Virtuoso Legal | Award-Winning Intellectual Property Law Firm.
Virtuoso Legal are a world-class Intellectual Property law firm. Our expert solicitors are experienced in all forms of intellectual property law. We have represented clients big and small, internationally and locally – for the past 10 years and we are renowned for our service.
Virtuoso Legal successfully defends expediated High Court breach of confidence case: On 9 January 2019, we updated our readers on a matter where the Virtuoso Legal IP Protect team, led by our director Philip Partington, successfully defended an interim injunction application brought by FreshAsia Foods Limited (“FreshAsia”) seeking to (amongst other things) force our client to terminate his employment with his new employer. For more information about that, read here.
FreshAsia, despite having been unsuccessful in their interim attempts to force our client to terminate his employment with his new employer, proceeded to bring the matter to a full 3-day trial in early March 2019 before Mr Justice Arnold in the High Court. On 20 March 2019, Mr Justice Arnold’s decision was handed down. A full copy of his decision can be found here.
In summary of Mr Justice Arnold’s conclusions:
In relation to the non-compete clause, Freshasia did not have “legitimate business interesting requiring protection” in order to justify the enforcement of their non-compete clause, as “Mr Jing’s contact with customers was minimal”, Freshasia’s confidential information was already protected by separate covenants and any trade secrets were protected by equitable obligation of confidence. The information in Freshasia’s Protected Documents was very detailed and would be difficult for Mr Jing to recall without the documents themselves. In addition, “the clause is also too wide in that it would stop Mr Jing from being employed by a competitor to Freshasia in a non-marketing role” as, for example, it would have even stopped Mr Jing working as a production manager for a competitor. Further, the period of 12 months was too long. In the circumstances, Freshasia’s attempts to rely upon their non-compete clause was dismissed.
In relation to the non-solicitation clauses, Mr Justice Arnold was again “not satisfied that Freshasia had legitimate business interests requiring protection”, as for example this would have prevented Mr Jing from even “designing a promotional poster which someone else at [his new employer] used to solicit custom”. In the circumstances, Freshasia’s attempts to rely upon their non-solicitation clause was rejected by the court. As such, Freshasia’s claim to enforce the non-solicitation clause was dismissed.
court rejected Freshasia’s invitation to the court to delete parts of the
wording of the above clauses, so as to make them enforceable.
The court found that Mr Jing was contractually
obliged to “deliver up any
electronic copies of any Protected Documents he had in his control and then to
although he was “only required to deliver
up copies of documents that Freshasia did not already have”. Since Mr Jing did not do so immediately upon
termination, Mr Justice Arnold concluded that “Mr Jing did breach [his contract] by failing to delete at least 17
Protected Documents until 30 November 2018”, but was “not persuaded that he
retained any Protected Documents after 30 November 2018” as “Freshasia could have instructed a suitable
expert to inspect Mr Jing’s laptop for evidence of such retention, but it did
not do so. Mr Jing’s willingness to permit this indicates that he had nothing
The court found that “Mr Jing’s retention of copies of Protected Documents did not amount to use, or therefore misuse, of the confidential information contained therein. At most it amounted to a threat to do so”. In addition, that there was “no direct evidence that Mr Jing has misused any confidential information contained in any of Protected Documents since his departure from Freshasia, let alone that he threatens or intends to do so in the future. Freshasia contends that this should be inferred from various factors. Having regard to my findings of fact, I consider that there is no basis for any such inference”. As such, Freshasia’s claim in relation to misuse was dismissed.
In relation to alleged copyright infringement, the
court concluded that “there is no evidence that Mr Jing accessed copies of
Protected Documents on his personal Google Drive, between 28 September 2018 and
30 November 2018, nor is this to be inferred. He did so on 30 November 2018 for
the purpose of copying files onto the USB sticks, but that was done with
Freshasia’s consent. There is no evidence that Mr Jing has accessed copies of
Protected Documents on his personal Google Drive since 30 November 2018, nor is
this to be inferred. Accordingly, this claim is dismissed”.
Following on from Mr Justice Arnold’s judgment, the
parties are expected to attend court in the coming weeks in order to argue
their proposed final form of order including legal costs.
We will keep you all updated as to the result and
will also be writing in our forthcoming blogs as to the consequences of this
decision for all businesses.
To speak to our team of IP specialists, please call:
0207 412 8372
Virtuoso Legal successfully defends expediated High Court breach of confidence case was written by Philip Partington
The elr is a journal that I have referred to; both in my academic and professional careers! I remember trawling through it for my dissertation in my IP LLM. It’s fantastic to now be a published author in it.
– Lakmal Walawage
Dr. Martin Douglas Hendry said:
Whilst my academic career has drawn somewhat to a close at the point of joining Virtuoso Legal – old habits die hard! Working closely with the team at Virtuoso Legal has allowed me to have somewhat of an insight into some incredibly complex IP matters, including the Argos v. Argos case. Working with Lakmal to put this piece together was fun in the first instance, but also stands as a reminder of how cutting-edge the work we do do is.
