Honour Judge Keyser KC sitting as a judge of the High Court in Quantum Advisory Ltd v Quantum Actuarial LLP [2023] EWHC 47 (Ch). The defendant, Quantum Actuarial LLP ("LLP") appealed against His Honour's finding that it could use the QUANTUM ADVISORY brand only for so long as it had an agreement with the claimant, Quantum Advisory Ltd ("Quad"), to provide services to Quad's clients.  It also appealed against the judge's order to substitute Quad's name for LLP's as the proprietor of three QUANTUM ADVISORY trade marks under s.10B of the Trade Marks Act 1994 that LLP had registered in its own name.  Quad appealed against the judge's refusal to substitute its name as the proprietor of the stylized "Q" mark appearing above under s.10B 

The Parties

LLP was incorporated in 2007 to provide services that had previously been supplied by a company then known as Quantum Advisory Ltd. which the judge and Lord Justices called "Old Quad".  An agreement was concluded between LLP and Old Quad on 1 Nov 2007 whereby LLP would employ Quad's staff and use its offices and the QUANTUM ADVISORY branding but Old Quad would retain its clients and goodwill.  Fees for services to Quad's clients would be divided 57% to LLP and 43% to Old Quad.  LLP would be free to develop its own business using the same branding and keep the revenues from that business for itself.  This was referred to as "the Services Agreement".  Shortly after the signing of the Services Agreement Old Quad's undertaking was transferred to a company called Pascal Company Solutions Ltd. That company swapped names with Old Quad. The new Quantum Advisory Ltd is the company referred to above as "Quad".  The Services Agreement was novated from Old Quad to Quad.

The Dispute

Even though Old Quad had generated considerable goodwill in the QUANTUM ADVISORY brand and both LLP and Quad had used it in their advising and business stationery, LLP registered the following trade marks without Quad's knowledge or consent:

Filing Date

Mark

Number

27 June 2018

UK00003320701

27 June 2018

UK00003320709


27 June 2018

UK00003320706 

5 Nov 2018

QUANTUM ADVISORY

UK00003350849


By letters dated 9 July and 7 Aug 2020 LLP asked Quad to stop using those marks.  It appears from para [19] of Judge Keyser's judgment that Quad issued proceedings claiming that it was entitled to the trade mark registrations in equity or, alternatively, rectification of the register under s.10B. 

Trial

A trial took place before Judge Keyser between 1 and 3 Nov 2022.  His Honour handed down judgment on 18 Jan 2023.  By para [124] of his judgment, he held that LLP was a fiduciary to Quad in respect of the conduct of Quad’s business. In the next paragraph, he held that LLP was licensed to the use of the QUANTUM ADVISORY brand only during the subsistence of the Services Agreement. Upon termination of that agreement, LLP would no longer be licensed to use the brand and would be liable to a claim for passing off if it materially misrepresented its business as being associated with Quad so long as the other requirements of the tort were met.  Between para [126] and [128] he held that Quad was entitled to substitute its name for that of LLP as proprietor of UK00003320709, UK00003320706 and UK00003350849 but not UK00003320701 pursuant to s.10B, but not to an order for rectification, assignment or transfer in respect of any of the registered trade marks in equity.

The Appeals

The appeals were heard by Lord Justices Newey and Nugee and by Sir Christopher Floyd on 6 and 7 Feb 2024.  Their lordships handed done judgment on 14 March 2024.  Lord Justice Newey and Sir Christopher Floyd delivered the lead judgment with which Lord Justice Nugee agreed.

Whether LLP was a Fiduciary

Their lordships began with LLP's appeal.  They analysed the Services Agreement by which LLP agreed to supply consulting, actuarial, administrative and investment services for the fees mentioned above.  They considered Judge Keyser's reasons for finding that LLP was in a fiduciary relationship at [29].  They referred to Lord Justice Millett's description of a fiduciary in Bristol and West Building Society v Mothew [1998] Ch 1 on page 18 as "someone who has undertaken to act for or on behalf of another in a particular matter in circumstances which give rise to a relationship of trust and confidence". They noted that the concept of a duty of loyalty was defined by the Privy Council in Arklow Investments Ltd v Maclean [2000] 1 WLR 594 as one:
"encaptur[ing] a situation where one person is in a relationship with another which gives rise to a legitimate expectation, which equity will recognise, that the fiduciary will not utilise his or her position in such a way which is adverse to the interests of the principal"

They recalled that  Lady Arden had quoted with apparent approval the following passage from the judgment of Mr Justice Finn  sitting in the Federal Court of Australia, in Grimaldi v Chameleon Mining NL (No 2) (2012) 200 FCR 296, at para 177 in Children's Investment Fund (UK) v Attorney General [2020] UKSC 33, [2022] AC 155, at para 47:

"a person will be in a fiduciary relationship with another when and in so far as that person has undertaken to perform such a function for, or has assumed such a responsibility to, another as would thereby reasonably entitle that other to expect that he or she will act in that other's interest to the exclusion of his or her own or a third party's interest".

However, they also noted that she had added in para [48] that "[r]easonable expectation may not be appropriate in every case". Lord Justice Newey and Sir Christopher considered the position of trustees, partners, company directors, solicitors and agents.  They also discussed writings on the topic including Paul B Miller's in Philosophical Foundations of Fiduciary Law, ed. Gold and Miller, 2014 at 69.  He defined a fiduciary relationship as "one in which one party (the fiduciary) exercises discretionary power over the significant practical interests of another (the beneficiary)."

