English High Court judge strikes out bad faith trade mark for name of 1970s pop band

By Mitchell Skilling

Alan Williams, and his company Alan Williams Entertainments Ltd, raised the claim against defendants Mick Clarke, John Richardson and Steve Etherington alleging that their use of the Rubettes name since 2018 amounted to passing off, and that a trade mark application they were granted in January 2019 was made in bad faith.

The case was heard by judge Pat Treacy in the High Court of Justice (Chancery Division), with Michael Smith appearing for the claimants and Richard Colbey for the defendants.

Lineup dispute

The Rubettes were originally formed in 1974 with a membership including Mr Williams, Mr Clarke, and Mr Richardson. Mr Williams performed under the Rubettes name until 2003, when his band began to use the name “the Rubettes featuring Alan Williams”. Mr Clarke and Mr Williams performed in these bands for various periods up to 2018. Mr Etherington was not part of the original lineup but performed as part of the later lineup between 2016 and 2018.

On 1 July 2018, Mr Williams disbanded the then-lineup by email partly due to disputes between the members and partly due to a plan to move to Australia. At some point before March 2019, the defendants formed a new band using the Rubettes name. It was the claimants’ position that the defendants had not been the owners of any goodwill associated with the name at the relevant date.

It was submitted for the claimants that they had accrued goodwill in the Rubettes name since 1983 which they could assert against anyone except persons involved in the contractual arrangement by which they added “featuring Alan Williams” to the name. Any interest in the name owned by Mr Clarke and Mr Williams was transferred to AWE Ltd when the Rubettes’ former management company was dissolved and therefore they had none at the time they formed the 2019 band.

For the defendants it was submitted that the goodwill to the name was jointly owned between the members and had grown organically since 1974. Mr Williams had abandoned his goodwill when he dissolved the Rubettes in the July 2018 email, while the defendants had generated their own goodwill by selling their musical skills in such a way as to do so.

No special status

In her opinion, Judge Treacy said of the goodwill in the Rubettes name: “The evidence supports Mr Smith’s submission that it was AWEL and Mr Williams who were responsible for promoting the band. Promotion is an essential part of the trading activities of any band (or of any entertainer). Since 1983, AWEL has traded through the band and has accrued goodwill in ‘the Rubettes’. The critical question is whether, at any time between 1983 and the autumn of 2018, either Mr Clarke or Mr Richardson accrued any concurrent goodwill.”

She continued: “The fact that Mr Richardson and Mr Clarke were members of the original Rubettes line up does not of itself give them any special status. Goodwill relates to rights which accrue to business and trade as otherwise it would lack any sensible defining boundary. While in appropriate circumstances one or more musicians trading as individuals might accrue rights concurrently in the same band name either with each other or with another body primarily responsible for trading as that band, or both, there is no evidence that that has occurred here.”

Addressing the passing off claim, Judge Treacy concluded: “The use by the Defendants of the word ‘Rubettes’ to signify the services that they supply is a misrepresentation. The Claimants have goodwill associated with that name and the use of it by others in trade as a badge of origin is a misrepresentation, likely to cause confusion as to their connection with AWEL’s business and, in the circumstances of this case, likely to cause damage to AWEL.”

On trade mark, she added: “Mr Clarke’s application was not motivated by an interest in protecting against unlawful use. It was motivated by an intent to interfere with the Claimants’ legitimate conduct in a context where there was no reasonable basis to believe that those interests were being abandoned, and the UK TM was subsequently exercised so as to interfere with the Claimants’ business. Mr Clarke’s conduct in applying for the UK TM falls short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in the music business.”

Judge Treacy therefore concluded that the defendants had caused damage to the claimants’ goodwill and declared their trade mark to be invalid.

Claire Lightowler: Improving legal support for children in conflict with the law – emerging findings

Thanks to funding from The Promise Partnership’s ‘A Good Childhood’ fund, Clan Childlaw is undertaking a scoping study to better understand the legal needs of children and young people in conflict with the law. Clan Childlaw has commissioned Dr Claire Lightowler to lead this project, which began in April and will conclude in September 2022. The study involves engaging with children and young people, a range of professionals who support children and young people, and the team within Clan Childlaw.

At this stage we have engaged with professionals from across the disciplines of law, social work, justice, prisons and police. Critically though, we have not yet held engagement sessions with children and young people who have care and justice experience. There has been work conducted to co-design these sessions with children and young people, but the sessions themselves will take place over the summer. There are also further conversations to have, particularly with additional third sector organisations and criminal justice lawyers.

Despite these limitations, we thought it would be helpful to share what we are hearing as we go, to give people an opportunity to get in touch and share any views they might have. Here’s what we have heard so far.