Lakmal and Martin are both incredible assets to Virtuoso Legal – who (in their respective ways) offer great value and insight to our clients. The inclusion of their write up of the incredibly technical Argos v. Argos case in such a prestigious legal journal; is another testament to the cutting edge expertise we have in our team. Congratulations Lakmal and Martin!
Kirsten Toft, Lauren Waterman and Gemma Wilson of Virtuoso Legal
As a fast-paced professional industry, the legal sector presents a unique set of challenges to female practitioners.
Whether it’s the competing demands of a heavy workload and young children or dealing with the traditionalist views still present in a historically male-dominated field, the life of a female lawyer can be a hectic one.
International Women’s Day offers an opportunity to take a closer look at the progress made, and progress still to come.
In this interview, Virtuoso Legal trainee solicitor Gemma Wilson speaks with her supervising partner, Vice-Principal Kirsten Toft, about her career, its challenges and its rewards.
You qualified as a solicitor in 1999. Did you face any challenges as a woman entering the legal profession?
The main difference was that there weren’t as many women and there certainly weren’t many women partners. I worked for a female partner when I first qualified and it was very much the exception rather than the norm. Happily, that is no longer the case.
At my first firm a female senior associate was promoted to partnership. Unfortunately, she did not stay in the position for very long. I saw her try to juggle her role as a partner with her childcare responsibilities and it seemed a very difficult position to be in. The landscape at the time was certainly not accommodating or flexible for women who wanted to have families.
There was an expectation that females in senior positions had to do more than their male counterparts to be valued within their firms and within the profession. There weren’t many female role models that I could look up to when I first entered the profession and it certainly wasn’t a positive outlook for a junior female solicitor who also wanted to have a family.
Do you think that things have changed for women in the legal profession over the past 20 years, and if so, how?
There are far more women in the legal profession now than when I first started. The latest Law Society statistics showed that women now hold 50.1% of the UK’s 139,624 practicing certificates. This is an enormous increase from what was a male-dominated industry only two decades ago.
There has also been a great change in relation to flexible working. The legal profession has had to catch up with other industries in departing from the ‘9 to 5, at your desk’ model. Part time positions and remote working are now seen as a possibility, which twenty years ago would have been unheard of. There is now a recognition that it is not about the hours you work but how well you work in those hours.
As well as being a qualified solicitor in the UK, you were admitted as a lawyer of the Supreme Court of New South Wales, Australia in April 2006. What made you take the jump to moving to Australia and do you have any advice for young lawyers who may be interested in working abroad?
I fell in love with Australia when I went backpacking before I started my training contract. I stayed there for a full year before returning to the UK. As soon as I was qualified in the UK I did my research and found that it was possible to emigrate, become a resident and practice as a solicitor in Australia.
Even then, it took me five years to make the leap. The more I practiced in the UK and built up my client base, the more difficult it became to leave. In 2005 I finally emigrated, as I knew I would regret it if I didn’t. I had to take several exams, but I put the work in, got qualified and managed to land a job with leading IP firm, Spruson & Ferguson.
My advice to any young lawyers interested in working abroad is that it is very hard to find time to make these jumps once you are established in your career. I personally believe that you should take every opportunity to travel and broaden your horizons and that these opportunities are more frequent in the earlier stages of your career path.
Over the past 20 years you have risen to the top of your profession and are now considered a leader in your field. How did you achieve this success and is there anything that you would do differently?
Hard work, perseverance, a healthy amount of perspective and a sense of humour. On my return to the UK from Australia I considered pursuing another career. However, I realised that what I wanted was to be in a different type of law firm. I wasn’t interested in the corporate culture of most large firms and I knew that I was attracted by the freedom of a different type of environment.
I joined Virtuoso Legal’s all-female team (at the time!) and worked incredibly hard. We weren’t an all-female team by design but by chance and as we grew, we became more diverse. We have retained the culture of being a non-traditional, values-based law firm and this is something that has worked incredibly well for us.
I pride myself on striving for the best result for my clients and always putting their commercial needs first. At the forefront of any solicitor’s mind should be working in the client’s best interests. I think that is what has kept my loyal clients coming back to me time and again.
In terms of anything I would do differently – I would have spent less time in a large City firm. There was a presumption that any job in the law was a ‘good job’. This is simply not the case. A ‘good job’ in the law is the job that is right for you and I could have explored my options and looked at travelling earlier in my career.
As one of the firm’s directors and head of the non-contentious team, how do you balance the responsibility of managing a team, fee earning and raising a young family?
With difficulty! This is a rewarding but never an easy job and getting the balance right between being a good mother and a good lawyer is a continuous challenge.
There has been much talk of work-life balance over recent years and it continues to be a significant issue faced by women in the legal profession. I manage to balance work and spending quality time with my two children by being organised, available to my clients when they need me and going above and beyond when putting in time for the firm.
