North West WIN Annual Update Liverpool 18 April 2013 North West WIN Annual Update Welcome – Andrew Roberts 18 April 2013 TUPE AND EMPLOYMENT ISSUES UPDATE 2013 EMPLOYMENT Rachel Power TUPE – Current issues (1) Erosion of service provision change mechanism Enterprise Management Services Ltd v Connect-Up Ltd and others [2012] IRLR 190 (EAT) Johnson v Campbell and another UKEAT/0041/12 Argyll Coastal Services Ltd v Stirling and others UKEATS/0012/11 Hunter v McCarrick UKEAT/0617/11 WIN Annual Update 18 April 2013 4 TUPE – Current issues (2) Which employees transfer? Eddie Stobart Limited v Moreman and others Argyll Seawell Limited v Ceva Freight (UK) Limited WIN Annual Update 18 April 2013 5 TUPE - Consultation on proposed changes Consultation 17 January – 11 April 2013 Proposals include: repeal of "service provision change" provisions removal of obligation to provide employee liability information amending the meaning of "entailing changes in the workforce" (part of the ETO defence) to cover changes in location of the workforce dual consultation Legislation expected October 2013 onwards Contractual protection key to address uncertainty WIN Annual Update 18 April 2013 6 Employment Tribunal Reform - Fees Implementation in Summer 2013? Employment Tribunal fees Issue and hearing fees Level 1 – low value claims for sums due on termination (e.g. unpaid wages and PILONs) Level 2 – all other claims (including unfair dismissal, discrimination, equal pay and whistleblowing) Application specific fees EAT fees Remission scheme WIN Annual Update 18 April 2013 7 Employment Tribunal Reform – Procedures Changes to the Tribunal procedure rules Implementation in Summer 2013? Key changes Rejection of claim and response "Sift" stage Costs – awards above £20,000 no longer need to be referred to the court for assessment Presenting a response – 5pm deadlines Preliminary hearings – to consider both case management and preliminary issues WIN Annual Update 18 April 2013 8 Employment Tribunal Reform – Enterprise and Regulatory Reform Bill Implementation from Summer 2013 onwards Key changes in the context of Employment Tribunal reform include Compulsory pre-claim ACAS conciliation Protected settlement conversations for ordinary unfair dismissal claims Settlement Agreements – statutory code of practice and guidance Change to compensation award cap in unfair dismissal claims capped at the lower of 1 year's pay and existing limit Abolish discrimination questionnaires WIN Annual Update 18 April 2013 9 Changes to collective redundancy consultation Changes to collective redundancy consultation obligations: Implemented 6 April 2013 90 day minimum consultation period before the first redundancy can take effect is reduced to 45 days where 100 or more employees are affected Employees on fixed term contracts which have reached their termination point will be excluded from collective redundancy consultation obligations New ACAS non statutory code of practice WIN Annual Update 18 April 2013 10 OPPORTUNITIES AND RISKS CORPORATE RESTRUCTURING Christopher Roberts Expertise Summary Profile Christopher joined DLA Piper in 2002 as a trainee solicitor, qualifying into the firm's restructuring team in 2004. Christopher specialises in non-contentious aspects of corporate recovery, restructuring, turnaround and insolvency including advising upon administrations, receiverships and liquidations. Other aspects dealt with include advising directors upon their duties and responsibilities in relation to companies facing financial difficulties and acting for purchasers of businesses from insolvent companies. Expertise All aspects of non-contentious insolvency and restructuring including business and asset sales, real estate transactions, landlord and tenant issues, advice on security issues, advising main clearing banks, invoice discounters and factors and insolvency practitioners. Major Transactions Administrations of: MusicZone, Wine Cellar, Passion for Perfume, Weatherseal Windows, Total Fitness and Stanleybet UK Investments/Stanleybet Overseas Investments. WIN Annual Update 18 April 2013 12 Aim and Focus Aim of update To highlight certain circumstances where corporate restructuring and/or insolvency procedures may be used to benefit your company's business. To reduce concerns surrounding corporate restructuring and insolvency Focus of update Acquisition of a company's shares followed by a CVA Sale of a company's business and assets through an Administration process Avoiding TUPE liabilities ROT claims and identifying goods Risk of over-reliance on a single supplier in the current economic climate WIN Annual Update 18 April 2013 13 Acquisition of shares followed by a CVA CVA (Creditors voluntary arrangement) - process whereby a company proposes an arrangement to its creditors to reorganise its liabilities Enables a buyer to purchase a company and drop the loss making parts whilst leaving the good parts untouched and intact Successful, well publicised CVA's include: JJB Sports, Focus DIY, Blacks Leisure, Barratts Shoes and Flannels WIN Annual Update 18 April 2013 14 Acquisition of shares followed by a CVA cont… DLA Piper was the first firm to bring this product to the market Our first client to successfully utilise the product acquired the shares in a group of companies holding over 500 retail units and in doing so acquired the benefit of very significant tax losses which were available to be set off against the future profits of the post CVA profitable business Advantages: Preservation of tax losses Less business disruption Reduces overall liabilities Avoids the stigma of insolvency? WIN Annual Update 18 April 2013 15 Sale of a company’s business and assets out of Administration If a CVA is not workable, an asset sale may be a potential alternative However, risk of an asset sale being challenged as a TUV in a subsequent insolvency and vendor unable to fulfil its obligations under the SPA An asset sale out of an insolvency procedure, e.g. Administration, may be more desirable for vendors and purchasers: Preserve goodwill and no break in trading where the sale is prepackaged Cherry pick assets without the company's liabilities (except for TUPE liabilities) – though be wary of commercial reality: lack of supply credit going forward and may need to pay sweetner to suppliers Limit the risk of the sale being challenged and subsequently unravelled as TUV WIN Annual Update 18 April 2013 16 Avoiding TUPE liability on a business purchase The Transfer of Undertakings (Protection of Employment) Regulations 2006 ("TUPE") apply when purchasing a solvent business or a business from an administrator All employees automatically transfer plus purchaser may also be liable for potential protective awards However, employees do not automatically transfer in a sale by a liquidator WIN Annual Update 18 April 2013 17 Retention of title "club" When supplying goods to customers, supply contracts normally contain ROT clauses If a supplier is unable to identify its goods from an insolvent customer’s stock, then the supplier’s ROT clause will not normally be effective Admixture of goods BUT the supplier may be able to defeat an admixture defence if it can prove that it supplied generic stock/raw material to