What would good legal support look like?

We have heard that good legal support for children and young people in conflict with the law needs to focus on the individual and not the process. It needs to be fluid and responsive to the specific child or young person and their needs, communicating in a range of ways which best suit each person. A good legal service would be holistic and focus on helping the child or young person achieve what is important to them, providing support with the range of legal issues they might face - housing, benefits, care entitlements, advice on disclosing criminal records, preparing them for court, and so on. It should support and empower the child and young person with their legal needs, explaining things properly to ensure the child/young person has all the information they need to instruct their lawyer. It needs to be based on a common set of child-friendly justice values, be trauma informed and be based on a good understanding of child development and children’s rights.

Providing good legal support for children and young people means taking time to build a relationship, to support their understanding and to talk properly about what is important to them. It is important that such a legal service is aspirational for children and young people, it is knowledgeable and is not driven by metrics or targets which get in the way of taking time, building relationships and achieving what children and young people want. It is also important for children and young people’s lawyers to take the time to talk with the team around the child or young person, to be well connected to other professionals, and to break down professional boundaries where this helps achieve what matters to the child or young person. A legal service for children and young people in conflict with the law should also be available when they need it, and not limited to 9am-5pm.

Legal gaps and issues

There are a range of legal gaps and issues experienced by children and young people in conflict with the law where we have heard that they would benefit from improved support specifically designed and able to respond to their needs:

1. Legal rights of children and young people in Polmont Young Offenders Institution: further support with throughcare, housing rights, care entitlements, support with complaints
2. Disclosure of criminal records: there is a lack of understanding of criminal record implications and a need for support with the process of removing offences from records
3. Decision to refer a child to the Children’s Hearing System or Procurator Fiscal: there is a lack of transparency and children are not able to participate in the decision making about whether a child will go to the children’s hearing system or to court. There is also a need to ensure children’s rights are fully considered in this decision making process
4. Deprivation of liberty orders and cross border placements: There is a need to ensure that children’s rights are fully considered and fully met when children’s liberty is being deprived, paying particular attention to children who are placed far from home in unregulated care settings
5. Definition of “child”/ 16 and 17 year olds / age boundaries: Decision making about 16 and 17 year olds does not always fully acknowledge they have additional rights under UNCRC, particularly when in contact with the criminal justice system
6. Offence grounds: Children sometimes would benefit from support to challenge the appropriateness of referral to the Children’s Hearing System on “offence” grounds when there are underlying issues of care and protection
7. Children and young people on remand: Supporting children and young people who are at risk of remand and to challenge the length of time to be spent on remand
8. Police practice: The need for children and young people to be supported during their contact with the police, ensuring appropriate use of place of safety and challenging the necessity of practices such as strip searching.
9. Awareness of Rights: There continues to be a need for children and young people to be made aware of their rights and their implications, specifically where they come into contact with the justice system. In addition there is a need for other professionals to be supported to fully understand children and young people’s rights and their full implications.
10. Participation and voice: Ensuring that children and young people are supported and fully able to participate in all decisions which affect them, paying particular attention to criminal justice settings (especially court proceedings)

Suggested improvements

Through conversations with professionals a range of ideas have emerged about what might help better meet the legal gaps and needs identified. Suggestions include:

• Develop resources to raise awareness of the rights of children and young people in conflict with the law, to help people fully understand the implications of children’s rights, and to support lawyers to better meet children and young people’s needs
• Provide and support improvements in legal representation for children and young people in conflict with the law which takes the time needed to support and respond to their individual wants and needs
• Provide and encourage support and advocacy which is connected to legal support for children and young people in conflict with the law, developing a specific legal, support and advocacy service for those in Polmont YOI (a significant current gap in provision) which recognises there are times when children and young people need lawyers and supports their access to legal representation when this is needed
• Provide training and development opportunities to improve knowledge, understanding and practice across legal professionals supporting children and young people in conflict with the law
• Provide advice and support to improve knowledge and understanding about the law and about the role of lawyers amongst professionals, families and carers who support children in conflict with the law
• Engage with policy makers on structural barriers to respecting the rights of children in conflict with the law, on issues such as legal aid availability, ensuring lawyers representing children and young people are funded to spend the time needed with them
• Challenge decision making, and support others to challenge decisions which do not comply with legal requirements for children in conflict with the law

Next steps

So far, this scoping study has included limited engagement with children and young people. This is a key part of the process, and a series of engagement sessions will be taking place over the summer. Our early findings and ideas will change and develop following the conversations we will have with children and young people over the next few months. The scoping study will be finalised and published in September 2022.