The downside of this is that I struggle to find time for myself and I would advise anybody entering the profession of the importance of making time for yourself.
I think we are going in the right direction, but there is still a long way to go. The most recent statistics from the SRA show that women make up only 33% of partners and this drops down in larger firms with 50 plus partners to just 29%.
Flexibility is key and the option for part-time working for mothers without any negative connotations is vital. Society’s perception of working women has been slow to change and I have found that there is still judgment attached to a mother’s choice to go out to work, be it part-time or full-time. Attitudes need to change and the only way to change them is by getting more women in these senior positions.
What is the best piece of advice that you could give to women pursuing a career in the legal profession?
Attitude is key. To be successful in this profession you need to be conscientious about your work and take pride in what you do. Ultimately your work will speak for itself and it reflects upon you. Taking your time and being diligent will reap its own rewards.
IP Top 10 Febrary: The news this month is proving to be “dark and stormy”
Whilst February was the shortest month of the year, it was also extremely eventful. Across the World of IP there were a host of headlines that hit our radar. Here (in no particular order) is a slightly humorous look at 10 stories from the month that caught our eye. Without further ado, here’s our IP Top 10 for February.
#10 EU Digital Copyright Directive, Article 11 and 13 in their Final Form: a (Small) Compromise?
After much worry about what form the EU Copyright Directive would take in its final form – it appears that a compromise (of sorts) has been reached.
Some may argue that this was simply a case of the “door in the face” technique, insofar that earlier drafts had concerned digital platforms so much that any concession would be seen as acceptable.
The two articles under scrutiny were Article 11 (“link tax”) and Article 13 (concerning the prima facie liability of digital platforms for hosting content infringing copyright.
The latter caused much distress for YouTube who were very worried about having to suddenly filter all video content uploaded to their platform (300 hours of video uploaded every minute) to discern for unlicensed content.
(You wouldn’t envy them in that task, even with all the powers available to them.)
In its final form, Article 13 determines that YouTube will have to make “best efforts” to approach copyright infringement on its platform in a number of ways.
#9 Wax On, Wax Off: Halloumi UKIPO debacle quickly followed by Babybel decision
Cheese seems to be the order of the day in IP news. With case law last year being tested in Europe relating to copyrighting its taste, to Cyprus’ slip up in losing “HALLOUMI” as a trade mark in the UK – it seems to be an area which is ripe (sorry) for contention.
The latest fromage fracas comes in the form of a successful invalidation action levied by Sainsbury against the iconic red Babybel wax. Fromageries Bel, the creator of Babybel’s registered 3D mark for the wax invalidated because of “a mismatch between the verbal description of the trademark and the colour(s) shown in the pictorial representation of it”. Then also suggesting the mark was customary and thus “devoid of distinctive character”.
#8 Facebook Found liable by Italian Court for hosting unlicensed content
Who needs Article 13? In this case, within the Italian courts, Facebook has been found liable for hosting links to unlicensed content.
Where before online platforms such as the social media giant had successfully deferred accountability for nefarious content to its users… this result may alter their role and responsibility.
The content in question was the Italian version of the Japanese TV series “Kilari”. Italian singer Valentina Ponzone had performed the introduction to the TV show dressed as the titular character. This had led to the creation of a critical account which had posted videos and comments relating to this performance.
After several failed attempts at having the page taken down – Ms. Ponzone took the litigious route, remarkably alleging liability on Facebook, whose lack of effective response led to this outcome.
#7 “Glen Buchenbach” CJEU decision leaves a bitter taste in the mouth for Scottish Whisky Association
German liquor producer Micheal Klotz’ attempt to name their whisk(e)y “Glen Buchenbach” met quite a lot of resistance from the Scottish Whisky Association. This was primarily because they believed that use of the term “Glen” was geographically misleading and would lead customers to believe that the spirit was scotch.
AG Saugmandsgaard Øe’s preliminary opinion was not to the taste of the SWA – suggesting that use of the word “Glen” would not evoke Scotland to the point of breaking EU law around geographical indications.
#6 Amazon Announce Initiative to Take on The Fakes
This month Amazon announced, “Project Zero”, a new operation programme to address counterfeiting on its platform. [Sound of brand owners spitting out their tea.] Whilst its motivation is well placed, the announcement has resulted in some backlash in so far as the campaign appears to place responsibility for brand policing upon brand owners! This renewed effort on the part of brand owners coincides with a suite of new AI tools to be deployed on the network to spot and police bad actors.
Chinese shoewear producer OneMix have drawn the ire of Nike for a series of perceived trade mark, design and patent infringements. These were seen by the US producer as a concerted campaign to generate an association between OneMix’s products and their own.
There has been a storied history between OneMix and Nike in this regard, but have they flown too close to the sun this time?
When it comes to patent litigation and enforcement it’s all about jurisdiction. In two recent cases UK jurisdiction was sought for claim. Nothing to see here, right? Wrong. One case Conversant v Huawei, ZTE was granted UK jurisdiction whereas Apple v Qualcommwas not. But why?