the customer WIN Annual Update 18 April 2013 18 Risk of over-reliance on a supplier As a result of the current economic climate, suppliers have been forced to reduce prices in order to combat competition Increasing shift to low stock, just in time models of supply Many suppliers now rely on volume ordering and customers have reduced their amount of suppliers to increase efficiency Insolvency of one link in the supply chain can create a domino effect of insolvencies up and down the chain eg the administration of Woolworths led to the insolvency of Zavvi WIN Annual Update 18 April 2013 19 Risk of over-reliance on a supplier cont… Insolvency practitioners may seek ransom payments from customers of an insolvent supplier eg the Land Rover and UPF case: KPMG threatened to stop supply unless Land Rover paid it £46 million. Land Rover ultimately paid £15m to £20m for UPF’s debt to replace UPF’s receivers to ensure UPF continued to supply essential parts to Land Rover WIN Annual Update 18 April 2013 20 Early warning signs of a supplier’s insolvency Warning Signs Missed deliveries Requests for deposits and up-front payments Unexpected rise in prices or attempts to renegotiate pricing or terms Reduction in credit insurance cover County court judgments and winding-up petitions – DLA Piper can conduct these searches for you Questions to ask the supplier Have you moved from quarterly to monthly rents? Have you agreed a time to pay agreement with HMRC? WIN Annual Update 18 April 2013 21 Protect yourself Methods of dealing with a supplier's insolvency: Protect yourself by building up stock levels and consider having more than one supplier for key supplies If a supplier becomes insolvent, customers may have to consider acquiring the supplier's business to avoid costly renegotiation of supply terms or having to make ransom payments to the insolvency practitioner WIN Annual Update 18 April 2013 22 Key Messages Key Messages There are ways to purchase distressed businesses and assets in a financially efficient way A vendor can make the sale of a subsidiary business more attractive to the market If you are a supplier of generic stock or raw material, you may still be able to recover your goods from an insolvent supplier even if you are unable to identify your specific goods Be vigilant of supplier distress and protect yourself from ransom demands and other business disruption WIN Annual Update 18 April 2013 23 North West WIN Annual Update HOT TOPICS IN THE CONSTRUCTION AND ENERGY SECTOR Ian Wood and Jim Pinsent Overview – one major new case! The Walter Lilly Case Walter Lilly & Company Ltd v Giles Patrick Mackay and others WIN Annual Update 18 April 2013 25 Overview Defining case in last 12 months in both construction and engineering Extension of time and concurrent delay Global claims Privilege Settlement WIN Annual Update 18 April 2013 26 Background Mr Mackay's quest to build the perfect house Ended with legal costs liability in excess of £9 million Litigation "Very old fashioned because it has involved full blooded conflict between the parties in which there seems to have been little, no or belated room for compromise" Worth a read for Mr Mackay's comments WIN Annual Update 18 April 2013 27 Simple facts Traditional contract with Walter Lilly as main contractor Fixed completion date with extension of time mechanism for employer risk events Liquidated damages for culpable delay Time and cost overrun – liquidated damages applied WIN Annual Update 18 April 2013 28 Concurrent delay Long standing question of who gets benefit of concurrent delay Is contractor entitled to extension of time? Traditional in England: yes Henry Boot v Malmaison Scotland: City Inn v Shepherd no. Necessary to apportion relevant delay period between factors causing delay Walter Lilly resolves confusion WIN Annual Update 18 April 2013 29 Global claims What are Global Claims? Traditionally scorned by employers and courts Aikenhead J: "there is nothing in principle 'wrong' with a 'total' or 'global' claim" Claims will no longer fail on basis of single issue not pleaded or proved or which is proved to be the fault of contractor WIN Annual Update 18 April 2013 30 Privilege Claims consultant appointed to provide "contractual and adjudication advice" Application of: legal advice privilege litigation privilege Neither privilege applies to correspondence and legal advice from claims consultants or non practising solicitors or barristers WIN Annual Update 18 April 2013 31 Settlement agreement and third parties Settlement between Party A and Party B What can Party B recover from culpable third party? Siemens v Supershield upheld Question of reasonableness determined by strength of claim, whether legal advice obtained, consequences of litigation and benefits of settling Practical issues WIN Annual Update 18 April 2013 32 North West WIN Annual Update TAX Stephen Jones Patent Box 1 Reduced rate of 10% for companies within the charge to UK corporation tax who exploit patents and/or certain other botanical and medical innovations Companies must opt into the regime for it to apply and the relief is to be phased in between 1 April 2013 and 1 April 2017 The reduced rate of corporation tax is applied to a proportion of the company's profits derived from: sales of products incorporating the patented technology licensing and selling patent rights themselves other use of such right sin the course of a trade (e.g. in providing services) compensation for infringement of patent rights UKG/15338364.1 21 March 2013 34 Patent Box 2 The company must have an "exclusive" licence over the qualifying IP in one or more countries or territories. The company must have been involved significantly in the creation or development of the qualifying IP, or of a product or process that incorporates it. There are special rules for groups aimed at preventing relief where the IP was developed outside the group (e.g. where a company that developed the IP is subsequently acquired by another company), unless certain further activity is carried out within the group or an additional "active ownership" condition is satisfied. Patent box profits are calculated according to a standard formula (see next slide) or a "streaming method" UKG/15338364.1 21 March 2013 35 Patent Box 3 Stage One (Identify Profit) (1) Calculate Gross Trading Income ("TI")) Stage Two (Deduct Routine Return) (4) Deduct Routine Return to give Qualifying Residual Profit ("QRP") Stage Three (Deduct Brand Value) (5) Opt for Small claims Treatment (if appropriate) (2) Calculate relevant IP Income ("RIPI") as a proportion of TI (3) Calculate percentage of trade profits (or losses) attributable to RIPI (6) deduct Marketing Asset return from QRP 21 March 2013 36 Patent Box 4 Patent Box – Practice Points for In-House Lawyers The ownership of patent rights and other qualifying IP will affect the availability of relief: whether a company opts into the patent box may depend upon whether it is making profits or losses; this and other factors may influence a decision whether or not to move IP around the group; the effect of litigation settlements and licensing arrangements will be relevant for determining whether the company has an "exclusive" right enabling it to claim