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Infringement of trade mark - French court rejecting objection to registration of national trade mark - final judgment of French appellate court no bar to infringement proceedings in England

Prudential Assurance Co Ltd v Prudential Insurance Co of America: CA (Lords Justices Kennedy, Potter and Chadwick): 12 March 2003

The defendant was a US insurance corporation which mainly carried on its business in the US.

When it applied to register its trade mark 'PRUMERICA' as a Community Trade Mark in some community states, the claimant opposed the defendant's application, but the objection was rejected and this was confirmed by the French appellate court.

Subsequently, the claimant brought an action against the defendant for the infringement of its registered trade marks 'PRU' and 'PRUDENTIAL' in England, and the defendant applied to stay the action on the ground that the action was in conflict with the final judgment of the French court, which had rejected the claimant's objection for the registration of 'PRUMERICA'.

The judge refused the application and the defendant appealed.

Michael Silverleaf QC and Richard Vary (solicitor-advocate) (instructed by Linklaters) for the defendant; Geoffrey Hobbs QC and Colin Birss (instructed by Lovells) for the claimant.

Held, dismissing the appeal, that the final judgment of the French appellate court did not prevent the claimant from commencing and continuing infringement proceedings in England in relation to its registered trade mark 'PRU' and 'PRUDENTIAL' because the two proceedings were not 'the same cause of action and between the same parties on the basis of an identical national trade mark' within article 105(2) of the Council Regulation (EC) 40/94 of 20 December 1993 on the community trade mark; that the French court had seized its jurisdiction on the basis of the national trade mark 'PRUMERICA' to register the trade mark whereas the English court was seized of jurisdiction under article 92 of the regulation on the basis of the registered community trade mark; and that the marks on the basis of which the two courts were seized were not themselves identical.

COSTS

Claim settled without proceedings - claimant bringing costs-only proceedings resulting in detailed assessment of costs - paying party's offer deemed not to include costs of preparation of bill of costs

Crosbie v Munroe and another: CA (Lords Justices Schiemann, Brooke and Jonathan Parker): 14 March 2003

The parties were involved in a road traffic accident.

The claimant's claim was settled without the need for proceedings for some 1,000, and the claimant's solicitors served a bill of costs.

Agreement was not forthcoming so they commenced costs-only proceedings under CPR rule 44.12A by a part 8 claim for costs of 5,310.84.

The defendant's solicitors made an offer under CPR rule 47.19 of 'the all-inclusive sum of 2,650 in respect of your profit costs, disbursements, VAT and interest'.

An order was made in the part 8 proceedings for detailed assessment and the claimant's solicitors accepted the offer by letter but added, 'the only outstanding issue is the costs of the part 8 proceedings'.

The judge upheld the deputy district judge's decision that there had been a final and total offer to settle the matter, disallowing any costs of the detailed assessment proceedings.

The claimant appealed.

Benjamin Williams (instructed by Irvings, Liverpool) for the claimant; James McKeon (instructed by Weightman Vizards, Manchester) for the defendants.

Held, allowing the appeal, that, in cases where pre-existing legal proceedings had led to an order for assessment of costs an offer would, by virtue of paragraph 46.2 of the practice direction about costs relating to CPR part 47, include the cost of preparation of the bill of costs; but that, in the context of costs-only proceedings where there had been no prior legal proceedings, the words in rule 47.19 'the costs of the proceedings which gave rise to the assessment proceedings' embraced all letters and negotiations between the parties, which had led up to the rule 44.12A agreement because until the time that the substantive claim was settled the 'proceedings' related to the liability and the amount of any compensation, but after the substantive claim had been settled the 'proceedings' related to the assessment of the costs which the paying party had to pay; and that, accordingly, the costs of preparing the bill of costs was not included in the rule 47.19 offer.

DISCRIMINATION

Race - dismissal of complaint despite criticism of respondent's conduct - decision flawed because tribunal failing to give adequate reasons for its conclusion

Deman v Association of University Teachers and others: CA (Lords Justices Potter and Tuckey and Mr Justice Wall): 14 March 2003

The claimant complained to the employment tribunal that he had suffered racial discrimination and victimisation by his trade union and its senior executive officers, who had declined to award him legal assistance to pursue his complaint of race discrimination, victimisation and unfair dismissal against the university, which had terminated his employment as a probationary lecturer.

