This document contains the supplementary documentation for the Lewis Silkin Brand Academy 2011 event held at the Imagination Gallery on the 13th October 2011.

1. The Lewis Silkin
Brand Academy
13 October 2011
The Imagination Gallery, London, WC1E 7BL
www.lewissilkin.com

2. Agenda
Welcome to Lewis Silkin’s Brand Academy 2011.
8.45-9.15 Registration & Coffee
9.15-9.25 Chairman’s Introduction
Giles Crown
9.25-10.10 New Media
Simon Entwistle, Simon Morrissey and Cliff Fluet
10.10-10.40 Reputation Management
Rod Dadak and Jonathan Coad
10.40-11.10 Coffee and networking
11.10-11.40 Sponsorship
Dominic Farnsworth
11.40-12.20 Trade Marks
Steven Jennings and Simon Chapman
12.20-13.00 Advertising and Marketing
Brinsley Dresden and Jo Farmner
13.00-15.00 Lunch
CPD Details
Course length: 3 hours
CPD Points: 3 points
CPD Ref: DHP/LESI
Accredited by the Solicitors Regulation Authority.
www.lewissilkin.com

3. Brand Academy Fact Pattern
We are instructed by our client Blue Cow Plc. They are a UK based business, manufacturing and selling via a
global distribution network, their fizzy drink. They promote their product heavily on the claim that it improves
concentration as a result of its caffeine content.
They are planning a substantial new promotion based around a car race which will be run on the roads around the
Isle of Dogs in May 2012 and in other cities around the world in successive years.
The race will be supported by an online car game which will be launched on Blue Cow’s website in collaboration
with the games manufacturer Bintendo. The launch of the game and announcement of the race will take place at
a public event and they hope to book the big new name in music, Lord GoGo, to perform. The event will be filmed
and made available to broadcasters.
They hope to gain an advantage by associating the race with the Olympics which will be held in London shortly
afterwards. They intend to sign up world rally champion Luigi Amilton, but have concerns because he has
something of a reputation for being a heavy drinker. Blue Cow will be entertaining a number of their biggest
customers at the event with no expense spared!
The event and the game will need to be branded and Blue Cow’s agency has come up with several suggestions,
but the preferred choice is ‘Wacky Races’. Blue Cow are looking to protect the brand globally, however their
preferred selection would appear to have been registered as a trade mark by another party around Europe. They
also wish to protect the selected brand online and are also contemplating registering .bluecow as a new gTLD. As
part of the analysis of their presence online, they have found that a number of their distributors and competitors
are bidding on their name as Keywords on various search engines, and as a result they do not appear at the top of
the rankings and wish to stop this.
An employee working in the R&D department of the company has left the company under a cloud. Blue Cow have
reason to believe that he has left with documents belonging to the company including a confidential internal
report which indicates that there might be a problem at one of their manufacturing plants which is causing
product to be contaminated. The existence of the report, although not its content, has leaked onto a blogging site
and Blue Cow wish to prevent any further publication.
Blue Cow intend to run a competition on Facebook, with the winner being trained to participate in the race. They
want to sign up the ‘it’ girl Athena Waldorf to promote the competition and Blue Cow products generally, in her
Tweets. The competition will rely heavily on participants uploading videos of themselves.
A complaint has been filed with the ASA in which a challenge has been made regarding Blue Cow’s claims that its
product improves concentration. In addition, a letter has been received from a competitor’s solicitors regarding a
TV advert run by Blue Cow in which it compared its product to the competitor’s on both price and flavour. The
letter threatens an interim injunction if the advert is not immediately pulled.
www.lewissilkin.com

4. Chairman’s Introduction
Giles Crown
Partner, Head of Media, Brands and Technology
T: +44 20 7074 8090
E: giles.crown@lewissilkin.com
www.lewissilkin.com

5. New Media
Simon Entwistle
Partner
T: +44 20 7074 8114
E: simon.entwistle@lewissilkin.com
Simon Morrissey
Partner
T: +44 20 7074 8221
E: simon.morrissey@lewissilkin.com
Cliff Fluet
Partner
T: +44 20 7074 8000
E: cliff.fluet@lewissilkin.com
www.lewissilkin.com

6. Reputation Management
Rod Dadak
Partner
T: +44 20 7074 8000
E: rod.dadak@lewissilkin.com
Jonathan Coad
Partner
T: +44 20 7074 8115
E: jonathan.coad@lewissilkin.com
www.lewissilkin.com

7. Reputation Management
What to do in a crisis - Top Ten Tips Reputation Management Remedies
1. Having identified a crisis get together a team In situations where the brand is threatened damages
and share the problem. Time is of the essence. are usually inadequate. You need to act before not
2. The team must include your PR and an after the event. In those circumstances the most
experienced media lawyer, in or out of house. drastic remedy is that of the injunction.
3. Exchange mobile and 24 hour contact numbers.
4. Appoint one representative to speak to the Injunctions
media but be prepared anyway.
5. Get all the facts, good or bad. An injunction is an order of the court that either:
6. Agree a script just in case so that you know
what to say if approached. Say less not more • Requires a party to do a specific act or acts
and avoid speaking to the media-let your PR or - a mandatory injunction; or
Media lawyer do that. • Requires a party to refrain from doing a
7. Have a press release prepared. Be positive. Be specific act or acts - a prohibitory
forward thinking. injunction.
8. Ensure confidentiality is observed in the
company. In the scenario of publication of damaging information
9. Be one step ahead of the media. it is the prohibitory injunction which is what should be
10. Be in control. Panic measures create panic sought.
reactions. Cool minds encourage calm
responses. An injunction can be granted after a trial ("a final
injunction") or before a trial to protect the rights of a
person until a trial can take place ("an interim
injunction") and it is an interim injunction is what is
used where you are trying to stop something being
published.
An injunction is a remedy, not a cause of action. It is
the best way of stopping action which could cause
irretrievable damage to the brand and is sought where
damages wouldn’t be an adequate remedy.
Undermining the reputation of a brand can destroy it.
In defamation if there is a defence of truth to
allegations made an injunction will not be granted.
Injunctions can only be granted if the applicant has a
substantive cause of action. It carries a sanction of
contempt of court if it is disobeyed. That means you
can be sent to prison if you are in breach.
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8. What do you have to produce to the Court? The guidance provides, amongst other things, that:
• Any interference from the general principle of
Applications for an injunction are normally made to
open justice can only be justified in exceptional
the High Court. The applicant will need to submit an circumstances, when they are strictly necessary
application notice together with supporting evidence to secure the proper administration of justice.
normally in the form of a detailed witness statement Circumstances need to be wholly exceptional.
and a draft order which sufficiently describes the • The burden of establishing this interference
facts, the relief sought and why it is appropriate for an with open justice lies with the applicant.
injunction to be granted. • The court will have regard to the respective and
competing European Convention Article 10 and
Article 8 rights of the parties. The approach to
Super Injunctions this balancing exercise is: (i) neither Article as
such has precedence over the other; (ii) where
A "super-injunction" is an injunction which restrains a the values under the two Articles are in conflict,
person from: (i) publishing information which an intense focus on the comparative importance
concerns the applicant and is said to be confidential or of the specific rights being claimed in the
individual case is necessary; (iii) the
private; and (ii) publicising or informing others of the
justifications for interfering with or restricting
very existence of the order and the proceedings. The each right must be taken into account; and (iv)
latter part comprises the ‘super’ element of the order. the proportionality test (ultimate balancing test)
Most people remember the super injunction obtained must be applied to each. Do the principles of
in the Trafigura case which led to an outcry in press freedom make it necessary to deny the
Parliament over the threat to freedom of expression it company or the individual his right to privacy? If
the information affects the population the
created. Next down from the super-injunction is the
question is whether there is a sufficient public
non-disclosure injunction where the facts are given- interest in that particular publication to justify
possibly in limited form to avoid jigsaw identification- curtailment of the conflicting right.
but the names of the parties are anonymised to avoid • The court will consider the general public
identification. This is given in circumstances where the interest in open justice.
publication of the names of the parties or all of the • It will only be in the rarest cases that a super
injunction will be justified on grounds of strict
facts would “give the game away”.
necessity being situations in which “tipping off”
is likely.
Guidance now issued by the Master of the Rolls • Applicants must provide advance notice of an
confirms that injunction applications to restrict the application to media organisations whom the
publication of confidential information are founded on applicant intends to bring within the terms of
rights guaranteed by the European Convention on the order, save only in exceptional
circumstances such as blackmail.
Human Rights being the right to freedom of
• Information will only be provided to non-parties
expression (Article 10) and right to privacy (Article 8). if they sign a standard form of irrevocable
All such orders seek to restrict the exercise of the undertaking not to use the information said to
right to freedom of expression through prohibiting the be private.
disclosure of information. • The parties need to provide full and frank
disclosure of all material matters of fact and
law.
Costs
Applying for an injunction can be very costly. Not only
will there be court fees and legal fees to consider but
the costs consequences of ‘losing’ should also be
www.lewissilkin.com