Their lordships quoted Lady Justice Asplin's observation in Eze v Conway [2019] EWCA Civ 88 that 

"[a]lthough the relationship of principal and agent is a fiduciary one, not every person described as an 'agent' is the subject of fiduciary duties and a person described as an agent may owe fiduciary duties in relation to some of his activities and not others".
They remarked that "[i]n general at least, an 'agent' with the ability to alter the principal's legal relations with third parties will have fiduciary obligations."

After considering LLP's arguments as to why might not be a fiduciary, they concluded at [36]:

"In the present case, the Judge was, in our view, amply justified in concluding that there is a fiduciary relationship between LLP and Quad. Under the Services Agreement, LLP was appointed to be 'solely responsible' for the provision of the 'Services' as regards legacy clients and granted 'such power and authority as is necessary or desirable for providing the Services.' Quad still had a board of directors, but it no longer had any staff and had made available to LLP the assets which it had been using for the provision of services to legacy clients."

They added in the next paragraph:

"In the circumstances, LLP is plainly, we think, an 'agent' of such a kind as to be a fiduciary. LLP can fairly be said to have 'undertaken to act for or on behalf of another in a particular matter in circumstances which give rise to a relationship of trust and confidence', and, as regards the legacy business, the circumstances are such as 'reasonably [to] entitle [Quad] to expect that [LLP] will act in [Quad's] interest to the exclusion of his or her own or a third party's interest' (to adapt words of Finn J). Again, the relationship between LLP and Quad is one in which LLP 'exercises discretionary power over the significant practical interests of' Quad (to echo Paul B Miller's formulation)."

That was not the end of the story because the duties that a fiduciary owes can be shaped to an extent by the particular context in which the relationship arises.  

Any modification to LLP's fiduciary relationship would have to lie in the Services Agreement.  The clause that allowed LLP to use Quad's assets stated that they had been made available to enable LLP to provide the specified services.  That same clause contained a proviso that consent to use those assets would be terminated immediately upon the termination or expiration of the Services Agreement. Moreover, as Wadlow explained in para 3-311 of The Law of Passing Off, 6th. ed. the goodwill in a business carried on using a mark under a licence is presumed to accrue to the licensor:

"If the commercial purpose of an agreement is to license the use of a distinctive name or mark in respect of which the licensor has (or is agreed to have) goodwill, to a licensee who has (or is agreed to have) no such goodwill, and in circumstances where the licensee's use would otherwise be actionable as passing-off, then in the absence of agreement to the contrary or other supervening factors, the goodwill in the business so carried on by the licensee under the licensed name or mark will accrue to the licensor rather than the licensee. The licence may be express or implied, provided always that it does not offend against the prohibition on transactions in gross. The licensee acquires no interest in the licensed name or mark and must cease using it on termination of the licence. Examples are to be found in Coles v Need [[1934] AC 82], Roberts v Davis [(1935) 53 RPC 79], Manus v Fullwood & Bland [(1949) 66 RPC 71], Bostitch [[1963] RPC 183 and [1964] RPC 173], and Dawnay Day v Cantor Fitzgerald [[2000] RPC 669]. It is irrelevant whether the goodwill in the licensed business would otherwise have accrued to the licensee, the licensor, or both. It is the parties' contractual agreement, and not some extrinsic legal fiction or equitable doctrine, which operates to vest the goodwill in the licensor, unless otherwise agreed, because no other outcome is consistent with the ordinary licensor-licensee relationship."

It followed that there was nothing in the Services Agreement that modified LLP's fiduciary duty.

Whether LLP was a Licensee

After hearing evidence from both sides, the trial judge concluded that the right to use the QUANTUM ADVISORY brand was coterminous with the Services Agreement.  Lord Justice Newey and Sir Christopher Ployd observed at [58] that there are only limited circumstances in which an appellate Court is entitled to interfere with a finding of fact made by a trial judge. They referred to para [67] of Lord Reed's judgment in Henderson v Foxworth Investments Ltd [2014] UKSC 41, [2014] 1 WLR 2600:

"in the absence of some other identifiable error, such as (without attempting an exhaustive account) a material error of law, or the making of a critical finding of fact which has no basis in the evidence, or a demonstrable misunderstanding of relevant evidence, or a demonstrable failure to consider relevant evidence, an appellate court will interfere with the findings of fact made by a trial judge only if it is satisfied that his decision cannot reasonably be explained or justified".
In their lordships' view, there was no question of their being entitled to interfere with the Judge's finding of fact that the express basis on which the use of the QUANTUM ADVISORY mark as agreed in 2007' was that "the licence granted to LLP to use the Mark was coterminous with the Services Agreement." The finding was rooted in the judge's assessment of the relevant evidence and was the subject of a full explanation. It also accorded with common sense, since it was very difficult to see how it could be satisfactory (or how the parties could have thought that it could be satisfactory) for LLP and Quad both to trade using the QUANTUM ADVISORY branding once the Services Agreement had come to an end.

Rectification of the Register

Reg 11 of the Trade Marks Regulations 2018 (SI 2018 No 825) inserted a new s.10B into the Trade Marks Act 1994:
"(1) Subsection (2) applies where a trade mark is registered in the name of an agent or representative of a person ('P') who is the proprietor of the trade mark, without P's consent.
(2) Unless the agent or representative justifies the action mentioned in subsection (1), P may do either or both of the following—
(a) prevent the use of the trade mark by the agent or representative (notwithstanding the rights conferred by this Act in relation to a registered trade mark);
(b) apply for the rectification of the register so as to substitute P's name as the proprietor of the registered trade mark."
This regulation implemented art 13 of Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trade marks (recast) (Text with EEA relevance) OJ L 336, 23.12.2015, p. 1–26 which itself implements art 6septies of the Paris Convention for the Protection of Industrial Property 1883.