Dr Claire Lightowler was the director of the Children and Young People’s Centre for Justice (CYCJ) from 2013-2021. 

Allan McDougall Solicitors’ Gordon Milligan achieves specialist accreditation in personal injury law

An experienced solicitor who is qualified in both Scotland and England, he possesses a wealth of expertise in personal injury matters, having represented clients in the sheriff courts, the All-Scotland Sheriff Personal Injury Court, the Court of Session, and the UK Supreme Court.

The Law Society of Scotland’s accreditation scheme recognises solicitors who develop specialist legal knowledge during their career and helps clients choose a solicitor with the necessary expertise and proven competency, particularly in more complex cases, to represent them.

Julie Harris, head of Allan McDougall Solicitors’ personal injury team, said: “Many congratulations from all of us in the firm to Gordon on this important milestone in his personal injury law career. We have continually increased upon the number of accredited specialists within the firm.

“Only around five per cent of solicitors in Scotland have a specialist accreditation by the Law Society of Scotland, so attaining this best practice quality mark is a significant achievement. Gordon’s accomplishment is well deserved, as affirmed by the positive feedback received from his clients on an ongoing basis, and we wish him continued success in future.”

Pinsent Masons’ Edinburgh office in Scottish first with new wellbeing accreditation

The firm’s 25,000 sq ft office in Capital Square – home to 200 lawyers and business operations staff – has received WELL certification by the International WELL Building Institute (IWBI).

The WELL Building Standard in the world’s premier accreditation which focuses on enhancing people’s health and wellbeing through the buildings where they live, work and play, and is the result of seven years of research and development working with leading physicians, scientists and industry professionals.

The standard is a performance-based certification which marries best practice in design and construction with scientific research, and covers seven categories of performance, including air, water, light, nourishment, fitness, comfort and mind.

Pinsent Masons’ design team introduced measures including circadian lighting systems which work in harmony with occupants’ 24-hour biological clocks, ensuring there is ample access to daylight and when daylight is comprised the system compensates to create a healthier and more naturally lit environment.

Air quality standards have been enhanced with increased air filtration and an air flush programme was carried out before occupation of the building, while greater focus has been put on healthy nutrition and mindful eating, with organic and sustainable products available in the office café.

A biophilic approach to the office design was used to create a harmony between modern architecture and the natural world with sustainable materials used wherever possible, and a large well-being zone and contemplation room was created with a library of materials covering mindfulness, stress management and healthy habits.

Other features include a third of workstations designed to be height-adjustable for standing and sitting and staff can take advantage of a range of fitness activities in the office, including yoga classes.

Luke Richards, Pinsent Masons head of facilities, UK & Ireland, said: “From the outset we wanted to take our people-centric workplace approach up a notch by targeting a globally-recognised standard, such as WELL, and challenging ourselves to deliver a more sustainable office fit-out project. We researched and sought out elements which created an amazing space that supports the wellbeing of the colleagues who work here, while minimising our impact on the environment throughout.

“This is the first project of its kind that Pinsent Masons has undertaken and we are delighted to be leading the way in Scotland as occupying the first building to have been awarded the WELL Certification.”

Ongoing monitoring and reporting will ensure the WELL standards achieved within the first six months of taking occupancy in the Morrison Street building will be maintained and improved, and other measures which meet the WELL benchmark will be introduced as part of a rolling programme.

Ewan Alexander, partner and head of office in Edinburgh, said: “It was our objective to achieve WELL accreditation and to meet the IWBI’s incredibly high standards and we are delighted to have done so.

“Working closely with the design experts, we were able to adjust certain features during the fit-out to make better use of space and design in light of post-Covid working preferences. The result is a stunning fit-for-purpose office which underlines our commitment to fully supporting our clients engaged in multiple sectors across Scotland and in international markets.”

England: Crackdown on corrupt elites abusing UK legal system to silence critics

Justice Secretary Dominic Raab has today set out a package of measures that take aim at so-called Strategic Lawsuits Against Public Participation (SLAPPs).

This includes a new mechanism to allow courts to throw out “baseless claims” quicker and a cap on costs to prevent the mega-rich, such as Russian oligarchs, from using expensive litigation as a weapon to silence their critics.

SLAPPs typically involve wealthy individuals or large businesses using the threat of endless legal action and associated costs – sometimes totalling millions of pounds – to muzzle their opponents under defamation and privacy laws. This tactic is increasingly being used to intimidate journalists, authors, and campaigners into limiting or abandoning critical stories or books. Most cases never make it to court because authors often back down under a barrage of aggressive legal letters – many retract stories in fear of financial ruin.