FRAND is why. The recent disparity in these judgments has led to a lot of conversation about these terms and the UK Court’s decision to discern jurisdiction.
It is often rare that one of the Kardashian troupe are not in the news in relation to intellectual property disputes. In perhaps the biggest Kardashian IP debacle in recent times, Kim [the main one] is being sued by developers who allege they had generated the concept for the wildly successful “Kimoji” – a set of custom emoji based on the reality star turned entrepreneur.
With the seemingly ceaseless furore surrounding dance creators and the video game “Fortnite” – larger questions have arisen relating to the ownership of copyright in the dances included in the game. Little US case law exists at the time and enforcement would result in significant legal precedent.
Finally, it is well known that Manchester United are a branding and licensing behemoth. It is part of the reason why despite their recent on field drought, that they had remained at the top of the perch for richest clubs in the world.
Part of maintaining their position at the top of this league table is robust brand protection. Case in point, a request levied at “Panini Cheapskates” who produce humorously crudely drawn football stickers. As one might expect, the sticker aficionados have decided to remove their Manchester United related stickers – leaving their collector’s books sadly unfinished like so many others in the past.
The Cypriot Ministry of Energy, Commerce and Tourism suffered a significant defeat in the UK High Court (chancery division), when its appeal was dismissed against the decision to invalidate the “Halloumi” trade mark. Worse still, is that this could have all been avoided. The Cypriot Ministry is currently undertaking an investigation into how the country was able to lose the “Halloumi” mark. It seems like they have learned a very expensive lesson, in trade mark management – leave it to the professionals.
“Halloumi”: the Background
By way of a background to this matter, the Cypriot Ministry had previously entrusted Clifford Chance as its legal representatives in the UK.
Indeed, Clifford Chance where on the record as its trade mark representatives and its registered UK office address was to be used for service of documents from the UKIPO.
However, in 2011, the Ministry changed this address for service to the Ministry’s own offices in the Cypriot capital Nicosia. It is unclear exactly why, but this was the beginning of the end for the halloumi mark.
When John and Pascalis Ltd made three applications to revoke and invalidate the Halloumi mark, it appears that the Cypriot Ministry did not have its house in order and the correspondence sent directly to them ended up being overlooked.
This resulted in deadlines to respond being missed and as such the mark was subsequently cancelled.
As the Halloumi brand is highly valuable to Cyprus, as a flagship product, losing the registration in the UK will have far-reaching economic consequences. As such, the Cypriot Ministry swiftly contacted Clifford Chance and an appeal was launched.
The appeal was based on an application to extend the deadline to file the relevant forms with the UKIPO. However, the appeal was dismissed.
It would be impractical for the IPO if it were not able to treat final decisions as final and by administrative action, be forced to re-open them.
In this case, failure to meet the deadlines were not due to extenuating circumstances. Rather it was a complete blunder on the part of the Cypriot Ministry who had received the papers, but not acted on them in time.
Needless to say, Clifford Chance’s offices have been restored on the register as the address for service.
However, the (e)damage may well have already been done.
The cancellation of the trademark it a big setback for the Cyprus government.
The market for halloumi in the UK is growing and Cyprus may not be able to reap what it intended to sow, with the prospect of competitors adopting the mark on its packaging.
It goes without saying that a trade mark is only as good as its management and enforcement.
Even governments can make costly mistakes which could easily be averted if left in the hands of specialists.
For more information about this decision, click the link below.
…the expert IP Protect team were in and out of the London courts on a daily basis.
While the team enjoyed a convenient space in Kings Cross, the last few years illustrated that we needed to be closer to the London courts. In addition, we needed even more space, due to expansion of the Virtuoso Legal London team.
Lakmal Walawage – Associate Solicitor
In 2018, Lakmal Walawage, associate solicitor, joined Philip Partington, director, in London, having trained in the Leeds office. In addition, the team are soon to be joined by the incoming trainee, James Gilmer.
James Gilmer – Incoming Trainee
Given all of this, in January 2019, the Virtuoso Legal London team moved into Fox Court, 14 Grays Inn Road, London.
This is 5 minutes’ walk to the Intellectual Property Enterprise Court, High Court and Court of Appeal, which means the team are now in striking distance for all of our clients’ urgent matters.
director and head of Virtuoso Legal London and IP Protect team, said that:
“Moving closer to the courts made perfect sense for the ever-expanding London team. In addition, we have already met some incredibly innovative businesses who work in the same building, so we are looking forward to assisting them to expand their businesses in the coming months and years.
We also hope clients and contacts new and old will pop in and say ‘hi’ when they are in the neighbourhood – our door is always open.”
Philip Partington – Director
We are running free weekly branding workshops at
Fox Court with our London expert IP team.