Lord Justice Newey and Sir Christopher noted that s.10B referred to "P" as the proprietor of the mark.  It was clear that P's mark did not have to be registered or registered in the same jurisdiction.  Referring to para [91] of the Court of Justice of the European Union's judgment in Case C-809/18P EUIPO v John Mills Ltd. [2021] Bus LR 123, they observed that the equivalent article of Council Regulation (EC) No 207/2009 (the Community Trade Marks Regulation) applied to similar as well as identical marks.

They mentioned in para [68] that Judge Keyser had identified 5  requirements for a successful application under s.10B that neither the parties nor the Court of Appeal criticized:
"i. LLP must have been the agent or representative of Quad.
ii. Quad must have been the proprietor of a trade mark that (a) is identical with or similar to the registered trade mark and (b) subsisted in goods or services identical or similar to those for which the registered trade mark was registered.
iii. LLP must have applied for registration of the trade mark in its own name.
iv. LLP must have applied for registration without Quad's consent.
v. LLP fails to establish that its actions in applying for registration of the trade mark was justified."

There was no dispute that the first, third and fourth requirements had been satisfied for all the marks.  As for the second, it was agreed that all the marks except UK00003320701 met that requirement.  With regard to the fifth, LLP argued that it had an independent and concurrent right to use the marks which it had registered in respect of its own business.  The judge decided the first issue in LLP's favour:

"Accordingly, Quad's case under section 10B in respect of the Q Device Trade Mark fails. Such a case would have had to assert not that the Hero Q was similar to or associated with the Mark but that it was itself identical to a mark of which Quad was the proprietor. No such assertion was made … in the particulars of claim (cf. paragraphs 3, 6 and 16) and that is not the basis on which the case was put before me."
He decided the second in favour of Quad:

"In my judgment, that is not an adequate justification under section 10B. It still amounts to reliance on the self-interest of the agent in preference to that of the principal. Mr Hill's submission mischaracterises the position as between the parties, which I have explained at sufficient length. Quad, not LLP, was the proprietor of the Mark and had a goodwill associated with it. It remained the proprietor of the Mark and continued to use it. LLP had only a permissive right by licence to use the Mark during the subsistence of the relationship between the parties. It had its own goodwill in its own business, but it never acquired more than a licence to use the Mark. When the relationship ends, it will have to use a different trading name or risk laying itself open to an action for passing off. While the relationship subsists, although it may use the Mark for its own business, it is a fiduciary of Quad and is not permitted to prefer its own interests to those of Quad or to act in a manner that compromises Quad's interests. In seeking to register trade marks that incorporate the Mark, it has clearly done just that."
LLP challenged that finding on the basis that the Judge had been wrong to: 
  • find the existence of a fiduciary relationship between Quad and LLP, and 
  • reject the existence of concurrent goodwill in the QUANTUM ADVISORY mark.
Having dealt with both issues, Lord Justice Newey and Sir Christopher upheld the above finding in para [74].

Quad's Appeal

Quad argued that the Court should have regard to the use of the stylized "Q" in UK00003320701 together with the words QUANTUM ADVISORY in the overall assessment of similarity for the purposes of s.10 much in the way that the Court of Justice of the European Union had done in Case C-252/12 Specsavers International Healthcare Ltd v Asda Stores Ltd ECLI: EUC:2013:497.  The Court was not convinced,  Lord Newey and Sir Christopher said at [77]:
"We are not persuaded by this argument. Specsavers is about establishing likelihood of confusion between a mark and a sign which are similar, and the issue is whether that similarity is sufficient to cause confusion. Matter extraneous to the registered mark may assist, in certain circumstances, in that determination. In the present case the marks being compared are not similar: their only common feature being a letter of the alphabet. No one would say that the marks MCDONALDS and BMW were similar because they both include the letter M, however prominently the proprietors of the former may have stressed the initial letter in their advertising. No amount of extraneous matter can create similarity where none existed before."

If Quad was to win its appeal it would have to be on some other basis.  They said at [106]:

"The only available claim for rectification in respect of the Q Device Mark is that, despite the fact that Quad is not the proprietor of an earlier mark identical or similar to the Q Device Trade Mark, it was applied for and registered in breach of LLP's fiduciary duty to Quad."

Judge Keyser had rejected that argument on the basis that art 13 of Directive 2015/2436 was intended to be a complete code which had excluded arguments based on national law.  His Honour formed that view in reliance on Mr Justice Males's judgment in Marussia Communications Ireland Ltd v Manor Grand Prix Racing Ltd [2016] EWHC 809 (Ch), [2016] Bus LR 808 who had held that where a defence of consent had been recognized and defined by the Community Trade Mark Regulation, there was no room for the application of more elaborate, home-grown principles of consent, such as acquiescence and estoppel.  A defence either fell within the defence of consent as defined by the European legislation or it did not. Lord Justice Newey and Sir Christopher considered Ball v The Eden Project [2001] ETMR 96, Ennis v Lovell (The Swinging Blue Jeans Trade Mark) [2014] RPC 32 and Case C-381/16 Salvador Benjumea Bravo de Laguna v Esteban Torras Ferrazzuolo ECLI:EU: C:2017:889.  They concluded at [96]: 

"In our judgment, a claim by a principal, based on a national law rule, that the registration by an agent or representative of a mark which is not identical or similar to any earlier mark owned by the principal was a breach of fiduciary duty, is not precluded by the Marussia principle."