9. taken into account. In normal proceedings, costs flow details of wrongdoing or criminal activities or potential
with the case i.e. the loser pays the winners fees. With harm to the community.
injunctions, in addition to this, the applicant will be
expected to provide what is called a cross- To establish a breach of confidence the information
undertaking. must have been disclosed to others or used for an
unauthorised purpose.
A court will in most cases require an applicant to give
a cross-undertaking in damages prior to granting an A successful claim for misuse of information will
interim injunction. In effect, this undertaking means entitle the claimant to either an account of profits or
that the applicant will be required to pay the damage an inquiry into damages.
caused to the defendant arising from the grant of the
injunction, if it transpires that the injunction should Injunctions and super injunctions can be obtained
not have been granted. If the brand is seriously in before a breach of confidentiality occurs. Injunctions
danger there is usually little choice but to act. are of no use once the information has been disclosed
and used as it has lost its secrecy. There is no
Defamation/ Misuse of Private or Confidential guarantee of an injunction being successful because it
Information is always at the discretion of the court to grant. The
court will consider damages as an appropriate
Defamation is the publication of words or gestures in substitute for an injunction where:
writing, electronically or verbally which serve to
undermine the reputation of the individual or the • the injury to the claimant’s legal rights is
company by lowering them in the eyes of “right small;
thinking people”. There are various defences including • the injury is one which is capable of being
truth in respect of the allegations, honest comment estimated in monetary terms;
and the media defence of qualified privilege where the • the injury is one which can be adequately
publication is in the public interest and there was a compensated by a small money payment;
duty to publish and an interest in receiving the and
offending item. There is also a defence open to • the case is one in which it would be
website owners and ISP’s where the publication was oppressive to the defendant to grant an
not known to be defamatory and was published injunction.
innocently. This is important in situations where
anonymous individuals post material on websites Time is always of the essence in actions to protect the
which is defamatory. brand
The law of private or confidential information is also a For further information please contact:
vital tool in order to protect commercially sensitive Rod Dadak, Partner, Head of Defamation
information which cannot be protected by other rod.dadak@lewissilkin.com
intellectual property rights. 0207 074 8080
To have protection the information must (i) be or
confidential in nature (information which is not public
property, not public knowledge and is novel or Jonathan Coad, Partner
original) and (ii) be disclosed in circumstances where jonathan.coad@lewissilkin.com
there is an obligation of confidence (through contract 0207 074 8115
or implied by the relationship between the parties
such employer and employee) so that he should be Both are experienced media lawyers who are used to
prevented from disclosing it. obtaining injunctions against newspapers and the
media. Both are experienced in acting on behalf of
It should be noted that the need to keep information brand owners.
confidential can also be outweighed by the public
interest in disclosure, for example, where it reveals
www.lewissilkin.com

10. Defamation
& Malicious
Falsehood
What is defamatory?
Who is able to sue?
Defences to defamation claims
Malicious falsehood

11. The law of defamation is about an unincorporated associations, such
individual, firm or a company’s right to as a sports club
Introduction have their reputation or goodwill
protected and is balanced with the
> members of central or local
Reputation protection right to freedom of speech.
government (eg. MPs)
which embodies our law English law recognises that every adult
Who can’t sue?
> dead people, or their relatives
of defamation has has a reputation, and the right to have
that reputation protected against false > unincorporated associations, such
become increasingly statements and imputations. The law as sports clubs
assumes that everyone has a good
important. Together with reputation, until proved otherwise. > central or local government
(collectively, rather than as
the law of privacy, Defamatory statements individuals who can sue)
including confidentiality, If the statement is written or is in any
other permanent form, such as a
reputation protection is a picture or on television or on the What must be proved to succeed in an
internet, it is libel. action for defamation?
vital right for individuals
If it is spoken, it is slander. > publication to a third party
and corporations, > of defamatory words or actions
especially the advertising What is defamatory?
> which are reasonably understood to
industry where image and A statement about a person is refer directly or indirectly to the
defamatory if it tends to do any one of
celebrity rights attract so the following:
claimant
A claimant does not have to prove that
much attention. > lowers him in the estimation of the statement is false but he does have
right-thinking members of society to prove the words are defamatory of
generally him. If a statement is defamatory, it is
> disparages him or it in their assumed that it is false until proved
business, trade, office or profession otherwise.
e.g. to suggest that a company The claimant does not have to prove
carries on its business in an intent so he can sue even if the
incompetent, improper or publication was an innocent mistake.
dishonest way.
Nor does he have to prove any damage.
He only needs to show that the
How should words be interpreted? statement defames him. He may sue
for defamation even though the people
Many statements are capable of having
to whom the statement was published
more than one meaning. In defamation
knew it was untrue.
cases, a Jury or Judge must decide on
the meaning of the publication to the
average reasonable person. What is ‘publication’?
The “natural and ordinary” meaning is Publication to a third party is the
the meaning of the publication on its communication of a defamatory
face, excluding any extraneous statement other than the person/
matters outside the publication itself. company claiming to be defamed.
An apparently harmless statement Every time a defamatory statement is
may carry an inference or innuendo published, it amounts to a
that is defamatory. “publication” giving rise to a fresh
complaint.
The “publisher” can be anyone who
Who can sue? assists in the publication: the
magazine journalist who writes an
Not everyone can sue. Those who can
article is liable and his sub-editor,
are:
editor and magazine. Likewise a claim
> living individuals brought against those responsible for
an advertisement could involve as
> a company for damaging its trading
“publisher” the advertiser, the agency
reputation and goodwill
and/or the media owner involved
> non-trading organisations (eg. (which is why warranties are
charities can sue e.g. over a important).
publication which discourages
Magazine printers, distributors and
subscribers, or impairs its ability to
broadcasters are “publishers” but they
carry out objectives)
can avail themselves of the defence of
> individual members of innocent dissemination by proving they