These sessions will be informal and are a great
opportunity to meet our team and learn and ask questions about all things trade
marks. We will be covering:
how trade marks are registered and what aspects of
a brand you can protect;
how clearance searches work in order to avoid
how a brand should be registered and commercially
how to successfully protect your trade marks once
Spaces are limited, so check dates, availability and sign up by clicking the button below:
The Virtuoso Legal IP round-up is back, with a slightly different format – the IP Top 10. This year we’re going to summarise the ten top stories from the month (rather than providing a complete list of all of the stories that came through our news desk).
So without further ado, in no particular order, here’s everything you missed, but need to know, in IP this month from outside of Virtuoso Legal.
(And also a few bits from December).
#10 Big Mac Under Attack in the EU
In one of the most remarkable pieces of trade mark revocation / cancellation news we have ever come across. McDonald’s suffered a hammer blow as their word mark for BIG MAC was revoked after cancellation proceedings from Irish chain “Supermac” were concluded at the EUIPO.
The reason given for cancellation was that McDonald’s could not prove sufficient usage of the mark across the EU. McDonald’s can appeal the decision, but will do so at great cost.
This month was no different with legal attention boiling over in relation to Fortnite and the dances that players in game can use to celebrate their “victory royale“. Many of these dances are apparently based on a range of viral routines (or older iconic dances in the case of Alfonso Ribeiro’s “Carlton” dance.
Where before many of these creators were largely non-plussed at this homage – the news that Epic Games made $3billion in profit last year (likely as a consequence of runaway hit) has drawn the attention of these creators in a more substantial way.
“Smells like copyright infringement” – doesn’t quite have the same ring to it.
In an age where Marc Jacobs could quite easily have obtained a licence from Nirvana to use the copyright in the iconic ‘smiley face’ design on their clothing, it is difficult to see why they would apply such a high-risk strategy to their next season of clothing whilst there is ever a threat of a lawsuit.
Marc Jacobs would inevitably have the bottomless pockets to pay such a fee. Is litigation simply becoming fashionable and therefore preferred over doing things legally? Potentially – After all, bad publicity is still publicity at the end of the day.
Jordan Davies – Solicitor
#5 “Let Me Be Frank, Kevin – That’s (Potentially) Copyright infringement”
In a rather strange turn of events, Kevin Spacey reappeared this month in the guise of his House of Cards character Frank Underwood
The only issue with this, is that he is on an indefinite hiatus from the Netflix hit as a consequence of some serious allegations of sexual misconduct. As such, representing himself as the Machiavellian character might be construed as a copyright infringement.
Kevin Spacey’s controversial depiction of his most famous character certainly caught attention when he broke his social media silence on Christmas Eve.
Whilst Spacey did not actually incorporate any copyrighted materials into his video, his parodic portrayal raises significant questions about whether laws in the US offer enough protection for the concept of popular characters.
Gemma Wilson – Trainee Solicitor
#4 EU Trade Mark Directive 2015 Implemented into UK Law
On the the 14th of January, the UKIPO implemented the EU Trade Mark Directive 2015 into UK law.
Amendments come in the form of the Trade Marks Regulations 2018; and include a host of changes across prior law.
The big changes include:
representation of trade marks (now allowing for electronic formats such as MP3 and MP4)
no longer notifying owners of expired marks that might conflict upon examination of applications
several changes to opposition proceedings (which we are keeping an eye on)
The beginning of January meant that a host of works entered the public domain following the lapse of their copyright protection. 70 years plus death of the author/creator is a long, long time.
Every year this occurs there a discussion arises about the balance of protecting creators, and allowing the public to benefit from creative works. These discussions will reach boiling point soon as Mickey Mouse plods slowly but surely(?) toward the open-domain…
#2 Can You Infringe Copyright When Sharing a Picture of Yourself? Ask GiGi.
And finally, in another copyright bust GiGi Hadid’s Instagram account was drawn under scrutiny for posting photographs of… GiGi Hadid. The only issue here being that the photographs in questions were shared without the consent (or license) from the photographer – who under the principle of copyright are the sole owner of the image.
This happens quite often, in cases where those who appear in magazine shoots (or their teams) post up imagery without consent. In this case however, Hadid is directly implicated insofar as she was seen to have direct control over her account and what it posts. Oops!
In a move welcomed by many, China has established a dedicated IP appeals court within the Supreme People’s Court. The dedicated court will feature IP specialist judge’s whom will oversee appeals from China’s lower level courts.
This is broadly seen as an positive move by China who have come under some scrutiny (especially from the US) in relation to the even-handed enforcement of IP.
Stiwt Theatre (left), not to be mistaken with the Royal Albert Hall…
Virtuoso Legal act for Cyclone Events Limited (“Cyclone”), which is a family-run events company and the Stiwt Arts Trust (“Stiwt”), which runs a 490-seater Stiwt community arts theatre in Rhosllannerchrugog, in the northern Welsh county of Wrexham.
Cyclone, Stiwt and their respective directors were faced with High Court proceedings, brought by entertainment giants, Twentieth Century Fox Film Corporation, and their music publishing arms, TCF Music Publishing Inc and Fox Film Music Corporation (‘Fox’) after Cyclone performed its own version of Fox’s “The Greatest Showman” at the Stiwt theatre last summer.