They agreed with His Honour that registration of marks which are identical with or similar to the QUANTUM ADVISORY mark was an obvious breach of fiduciary duty.  It was similarly a breach of such duty for LLP to register in its own right some part of the branding under which Quad's services were marketed, even if it could not give rise to an action for passing off.  The registration of UK00003320701 in LLP's name was in LLP's interests and contrary to those of Quad.   They concluded at [117] that the registration of UK00003320701 was a breach of the fiduciary duty that LLP owed to Quad.  They decided in the next paragraph that the appropriate remedy was rectification of the register to substitute Quad for LLP as the registered proprietor of UK00003320701.

Further Information

Anyone requiring further information may call me on +44 (0)20 7404 5252 or send me a message through my contact page,

Tuesday 19 March 2024

Practice - Welsh Ministers v Price

Statue of Dylan Thomas in Swansea
Author Ham II  Licence CC BY-SA 4.0 Deed  Source  Wikimedia Commons


































Court of Appeal (Sir Terence Etherton MR, Lords Justices Longmore and Irwin) The Welsh Ministers v Price and another (Rev 1) [[2017] WLR(D) 749, [2018] BCC 93, [2017] EWCA Civ 1768, [2018] 1 All ER (Comm) 1108, [2018] 1 WLR 738, [2018] 2 All ER 860, [2018] 1 BCLC 1, [2018] WLR 738

This is not a recent case but I chose to discuss it because it was referred to by the Court of Appeal in Flitcraft Ltd and others v Price and another [2024] EWCA Civ 136 on 27 Feb 2024 and by Ms Pat Treacy sitting as a deputy judge of the High Court in Wise Payments Ltd v With Wise Ltd and others [2024] EWHC 234 (IPEC) on 9 Feb 2024.  It is about the circumstances in which it is permissible and, where permissible, appropriate to join a third party to proceedings for restoration of a dissolved company to the register of companies.  It also relates to the copyright in a photo of Dylan Thomas and Caitlin Macnamara after their wedding on 11 July 1937 by Vernon Watkins ("Mr Watkins") and an action for infringement of copyright in that photo by Pablo Star Media Ltd which I discussed in n Copyright in Photographs - Pablo Star Media Ltd v Bowen on 15 Oct 2017 in NIPC Law.

The Copyright

A copy of the photo appears between paras [2] and [3] of His Honour Judge Hacon's judgment in Pablo Star Media Ltd v Bowen [2017] EWHC 2541 (IPEC) (13 Oct 2017). Mr Watkins died in 1967 and his copyrights in that and another photo of Dylan Thomas and his bride passed to Mr Watkins's widow Gwendolyn.  Mrs Walkins sold her copyrights in those photos to Pablo Star Ltd. for £350.  On 21 May 2014 Pablo Star Lrd. purported to assign the copyrights to Pablo Star Media Ltd.

The Company

Pablo Star Ltd was incorporated on 13 Aug 2003 with objects that included "intellectual property consultancy".  Hadyn Price ("Mr Price") was its only shareholder and director.  On 4 Feb 2013, Mr Price applied for the company to be struck off the register.  His application was granted on 18 Feb 2014.  On 14 April 2024, he applied for the company to be restored so that it could sue New Directions Publishing Inc. the Welsh Ministers and Nancy Galbraith for infringing copyright in the photo.  His application was granted by Registrar Derrett on 13 June 2014 subject to certain undertakings. Registrar Derrett varied his order to enable the company to sue more defendants on 18 June 2015. Mr Price undertook to transfer all his copyrights and trade marks to Pablo Star Media Ltd which he had incorporated on 14 May 2014.

The Application

As they were about to be sued, the Welsh Ministers applied to be joined to the proceedings to restore Pablo Star Ltd to the register.  They did so in order to argue that Registrar Derrett's orders of 13 June 2014 and 18 June 2015 should be declared invalid.  Registrar Barber granted their application on 2 March 2016.   

Judge Behrens

Mr Price appealed to the judge in chambers, His appeal was heard by His Honour Judge Behrens QC sitting as a judge of the High Court on 14 Oct 2016.   In Price v The Registrar of Companies and another  [2017] WLR 299, [2016] WLR(D) 563, [2016] EWHC 2640 (Ch), [2017] 1 WLR 299 Judge Behrens allowed the appeal and set aside the registrar's order.  He was referred to the judgments of the Court of Appeal in Stanhope Pension Trust v Registrar of Companies [1994] BCC 84 and Re Blenheim Leisure (Restaurants) Ltd [2000] BCC 554 and the of Lord Glennie in Spring Salmon & Seafood Ltd v A-G of Scotland [2010] CSOH 82

Judge Behrens noted at para [33] of his judgment that in Stanhope Lord Justice Hoffmann (as he then was) had distinguished between a case where a third party had rights that were directly affected by an order to restore a company to the register and a case where the third party merely wanted to say that the proposed proceedings by the revived Company have no prospects of success.  He concluded that the court should allow joinder in the first case but not in the second.  In Re Blenheim, landlords who had re-entered premises that had been let to a company which had been struck off the register were entitled to join the proceedings to restore the company because they had an interest that was threatened by the company's restoration. In Spring Salmon & Seafood, Lord Glennie refused to allow officers of a company that HMRC wished to restore to the register to investigate its tax affairs to join the proceedings because the restoration would only have placed the officers in the position they would have been had the company not been struck off in the first place.