12. were not the author, or editor of the dirty tactics if untrue invite a libel able to establish a breach of privacy.
statement complained about - and action. The fact that you are not the
took reasonable care in relation to its author and are merely repeating what Fair comment - It is a defence to a
publication and did not know that their you have heard is irrelevant. defamation action for the defendant to
actions contributed to publication establish that the words complained of
It is important, therefore, to remember
(Section 1 Defamation Act 1996). were comment on a matter of public
that companies like individuals are
interest. The burden of proof is
entitled to recover damages and they
therefore on the defendants.
Meaning do not have to prove loss as it is
A defence of fair comment requires the
presumed though evidence usually has
The meaning is that of a “reasonable author to prove that what he said was:
to be provided. A company’s goodwill
person” who is not unduly suspicious and reputation is regarded as being as > comment as opposed to a
but who is willing to read between the important as that of an individual. statement of fact
lines. This is generally known as the
“natural and ordinary meaning”. The > on true facts which an honest
Defamation on the Internet
defamatory statement will be read as a person could make
The law of defamation also applies to
whole together with words and the Internet. The parties involved in > a matter of public interest
pictures, rather than only a few lines. publication, apart from the author, can
be the Internet Service Provider and > made without any malice
In addition to the natural and ordinary
meaning, an apparently harmless the website owner. Given its almost Privilege - There are situations where
statement can carry an inference that limitless potential to reach people all the public interest requires an ability
is defamatory where those with special over the world, defamation on the to speak fully and frankly about
knowledge of particular facts or internet throws up other issues, matters without raising the risk of
circumstances understand the including jurisdictional ones. legal proceedings for defamation.
defamatory meaning. Where there is Through chat rooms, bulletin boards Such situations are treated as
such a hidden meaning this is known and social networking sites, rumours privileged.
as an “innuendo meaning”. It is of can spread swiftly, and as soon as a The defence of privilege is split into
course important to remember that story disappears from one website it two parts: absolute privilege and
statements are frequently capable of can pop up on another. Each time the qualified privilege.
more than one meaning. But the jury offending webpage is accessed it Absolute Privilege - This is a complete
must decide what the “sting” of the constitutes a fresh “publication”. defence provided by statute and
words is or the principal meaning.
Internet Service Providers have long protects statements made in judicial
been susceptible to defamation actions proceedings (or similar) such as
What is ‘identification’? despite the protection afforded to them evidence given in court and statements
by English legislation and the EU E- made for the police. It is effective
A claimant must show that he has regardless of whether the defamatory
been or can be identified. Commerce Directive. They are easily
identifiable and are assumed to have statement was made maliciously. It
Identification does not mean there has deep pockets, and are therefore an also protects fair and accurate
to be a name. It can be made in order obvious target. contemporaneous reports of court
ways. These include identification: by proceedings and decisions. It provides
name or picture; by description; by Whilst S1 Defamation Act can provide complete immunity. The law extends to
direct reference; or by reference to an innocent discrimination defence, tribunals with quasi judicial functions.
small groups. It can also be done by great care should be taken.
“jigsaw identification”. Qualified Privilege - Qualified privilege
is a defence available in circumstances
What are the defences to a where it is considered important that
Special Cases defamation claim? facts should be freely known and
The main defences to an action for publication is in the public interest and
Defamation of a business
It is not actionable to merely disparage defamation are: for “the general interest of society”.
a product (for example “our burgers The purpose of the defence at common
> justification law is to allow a person with a duty or
are better than theirs”) but it is to
disparage business methods, > fair comment obligation to publish information
competence, judgment, honesty and/or where there is a corresponding
> privilege interest in receiving it without risk of
uncreditworthiness (eg. “their burgers
are made from beyond sell-by date > offer of amends being successfully sued for
meat” and/or “that firm is a bunch of defamation, where the publication is
> limitation (i.e. the expiry of time) untrue. A reference given by an
crooks – they have ripped me off”). It
can damage goodwill and in the case of > consent etc employer is an obvious example.
corporations their share price. The Media qualified privilege defence
Justification - Justification is a
The publication of unsubstantiated defence of truth. It can be successfully is available, if it can be shown to have
rumour is dangerous because of the relied upon if a statement made, or at behaved responsibly and complied
obvious risk it may be false. The least the essential elements of it (the with some, if not all, of the guidelines
suggestion that a business is in “sting”), can be proved to be true. laid down by the courts.
trouble, or laying people off or going Intention is irrelevant. If what is
bust, are obvious examples. Likewise, alleged is true then the claimant has
allegations of using sweated labour or no reputation to defend but he may be