The total ticket sales for the production amounted to around £40,000. Despite this, Fox, represented by Wiggins proceeded to issue a High Court claim citing that the claim was worth “in excess of £200,000”.
The Virtuoso Legal IP Protect team, led by director Philip Partington and assisted by trainee Gemma Wilson, immediately upon receipt of the proceedings back in August 2018 invited Fox to transfer the proceedings from the High Court to the Intellectual Property Enterprise Court (“IPEC”). Fox’s legal representatives refused and forced the parties into an expensive hearing on 25 January 2019. By this point, Fox had incurred over £90,000 in legal fees and forced Cyclone and Stiwt into incurring around £30,000.
In brief, the relevant factors to be considered when making a decision on a transfer to the Intellectual Property Enterprise Court are:
The size of the parties
The complexity of the claim
The nature of the evidence
Any conflicting factual evidence
The value of the claim
Prior to and during the hearing before Master Clark on 25 January 2019, Fox had made their agreement to transfer these proceedings to IPEC conditional on (1) lifting of the IPEC £500,000 damages cap and (2) payment of Fox’s legal costs by Cyclone and Stiwt. Both conditions were rejected by the court and Master Clark agreed with Nick Zweck of Hogarth Chambers, Virtuoso Legal’s instructed counsel, that the appropriate court for these proceedings was the IPEC and that Fox ought to pay Cyclone and Stiwt’s legal costs of the application.
Of today’s decision, Philip Partington said
“This case illustrates that would be Claimants should be extremely careful when issuing a claim. For those who do issue in the wrong court, the sooner transfer is agreed, the lower your cost exposure”.
Virtuoso Legal successfully defend VideraBio Limited and Drs Botes, Chokkathukalam and Chen in High Court breach of confidence claims brought by industry giant, Invista Textiles (UK) Limited.
The Claimants in this case, “Invista” are part of one of the world’s largest international textile and polymer groups, whose business makes polymer plastics, chemical intermediates and fibres including nylon and the intermediates used to make nylon. Invista is part of the Koch Industries group based in Wichita, Kansas, USA, and were represented by “trial lawyers” Quinn Emanuel Urquhart & Sullivan LLP, including their Managing Partner, Sue Prevezer QC.
The Virtuoso Legal litigation team, led by directors Elizabeth Ward (a former biotech scientist and founder of the IP specialist firm) and Philip Partington (head of IP Protect and the London Office of Virtuoso Legal), acted for VideraBio Limited, another related company together with the three individual defendants; Drs Botes, Chokkathukalam and Chen, all of whom are leading biotechnology scientists and former employees of Invista.
Until her departure, Dr Adriana Botes was formerly head of Invista’s
“Sustainability Group”, which
conducted research into ways alternative ways of producing nylon intermediates
by other routes, distinct from oil which is currently the main source of most
polymers and their precursors. The aim
was to make the intermediate compounds or their precursors biochemically, using
genetically engineered microorganisms such as yeast.
In early March 2017, several months after departure of Drs Botes, Chokkathukalam and Chen, from Invista’s employment, Invista issued a High Court claim and interim injunction against the trio and VideraBio in relation to alleged breach of confidence and various contractual breaches.
In short, Invista’s claims related to the scientists’ departure from Invista’s employment and setting up of a biotech company, VideraBio.
On 21 January 2019, following the heavily contested and expensive proceedings (it is thought that Invista has incurred well in excess of £1 million in legal costs) that followed and a lengthy trial spanning 3 weeks in October 2018, Mr Justice Birss handed down his judgment. We will provide a link to this judgment as soon as it becomes available.
In the meantime, Mr Justice Birss came to the following conclusions:
Invista’s “claim for breach of confidence is dismissed altogether”;
“The defendants did not misuse any confidential information which Invista had any right to protect after their employments ended”;
Invista’s three-month post-employment non-competition clause, which is understood to be included in thousands of its employee’s contracts, failed because Mr Justice Birss considered the clause to be “an unreasonable restraint of trade”;
Many of the documents claimed to be Invista’s “Company Property” during the proceedings were not so and “That aspect of the case is dismissed”. Of the handful of documents of around 36,000 in dispute, that were judged by Mr Justice Birss to be Invista’s Company Property and not deleted by the Drs Botes and Chen before their termination of employment with Invista, Mr Justice Birss stated that their retention was a “breach of contract”. However, there had been no misuse at all in relation to those documents and the Defendants had already agreed to deliver up and delete the same long ago.
While Mr Justice Birss ruled that Dr Chokkathukalam had retained (post-employment with Invista) certain documents, which were Invista Company Property, he did this “pending resolution” of an employment dispute with Invista and was therefore “was not a breach of his contract”. Indeed, that employment claim had resulted in a substantial sum of money being paid by Invista to Dr Chokkathukalam in relation to a claim for constructive dismissal and discrimination.