relief; it may be beneficial to bring qualifying IP into the UK and to relocate development here. UKG/15338364.1 21 March 2013 37 Statutory Residence Test 1 Statutory Residence Test ("SRT") is contained in schedule 43 of the Finance Bill and replaces the previous mix of case law and HMRC practice (HMRC's approach was set out in HMRC6) for tax years 2013-14 onwards; SRT if automatic non-residence test is satisfied, the individual is not resident; if the automatic residence test is satisfied, the individual is resident; where neither of these applies the individual is resident if he or she has "sufficient ties" with the UK, which test depends on "connecting factors" and days spent in the UK – the more "connecting factors" the fewer days are required to make a person resident UKG/15338364.1 21 March 2013 38 Statutory Residence Test 2 Automatic Non-Residence – always takes precedence Test Days in UK UK resident in one or more of 3 previous tax years < 16 (and did not die here!) UK resident for none of previous 3 tax years < 46 Sufficient overseas work with no significant breaks (complex formula) < 31 days in UK where more than three hours' work done and < 91 days spent in UK Two other automatic tests apply in the event of death UKG/15338364.1 21 March 2013 39 Statutory Residence Test 3 Automatic Residence – next test to apply Test Days in UK Present in UK for 183 days in tax year No additional "days" test "Home" in the UK Spends sufficient days in that home and satisfies requirements in relation to overseas home (if any) – complex rules Sufficient UK hours of work with no Complex rules here too! significant breaks A fourth automatic test applies in the event of death UKG/15338364.1 21 March 2013 40 Statutory Residence Test 4 "Sufficient Ties" where resident in one or more of previous three tax years Days spent in the UK Minimum number of ties Greater than 15 but not more than 45 4 More than 45 but not more than 90 3 More than 90 but not more than 120 2 More than 120 1 UKG/15338364.1 21 March 2013 41 Statutory Residence Test 5 "Sufficient Ties" where not resident any of previous three tax years Days spent in the UK Minimum number of ties More than 45 but not more than 90 4 More than 90 but not more than 120 3 More than 120 2 UKG/15338364.1 21 March 2013 42 Statutory Residence Test 5 The "UK ties" "Family"- "relevant relationship" with another person resident in the UK "Accommodation" – a "place to live" in the UK for at least 91 days and spends at least one night there "Work" – at least 40 days working for at least three hours on each such day in the UK "90-day tie" – spends more than 90 days in the UK in the preceding tax year, the tax year preceding that year or both "country" tie (only applies if resident for one or more of previous three tea years) – meets the "midnight test" for the greatest number of days in the UK (compared to each other country) UKG/15338364.1 21 March 2013 43 Statutory Residence Test 6 The rules are complex and the slides above are an oversimplification! SRT – Practical Points for In-House Lawyers Patterns of work for multi-state employees may change Old contracts and methods of working may need to be reconsidered There will be a constant need to take tax advice on the impact of detailed personal and employment circumstances Double taxation relief rules still apply UKG/15338364.1 21 March 2013 44 General Anti-Abuse Rule The General Anti-Abuse Rule (GAAR) will apply to income tax, corporation tax, capital gains tax, inheritance tax, petroleum revenue tax and stamp duty land tax (it is later to be extended to NIC) The GAAR will provide for the counteraction of tax advantages arising from tax arrangements that are "abusive" Counteraction must first be notified by a designated HMRC officer and, unless having considered representations made by the taxpayer a designated HMRC officer decides that counteraction ought not to apply, the arrangements must be referred to an "Advisory Panel" to be established by the Commissioners for HMRC for the purpose, for its opinion. 21 March 2013 45 General Anti-Abuse Rule "Tax arrangements are “abusive” if they are arrangements the entering into or carrying out of which cannot reasonably be regarded as a reasonable course of action in relation to the relevant tax provisions, having regard to all the circumstances including— (a) whether the substantive results of the arrangements are consistent with any principles on which those provisions are based (whether express or implied) and the policy objectives of those provisions, (b) whether the means of achieving those results involves one or more contrived or abnormal steps, and (c) whether the arrangements are intended to exploit any shortcomings in those provisions" 21 March 2013 46 General Anti-Abuse Rule Statute will set out examples of arrangements that are to be considered "abusive" they result in an amount of income, profits or gains for tax purposes that is significantly less than the amount for economic purposes they result in deductions or losses of an amount for tax purposes that is significantly greater than the amount for economic purposes they result in a claim for the repayment or crediting of tax (including foreign tax) that has not been, and is unlikely to be, paid. Practical Point for In House Lawyers – difficult dividing line between "abusive" and non-abusive structures – scrutiny required 21 March 2013 47 Miscellaneous Points to Remember Entrepreneur's relief for shares acquired under an enterprise management incentive scheme – always consider EMI if you qualify. VAT and acquisition costs – following BAA –v- HMRC [2013] EWCA Civ 112 – taxpayer lost its claim to recover input tax on incurred on professional fees invoiced to a company which acquired it and subsequently became a member of its VAT group; the case underscores the need for a holding company to have an "economic activity", to make ,or to intend to make, supplies in the course of a business. VAT – Robinson Family Limited –v- HMRC [2012] UKFTT 360(TC) – grant of a long lease subject to sub-leases can be a TOGC if value of reversion is minimal. 21 March 2013 48 North West WIN Annual Update INTELLECTUAL PROPERTY Dominic McKean Contents Apple v Samsung - who is winning the war? The new European Unified Patent system - what will it mean for you? The Internet's New Wild West - an update on who's applying for new gTLDs and why Is using your Community trade mark in just one Member State enough to keep it safe from attack? Essential Legal Update 18 April 2013 50 Apple v Samsung In the UK, Apple sued for infringement of its RCD. Apple alleged that the Samsung Galaxy tablets had copied its design. The court found that there were certain similarities: 1. the front; 2. the fact neither had indicator lights or buttons; and 3. the thinness enhancing effect of the sides. Insert filename here Date of presentation 51 Apple v Samsung However, there were two major differences which meant that the Samsung tablets did not infringe Apple's registered design: 1. The most important difference between the Samsung tablets and the Apple design was the thinness of the Galaxy tablets; 2. The next most significant difference was the detailing on the back of each of the tablets. "They