13. the claimant must prove that the
Other defences Remedies
statement was untrue and published
Offer of Amends - This is a statutory Damages - In libel damage is maliciously. It is important to note that
defence which requires the offer of an presumed and in slander there are this is different from the position in
apology and payment of compensation certain categories where damage is defamation, where the claimant does
which can be decided by the court. It is also presumed. Damages are “at not have to prove that the statement is
not a defence in the true sense of the large”. That means that a jury will false or malicious.
word but can halt legal proceedings as award what they think is appropriate,
if not accepted it is a complete defence though tariffs are now applied.
unless the claimant can show it was What you have to prove
Injunction - This is a restraint
made in the knowledge that it was Unlike defamation, a claimant has to
preventing publication by order of the
false. It must be an offer in writing and prove that he/she has suffered actual
court, breach of which is a contempt. If
served before service of the Defence. damage/loss in order to be able to
a matter goes to trial and the action is
bring an action for malicious
Limitation – one year limit - The law of won a claimant usually gets a
defamation is there to protect permanent injunction. falsehood, subject to certain
exceptions EG It is not necessary to
reputations. Proceedings must
If an injunction is applied for at an prove actual damage/loss if the words
generally be commenced within one
early stage it is called an interim in dispute are:
year of publication. Each new
injunction. Where a defendant intends
publication will give rise to a fresh > calculated (i.e. likely) to cause
to justify the alleged defamation an
one-year limitation period. This is pecuniary (i.e. financial) damage to
application for an injunction will not
particularly an issue with regard to the the claimant and are published in
succeed. Likewise, if in the absence of
internet and archives on the internet writing or other permanent form
malice, a qualified privilege defence is
where republication can occur many
pleaded. > calculated to cause pecuniary
years later as a result of an archive
search by a user. damage to the claimant in respect
Apologies and Statements in open
of his office, professional calling,
court - A claimant will often seek an
Consent - You can’t complain about a trade or business (whether
apology either publicly or privately. If
publication to which you have published in writing, orally or
publicly, it is by seeking to make a
expressly or impliedly consented. otherwise)
statement in open court which is
Response to attack - If you are usually done by mutual agreement The time limit for bringing an action is
defamed you can respond in similar with the defendant and is made to a the same as for defamation.
terms about your attacker, and in judge.
certain circumstances, about third The Defamation Bill
parties. But you must make sure the What is malicious falsehood?
reply is relevant to the attack and its A bill was introduced in May which, if
circulation proportionate. The defence It is possible that a false statement passed may make radical changes in
can also extend to statements made by made about an individual or business, the law. However, it is likely to take
close family or associates of the although it is not defamatory, may still some time before any change is made,
person attacked. This is part of a be damaging. if at all.
qualified privilege defence. For example, to say an opera singer For further information on this subject,
Abuse of process - A defamation claim has retired from performing could please contact:
cannot be brought if the cost of the cause financial loss through lost
complaint is out of all proportion to the bookings etc, if it is a false statement.
damage or likely vindication of the However it is not defamatory because Rod Dadak
complainant. Equally, a claim cannot it does not suggest anything bad about Head of Defamation
be brought to “get your own back”. the singer.
T: +44 (0) 20 7074 8080
The purpose of the proceedings must In a comparative advertisement, a E: rod.dadak@lewissilkin.com
be to protect your reputation, not to false statement about a competitor’s
rubbish someone else’s. products, price or attributes is unlikely
to be defamatory, but if false may give
rise to an action for malicious
falsehood. For malicious falsehood,
© July 2010

14. Protect against
Defamation
and Privacy
actions
Protection and Prevention
Prevention Checklist
Publications at Risk
What to do if a complaint is made

15. product.
Introduction Protection and Prevention
What is in the public interest covers
The law of defamation and In both defamation and privacy
“protection” and “prevention” are
most things which are in the public eye
also the law of privacy is at watchwords.
and which are important because of
political, moral or other reasons. The
a watershed. Since the In the event of a claim speedy action debates over parliamentary expenses
beginning of 2010 the must be taken. What follows are some
hints and reminders as to what to do in
or assisted suicide are obvious
examples.
media have stepped up the event that potentially defamatory
But the public interest does not
their campaign for a material may be published or if rights
to privacy may be breached.
necessarily cover those whose private
change in our laws, for When looking to publish an article or if
lives are being investigated; we all
have our own private space and a
more flexibility and a you are a PR agency, trying to promote reasonable expectation of privacy
greater ability for freedom your client, the first question to ask
yourself is what are you trying to say,
which can be protected. In assessing
rights to privacy the golden rule is to
of expression to be what point are you trying to make? It is carry out a balancing exercise between
paramount. This has been vital that if you are using facts that
your facts are accurate.
freedom of expression on the one hand
and privacy on the other. The well
much more evident since With regard to research being carried
known model Naomi Campbell was
the Human Rights Act out through the use of a cuttings
photographed attending a drug
rehabilitation clinic. Such an occasion
1998 incorporated the service, or on the internet, try to
ensure that you establish some degree
was obviously protected as it was an
European Convention of of corroboration and do not lift a quote
occasion when she could have
expected privacy.
Human Rights. without double checking it.
Responsible journalism is a defence in
The internet is now frequently used as defamation actions but being
This inbrief is intended to a source of material and contains a lot responsible is not confined to just
show how best to try and of false and misleading information
e.g. Wikipedia has in the past been
journalists.
avoid a letter before action subject to false entries because of the Whatever you write think about what
you are saying and how it will be, or
and a claim, when legal free ability to edit information.
could be, interpreted.
advice is appropriate and Reliance on somebody else’s material
is not a defence to any libel action This is particularly so when you write
what to do when you get a because your use of the other an email, use Twitter or go on a blog.
Think before you write!
complaint. information amounts to repetition.
That means all you are doing is
Never assume that because it has
republishing the libel and the fact that
been said somewhere else that it must
you were not the original author is
be correct.
irrelevant. It may serve to mitigate
damages if your innocence is If it is a potential privacy matter, check
established but was it responsible to whether this information is sensitive,
republish without checking? in the public domain, or otherwise in
breach of the PCC (the Press
In defamation justification - what you
Complaints Commission) Code.
have said is true - is a complete
defence to any claim in defamation but Where possible keep
not in privacy. The truth of what is contemporaneous records of all
revealed is not the issue but whether it telephone and face-to-face interviews.
is appropriate in the circumstances
You should be careful in actually
and is in the public interest.
recording conversations made without
Qualified privilege is a defence open to consent and remember that the
publication in the public interest where speaker does have copyright rights.
there is said to be a “duty and interest”
relationship e.g. publishing
information about giving financial
support to terrorists.
Fair comment is a defence available
when you are ‘expressing’ an opinion
e.g. in a restaurant review or about a