Invista’s claim that the Defendants had sought to induce its supplier, SilicoLife, to breach their contract with Invista was “dismissed”.
Mr Justice Birss did find that Dr Botes had breached her “non-solicitation” clause in relation to her communications with Drs Chokkathukalam and Chen, her colleagues and friends, while they were still employed by Invista, and that all three individual defendants were found to have breached their “duty of fidelity” to Invista in that respect.
Finally, Mr Justice Birss ordered that there would be “no inquiries as to damages”.
Following on from Mr Justice Birss’ judgment, the parties are expected to attend court in the coming weeks in order to argue their proposed final form of order including legal costs.
We will keep you all updated as to the result and will also be writing in our forthcoming blogs as to the consequences of this decision for all businesses.
Interim injunctions are commonly seen when an employee leaves a business. But what are the issues at hand?
Beginning a new role is always an exciting experience, with new responsibilities, working environments and colleagues to become familiar with. However, in some cases, leaving one employer and joining another can become your worst nightmare.
Just before the Christmas break,
Virtuoso Legal were instructed on an urgent new interim injunction involving
our client’s former employer, FreshAsia Foods Limited (“FreshAsia”), seeking to
(amongst other things) force our client to terminate his employment with his
FreshAsia relied upon a, rather
broad, restrictive covenant in our client’s employment contract which purported
to prevent our client from working for a competitor, in the first instance for
a period of 10 years, then latterly for a one-year period.
With student debts and a mortgage to pay, quitting your job is simply not an option. As such, our client instructed us to oppose the interim injunction and achieve the key objective; to defend his right to work. The “lP Protect” team at Virtuoso Legal rolled into action.
On 18 December 2018, the week before Christmas when most people are making last minute preparations for the festive period; buying presents for loved ones, our client, along with the Virtuoso Legal IP Protect team, were in the High Court defending his right to work at his new employer.
The next day, the judge for hearing, Mr. Daniel Alexander QC, gave his decision. Mr. Alexander’s full judgment can be found here. The decision is lengthy and complex and we analyse it in detail below. However, in short, our client retained his right to maintain his new employment.
During the orientation process of any new role there are a range of formalities, such as the signing of your contract – which, in the excitement of the new role, often don’t receive the attention they deserve. However, these documents can contain material such as restrictive covenants that may, suddenly, become very significant to you should you later move on from the company.
Equally, it is important that
companies are aware of the reasonable restrictions that they can place on
employees when they leave – as overbearing restrictions may not stand in a
court of law.
It is quite common nowadays to
have restrictive covenants (e.g. non-compete clauses) in employment contracts
as the employers are entitled to protect their “legitimate interests”. Indeed, employment contracts will feature different
wordings of the restrictive covenants depending on the nature of the business –
but typically include restrictions on sharing the employer’s confidential
information or on benefiting from the employer’s customer connections records.
From a companies’ perspective, it
is important for restrictive covenants to be appropriately drafted as they can
be difficult to enforce in court proceedings unless they are reasonable. This
is because such covenants will be considered in relation to the doctrine of
restraint of trade which protects the employees from overzealous companies.
What to do if your previous employer seeks to enforce restrictive
covenants against you?
Should this be the case, ensure that this is navigated with extreme care and that you get the best legal professional help available as soon as possible. The longer you leave, the worse matters will become!
Where the employer believes that
a breach of restrictive covenant took place following the employee’s departure
from the company, the employer will often try to persuade the court that an
injunction is required to stop the ex-employee from breaching the covenants.
Most often, such orders are sought on an interim, prohibitory, injunction
This will be the case where following
your resignation you decide to work for a competitor or open your own business
in a similar field – which is common. It may be the case that, particularly where
you’ve been a valuable employee, your previous employer tries to stop you from
offering your skills or knowledge to another company, even though you are not
in breach of any of their restrictive covenants.
If you are currently an employee using your personal computer for work purposes, you should ensure that upon your departure from your current job, you discuss with your employer about the documents you are in possession of and return them in accordance with the company’s procedure.
If you are an employer, it would
be best to ensure that your employees have all the necessary computers to work
on and avoid allowing employees to work from their personal computers as much
as possible. You will also need a clear policy upon the situations in which the
employees can use their own personal computers and what will happen upon the
employees’ departure. Should that be the case, as an employer you should try
your best to ensure that no company information was left on your ex-employee’s
personal computer. This will likely mean that you will have to hire a forensics
specialist to examine and search for the company’s documents.
The Present Case: FreshAsia Foods Limited vs Jing Lu
The two core issues at play in
this case were the validity and enforceability of:
The non-solicitation clause within the
employment contract (specifically relating to contacting customers, leads and leveraging
goodwill established at the prior employer)
non-compete clause within the employment contract (relating to conducting
business activity that unfairly competes and thus damages the Claimant’s own
Both were contained within a
single clause within the employee handbook.
Notably, should the Claimant have
freely enforced its terms, as set out, the Defendant would have been in a
perilous position unable to work within their field of business, anywhere
within the EU.