His Honour accepted that an appeal court should not normally interfere with a case management decision of the court below but he believed that the registrar had erred in principle,  He said at para [49]:
"I accept that joinder of [the Welsh Nibisters] may assist the court in determining whether the court was misled. I do not, however accept that a desire by a third party to assist the court in this way is a proper basis for joinder. It could give rise to a multitude of claims from anyone with a grudge against or who wanted to complain about the Company. It is quite clear from the authorities that the right to be joined into restoration proceedings is an exception to the ordinary practice of the Companies Court. Furthermore, as is clear from the passages from the judgments on Aldous LJ and Tucker LJ to which I have referred it is a limited exception which will not result in large numbers of proceedings being turned into major litigation."

He continued in the next paragraph that the Registrar of Companies and not concerned third parties was responsible for ensuring compliance with the restoration proceedings of the Companies Act 2006 and not third parties:

"Parliament has entrusted the policing of restoration applications to the Registrar of Companies. It is thus for the Registrar to raise with the court issues of breach of an undertaking and/or misleading witness statements if he chooses to do so. If he does not do so, it is not in my view for anyone else to raise it with the court. All that a disappointed third party can do is to challenge the decision of the Registrar in judicial review proceedings."
The Court of Appeal

The Welsh Ministers appealed to the Court of Appeal. Their appeal was heard by Sir Terence Ethertoon, Master of the Rolls and Lords Justice Longmore and Irving on 17 Oct 2017. Their lordships handed down judgment on 16 Nov 2017 in The Welsh Ministers v Price and another [2017] WLR(D) 749, [2018] BCC 93, [2017] EWCA Civ 1768, [2018] 1 All ER (Comm) 1108, [2018] 1 WLR 738, [2018] 2 All ER 860, [2018] 1 BCLC 1, [2018] WLR 738). They dismissed the appeal and upheld the decision of Judge Behrens.

Their lordships' starting point was CPR 19.2 (2):
"The court may order a person to be added as a new party if –
(a) it is desirable to add the new party so that the court can resolve all the matters in dispute in the proceedings; or
(b) there is an issue involving the new party and an existing party which is connected to the matters in dispute in the proceedings, and it is desirable to add the new party so that the court can resolve that issue."

Their lordships reasoned that CPR 19.2 confers a discretion on the court to join a party if the conditions in 19.2 (2) (a) or (b) are satisfied. Those conditions are that:
(1) the new party can assist the court to resolve all the matters in dispute in the proceedings, and
(2) it is desirable to add the new party to achieve that end.
They considered that CPR 19.2 (2) ought to be given a wide interpretation.  The words "in dispute" should be read as "in issue".  Referring to Dunwoody Sports Marketing v Prescott [2007] EWCA Civ 461 the Court opined that it can add a party even after judgment.

As the issue was whether Pablo Star should be restored to the register, the Court of Appeal thought that  Registrar Barber had been right to consider the application of the Welsh Ministers was capable of falling within CPR 19.2 (2) (a).   Their lordships did not, however, consider it desirable for the Welsh Ministers to be party to the proceedings.  The reason why the Welsh Ministers' application was capable of falling within CPR 19,2 (2) (b) was that the issue of the validity of the assignment, which they wished to challenge in connection with claims for copyright infringement against them, was connected to the making and revocation of Registrar Derrett's orders. In considering whether or not it would be desirable to add a new party pursuant to CPR 19.2 (2) the two lodestars were the policy objective of enabling parties to be heard if their rights might be affected by a decision in the case and the overriding objective in CPR Part 1.

Sir Terence Etherton, who delivered the lead judgment, said between paras [60] and [62]:

[60] ....... There are important practical considerations for strictly limiting the circumstances in which third parties are joined to applications to restore a company to the register, and they apply equally to applications to set aside an order for restoration. There may be many third parties who perceive that their interests may be indirectly affected by restoration and who may wish to advance all manner of reasons for seeking to prevent or reverse an order for restoration rather than wait to face and, where appropriate, resist actions of the company against them or others which the company perceives to be in its best interests. That is particularly true, in a case like the present, when it is sought to restore a company to the register of companies in order to resurrect an asset in the form of a cause of action against third parties.
[61] In such a case, it is well established that the court will not allow the intervention in proceedings for restoration by a third party who merely wishes to argue that the proceedings which the revived company proposes to bring against the third party have no prospect of success: Stanhope [1994] BCC 84 at 90D.
[62] By contrast, the court will allow intervention by a third party whose interests will be directly affected by the restoration and who would otherwise have no opportunity to be heard on the issue of whether, in the light of that direct effect, restoration is just: Blenheim at 574B."

The Court of Appeal agreed with Judge Behrens that the Welsh Ministers' rights were not affected by the copyright assignment in the photo of Dylan Thomas and his bride to Pablo Star Media Ltd. If they had infringed that copyright the only difference was that they would be liable to a different claimant.   They contrasted the position of the Welsh Ministers to that of the landlord in Blenheim.

Their lordships disagreed with Judge Behrens that Parliament had entrusted the policing of restoration applications to the Registrar of Companies and that it was for the Registrar alone to raise breaches of undertakings or misleading witness statements. No statutory authority had been offered to support that proposition.  The Registrar's functions are largely administrative and he or she lacks the resources to police compliance with the Companies Act 2006.  