16. be aware of these protocols but try
Checklist Action
to familiarise yourself with them. If
Do you want to express an opinion or What to do if a complaint is made they are not followed there could
make an allegation? be costs implications.
> Don’t panic. A lawyer’s letter is A complaint should set out in detail the
> What are you saying and is what
intended to create it but keep calm. objections that have been raised and
you are writing the best way of
the remedy that is sought. It should
saying it? > Remember time is of the essence. stand on its own and be able to be
Where the offending material is taken as the basis upon which any
> Are the facts correct?
available online you should action might be taken.
> Are the sources honest and can consider removing that material
they be corroborated? from your website immediately To state the obvious, as soon as you
pending investigation. It may prove get a complaint you should read it
> Have you kept all the relevant through carefully and draft a response
to be unnecessary but it is prudent.
documents? (Pictures, texts, paper to each and every point to the best of
Better playing safe than sorry.
work, telephone recordings.) your ability, whilst the complaint is
> Check whether or not you are fresh in your mind to assist your
> Always keep interview notes, tapes,
insured for libel/privacy lawyers before carrying out further
emails, drafts and source
infringement. You must inform your investigations. This will be privileged
materials. (Not just for your use but
insurers immediately if you are. on the basis it is done in anticipation of
because they will be subject to
Does the insurance cover the legal action.
disclosure if the case proceeds.)
defence of all proceedings? Is there
> Always check your copy as if you an excess? > The fact that a complaint is made
might have to defend it in court. does not mean that it is justified or
> Create a line of communication and that it cannot be defended.
> Always be careful with reliance on responsibility within your
others’ material. Remember organisation, and a strict procedure > Contact your defamation/privacy
repetition is republication. to follow. Make sure that the left lawyer. An experienced lawyer will
hand knows what the right hand is give you immediate guidance, will
> Check sensitive data and whether doing. doubtless get a “feel” straightaway
information is in the public domain. and could be far more effective as
Remember the terms of the Data > Before responding to a well as saving you far more money
Protection Act 1998 which gives complainant, consider and discuss and time than your handling the
wide protection for sensitive data with colleagues and if in doubt take matter yourself.
e.g. matters of medical and sexual legal advice at the earliest
information. opportunity. Too much litigation Defamation and privacy actions are
results from inadequate action frequently used as a device by those
> Ensure allegations made are put to being taken at an early stage. It is who wish to conceal the truth or to
the subject before publication. generally cheaper to take action defend inappropriate or unacceptable
> If expressing an opinion is it an sooner rather than later. conduct. Responsible companies and
honest opinion that someone else individuals should have nothing to fear
> Note and acknowledge the if their article or publication has been
could hold or are you making a complaint but do not make any
statement of fact? carefully researched and published in
admissions. a balanced manner. Responsible
Publications at risk > Do not agree to any demands made behaviour is the best defence of all
without first giving full against any libel action.
> Letters consideration to the facts. Privacy is different because the truth
> Articles > Check the offending words about of the publication is not the central
> Emails – internal or external which the complaint is made to see issue. Only the public interest or
if they are factually accurate. freedom of expression can justify its
> Blogs; Bulletin boards; YouTube; breach and the requirements are
Facebook; Twitter > Retain all documentation becoming more difficult to satisfy.
concerning the publication
> Press statements (including drafts). Defamation and privacy actions can be
like a game of poker. The stakes can
> Conference calls > If a formal complaint is made be very high.
> TV and radio through solicitors, remember that
there are “Pre-Action Protocols” > Don’t play the game without an
> The Internet generally which apply to defamation claims, expert by your side.
and which set out the procedure > Always refer to a lawyer
that should be followed in relation experienced in media law if in
to a complaint and a response to doubt.
such a complaint. Your lawyer will

17. > The money spent in the short term the lower court but fortunately the
will reap dividends in the long term Court of Appeal found in his favour and
and save much executive time and allowed an appeal on the basis that he
effort. was expressing an honest opinion as
opposed to making a statement of fact.
The case proved very expensive and
Authors Comment the doctor may well not recover all his
costs (it is always more important to
Changes may come with the new remember that, unfair though it is, you
Coalition Government. If they do there rarely recover all your costs even if
may be changes to the success fee in you win).
Conditional Fee Agreements and the
recovery of After the Event Insurance Defamation lawyers seek to minimise
as recommended in Jackson Report the risk of litigation by the use of
but, given the state of the nation, it will prudent language. If in doubt get
clearly not be a priority. advice.
There is a strength of feeling that It all goes to underline the importance
more needs to be done to control costs of not taking risks, and being careful in
in defamation and privacy actions and what you say and what you do.
to stop so called “jurisdiction
shopping” where foreigners start
proceedings in this country for libels For further information on this subject,
published abroad. please contact:
Be that as it may, or in any event, there
is, more than ever, every reason to be
Rod Dadak
vigilant so that defamation and privacy
Head of Defamation
lawsuits can be avoided. In hard times
T: +44 (0) 20 7074 8080
there is a greater willingness to
E: rod.dadak@lewissilkin.com
litigate.
There is no doubt that costs in
litigation are at the root of the
problem. The recent furore over
allegations made by a scientist is a
good example of why it is important to
get proper legal advice before
publishing allegations which could
result in a lawsuit.
In a libel action brought by the British
Chiropractic Association, it was
alleged in a newspaper article that the
Association was happily promoting
bogus treatments. The writer did not
qualify his language and he was sued
by the Association for libel. He lost in
© July 2010

18. Sponsorship
Dominic Farnsworth
Partner
T: +44 20 7074 8088
E: dominic.farnsworth@lewissilkin.com
www.lewissilkin.com

19. Ambush
Marketing
What is Ambush Marketing?
Examples of Ambush Marketing
How does UK law currently
protect against Ambush
Marketing?
Olympic Games
Steps to Counter Ambush
Marketing

20. specific legislation has been brought
Introduction What is Ambush Marketing?
into force to prevent unauthorised
commercial association with the
With businesses at times Ambush marketing is an attempt by an
unauthorised party, through deliberate Olympic Games in general and also the
paying many millions to marketing activity, to take advantage of 2012 Olympic Games in particular). Up
to now, where event organisers and
associate themselves with the high media profile of an event,
team or individual at the expense of their official sponsors have felt
an event it is not another company’s (usually a rival’s) aggrieved by the ambushing of events
by third parties, they have generally
surprising that their official association with them, without
paying any licence or sponsorship fees. sought redress through the more
competitors engage in The International Olympic Committee
traditional forms of intellectual
property protection, such as passing
‘ambush marketing’. (“IOC”) has defined ambush marketing off, trade mark infringement or
of the Olympic Games as “all copyright infringement.
intentional and unintentional attempts
to create a false or unauthorised Passing Off
commercial association with the
In order to ground an action in passing
Olympic Movement or the Olympic
off, broadly, the event organiser would
Games”.
need to show all of the following:
Ambush marketing is clearly a very
it has established a reputation
effective marketing tool for brand
or goodwill in the event in
owners as it attracts consumers at the
question;
expense of competitors and at little
cost to the brand owner. However, it the third party has made a
also has damaging effects, not only for misrepresentation which has
those ambushed competitors, but also led to confusion in the minds of
for the integrity of the event, team or the public as to whether there is
individual concerned and their a connection with the event
potential to attract future sponsors. organiser; and
the event organiser has
suffered or is likely to suffer
Examples of Ambush Marketing damage.
At the 1984 Olympics in Los Angeles, Registered Trade Marks
Kodak sponsored TV broadcasts of the
Where the event organiser has a
Games, as well as the US track team,
registered trade mark for the name of
despite Fuji being an official sponsor of
the event itself (eg, World Cup, London
the Games themselves.
2012, etc) or logos, mascots,
Visa was an official partner to the 1994 expressions, etc associated with it, and
Lillehammer Winter Olympics. that trade mark or a similar mark has
American Express released TV been used by a third party in its
commercials featuring the strap line; advertising, the event organiser may
“if you are travelling to Norway this be able to bring action against the third
winter, you will need a passport but party for trade mark infringement.
you don’t need a visa”.
Copyright
At the 1996 Atlanta Olympics, Nike (not
The event organiser may have created
an official sponsor) handed out Nike
a logo to represent the event. If this
flags for fans to wave at cameras.
logo is sufficiently original to attract
Nike also bought up all the outdoor
copyright, reproduction of the logo by
poster sites in Atlanta and set up its
an ambush marketer may also
own Nike village next to the official
constitute copyright infringement.
Olympic sponsor’s village.
Advertising Codes and CPRs
Event organisers may also have
How does UK law currently protect recourse to the advertising self-
against Ambush Marketing? regulatory regime, the CAP and BCAP
Codes to combat ambush marketing.
There is currently no specific These Codes require (among other
legislation in the UK, which outlaws things) that all adverts are honest and
ambush marketing per se (although truthful and that they should not be