At the hearing of the complaint, the tribunal made serious criticisms of the union and the conduct of the officers, but dismissed the complaint without giving reasons as to how it had reached its conclusion.

The Employment Appeal Tribunal dismissed the claimant's appeal.

The claimant appealed.

John Davies (instructed by Kirk & Partners) for the claimant; Thomas Linden (instructed by Pattinson & Brewer) for the defendants.

Held, allowing the appeal and remitting the case to a different tribunal, that racial discrimination cases usually involved the necessity for a more careful and elaborate statement of reasons if the tribunal were to fulfil the parties' entitlement to be told why they had won or lost with a sufficient statement of the reasons to enable the appeal tribunal or the Court of Appeal to know that the tribunal had made no error of law in coming to its conclusion; that there was a substantial difference between a situation where there was no evidence from which an inference of racial discrimination or victimisation could properly be drawn and a situation where there was evidence from which such inference could properly be drawn, but the tribunal had declined to draw such an inference; and that since there was evidence of conduct of the union and its officers from which inferences of discrimination and victimisation could properly be drawn, the tribunal had been under a clear obligation to explain why it had decided not to draw the inference.

IMMIGRATION

Asylum - applicant subjected to severe torture - severity of torture relevant consideration

R (Sivakumar) v Secretary of State for the Home Department: HL (Lord Bingham of Cornhill, Lord Steyn, Lord Hoffmann, Lord Hutton and Lord Rodger of Earlsferry): 20 March 2003

The applicant, a Sri Lankan Tamil, lived in Jaffna, the main base of the Tamil Tigers.

Although he was not a Tamil Tiger he was arrested by the security forces, accused of being a terrorist, and subjected to extreme torture.

He fled to England and claimed asylum.

The special adjudicator accepted his evidence but decided that the torture was 'not the result of any political opinions he might have been thought to hold, but of being suspected, however unjustly, of involvement in violent terrorism' and that consequently he was not a refugee within the meaning of article 1A(2) of the Convention and Protocol relating to the Status of Refugees (1951)(Cmnd 9171) and (1967)(Cmnd 3906).

The Immigration Appeal Tribunal refused his application for leave to appeal.

The judge refused him judicial review of that decision.

The Court of Appeal (see [2001] Gazette, 13 September, 34) allowed his appeal and quashed the tribunal's decision.

The secretary of state appealed.

Ashley Underwood QC and Michael Fordham (instructed by Treasury Solicitor) for the secretary of state; Andrew Nicol QC and Margaret Phelan (instructed by Nathan & Co) for the applicant.

Held, dismissing the appeal (Lord Hoffmann and Lord Rodger of Earlsferry dissenting in part), that the case had to be considered in the round, with due weight given in particular to the evidence of extreme torture; that it was necessary to consider the cumulative effect of the relevant factors; that on a realistic view of the facts there was a reasonable likelihood of the applicant having been persecuted on the ground of race (as a Tamil), a member of a particular social group (as a Tamil from Jaffna) or political opinion (the separatist views predominant among Tamils in Jaffna); that the special adjudicator had not considered the matter in those terms; and that, crucially, he had given no or virtually no weight to the predominant feature of the case, viz the repeated infliction of barbarous acts of torture (WLR).

LOCAL GOVERNMENT

Local election - borough solicitor approving informal count of votes discovered after election result announced and subsequently applying for inspection order before election petition presented - informal count unacceptable but application appropriate where correctness of result in doubt and real prospect of election petition

Gough v Local Sunday Newspapers (North) Ltd and another: CA (Lords Justices Simon Brown and Keene and Mr Justice Bell): 12 March 2003

At a local election the claimant, who was the borough solicitor, was responsible for the conduct of the count.

Uncounted postal votes having been discovered after the result had been announced, the claimant approved an informal count of those votes.

Subsequently, he applied to the court for an inspection order before an election petition was presented.

He brought libel proceedings against a newspaper publisher and an election agent relating to published statements, alleging gross incompetence in his handling of the count.

The judge found the statements justified.

The claimant appealed.

Patrick Moloney QC (instructed by Peter Carter Ruck & Partners) for the claimant; Desmond Browne QC and Rupert Elliott (instructed by Farrer & Co) for the defendants.