The first issue in play concerned a clause within the Defendant’s contract that, upon leaving FreshAsia’s employment, would restrict the Defendant:
for a period of six months (for non-senior employees) or twelve months (for senior employees) (hereinafter referred to as the “leaving period”) in respect of any aspect of the business which the Company undertakes, solicit, or attempt to solicit the custom of, or sell, or deliver to or accept work for private gain and/or for any third party, from any private individual, firm or company or otherwise deal with any person who at the date of termination of this contract is a customer or potential customer of the Company to whom you have personally sold and/or delivered the Company’s products on behalf of the Company or whom you had introduced to the Company, or approached on behalf of the Company, or with whom you had any business dealings or knowledge in the leaving period immediately prior to the date of termination of your employment.”
In theory, this clause is
standard within many contemporary business agreements. Restricting employees
from leaving and contacting their prior client base and leads is a reasonable
term to enforce. However, it is equally important that reasonable expectations
are placed upon this restriction – so that it is not onerous nor runs foul of
the doctrine of restraint of trade.
Mr Daniel Alexander QC commented
first on the extent to which our client had actually been in contact with
customers of FreshAsia:
In my judgment, the scope of prohibited activities is greater than reasonably necessary to protect [The Claimant’s] legitimate interest… it is one thing to prevent an employee in the position of [the Defendant] from soliciting custom from his previous customers for a new employer seeking to supply those customers. It is another thing for him to be prevented from working at all for one of the customers with which he has dealt in the given ways. In my view it is likely that this aspect of the clause will be held to be too broad to be enforceable.”
Then upon the clause’s treatment of limiting contact with “prospective customers”:
“If [the Defendant] knew of the existence of a potential or actual customer and had approached them at any time during his employment he would be prohibited from soliciting them for 12 months after termination… the present clause is more likely than not to be found to be too wide…”
Third and finally, relating to,
in the broad sense to individuals with which he had “business dealings” and “knowledge”.
This was found to be “very broad” and
as such lacked a “clear way in which it
may be interpreted to relate directly to the protection of a legitimate
As such, in this case, Mr. Danny Alexander QC found that the limitations sought by the Claimant were technically uncertain and broad in scope, accepting our client’s more definitive undertakings to limit any solicitation toward the Claimant’s customers (determined between the parties on a definitive list).
In addition, included alongside
the above non-solicitation clause were non-compete provisions. Specifically, the
non-compete aspect of the clauses deemed that our client would not: “Own, manage, operate, consult for, or be
employed by [his new employer] or any other business substantially similar to
or competitive with the Claimant”.
Mr Daniel Alexander QC questioned
this upon clarity – specifically that “substantially
similar to or competitive with” lacked a degree of clarity that would be
In addition to this, Mr. Daniel Alexander QC noted that he was not satisfied the scope of the clause was “no wider than reasonably necessary to protect confidential information or trade connection…”. In essence, the clause’s scope goes above and beyond FreshAsia’s legitimate interests.
Further to this, in regards to enforceability, Mr. Daniel Alexander QC deemed the indeterminate scope “too wide, especially given the field restrictions which together make for a comprehensive ban on working in any similar business for a period of 12 months anywhere in Europe in any capacity”. This is because FreshAsia in this case was involved in a niche, specialist industry, and our client’s skills lent themselves to work in that particular niche industry.
As such, Mr. Daniel Alexander QC refused at this interim injunction hearing to enforce the non-compete provisions.
The consequence of these proceedings was a far less difficult position for our client, Jing Lu, who is now able to work in the industry he has passion for (at the very least) until trial on the matter in May 2019.
Crucially, it is important for employees to ensure to carefully read and retain their employment contracts and any employee handbooks issued by the employer. In particular, terms such as non-compete clauses might typically be included in both the contract and the handbook.
On the other hand, employers
should ensure that such a clause is properly constructed and is clear enough to
be enforced and, ideally, should be tailored to each employee.
When it comes to the interim injunctions, the court will consider the practical realities of the case. There are cases, especially when it comes to non-compete clauses where the injunction would have a particularly severe impact upon the person – and these injunctions will be granted only where the court is reasonably satisfied that the claim will succeed.
The employer will need to show
that it has some protectable interest in order to make the non-compete clause
enforceable. For example, such protectable interests could be contacting and
conducting business with clients that existed prior to the employee’s departure.
The court will analyse whether the scope of prohibited activities will be
greater than necessary to protect the employer’s interest. Stopping someone
from earning a living will generally be frowned upon by the courts.
It is important to emphasise the importance the legal advice you might receive as an ex-employee against whom a non-compete might be enforced. Indeed, legal practitioners, and particularly IP specialists, with knowledge of the law and prior experience in such cases will be able to analyse such provisions of the contract and defend you against any unfair attempts from your ex-employer to stop you from exercising your right to work.
The Human Cost of Interim Injunctions was written by Philip Partington