In an appropriate case, the Registrar would favour the joinder of a third party to bring before the court a complaint that it had been misled or an undertaking had been broken and the court had power under CPR 19.2 (2) to allow such joinder in an appropriate case.   This was not an appropriate case.  In their lordships' view, this was not an appropriate case. The Welsh Ministers would have no real prospect of persuading the court that the order to restore Pabli Star Ltd. should be revoked.

The Claim against Mr Bowen

I have already referred to Pablo Star Media's action against Richard Bowen who had cropped the image of Dylan Thomas's face from Mr Watkins's photograph which had been reproduced on the Visit Wales website and inserted it onto a website to advertise holiday lets in Wales,  The Visit Wales website was operated by a department of the Welsh government for which the Ministers were responsible.  It was that website which had featured in the appeals to Judge Behrens and the Court of Appeal.  Mr Bowen admitted infringement and at a damages only hearing on the IPEC small claims track District Judge Cary awarded Panlo Star Media £250 plus £3 interest.  However, the district judge also ordered the claimant to pay Mr Bowen's travelling expenses of £164.10 leaving a balance of £88,90 to the company,  The company appealed to the Enterprise Judge but Judge Hacon declined to interfere with the district judge's order.

Comment

Although the appeal focused on the joinder of parties to proceedings to restore a company to the register it does have some lessons which is why the Court of Appeal and Ms Treacy referred to it.  First, CPR 19.2 is to be given a wide interpretation.  The court has the power to join a party to proceedings even after it has given judgment,  Two conditions have to be satisfied.  The first is that the new party can assist the court to resolve all the matters in dispute in the proceedings.  The second is that it should be desirable to add the new party to achieve that end.  In Wise Payments Ms Treacy equated that analysis as follows in para [37] of her judgment:
"(i) does the case against the party to be joined have a real, as opposed to fanciful, prospect of success. This is to be assessed by testing: (i) whether the pleaded case carries a degree of conviction; (ii) whether it is coherent and properly particularised; and (iii) whether there is evidential material which establishes a sufficiently arguable case against the party in question; and
(ii) does the likely benefit of granting the application to join another party and the inevitable related application to permit consequential amendments satisfy the IPEC costs benefit test as well as the requirements of the relevant parts of the CPR."
Anyone wishing to discuss this point further may call me on 020 7404 5252 during office hours or send me a message through my contact page,

Monday 4 March 2024

St David's Day Celebration at the Guildhall


 













Jane Lambert

One of the highlights of Wales Week London is the annual St David's Day dinner at the Guildhall. No greater pleasure or honour can be offered to a friend of Wales than an invitation to that event.  My invitation came from Pryderi ap Phisiart, Managing Director of the Menai Science Park ("M-SParc"),  for which  I am very grateful.

From time to time I am asked about my connection with Wales.  I cannot claim Welsh birth, kin, domicile or even education but I have enormous affection for the land and its people.  Having been born not far from the border I have visited Wales several times a year almost every year of my life.  The regions that I know best are the North West and South East.  I have watched with concern the decline of the staple industries in both regions.  Many of Wales's best and brightest young men and women who have been educated to a high level in those regions' excellent secondary schools have left their country to find work or continue their education and have never returned.

There are two institutions in particular that are helping to arrest and reverse that decline albeit in very different ways.  In the North West, M-SParc opened for business on 1 March 2018.  It provides space and support for new knowledge-based businesses on its own site and catalyzes enterprises throughout the region.  In the South East, Darius James set up a classical dance company not in Cardiff but in his birthplace, Newport.  The company brings an art form that began in the courts of kings and emperors, developed in the world's leading opera houses and is still associated with major cities to communities throughout Wales.  Not only does the company entertain audiences in those communities it also trains their young people.  In some cases,  Ballet Cymru's training ignites an ambition that leads talented kids into careers in dance and other performing arts. I champion both of those institutions and assist them in any and every way I can.  They are my connection with Wales.  

The St David's Day celebrations at the Guildhall began with preprandial drinks in the Old Library, continued with dinner in the Great Hall and ended for some with postprandial libations and community singing at The Trading House on Gresham Street.  

Before dinner, I met some distinguished fellow guests including a former law officer of the Turks and Caicos Islands and Bermuda, a leading South Wales fashion designer, a teacher of fashion design at the University of the Creative Arts in Epsom, a partner of a leading law firm and several angel and private equity investors.  As they came from  Cardiff,  Carmarthenshire, Glamorgan, Gwent and Pembrokeshire I told them about M-SParc and its work in the North West. I  encouraged them to participate in M-SParc's World IP and Wales Enterprise Day celebrations.   Since Ballet Cymru's studios in Rogerstone are close to many of them I mentioned the company's inclusive classes and performances at the magnificent Riverfront Theatre,

M-SParc had two tables in the Great Hall.  Pryderi presided over one and Gwenllian Owen, the science park commercialization and information officer, over the other.  Guests on my table included investors and mentors, M-SParc employees and other friends of the science park.  I sat between the investment manager of the Investment Fund for Wales and the Investment Partner of the Clean Growth Fund.  Dinner consisted of a fish starter, lamb main course, dessert, cheese and coffee accompanied by excellent wines.   