The government said responses to its call for evidence have revealed that this is having a chilling effect. Journalists, media organisations and publishers reported that they no longer publish information on certain individuals or topics – such as exposing serious wrong-doing or corruption – because of potential legal costs.

Mr Raab said: “We won’t let those bankrolling Putin exploit the UK’s legal jurisdiction to muzzle their critics. So today, I’m announcing reforms to uphold freedom of speech, end the abuse of our justice system, and defend those who bravely shine a light on corruption.”

Under the reforms, a court will apply a new three-part test to determine whether a case should be thrown out immediately or allowed to progress.

First, it will assess if the case is against activity in the public interest – for example investigating financial misconduct by a company or individual. Then, it will examine if there’s evidence of abuse of process, such as whether the claimant has sent a barrage of highly aggressive letters on a trivial matter. Finally, it will review whether the case has sufficient merit – specifically if it has a realistic prospect of success.

Anyone subject to a suspected SLAPPs case will be able to apply to the court to have it considered for early dismissal. Ministers will also introduce a new costs protection scheme to level the playing field between wealthy claimants with deep pockets and defendants.

The move seeks to shield those fighting lawsuits from crippling costs and enable meritless cases to be properly defended. The government will consult the Civil Procedure Rules Committee as necessary and set out the design of the scheme and the precise level of cost caps in due course.

Earlier this year, the High Court dismissed a libel claim against the British journalist, Tom Burgis, brought by a Kazakh-owned mining firm for his book Kleptopia: How Dirty Money is Conquering the World, but often the purpose of SLAPPs is to suppress publications without a case ever coming to court and being reported.

Michelle Stanistreet, general secretary of the National Union of Journalists, said: “The NUJ has long been campaigning at national and international level against the use of defamation legislation to crush journalists and journalism.

“Publication of these proposals is a significant step in tackling the deployment of SLAPPs and other forms of lawfare designed to stymie journalistic investigations. Abuse of the law by the sly and mighty, who deeply resent the legitimate work of the media in calling them to account, is a scourge which must be eradicated.

“A free media is vital to the functioning of a democracy. That freedom is severely curtailed when those with deep pockets are allowed to use the law to threaten the very future of media organisations.”

Dawn Alford, executive director of the Society of Editors, said: “The society welcomes the announcement by the government of a package of measures to tackle SLAPPs. For too long wealthy and powerful individuals and corporations have been able to weaponise and abuse the legal system to avoid public scrutiny while journalists, academics and authors have faced fear and harassment when carrying out their important roles.

“The introduction of a new mechanism to allow the courts to throw out meritless cases more quickly and a cap on costs are essential protections that should deter the wealthy from using the threat of expensive litigation to silence their critics and should allow journalists and others the ability to fulfil their roles as the public’s watchdog without bullying or intimidation.”

Legal drama to be broadcast live to cinemas from London’s West End

Directed by Justin Martin and captured live from the intimate Harold Pinter Theatre, the solo piece sees Ms Comer make her West End debut as Tessa, a young and brilliant barrister specialising in defending people accused of sexual offences.

The drama — which is accompanied by a trigger warning — looks at what happens after an “unexpected event forces her to confront the lines where the patriarchal power of the law, burden of proof and morals diverge”.

Speaking about the broadcast by National Theatre Live, Ms Comer said: “I am delighted that our production of Prima Facie will be available to watch in cinemas across the world. Alongside our ticketing initiatives this is another way that we can make sure that this play is accessible to anyone that would like to see it.”

More information about screenings and tickets is available from the NT Live website.

BTP to launch law bursary for British African students to make amends for corrupt officer

The scheme, to be launched next year, follows an apology from the BTP to a group of men who were wrongfully convicted in 1972 of attempting to rob an officer – Det Sgt Derek Ridgewell, head of the force’s anti-mugging squad.

He had been linked to a number of miscarriages of justice against young black men and was later convicted of stealing mailbags.

In December 2019, four men, who were known as the Oval Four, had their convictions for stealing handbags on the London Underground quashed.

Another group of the corrupt detective’s victims, the Stockwell Six, had their convictions, from 1972, quashed on appeal.

The force has said it will now use the money from the Proceeds of Crime Act to fund a bursary to help a British African undertake a law degree.

Lucy D’Orsi, chief constable of BTP, said: “Last year we issued an apology for the trauma suffered by the British African community through the criminal actions of former police officer Derek Ridgewell, who worked at BTP in the 1960s and 1970s.

“His inexcusable actions led to the conviction of innocent people and do not define the BTP today. It is important to do more than simply apologise and commit to learning from our past.