21. misleading. number of defences including: obligations on media
organisations to restrict
Ambush marketers may also fall foul honestly made statements;
advertising and promotion
of the Consumer Protection from
registered trade mark/design or during broadcasts or webcasts
Misleading Marketing Regulations
other unregistered private to official sponsors. The
2008 (the ‘CPRs’) if they constitute an
rights; restrictions could be extended
“unfair commercial practice”, due to
to cover the period immediately
them being misleading. use of a person’s or business’ prior to or after the sponsored
own name or address; event.
Recourse to the Codes and the 2008
Regulations will be of limited value to use indicating the kind, quality, Event organisers should put in
brand owners wishing to take action quantity, intended purpose, place effective licensing
themselves as both involve making value or other characteristics of arrangements. Sponsors
complaints to the Advertising goods or services; should ensure that event
Standards Authority/Trading
editorial/journalistic use; organisers not only own and
Standards for them to investigate
have made effective licensing
themselves. However, some other incidental inclusion; arrangements for the relevant
jurisdictions in the EU (eg, Ireland,
exhaustion of rights; intellectual property rights, but
Germany, etc) provide for a direct right
that they are contractually
of action for breach of their equivalent continuous use; bound to take action against
versions of the 2008 Regulations and
no association suggested. ambush marketers within a set
so event organisers should bear this in
period of time after such activity
mind when faced with an ambush
is brought to their attention.
campaign which spans more than just
the UK. Event organisers and sponsors
Steps to Counter Ambush Marketing
should take steps to minimise
There are a range of practical steps the effect of online ambush
which event organisers and sponsors marketing, which could be
Olympic Games may take in order to help prevent carried out through activities
The Olympic Games present a number ambush marketing occurring including such as the use of similar
of legal pitfalls for the uninformed the following: website names or unauthorised
promoter. The Olympic Games symbol linking or framing to the official
In order to prevent ambush
is one of the most protected logos in website or to the sponsor’s
marketing occurring in and
the world and has been registered as a website.
around the sports stadia
Community trade mark in every themselves, event organisers Event organisers and sponsors
category of goods and services. In may want to consider may want to consider mounting
addition, the Olympic five ring symbol negotiating contractual terms official sponsor awareness
and the Paralympic symbol, the obliging stadia owners to take a campaigns so that the public
Olympic and Paralympic mottos and proactive approach to know which sponsors are
the words “Olympic”, “Olympia”, preventing ambush marketing, official. Indeed, sponsors may
“Olympiad”, “Paralympic”, by fully controlling advertising seek to contractually oblige
“Paralympia” and “Paralympiad” are in the vicinity. Organisers event organisers to run such
given special protection under the could, for example, oblige campaigns and ensure that they
Olympic Symbol (Protection) Act 1995 owners to hand over stadia as are prominently identified as
(the “1995 Act”) as amended by the clean sites (meaning that they the only official sponsors in all
London Olympic Games and would have to be cleared of all literature and advertising
Paralympic Games Act 2006 (the “2006 advertising by all unofficial surrounding the event.
Act”). sponsors), to rename the stadia
Sporting bodies are increasingly
The 2006 Act extends the scope of the for the duration of the event or
cracking down on the running of
1995 Act to prevent any unauthorised to control access to the stadia
unofficial promotions which
use in the course of trade of any grounds, including the air space
offer tickets to sporting events
representation in a manner likely to above.
as prizes in competitions. For
create an association between goods/ Event organisers could also buy example, only official sponsors
services and the London Olympics. up all of the billboard and other and partners of the World Cup
Use of the words “games”, “two advertising space in the vicinity are permitted to run
thousand and twelve”, “2012”, “twenty of the event and then resell only competitions or promotions in
twelve”, “gold”, “silver”, “bronze”, to official sponsors. Indeed, relation to tickets for the World
“London”, “medal”, “sponsor” and sponsors may wish to Cup. The same is true for the
“summer” may be taken in account by contractually oblige event Olympics.
the Court when considering whether organisers to do this.
there has been any infringement.
Event organisers may impose
The 1995 and 2006 Acts provide for a

22. For further information on this subject
please contact:
Dominic Farnsworth
Partner, Media Brands & Technology
T: + 44 (0) 20 7074 8088
E: dominic.farnsworth@lewissilkin.com
Pauline Dore
Senior Associate, Media Brands &
Technology
T: + 44 (0) 20 7074 8224
E: pauline.dore@lewissilkin.com
© November 2010

23. Sponsorship
How is the sponsorship market
evolving?
What are the key commercial
issues?
What is ambush marketing?
Olympic alert
The growth of naming rights