We were welcomed to dinner by the President, Peter Evans.  Grace was said by the Rev Robert Nicholls of the Welsh Church of Central London, A toast in memory of St David was proposed by the psychologist and TV journalist and presenter Dr Sian Williams.  The keynote speech was given by Lord Wigley of Caernarfon who spoke on the centuries-old relationship between Wales and London.  He celebrated the enormous contribution that Welsh émigrés had made to the City's financial services industry over the years mentioning a time when 3 of the leaders of the 8 largest insurance companies in the United Kingdom were Welsh speakers.   The "Welsh diaspora" in London and other big cities in the UK and around the world was an important connection for those who remained in Wales.  I had heard him speak on a similar theme at a reception in the House of Lords last September (see Reflections on Wales Innovation Week in London 20 Sept 2023).

Two highlights of the dinner were the presentation of the Community Foundation Wales award to an impressive young man whom I met briefly at the Trading House and the singing by the Côr Llundain.  I live near Huddersfield which has its own grerat choir.  We like to believe that our Choral is second to none.  Having heard Côr Llundain's O Gymru, Migldi Magldi, Dana Dana and Gwinllan A Roddwyd I have to say that Huddersfield has serious competition from London. Just before the end of the meal the choir led the hall in singing Cofian Gwlad and Hen Wlad Fy Nhadau.

Much of the choir'smusic was new to me but I knew Migldi Magldi from Cerys Matthews's Tir.  Ms Matthews is one of the patrons of Ballet Cymru and Darius James and Amy Doughty have choreographed a most beautiful ballet to her music which they performed recently at the Pontio Centre.

Singing continued at the Trading House until the early hours of the morning though the repetoire was more varied in that it ranged from Guide Me O Thou Great Redeemer to Tom Jones's Delilah.   It included my favourite Welsh song, Calon Lânwhich never fails to moisten my eyes.  Especially as I now know enough Welsh to follow the lyrics.  Networking also continued until well into Saturday.

The main sponsor of the event was the computer security specialists Pure Cyber.  The wealth management company RBC Brewin Dolphin sponsored the choir.  Amgueddfa Cymru, Bethan Jones Boutique, Swansea University, the Welsh Government and several other businesses, institutions and individuals also contributed to the event.   As the late Queen said at the end of her last speech to the Senedd, diolch o galon to each and every one of those who facilitated the event.

Anyone wishing to discuss this article may call me on 020 7404 5252 during normal business houers or send me a message through my contact page at all other times.

Monday 26 February 2024

Wales Week London

Satellite Image of Wales
Author NSA, USA Copyright Public Domain Source Wikimedia












Jane Lambert 

Wales Week London is London's contribution to an annual worldwide festival of Wales.  According to its website, it consists of 602 events at 110 venues in 22 countries with 66,000 attendees reaching 10.8 million people.  In the rest of the UK, Wales Week events are taking place in Berkshire and Newcastle upon Tyne.  Elsewhere there are events in Australia, Canada, France, Hungary, the Irish Republic, Japan, Thailand, the USA and even the Islamic Republic of Iran.

Although called "Wales Week" the festival's events in London stretch from a Festival of Welsh Music on 16 Feb 2024 to the St David's Day walk on 9 March 2024.  They cover the arts, crafts, entertainment, food and sport as well as business, industry and tech.  

There are 37 events in this last category which include diplomatic receptions at the Canadian High Commission and the Hungarian, Swiss and US embassies, a dinner at the Guildhall to celebrate St David's Day, discussions on artificial intelligence, biotech, energy, legal techmanufacturing, net zerosport, transport and receptions, exhibitions and other events to promote innovation and investment,  Some of those events are invitation only but many are open to anybody and in most cases admission is free.

A curious omission given the Intellectual Property Office is headquartered in Wales and has an office in London is the absence of any event specifically on intellectual property.  It will of course be central to many of the discussions.  It would be hard to talk about branding without mentioning trade marks and passing off or to discuss inventions without referring to patents, design rights or trade secrecy. 

All that may change for next year because |I am willing to organize one or more intellectual property events either alone or in conjunction with any other like-minded individuals or organizations to be held possibly at my chambers at 4-5 Gray's Inn Square or some other central London location.  What I have in mind is a seminar on topics likely to be useful to entrepreneurs, inventors and business angels along the lines of the World IP Day and Wales Enterprise Day sessions that I help Emily Roberts to run at the Menai Science Park and maybe a walk-in IP clinic.

Holding events for Welsh Week is encouraged and an event organizer's toolkit  can be downloaded from the Wales Week London website,

Anybody wishing to discuss this article may call me on 020 7404 5252 during office hours or send me a message through my contact page, 

Thursday 25 January 2024

An IP Clinic for M-SParc

Author Chris Andrews Licence CC BY-SA Deed Source Geograph

 











Jane Lambert

There is a network of public libraries linked to the British Library that offer a range of services to artists, designers, entrepreneurs inventors and other creatives.  Each of those libraries is known as a "Business and Intellectual Property Centre" or "BIPC".  One of the network's most popular services are Intellectual Property clinics which offer free consultations with patent or trade mark attorneys, lawyers and other professionals specializing in IP.