“We want to bring about real and meaningful change – improving community trust and confidence, whilst investing in future talent. This bursary aims to ensure that British African communities are better represented within the UK judicial system, which will benefit us all.”

Indyref2: Supreme Court order refusing Advocate General’s application published

President of the Supreme Court, Lord Reed, stated in the order: “Since the issues of (a) whether the Court should accept the reference and (b) how the Court should answer the question referred will both require consideration of the circumstances giving rise to the reference and the substance of the question referred, it is in the interests of justice and the efficient disposal of the proceedings that the Court should hear argument on both issues at a single hearing.”

A UK government spokesman said yesterday: “We appreciate the Supreme Court dealing with our application quickly. We will proceed to prepare our written case on the preliminary points we have noted, and on the substantive issue, to the timetable set out by the court.

“On the question of legislative competence, the UK government’s clear view remains that a bill legislating for a referendum on independence would be outside the legislative competence of the Scottish Parliament.”

The court has not yet confirmed when the case will be heard.

New caveat portal to go live on Monday

It will go live for both Court of Session and Sheriff Court caveats.

The portal requires solicitors to complete an online form and there is no requirement to upload any documents.

In advance of the go live date you will receive an email from the SCTS to activate your account if you have already provided details. If you would like to access the following details are required for each individual requiring access:

• Name
• Email address
• Solicitor firm
• Solicitor firm address
• Payment account to which caveat payment will be charged

Please email the above information to civilonlinelab@scotcourts.gov.uk

Please note that this service is only available to solicitors who have a credit account with the SCTS at the moment in time. Please also be aware that this is a new service separate from Civil Online and requires fresh registration in order to obtain access.

Should you require a demonstration of the new service then please contact civilonlinelab@scotcourts.gov.uk to arrange a session.

Apple sued over monopoly on contactless payments

iPhone users can only make contactless payments through Apple Pay, while users of Android-powered smartphones can choose between competing services like Google Pay and Samsung Pay.

The lawsuit, brought in Apple’s home state of California, alleges that Apple has extracted up to $1 billion per year in fees charged to US card issuers with every Apple Pay transaction — in contrast to Google and Samsung, who do not charge card issuers at all.

Law firms Hagens Berman and Sperling & Slater are taking forward the case on behalf of an Iowa-based credit union which is seeking to turn the case into a class action lawsuit on behalf of a class of US credit unions and financial institutions.

Steve Berman, co-founder and managing partner at Hagens Berman, said: “When you compare the functionality of Apple Pay to mobile wallets available on Android devices — Google Pay, Samsung Pay — you’re essentially holding up a mirror; they are essentially identical.

“And yet, the same service on Android that card issuers pay absolutely nothing for costs them a collective $1 billion annually through Apple Pay.

“The reason for this is simple. There is competition on Android devices, with multiple wallets offering contactless payments, whereas Apple has barred all rivals, making Apple Pay the only option.”

He added: “As a firm with a long history of antitrust successes, we’re no stranger to Apple’s monopolistic behaviour. We’re hoping for a hat-trick and we believe the economic evidence our team has amassed against Apple in this case is frankly undeniable. We look forward to fighting for this case.”

Clifford Chance increases partner pay to more than £2m

The firm said the average annual drawing for its full-equity partners was £2.04 million, putting it ahead of Allen & Overy, which announced an equivalent sum of £1.9m last week.

Rival magic circle firms Freshfields Bruckhaus Deringer and Linklaters pay their full-equity partners an average of £1.91m and £1.77m respectively.

Slaughter and May, a partnership, is not required to disclose its annual results. Insiders speculate, however, that its partners are paid an average of £2.6m.

The 10.2 per cent pay rise for full-equity partners at Clifford Chance follows an eight per cent rise in revenue at the firm, to almost £1.97 billion. Profits rose by nine per cent to £783m.

Quote of the day

Today, the degradation of the inner life is symbolized by the fact that the only place sacred from interruption is the private toilet.

Lewis Mumford, ‘The Culture of Cities’ (1938)

And finally… grapes of wrath

The couple, who have not been named, were apprehended in Croatia in connection with the lucrative heist from Spanish hotel and restaurant Atrio, The Times reports.

Police believe the woman checked into the hotel using a fake passport and was able to scope out the Michelin-starred restaurant’s wine cellar with her partner after they were offered a tour following their meal.

She later distracted staff while her partner snuck into the wine cellar and filled three backpacks with expensive bottles of wine.

At the time of the heist, José Polo, Atrio’s co-owner and sommelier, told industry website Decanter that he would be willing to “buy back the wine from the robbers, especially the 1806 Château D’Yquem”.

He added: “More than the bottles of wine, they robbed our dreams.”