do not have the same understated and extreme simplicity which is possessed by the Apple design, they are not as cool, and so the overall impression produced is different". Insert filename here Date of presentation 52 Apple v Samsung In the US it was a different story. Apple sued Samsung for infringement of three patents: 1. US Patent No. 7,469,381 relating to "list scrolling and document translation, scaling and rotation on a touch-screen display"; 2. US Patent No. 7,844,915 relating to an "application for programming interfaces for scrolling operations" (zooming, bounce-back on scrolling, etc); and 3. US Patent No. 7,864,163 relating to a "method for displaying at least a portion of a structured electronic document", as well as four design patents, including the '889 design patent which claimed the "the ornamental design for an electronic device" with depictions of the rounded cornered tablet. Insert filename here Date of presentation 53 Apple v Samsung Samsung counterclaimed for infringement of six of its own patents. After a three week trial, a Californian jury gave its verdict: 1. Samsung had infringed all Apple's patents and design patents, except the famous '889 design patent; and 2. Apple had not infringed any of Samsung's patents. And the jury awarded Apple damages of… The '889 design patent Insert filename here Date of presentation 54 Apple v Samsung $1.05 billion The fourth largest jury award in a patent case ever… though the Judge has ordered for a new jury trial to re-examine $450 million of the damages Apple was awarded. Insert filename here Date of presentation 55 European unified patent system On February 19, 24 members of the 27 European Union signed a unified patent court agreement in Brussels. Efficient patent protection in Europe is a cost-intensive procedure. Overall, the acquisition of patent protection in all 27 EU member states, costs around 36,000 EUR. Considerably more expensive, even for only the major countries, than it is in economically competing jurisdictions such as the US or China. Insert filename here Date of presentation 56 European unified patent system Single European patent seeks to boost the innovative capacity of European industry thanks to streamlining previously bureaucratic procedures and decreasing costs. Only Spain and Italy, feeling linguistically disadvantaged, refused to consent. The new unified patent will: 1. be cheaper and more effective than current systems in protecting the inventions of individuals and firms; 2. provide automatic unitary patent protection in all 25 participating member states, cutting costs for EU firms; 3. cost just €4,725 when the new system is up to speed, according to the European Commission. Insert filename here Date of presentation 57 European unified patent system Not everyone is as optimistic as journalists and politicians, however. May be less costly to obtain, IF you want protection in more than 5 or 6 states, which few patentees do. Likely to be a lot more costly and risky to litigate a UP because: (1) complex litigation regime with different languages involved, and (2) all your eggs will be in one basket! In view of this, industry and practitioners are generally highly sceptical as to whether the UP/UPC system will really be better in practice. In principle however it certainly is a good idea and so we must make sure it works! Insert filename here Date of presentation 58 New gTLDs The new generic Top-Level Domain Program was developed by ICANN to increase competition and choice in the domain name space (and ICANN just made $350 million in the process!) There are roughly two dozen gTLDs now (.com, .org, .net, etc), but soon, there will be hundreds – nearly 2,000 have been applied for. Not a universally popular move by ICANN – a group of over 100 major international business associations and companies campaigned against it…but it's happening! Insert filename here Date of presentation 59 New gTLDs Google announced that it was targeting gTLDs such as .google, .youtube, and .lol, to name a few – at a cost of $185,000 per domain – which totalled up to more than $18.6 million. Amazon is Google's biggest competitor, with both companies bidding on 21 of the same domains, including: .search, .play, and .drive. Microsoft also put in two applications that Google has also applied for: .docs and .live. So why are they applying? Insert filename here Date of presentation 60 New gTLDs The new gTLD create opportunities for company specific or sector specific gTLDs. They could be a way to increase brand profile - but some notable brand owners have recently withdrawn (eg Heinz and General Motors). They may allow better security, eg KPMG. They may help in the fight against online counterfeiters – "if it doesn’t end in .brand, it's not real"! But speculators are also applying for generic names, betting that the new gTLDs may be the Internet’s next big gold mine as they get the right to sell 2nd level domain names. Insert filename here Date of presentation 61 New gTLDs One new company called Donuts was set up with $100m of venture capital and has applied for 307 separate gTLDs – at a cost of nearly $57 million. Behind the new speculators (and Amazon and Google) other companies are also applying for multiple gTLDs. L’Oreal applied for 15 separate domains, including .hair, .makeup, and .beauty. Apple applied for just one (.apple, of course). Insert filename here Date of presentation 62 New gTLDs - What do you need to do? The "Trademark Clearinghouse" opened its doors on 26 March 2013 and right holders can file evidence of their trade marks. Sunrise period – trade mark holders who have registered with the Clearinghouse will be given 30 days to register second level domain names matching their trade marks before they are offered to the public for registration. For 60 days after the end of the Sunrise periods, the new gTLD registry must notify trade mark owners who registered with the Clearinghouse if a third party attempts to register a second level domain identical to their trade mark and they have the right to object. Insert filename here Date of presentation 63 New gTLDs - What do you need to do? But to take advantage of the sunrise periods, the trade mark holder must provide a signed declaration of use and a single sample to prove use Clearinghouse fees to file a single trade mark are $145 for one year, $435 for 3 years, and $725 for 5 years – but it could be a lot cheaper than trying to get it back from a third party. Insert filename here Date of presentation 64 Community trade marks The Advocate-General's Opinion has recently been issued in Case C-149/11 Leno Merken v Hagelkruis Beheer B.V. Better known as the ONEL/OMEL case. The case is about the requirement for "genuine use" of a Community Trade Mark. A CTM which has not been put "to genuine use in the Community in connection with the goods or services in respect of which it is registered" within five years following registration: 1. is subject to revocation; and 2. cannot be relied on as an earlier trade mark right when opposing a later filed CTM. Insert filename here Date of presentation 65 Community trade marks So what constitutes "genuine use in the Community"? In particular, what of a trade mark which was only put to use in one of the twenty-seven EU member countries - is this genuine use? The four questions referred to the CJEU in this case were: 1. Is use in one country always enough? 