24. cameras.
Introduction Key commercial issues
Hospitality : This often forms a
Sponsorship is booming. It is important for both sponsors and
the owners of properties to conclude a
significant part of the package
As brandowners comprehensive contract protecting
providing the sponsor with tickets and
hospitality access for both staff and for
increasingly understand their respective interests. A bad fit
between sponsor and property carries
promotional purposes. The number
the power of well a significant risk of devaluing the
and positioning of tickets, the choice of
events for which tickets are available,
executed sponsorship not future commercial value of the
property and of damaging the
the level of service of catering, parking
only are fees on an sponsor’s brand. The negotiation of
facilities and specifications for boxes
and lounges need to be considered.
upward trajectory but also these contracts is critical both from a
legal and commercial perspective in
Tours of the grounds are often
the opportunities. Those that it is often the moment when the
included.
involved in this area need operational blueprint is drawn up
between the parties and the risk of
Public Appearance : The sponsor may
wish to use players in its advertising,
an understanding of the potential future problems allocated. to give post match interviews in the
key contractual and Many of the following points will need
to be addressed:
sponsor’s lounge or have them present
in-house motivational talks for their
intellectual property Term : Not just how long, but also what
employees.
issues. happens at the end? Options, lock-out Merchandising : Will a sponsor wish to
periods, matching rights, fee be able to distribute free premiums as
recalculation formulas. Also, what part of its marketing campaign? How
events could give rise to early are these sourced and priced and do
termination? they compete with the property’s own
merchandising operations.
Territory : Whilst sponsors generally
require global rights, developments in Content Creation : A sponsor may wish
technology such as virtual advertising to create its own content, eg interview
now provide events owners with the players for management training
opportunity to split packages by videos, or include footage of players in
territory. With the appropriate its advertising or on its website.
technology the displays on billboards
Data : A club’s or a band’s database of
on event broadcasts can be altered to
fans can provide a valuable mine of
carry different branding in different
customer information. A sponsor will
territories.
often want the right to be able to use
Naming Rights : Is the sponsor’s brand that database to send direct marketing
going to become part of the property’s communications.
name such as “Barclays Premier
Presentation : Presentation rights may
League”, or will it be ‘sponsored by’,
include the right to present the trophy
‘partnered by’, ‘in association with’,
and medals to winners, or to the man
‘official supplier to.’
of the match, and possibly the right to
Fee : The key considerations are how feature the trophy or use it for
much is to be paid, how are the marketing purposes in the future.
payments to be staged, whether there
Exclusivity : A sponsor will generally
is any payment in kind and whether
require a ‘clean venue’. Not only
payments may be adjustable against
should the sponsor be the only partner
promotion/relegation or other
within the relevant product category,
evaluation criteria.
consideration should also be given to
Advertising Opportunities : How and an obligation on the property to use the
where will the brand be seen? sponsors product/services (eg car
Perimeter boards, big screens, flags, fleet, power supply, telecoms services)
on pitch branding, programmes, and a restriction incorporated
tannoy, website, the list goes on… Can preventing the use of those of
a property secure TV advertising competitors.
surrounding the broadcast of an event,
can it secure billboards outside the
venue? For broadcast events a sponsor
should ensure that branding is within Intellectual Property Rights
the unimpaired view of the principal A sponsorship agreement will

25. generally result in both sides being Whilst it was not a sponsor of these advertisers need to ensure that any
able to use the other side’s intellectual Olympics it achieved notoriety through commercial communications that
property and in particular their trade buying advertising space surrounding reference the upcoming games, even
marks. This requires a cross licence of the stadia, painting murals, handing obliquely, are given careful
IP with strict controls over the other out Nike Swoosh flags free to consideration.
party’s use of that IP to avoid any attendees at Atlanta which were
brand denigration. Both sides will want subsequently waved at the cameras
approval rights over the use of any during the events as well as building a
materials featuring their IP. Nike centre overlooking the Olympic Our expertise
stadium itself. The Sports Law Group at Lewis Silkin
In certain circumstances when a
sponsor obtains the right to have its A property may have devised its own has a deep knowledge of sponsorship
name actually form part of the event brand protection programme. This will issues having advised both
title, a new mark is created comprised involve notifying potential ambush rightsholders and leading brands in
partly of the sponsor’s name and marketers that ambush marketing will the utilities, automotive,
partly of the event itself. Think not be tolerated, informing them of the telecommunications, apparel and
‘Barclay’s Premier League’. This is a relevant IP and regulatory protections entertainment industries on some of
composite mark. Composite marks are and that a team of lawyers are on the highest value sponsorship deals
commonly applied for jointly in the stand by to take immediate action. struck in the UK.
name of both parties and careful Stewards and trading standards
consideration needs to be given to the should also be briefed to assist.
treatment of the mark following the
expiry of the sponsorship contract.
For further information on this subject
Olympics alert please contact:
There has been specific legislation in Dominic Farnsworth
What is Ambush marketing?
the UK for many years preventing third Partner, Media Brands & Technology
With businesses at times paying many parties from using the Olympics name
millions to associate themselves with and rings for certain commercial T: + 44 (0) 20 7074 8088
an event it is not surprising that their purposes. However the UK’s E:
competitors engage in ‘ambush successful bid for the 2012 Olympics dominic.farnsworth@lewissilkin.com
marketing’. This is an attempt by an has lead to this legislation being
unauthorised party to take advantage supplemented by the more draconian
of the high media profile of an event at London Olympic Games and
the expense of another business’s Paralympic Games Act 2006. With
(usually a rival) official association with concerns that even a seemingly benign
the event without paying any licence or strap line such as “Come to London in
sponsorship fees to the organisers. 2012” could potentially give rise to
criminal liability brandowners and
Some examples of effective ambush
advertisers need to ensure that any
marketing campaigns include:
commercial communications that
Atlanta Olympics – Reebok and reference the upcoming games, even
Linford Christie/Puma : The British obliquely, are given careful
sprinter Linford Christie attended a consideration.
press conference wearing contact
lenses that prominently displayed the
Puma logo, thereby generating
Stadium naming rights
considerable media buzz for the brand,
much to the chagrin of Olympic There has been specific legislation in
sponsor Reebok. the UK for many years preventing third
parties from using the Olympics name
New York Marathon 1997 - Toyota and
and rings for certain commercial
Mercedes Benz : Five aeroplanes
purposes. However the UK’s
appeared and wrote MERCEDES BENZ
successful bid for the 2012 Olympics
in the sky over New York during this
has lead to this legislation being
Toyota sponsored event.
supplemented by the more draconian
Los Angeles, Barcelona, Salt Lake City London Olympic Games and
and Atlanta Olympics : Now more Paralympic Games Act 2006. With
mainstream (and sometimes itself the concerns that even a seemingly benign
victim of the ambush marketing strap line such as “Come to London in
campaigns of others), Nike was 2012” could potentially give rise to
formerly adept at ambush marketing. criminal liability brandowners and

26. © May 2010

34. Trade Marks
Steven Jennings
Partner
T: +44 20 7074 8000
E: steven.jennings@lewisislkin.com
Simon Chapman
Partner
T: +44 20 7074 8266
E: simon.chapman@lewissilkin.com
www.lewissilkin.com

35. Article 5 Trade Marks Directive
Article 5 Rights conferred by a trade mark
1. The registered trade mark shall confer on the proprietor exclusive rights therein. The proprietor shall be
entitled to prevent all third parties not having his consent from using in the course of trade:
a. any sign which is identical with the trade mark in relation to goods or services which are identical
with those for which the trade mark is registered;
b. any sign where, because of its identity with, or similarity to, the trade mark and the identity or
similarity of the goods or services covered by the trade mark and the sign, there exists a likelihood of
confusion on the part of the public; the likelihood of confusion includes the likelihood of association
between the sign and the trade mark.
2. Any Member State may also provide that the proprietor shall be entitled to prevent all third parties not
having his consent from using in the course of trade any sign which is identical with, or similar to, the trade
mark in relation to goods or services which are not similar to those for which the trade mark is registered,
where the latter has a reputation in the Member State and where use of that sign without due cause takes
unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.
Simon Chapman
Partner
T: +44 20 7074 8266
E: simon.chapman@lewissilkin.com
www.lewissilkin.com