Held, allowing the appeal, that informal counts of ballot papers should not take place in any circumstances; that, where a parcel of ballot papers was discovered uncounted after an election result had been declared by the returning officer, it was appropriate to apply to the county court under rule 47 of the Local Elections (Principal Areas) Rules 1986 for an order to inspect the papers before any final decision was made whether to present an election petition; that that was so, provided only and always that the application was to resolve a real doubt as to the correctness of the declared result and there was a real likelihood, were the inspection to show the result incorrect, that an election petition would follow; that an application could be made by the returning officer and service was not required on the opposing parties, although it was appropriate to give notice to all interested parties, so that they had the opportunity to attend the hearing and, if they wished, to apply to be joined; and that, accordingly, on no view could the finding of justification be upheld.

TORT

Rugby player injured during game after referee allowed player's substitution contrary to rules - referee owing duty of care to player to enforce rules - breach and causation established

Vowles v Evans and another: CA (Lord Phillips of Worth Matravers Master of the Rolls, Lords Justices Clarke and Sedley): 11 March 2003

The claimant was playing in an amateur rugby match refereed by the first defendant, who allowed the substitution of a front-row player in breach of the laws of the game then applicable.

The claimant sustained a serious injury during a scrummage after the substitution had taken place.

He brought an action in negligence against the defendants.

The second defendant, which had appointed the referee and promulgated the rules, accepted vicarious liability for the first defendant if he were found liable.

The judge held that a rugby referee owed a duty of care to the players and that his breach of that duty was causative of the claimant's injuries.

The defendants appealed.

John Leighton Williams QC and Gregory Treverton-Jones QC (instructed by Morgan Cole, Swansea) for the defendants; Ian Murphy QC and Jonathan Bellamy (instructed by J Peter Davies & Partners, Cardiff) for the claimant.

Held, dismissing the appeal, that in the dangerous sport of rugby the players were dependent on the referee to enforce the rules of the game designed for their safety; that a rugby referee owed a duty of care to the players to exercise reasonable care in enforcing the rules; that the standard of care depended on all the circumstances, but for a fast-moving game the threshold of liability was high; and that, since the breach had occurred while play was stopped when there was time for reflection and since the substitution of an insufficiently trained and inexperienced front- row player was the cause of the claimant's accident, the defendants were liable (WLR).

TRADE

Implied term as to satisfactory quality - reasonable time to reject - time taken to ascertain what would be required to effect modification or repair to be taken into account and buyer not losing right to reject goods

Clegg v Olle Andersson (t/a Nordic Marine): CA (Sir Andrew Morritt, Vice-Chancellor, Lady Justice Hale and Lord Justice Dyson): 11 March 2003

The claimants bought a yacht from the defendant, who realised at the time of delivery that the keel was heavier than the manufacturer's standard specification.

For six months, the parties corresponded as to the available remedies before the claimants indicated that they were entitled to, and would, reject the yacht.

Their claim for the return of the purchase price and damages for breach of contract was rejected by the judge, who concluded that there had been no breach of condition under the Sale of Goods Act 1979 and that, even if there had been, the claimants had lost their right to reject.

The claimants appealed.

Paul Darling QC and Jonathan Rich (instructed by Blake-Turner & Co) for the claimants; Helene Pines-Richman (instructed by Lester Aldridge) for the defendant.

Held, allowing the appeal, that on the facts the yacht as delivered was not of satisfactory quality and the claimants had established a breach of condition under section 14(2) of the 1979 Act; that the claimants had been entitled to reject the yacht, and whether they had lost that right was a question of fact; that Bernstein v Pamson Motors (Golders Green) Ltd [1987] 2 All ER 220 no longer represented the law, and time taken to ascertain what would be required to effect modification or repair was to be taken into account in resolving the question of fact in section 35(4); that the claimants had not lost their right by their subsequent conduct since information sought in August and September 2000 had not been received from the defendant until February 2001; and that, therefore, the three weeks which had elapsed thereafter until the letter of rejection did not exceed a reasonable time for the purposes of section 35(4) (WLR).

The law reports are prepared by the reporters to the Incorporated Council of Law Reporting for England and Wales; telephone: 020 7242 6471; fax: 020 7831 5247; http://www.lawreports.co.ukWLR means that a report has been submitted for publication in the Weekly Law Reports