2. If not, is it never enough? 3. If it is never enough, what is needed? 4. Should the assessment of genuine use in the Community be done in the abstract, without reference to the borders of the territory of the individual Member States? Insert filename here Date of presentation 66 Community trade marks Decision Article 15(1) of the Community trade mark Regulation must be interpreted as meaning that 1. use of a Community trade mark within the borders of a single Member State is not, of itself, necessarily sufficient to constitute genuine use of that trade mark; but 2. it is possible that, when account is taken of all relevant facts, use of a Community trade mark within an area corresponding with the territory of a single Member State will constitute genuine use in the Community. Insert filename here Date of presentation 67 Community trade marks Genuine use in the Community within the meaning of Article 15(1) is therefore use that, when account is taken of the particular characteristics of the relevant market, is sufficient to maintain or create market share in that market for the goods and services covered by the Community trade mark. Has the A-G dodged the question, or is his proposed answer the pragmatic solution needed by CTM owners and their advisors? Insert filename here Date of presentation 68 Coffee Break 18 April 2013 North West WIN Annual Update COMMERCIAL Peter Brook Overview - lots of new cases! Endeavours Ampurius Nu Homes v Telford Homes Liability Kudos Catering v Manchester Central Convention Complex Material Breach, Termination and Affirmation The Trademark Licensing Co Ltd v Leofelis SA Good Faith Compass Group UK & Ireland Limited v Mid Essex Hospital Services NHS Trust Yam Seng Pte Ltd v International Trade Corp Limited The Late Payment of Commercial Debts Regulations 2013 18 March 2013 71 Endeavours - Ampurius Nu Homes v Telford Homes (2012) "Telford will use its reasonable endeavours to procure completion of the Works by the Target Date or as soon as reasonably possible thereafter" • The credit crunch intervened and Telford was unable to obtain sufficient funding, suspended work and claimed this was not a breach provided it had used reasonable endeavours to obtain funding but had been unable to do so Held • Lack of funding was not a defence • Reasonable endeavours was designed to cover physical conduct of the work e.g. inclement weather and shortage of materials • The subjective difficulty that Telford experienced in raising funding was irrelevant 18 March 2013 72 Endeavours • An "endeavours" obligation will not always impose the same level of obligation from one contract to another • Reasonable – does not require the action if it disadvantages the party; only one reasonable course is required, not all reasonable courses • Best – Onerous but not absolute; take all steps a prudent, determined and reasonable party is acting in its own interests and desiring to achieve the result; may impose an obligation to invest or run risk of failure but not require risk of bankruptcy • All reasonable – compromise between best and reasonable (closer to best); use endeavours until all reasonable alternatives are exhausted • Conclusion – be clear about the objective to be achieved and list steps to be taken? 18 March 2013 73 Liability – Kudos Catering v Manchester Central Convention Complex (2013) 5 year catering contract ended 2 years early. Both claimed repudiatory breach. Kudos claimed £1.3m of lost profit 18.6 Indemnity and Insurance "MCCC shall have no liability whatsoever for any loss of goodwill, business, revenue or profits, anticipated savings or wasted expenditure." 18 March 2013 74 Liability – Kudos Catering v Manchester Central Convention Complex (2013) CoA held – loss of profits was not excluded. Need to consider the wider context and parties commercial intentions. • Kudos would have earned profit. If upheld then the clause could deprive Kudos of any sanction for MCCC's breach of contract, reducing the contract to an unenforceable statement of intent • MCCC had not put forward a commercial justification for such a wide exclusion of liability. CoA concluded there was none, and that a literal interpretation of clause 18.6 would be contrary to business common sense • Held that the clause applied only to MCCC's liability for defective performance, not for a refusal to perform 18 March 2013 75 Liability – Lessons Lessons? • Give a remedy for material breaches • Explain why a clause is drafted in a particular way • Flag onerous provisions e.g. use correct headings • Cover liability on repudiation expressly 18 March 2013 76 Material Breach, Termination and Affirmation • Repudiatory breach – is the breach of contract sufficiently material to allow the innocent party to treat the contract as at an end and claim damages • If A relies on B's alleged repudiatory breach and terminates, and the basis for termination turns out to be untrue, the non-terminating party may itself sue for wrongful termination • After acquired knowledge of a (different) repudiatory breach can be used to justify the termination (Boston Deep Sea Fishing case) • What about damages? 18 March 2013 77 The Trademark Licencing Co Ltd v Leofelis SA (2012) • Use of the Lonsdale brand in Europe, exclusive licence granted but Lonsdale licenced another person in Germany • While a party can use after acquired knowledge of a repudiatory breach to justify the termination, they cannot use the same repudiatory breach as a ground for claiming damages • Where terminating party unaware of the repudiatory breach and termination would have happened in any event, terminating party not entitled to profit from the decision to terminate by some later emergence of fact • Ensure repudiatory breach has occurred before taking steps to terminate a contract • Loss can only be claimed if it flows from the breach that the party had knowledge of 18 March 2013 78 Good faith – an implied duty? Background Traditional hostility towards an implied doctrine of good faith Many civil law jurisdictions, and more recently Canada, Australia and the US recognise a general duty to act in good faith when forming and performing commercial contracts Scots law recognises a broad principle of good faith and fair dealing EU legislation has increased significance of the concept of good faith in English Law Are we moving towards English courts applying an implied duty of good faith to English contract law in certain circumstances? 18 March 2013 79 Mid Essex NHGS v Compass Group (trading as Medirest) [2013] Hospital FM Outsourcing Agreement Payment mechanism based on performance Financial deductions: £84,450 – out of date chocolate mousse £96,060 – 3 day old bagels £46,320 – out of date ketchup sachets Express obligation to "co-operate with each other in good faith…and take all reasonable action as is necessary for…the Trust…or any Beneficiary [e.g. patients] to derive the full benefit of the Contract". An implied term that the Trust would not exercise its discretion to award itself payment deductions or service failure points arbitrarily, capriciously or in an irrational manner? 