36. Letters before action in IP claims require extreme
caution – for now...
In Best Buy Co Inc and another v Worldwide Sales Corporation Espana S.L [2011] the Court of Appeal ruled that a
party could be subject to an action for unlawful threats of trade mark infringement, despite the fact that the
letter containing the threat was part of ongoing ‘without prejudice’ discussions with a view to resolving the
dispute. The test to be applied is whether a reasonable recipient would have understood the correspondence as
an intention to initiate proceedings.
Background
Under various UK intellectual property statutes, where a party has been threatened with an action for
infringement, an aggrieved party (which may be the party threatened or someone else who is affected by the
threat) may bring an action against the maker of the threat and seek a declaration that the threat was unjustified,
an injunction to prevent the continuance of the threat and damages in respect of any loss sustained. Usually,
where a party makes statements in a genuine attempt to settle a dispute, the ‘without prejudice’ rule dictates that
those statements will generally be privileged and non-admissible in legal proceedings.
In this case Best Buy Co Inc had developed plans to open a chain of consumer electronics shops in the UK and
other European countries under the ‘Best Buy’ name. Best Buy Co had previously used this name extensively in
the United States and had a significant reputation there. Worldwide Sales Corporation Espana S.L is a Spanish
corporation and the proprietor of numerous Community trade marks and national registered trade marks
including the words ‘Best Buy’. Best Buy Co had applied for a Community trade mark incorporating the words
‘Best Buy’ and Worldwide opposed it on the basis of two earlier Community trade mark registrations that it held.
Best Buy Co subsequently filed a revocation action against one of those marks on the grounds of non-use.
Solicitors for Best Buy Co wrote to Worldwide and indicated that their client wished to enter into without prejudice
discussions, and would be willing to enter into a co-existence agreement as a way of settling the dispute. They
indicated that Best Buy Co would agree to an extension to the compulsory two month cooling-off period for
opposition actions in relation to Community trade marks, to allow further time to discuss an agreement.
Worldwide’s written response outlined its rights to the words “Best Buy” and indicated that these rights could be
asserted against Best Buy Co through legal action. Their letter stated that the use by Best Buy Co of the mark in
Europe and in particular in Spain, as well as in media advertising, would represent a conflict with Worldwide’s
intellectual property rights which would entitle the company to take the appropriate legal action to defend its
interests . However, the last few paragraphs of the letter indicated that Worldwide would be prepared to reach a
settlement with Best Buy Co over their use of the mark, but until then requested that Best Buy Co refrain from
using the “Best Buy” mark. Worldwide’s response was not marked ‘without prejudice’.
After negotiations broke down between the parties, Best Buy Co launched proceedings against Worldwide for the
groundless threat of infringement proceedings pursuant to Section 21 of the Trade Marks Act 1994 (the “Act”).
There are exceptions under the Act, including under section 21 (1) (c) which excludes a threat by one party with
proceedings for infringement of a registered trade mark relating to the supply of services under the mark.
First instance decision
At first instance Floyd LJ found that Worldwide’s letter contained a threat of infringement proceedings under
section 21 of the Act. Worldwide’s letter had set out that its marks were "reputed and distinctive", that Best Buy
Co’s actions were "causing irreparable and irreversible damage" to it and that the company was therefore
www.lewissilkin.com

37. entitled to take appropriate legal action to defend its interests. Not only did Worldwide assert that that it was
entitled to take legal action but also made an effort to support its potential legal case in the letter.
However, despite finding that Worldwide’s letter contained a threat of infringement proceedings, the High Court
held that this letter could not be relied upon in a groundless threats action because it was part of a negotiating
process and therefore fell within the protection of the "without prejudice" rule. This followed the well-established
principle that correspondence does not need to be marked with the words ‘without prejudice’ in order to be
classed as such if it is a genuine attempt to settle proceedings. Therefore, Worldwide’s letter was held to be part
of a comprehensive negotiating response to Best Buy Co’s proposal, which attracted the protection of privilege.
The Court of Appeal’s decision
Best Buy Co appealed this decision. In the Court of Appeal five key issues were identified:
• Did Worldwide’s letter contain a threat? If so,
• Was it a threat of such proceedings in the English courts? If so,
• Did the threat of proceedings fall outside the exclusions in paragraphs (a) to (c) of section 21(1) of the Act?
If so,
• Was Worldwide’s letter precluded from being an actionable threat by virtue of containing settlement
proposals? If not,
• Were the claimants "persons aggrieved" and therefore entitled to relief under section 21?
The Court of Appeal agreed with Floyd LJ that Worldwide’s letter contained a threat of infringement proceedings.
The claim made in the letter that Best Buy Co’s continued use of the mark would entitle Worldwide to take legal
action, was regarded as a clear threat. The test was what a reasonable person in the position of the recipient of
the letter, with the recipient’s knowledge of all the relevant circumstances as at the date of writing, would have
understood the writer of that particular passage to have intended when read in the context of the letter as an
entire document.
The Court’s view was that the overall purpose of Worldwide’s letter was to act as a letter before action and a
reasonable recipient in Best Buy Co’s position would interpret the letter as Worldwide asserting its legal rights
and threatening to enforce those rights through legal action. This was despite the fact that the last three
paragraphs of the letter set out Worldwide’s apparent interest in a negotiated solution.
However, the Court of Appeal disagreed with the High Court’s judgment that the letter was protected by privilege
on the basis that it was part of ongoing ‘without prejudice’ discussions. The Court of Appeal held that the letter did
not represent a genuine ‘without prejudice’ communication that would remain confidential in court proceedings.
Notably, Worldwide did not offer any concessions or admissions in the letter, but simply underlined its belief in
the company’s legal position and confirmed a determination to pursue Best Buy Co if necessary. It was the
Court’s view that the last three paragraphs represented an invitation to enter settlement negotiations, rather than
an offer of proposals. Therefore, the letter could be used as evidence in support of Best Buy Co’s claim that the
threat was groundless.
On the question of whether the letter represented a threat of proceedings in the English courts, the Court of
Appeal held that threatening proceedings based on European rights and activity "in Europe" could be construed
as threatening proceedings in the UK. This was particularly relevant if there was evidence of use, or intended use,
of the mark objected to in the UK. It was clear that Worldwide’s threats were Europe wide as the letter stated that
Worldwide’s trade mark registrations were "in Spain and Europe" and each of the three paragraphs regarding
settlement related to use of the "trademark in Europe". Accordingly, it was possible to infer that the threat of
proceedings did cover the UK on the basis that Worldwide were aware of Best Buy Co’s intention to launch the
European arm of their brand in the UK. A reasonable recipient in the position of Best Buy Co would have
understood the letter to threaten proceedings in the UK.
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