Probably because much of the initial funding for the network was provided by Arts Council England, there are no BIPCs in Wales.  Wales may be losing out because the BIPCs appear to contribute substantially to the economy.   According to an independent economic impact analysis of the national network between April 2013 – March 2015, BIPCs

  • "generated £38 million GVA (Gross Value Added) on investment, with an estimated increase to £214 million by 2018
  • created almost 1,700 new businesses and over 4,200 jobs, with an estimated increase to over 4,100 new businesses and over 22,000 new jobs within the next 3 years (almost a third in the ‘Northern Powerhouse’)
  • created a payback of £4.50 for every £1 of public money (estimated to grow to £25 payback for every £1 invested by 2018)
  • supported diverse communities: 47% of network users were women, 26% of users were BAME and 25% were unemployed or had been made redundant
  • achieved lower cost per job created and higher GVA leverage, compared with other business support initiatives"
(see British Library's Business & IP Centre national network published by the Department for Digital, Culture, Media and Sport 16 Dec 2015).

The IP clinics at the English BIPCs are staffed by local lawyers, patent and trade mark attorneys and other professionals and receive little or no public funding,  While a BIPC is unlikely to open in North Wales any time soon there is no reason why IP professionals practising in North Wales should not set up their own IP clinic.  Over the weekend I consulted Emily Roberts of M-SParc, patent attorney Sean Thomas, commercial solicitor Andrea Knox and IP tax accountant Steve Livingston and all were in favour.

As Sean and I plan to attend the Artificial Intelligence for Business workshop on 31 Jan 2024, we shall be in M-SParc between 14:00 and 15:30 to discuss our plans for the clinic with the science park's tenants and other local business owners.   Should anyone require a private consultation with Sean or me on an IP issue that is presently concerning them we shall talk to them there and then.  If someone has an issue that Steve or Andrea is best placed to handle we shall refer that enquirer to one of those professionals,   Each of us has a network of contacts around the world so if a business owner wants to export to China or an invention needs a prototype for your invention we can put him or her in touch with the right person.

If the launch on 31 Jan 2024 is successful we shall operate a triage system.   We shall ask users to fill in the following form which my clerk or I will acknowledge.    If Sean, Andrea, Steve or I can advise by phone, Zoom or email we shall give the enquirer an immediate answer.   If he or she needs a meeting at least one IP professional will be in M-SParc at least once a month.

If anyone wants to talk to me about this project he or she should call me on 020 7404 5252 during office hours or use the following form:


Fill out my online form.

Sunday 14 January 2024

IP and the Sustainable Development Goals in Wales


 








Jane Lambert

In World IP Day 2024 - IP and the Sustainable Development Goals I reported that the theme for this year's World Intellectual Property Day would be IP and the SDGs: Building our common future with innovation and creativity.  Nowhere in the UK attaches more importance to those goals than Wales.  It was one of the first countries in the world to adopt a constitutional duty of sustainable development.  It announced its first Sustainable Development Scheme – Learning to Live Differently in 2000.  The National Assembly for Wales (as the Senedd was then known) enacted the Well-being of Future Generations (Wales) Act 2015.  In 2019 the Welsh government published Wales and the Sustainable Development Goals. 

S.5 of the Well-being of Future Generations (Wales) Act 2015 sets out a table of goals that are compatible with but not identical to the United Nations' Sustainable Development Goals.   These are known as the "Well-being Goals":

  • "A prosperous Wales:  An innovative, productive and low carbon society which recognises the limits of the global environment and therefore uses resources efficiently and proportionately (including acting on climate change); and which develops a skilled and well-educated population in an economy which generates wealth and provides employment opportunities, allowing people to take advantage of the wealth generated through securing decent work. 
  • A resilient Wales: A nation which maintains and enhances a biodiverse natural environment with healthy functioning ecosystems that support social, economic and ecological resilience and the capacity to adapt to change (for example climate change).
  • A healthier Wales: A society in which people's physical and mental well-being is maximised and in which choices and behaviours that benefit future health are understood.
  • A more equal Wales: A society that enables people to fulfil their potential no matter what their background or circumstances (including their socio economic background and circumstances).
  • A Wales of cohesive communities: Attractive, viable, safe and well-connected communities. 
  • A Wales of vibrant culture and thriving Welsh language: A society that promotes and protects culture, heritage and the Welsh language, and which encourages people to participate in the arts, and sports and recreation. 
  • A globally responsible Wales: A nation which, when doing anything to improve the economic, social, environmental and cultural well-being of Wales, takes account of whether doing such a thing may make a positive contribution to global well-being."
Obligations are placed upon the Ministers of the Welsh Government and public services to promote the Well-Being Goals.   An official known as The Future Generations Commissioner of Wales is established by s.17 to promote the sustainable development principles and perform the functions in s.19.

As the Well-Being Goals are fewer and more tightly defined than the 17 Sustainable Development Goals it will be easier to relate them to intellectual property law.  For example, the legal protection of branding, design, technology and creative works is essential to the prosperity of Wales and more or less anything said on those topics would be relevant.  A Healthier Wales can focus on the needs of the pharmaceutical and medical devices industries in Wales and on the use of artificial intelligence and big data in finding new medicines and treatments.  "A Wales of Vibrant Culture and thriving Welsh language:" could discuss the arts, universities, education, broadcasting and cinema in Wales.

 On all those topics the management of the Menai Science Park and the park's businesses are brimming with talent and experience.   If the net is cast wider to catch AberInnovation, Tramshed, the Pontio Centre and the Universities Wales can create a brilliant contribution to IP and the Sustainable Development Goals.  In an upcoming meeting with Emily Roberts and Iwan Pitts, I shall suggest a programme based on Wales's unique contribution to the UN's Sustainable Development Goals for M-SParc's World IP Day celebrations..

Anyone wishing to discuss this article may call me on 020 7404 5252 during normal office hours or send me a message through my contact page,