18 March 2013 80 Compass – Take away points The express obligation in this context to co-operate in good faith means "work together honestly endeavouring to achieve the two stated purposes" While discretions involving absolute contractual rights are unlikely to be subject to an implied term of the type at issue, those involving an assessment or a choice as to the range of options in which the interests of both parties are relevant, are likely to be Although you may be able to expressly exclude the implied term, Jackson LJ warned that doing so would be "extremely difficult" 18 March 2013 81 Yam Seng PTE Ltd v International Trade Corp Ltd (2013) • Exclusive distribution agreement to YS • YS terminated for ITC's repudiatory breach • failure to supply product • beach of exclusive territorial grant • provision of false information • YS pleaded an implied term in the agreement that parties would deal with each other in good faith • Held: D was in breach of contract and 2 breaches were repudiatory in nature, justifying termination by YS 18 March 2013 82 An implied term (obiter – Leggatt J)? Judge acknowledges existence of such an implied term in certain contracts (employment/partnership) No general duty of good faith under English law No difficulty in implying such a duty based on the presumed intentions of the parties context sensitive "Relational contracts" [joint venture agreements, franchise agreements and long term distribution agreements] may require a high degree of communication, cooperation and predictable performance based on mutual trust and confidence and … expectations of loyalty which are…implicit.. and necessary to give business efficacy to the arrangements" Question of fact to be decided on a case by case basis 18 March 2013 83 The Late Payment of Commercial Debts Regulations 2013 ("2013 Regulations") The 2013 Regulations came into force on 16 March 2013 and resulted in amendments to the Late Payment of Commercial Debts (Interest) Act 1998 ("Late Payment Act") Changes to sections 4 and 5A of the Late Payment Act Contracts concluded before 16 March 2013 will be excluded from the amended provisions Debtors will be forced to pay interest and reimburse reasonable recovery costs of the creditor, if they do not pay for goods and services on time 18 March 2013 84 The Late Payment of Commercial Debts Regulations 2013 ("2013 Regulations") Business to Business contracts Contract is silent on payment terms Payment must be made within 30 days of the later of: (i) receipt of invoice (ii) receipt of goods or services (iii) verifying acceptance of the goods or services Contract contains express payment terms Parties can agree payment up to 60 days from the later of: (i) receipt of invoice (ii) receipt of goods or services (iii) verifying acceptance of the goods or services This 60 day period can be extended so long as it is in writing and not "grossly unfair". Grossly unfair – all circumstances considered in particular: deviation from good commercial practice and contrary to good faith and fair dealing; the nature of the goods and services; another objective reason 18 March 2013 85 The Late Payment of Commercial Debts Regulations 2013 ("2013 Regulations") Business to Public Authority contracts Contract is silent on payment terms Payment must be made within 30 days of the later of: (i) receipt of invoice (ii) receipt of goods or services (iii) verifying acceptance of the goods or services Contract contains express payment terms Parties can agree payment up to 30 days from the later of: (i) receipt of invoice (ii) receipt of goods or services (iii) verifying acceptance of the goods or services No possibility to extend this period 18 March 2013 86 The Late Payment of Commercial Debts Regulations 2013 ("2013 Regulations") Verification process introduced: maximum period of up to 30 days for a purchaser to confirm that goods or services conform with the contract Statutory interest rate: Unchanged - Bank of England reference rate plus at least 8% Compensation for recovery costs: In addition to fixed sums that were previously available (£40, £70 or £100 depending on the size of the debt) to compensate for the cost of recovering a debt, as a result of the 2013 Regulations the supplier is also entitled to the reasonable costs of recovering the debt that are not met by the fixed sum The rights for a supplier under the Late Payment Act are not compulsory – it does not have to claim interest 18 March 2013 87 AN OVERVIEW OF THE JACKSON REFORMS LITIGATION Andrew Roberts Introduction Implementation of the recommendations of Lord Justice Jackson Majority of the reforms became effective on 1 April 2013 Main focus on funding of litigation and control of costs More robust case management More haste, less speed? Ignore the new rules at your peril! WIN Annual Update 18 April 2013 89 Key areas of change Funding Damages-based agreements (DBAs) Conditional fee agreements (CFAs) and after-the-event insurance (ATE) Costs Management Proportionality Case Management Disclosure Expert evidence Witness statements Part 36 WIN Annual Update 18 April 2013 90 The underlying framework The Legal Aid, Sentencing and Punishment of Offenders Act 2012 The Legal Aid, Sentencing and Punishment of Offenders Act 2012 (Commencement No 5 and Saving Provision) Order 2013 (SI 2013/77) The Legal Aid, Sentencing and Punishment of Offenders Act 2012 (Commencement No 2 and Specification of Commencement Date) Order 2012 (SI 2012/2412) The Civil Procedure (Amendment) Rules 2013 (SI 2013/262) The Civil Procedure (Amendment No 2) Rules 2013 (SI 2013/515) WIN Annual Update 18 April 2013 91 The underlying framework continued 60th update to the Civil Procedure Rules: Practice Direction amendments 61st update to the Civil Procedure Rules: Practice Direction amendments The Offers to Settle in Civil Proceedings Order 2013 (SI 2013/93) The Damages-Based Agreements Regulations 2013 (SI 2013/609) The Conditional Fee Agreements Order 2013 (SI 2013/689) WIN Annual Update 18 April 2013 92 Funding: damages-based agreements (DBAs) Permitted in England & Wales from 1 April 2013 Lawyers conducting litigation in return for a share of the sums recovered If claim is unsuccessful, the lawyer is not paid Subject to a 50% cap (lower for personal injury claims (25%)) Different requirements for employment cases Claimant retains potential liability for the other side's costs Status of "hybrid" DBAs? WIN Annual Update 18 April 2013 93 Funding: conditional fee agreements (CFAs) and after-the-event insurance (ATE) For funding arrangements entered into on or after 1 April 2013, CFA success fees and ATE premiums no longer recoverable from the losing party CFA success fees and ATE premiums still recoverable where payable under funding arrangements entered into prior to 1 April 2013 WIN Annual Update 18 April 2013 94 Costs management New costs management rules apply to all multi-track cases commenced on or after 1 April 2013 (CPR 3.12 – 3.18) Exceptions and exemptions Commercial Court Claims in the Chancery Division, Technology & Construction Court and Mercantile Court which exceed £2 million Requirement to file and exchange budgets in a prescribed form (Precedent H) WIN Annual Update 18 April 2013 95 Costs management continued Budgets generally to be of the estimated costs of the entire action Budgets to be filed and served at an early stage Costs management orders (CMOs) Budgets to be reviewed regularly and revised as matter progresses In assessing recoverable costs, the court will not depart from a party's agreed or approved budget without good reason WIN Annual Update 18 April 2013 96 Proportionality Revised overriding objective: this is now to enable the court "to deal with cases justly and at proportionate cost" (CPR 1.1) For cases commenced on or after 1 April 2013, where costs are to be assessed on the standard basis, only costs that are proportionate to the matters in issue will be allowed To be proportionate, costs must bear a reasonable relationship to: the sums in issue in the proceedings the value of any non-monetary relief in issue the complexity of the litigation any additional work caused by the conduct of the paying party any wider factors e.g. reputation or public importance WIN Annual Update 18 April 2013 97 Proportionality continued Costs that are held to be disproportionate may be disallowed or reduced even if reasonably and/ or necessarily incurred! Proportionality will apply throughout the life of the case and not just at the end WIN Annual Update 18 April 2013 98 Case management Implementation of the overriding objective by the Court now extends to "enforcing compliance with rules, practice directions and orders" (CPR 1.2(f))- expect a more robust approach to case management! Move towards managing cases earlier: Notice of Proposed Allocation Directions Questionnaire New model Standard Directions for multi-track claims (CPR 29) Court has power to contact the parties to monitor compliance with directions (CPR 3.1(8)) Tightening up of rules relating to relief from sanctions (CPR 3.9) WIN Annual Update 18 April 2013 99 Disclosure Revised CPR 31.5 impacts upon multi-track cases No longer a presumption in favour of standard disclosure; move to a more tailored approach Mandatory disclosure report (Form N263) Mandatory requirement to discuss and seek to agree the approach to disclosure with the other side New 'menu' of disclosure options (CPR 31.5(7)) including: dispensing with disclosure altogether limiting disclosure to documents on which the parties rely disclosure on an issue by issue basis "train of enquiry" disclosure standard disclosure WIN Annual Update 18 April 2013 100 Expert evidence From 1 April 2013, to obtain permission to adduce expert evidence a party must now: identify issues to be addressed by the expert evidence provide an estimate of the costs of the proposed expert evidence Court now has power to direct that experts give their evidence concurrently ("hot-tubbing") [PD 35, paragraph 11] WIN Annual Update 18 April 2013 101 Witness statements From 1 April 2013, the court has express powers to manage witness evidence (CPR 32) and can: identify or limit the issues to be covered by witness evidence identify those witnesses allowed to give evidence limit the length or direct the format of witness statements WIN Annual Update 18 April 2013 102 Part 36 Additional sanction introduced for defendants who fail to beat a claimant's Part 36 offer Applies to Part 36 offers made by claimants on or after 1 April 2013 Unless the court considers it unjust, the claimant will be entitled to an additional amount calculated as a percentage of the damages or costs awarded Sliding scale: 10% of any amount awarded up to £500,000 and 5% of any amount awarded above £500,000 up to £1 million Maximum additional amount £75,000 WIN Annual Update 18 April 2013 103 Summary Increased emphasis on getting to grips with cases at the outset (front-end loading) Greater need for proper planning of litigation Importance of budgets Expect little latitude if breach rules or orders! WIN Annual Update 18 April 2013 104 North West WIN Annual Update REGULATORY John Gollaglee Health and Safety Fee for Intervention Corporate Manslaughter Fee for Intervention (HSE) Cost recovery for previously free advice provided by Health and Safety Inspectors In force October 2012 Only applies to premises regulated by the Health and Safety Executive (not local authority or environmental health officer regulated premises) Current hourly rate is £124 (no VAT charged) Purpose Designed to make those who breach health and safety legislation pay for the costs of correcting their breach WIN Annual Update 18 April 2013 107 Fee for Intervention (HSE) (2) Application Applies to almost all businesses and same hourly rate charged irrespective of size Costs split where multi-dutyholder intervention occurs Scope Costs charged in respect of carrying out visits writing notification of contraventions (including improvement and prohibition notices and preparing reports) taking statements getting specialist input for complex issues and office work in support of the above WIN Annual Update 18 April 2013 108 The material breach test Fee for Intervention can only be charged where the HSE Inspector believes there has been a "material breach" of the legislation. "A material breach is where you have broken a health and safety law and the inspector judges that this is serious enough for them to notify you in writing" WIN Annual Update 18 April 2013 109 An 'appeal'? It is possible to 'appeal' against a Fee for Intervention invoice Level One 'query' (within 21 days) Invoice is reviewed by an HSE Senior Manager (independent of the line management which generated the invoice) Level Two 'dispute' (within 21 days of the reply to the 'query') Invoice is reviewed by a panel of HSE Staff and an independent representative. All HSE costs incurred in handling the dispute must be met by the duty holder, unless the dispute is upheld. WIN Annual Update 18 April 2013 110 Fee for Intervention – Prosecutions Is there a problem created by paying a Fee for Intervention invoice? Does payment of Fee for Intervention invoice constitute acceptance of a "material breach"? Does acceptance of a "material breach" preclude an effective trial in due course? WIN Annual Update 18 April 2013 111 Corporate Manslaughter – where are we now? Past prosecutions Cotswold Geotechnical (Holdings) - £385,000 MW Farms - £187,500 Lion Steel Limited - £480,000 Note: Sentencing Council Guidelines state that a fine of £500,000 is usually the starting (lowest) point for the court Current prosecutions PS & JE Ward MNS Mining Limited Mobile Sweepers (Reading) Limited The future? WIN Annual Update 18 April 2013 112 Corporate Crime and investigations Defence legal costs Bribery Act 2010 Recovery of Legal Defence Costs abolished The change Rules on Defence Costs Orders amended Schedule 7 to the Legal Aid, Sentencing and Punishment of Offenders Act 2012 In force October 2012 The impact In any criminal proceedings involving a defendant company commenced after 01 October 2012, any defence costs order made cannot include legal costs incurred by a company (unless proceedings are in the Supreme Court). The response The importance of adequate legal defence costs insurance and nomination Or, a 'fighting fund' WIN Annual Update 18 April 2013 114 Bribery Act 2010 In force since July 2011 Enforcement Activity not a single corporate prosecution two prosecutions of individuals prosecutors have continued to consider and finalise bribery and corruption investigations involving facts that pre-date the Bribery Act Under the Surface Civil Settlements – Rolls Royce and others result of internal investigations significant impact on M&A activity WIN Annual Update 18 April 2013 115 North West WIN Annual Update REAL ESTATE Martin Griffiths General Overview There have been no significant changes in legislation in relation to Real Estate over the last 12 months That is not unusual as Real Estate does not have a fast moving framework and is not subject to significant European Intervention The case law in this area reflects the economic climate 21 March 2013 117 The termination of leases by tenant break option In the current market tenants want flexibility and shorter lease terms and/or break options in their leases Break options are not an absolute right to terminate a lease Break options often contain certain conditions which need to be met to ensure the break option is correctly exercised Tenants need to be careful about the conditions on a break option Landlords may have an opportunity to frustrate the break option by reason of the conditions 21 March 2013 118 Typical conditions attached to a break option The service of written notice There are no arrears of the annual rent payable There are no arrears of other financial payments under the lease (including interest) The payment of a premium Vacant possession of the premises Material / substantial / complete performance of the terms of the lease The courts strictly apply all of these requirements 21 March 2013 119 Example of case law Canonical UK Ltd v TST Millbank LLC [2012] The tenant did not calculate correctly the level of premium. The court held the lease continues PCE Investors Ltd v Cancer Research UK [2012] The break option was conditional on the payment of rent. The tenant failed to pay the full quarter on the final payment. There was no apportionment clause so the lease continues Gemini Bass Ltd v Parsons [2012] Break option held to be personal to a tenant and not passed on the assignment of the lease NYK Logistics (UK) Ltd v Ibrend Estates BV [2011] The tenant did not get out of the premises in time and there was a breach of the obligation to give vacant possession Avocet Industrial Estate LLP v Merol Limited [2011] The tenant failed to pay the sum of £130 in default interest 21 March 2013 120 Rent payable as an expense of an administration There are a significant number of administration orders being made particularly in the retail sector Landlords are concerned over the administration process being abused to gain a rent free period Most leases provide for the annual rent to be paid quarterly in advance on the quarter days. This is an obligation to pay the whole quarter on that day, not apportioned on a day by day basis For an administrator to be liable to pay rent as an expense of the administration the administrator must be trading or using the Premises on the actual quarter day. (Goldacre (Offices) Ltd v Nortel Networks UK Ltd [2009]) If administrators are appointed one day after the quarter day they effectively get 3 months rent free The Game Administration. The administrators were appointed on 26 March 2012 and obtained 3 months effective rent free. This is now challenged by a group of landlords. It is expected to go to the Court of Appeal by the end of the year 21 March 2013 121 CORPORATE UPDATE MAKING THE DEAL HAPPEN Liz Clark Heads of Terms What's the deal Keep it simple Highlight major issues up front Exclusivity Timetable Your moral barometer 49468288.1 18 April 2013 123 Sale and Purchase Agreement Areas of tension 1. Warranties and indemnities 2. Warrantors' liability, basis of recovery 3. Limitations on liability individual "basket" time limits 4. What is "awareness"? 5. Retention 6. Purchaser's knowledge (excluded, reverse comfort) 7. Restrictive covenants 49468288.1 18 April 2013 124 Disclosure Letter Areas of tension General disclosures Details of specifics The required standard of knowledge 49468288.1 18 April 2013 125 Where will we fall out? Heads Buyer • I want costs if something comes out of DD Seller • I want costs if you pull out Middle ground • Without consensus no deal will happen • Costs clauses are a litigator's dream 49468288.1 18 April 2013 126 Where will we fall out? SPA – Warrantors' Liability Buyer • Joint and several liability Seller • Several liability Middle ground • Joint and several but cap out • Sellesr can control their liability by effective disclosure 49468288.1 18 April 2013 127 Where will we fall out? SPA – Limitations on Liability Buyer • Individual claims = low • "Basket" = 1% • 2 audits Seller • Individual claims = high • "Basket" = 3% • 12 months/1 audit Middle ground • There is no market standard • Think about the reality, don't get hung up on it! 49468288.1 18 April 2013 128 Where will we fall out? SPA – What is awareness? Buyer • All employees, agents, advisers … and the office cat! Seller • Reasonable enquiry Middle ground • Identify the key individuals and ask them the question • Remember that sellers need to know too 49468288.1 18 April 2013 129 Where will we fall out? SPA – Restrictive Covenants Buyer • 5 years Seller • 18 months Middle ground • Be realistic – nobody should be able to hurt your business after 2 years if integrated properly 49468288.1 18 April 2013 130 Where will we fall out? Disclosure letter – General disclosures Buyer • None Seller • All Middle ground • Agree them early, especially property, environmental, IP registers searches • Consider increasing liability financial limits for key warranties 49468288.1 18 April 2013 131 Where will we fall out? Disclosure letter - Specific disclosures Buyer • Read the letter Seller • Start early Middle ground • Have a call to discuss the specifics, don't be afraid to discuss them • It's cheaper than litigation! 49468288.1 18 April 2013 132 Where will we fall out? Disclosure letter – Data room Buyer • Cannot be disclosed Seller • All disclosed Middle ground • Agree the principle early • Do not be clever – if you do not disclose effectively the only winner will be the lawyers 49468288.1 18 April 2013 133 Getting to a sensible middle ground Shoot elephants The bigger you are the better your bargaining position – wrong! Put your negotiating requests in context Don't be afraid to horse trade Make sure the other side have good lawyers!! 49468288.1 18 April 2013 134 A lawyer's perspective Manager of legal services not a lawyer Clear scope You know your own business best Communication and settled client team 49468288.1 18 April 2013 135 Make life easy for yourself Start sooner, rather than later Be prepared, collate information Identify problems early Early tax advice 49468288.1 18 April 2013 136 And finally Changes to: the registration of security at Companies House, effective from 6 April 2013 (the Companies Act 2006 (Amendment of Part 25) Regulations 2013) the share buy back provisions, effective 30 April 2013 (the Companies Act 2006 (Amendment of Part 18) Regulations 2013) 49468288.1 18 April 2013 137 North West WIN Annual Update Networking Lunch 18 April 2013