Understand Your Rights. Solve Your Legal Problems
As with so many other sectors, 2021 continues to be a challenge for the legal sector. The demands of remote working, coupled with pandemic-related employment law and family disputes, has piled the pressure on law firms.
On top of this, law firm marketers have a new obstacle to overcome: the latest Google update. In June 2021, Google began rolling out its Page Experience update, warning webmasters of three new “Core Web Vitals” guidelines to follow. Not only do law firms have to continue making great content; they also have to ensure this content is accessible.
So, which law firms are stepping up to the plate and adhering to the latest search engine optimisation guidance? Between March and April 2021, the Legmark team gathered data for our annual legal sector website analysis report.
The report features a custom-made scoring system out of 100, outlining a law firm’s online performance based on crucial SEO factors. These are a delicate balance of on-site metrics, such as keywords, total traffic and site speed, and off-site metrics, such as referring domains and domain rating.
Our ranking system considers factors from Google’s Core Web Vitals, such as page speed, but also looks at the broader “perfect recipe” for a high-ranking site. Additionally, for the first time in 2021, we gathered year-on-year data to name the most-improved law firms of the year. So, who comes out on top?
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In first place, Wigan-based Stephensons showed outstanding progress in 2021. This is pertinent for two reasons. Firstly, our data was gathered from The Lawyer’s top 200 UK law firms based on revenue. Stephensons ranks at a very modest 148th in terms of revenue, proving that large firms do not always come out on top.
Secondly, Stephensons has jumped massively from 2020, climbing 39 places in our custom-made scoring system. This is thanks to a significant investment in page speed. The firm scored 196 out of 200 and 198 out of 200 for desktop and mobile speed respectively – showing that it is ahead of the curve by Google’s standards.
Similar to Stephensons, Lindsays is also a relatively small law firm, ranking at just 153rd place in terms of revenue. That has not stopped the firm from climbing 11 places this year to second place in our Legmark Index.
Perhaps more interesting, when we compare the firm’s performance against Stephensons’, is the difference in individual metric scores. While Stephensons tops the charts for desktop and mobile speed, Lindsays scores 122 for desktop – though it boasts a very impressive 198 for mobile speed.
However, while Stephensons also ranks highly for traffic and total keywords, Lindsays flourishes with its domain rating. This proves that the firm has invested heavily in its off-site reputation, acquiring links from reputable sources to improve all-round performance.
While Stephensons also ranks highly for traffic and total keywords, Lindsays flourishes with its domain rating.
Not surprisingly, we see one of the UK’s largest law firms (ranked 25th by revenue) in third place. We have used Irwin Mitchell as an example of the “perfect site” when it comes to ticking all the boxes for Google. Our radar graph analysis shows that Irwin Mitchell is just shy of 200 on almost all metrics – with total traffic scoring an impressive 200/200!
So, what is it that stops Irwin Mitchell from coming in first place based on our index? Firstly, let’s remember that the system is weighted – so one metric may have more value than another. For example, mobile speed is considered top priority when we remember factors such as ‘Mobilegeddon’, or, more recently, Core Web Vitals.
Secondly, as an established brand, Irwin Mitchell may also be relying on brand name searches rather than specific “X law firm” keywords. As a full-service firm, it is safe to say Irwin Mitchell has high-value keyword coverage. The firm’s value per keyword score, based on the equivalent cost to rank for a paid ad, comes in at 197.
However, where Irwin Mitchell falls relatively short is total keywords. Again, as a full-service firm, it faces the challenge of trying to rank for anything and everything, but may be a victim of its own success. Our research revealed that 15,000 searches for “Irwin Mitchell” are made each month. This is great for brand awareness, but the firm scores 179 for total keywords, showing it could rank for marginally more.
As a full-service firm, it is safe to say Irwin Mitchell has high-value keyword coverage.
While it is important to learn from the best-performing law firms of 2021, we must also consider those that have improved the most. Let’s not forget that search engine optimisation is constantly changing, so those firms that have improved in the here and now are hugely significant.
The top three most-improved firms for 2021 did not make the top 10 overall, but they have come on in leaps and bounds.
This innovative firm is shaking things up for the legal sector. Established in 2010, the firm says it does not believe in “law as usual” and instead works on a franchise model, only recruiting lawyers with more than 10,000 hours’ experience.
As a relatively young firm, Gunnercooke will need time before they can climb the ranks in terms of domain rating or referring domains. But they have harnessed the power of page experience, topping the charts at 200/200 for mobile speed. As a result, they have climbed 165 places in the rankings from 2020. With a little investment in off-site SEO, the rest of the ranking factors will follow.
As a relatively young firm, Gunnercooke will need time before they can climb the ranks in terms of domain rating or referring domains.
Kennedys is considerably larger than Gunnercooke, at 27 in the revenue index compared to Gunnercooke’s 109. This may have helped the team fund their investment in reputation-building between 2020 and 2021.
Kennedys has climbed 132 places this year in our Legmark Index, and the figures suggest this is all down to domain rating and referring domains. This is excellent news as a law firm – a sector that relies on reputation. For even better performance, Kennedys should now focus on site speeds.
When we compare Sills & Betteridge to Kennedys, it is almost a mirror image. This firm, which has climbed 113 places in 2021, has invested heavily in mobile and desktop speed. It goes to show once again that law firms must look at “the whole pie” when improving their search rankings.
Sills & Betteridge may have got the “quick wins” for now – but they should follow the lead of Kennedys to build up their backlink profile (and of course, Kennedys should follow Sills & Betteridge’s lead on page speed).
If there is anything that our 2021 report has proven, it is that no single factor makes or breaks organic search performance. Indeed, page experience and loading speeds continue to become more prominent, but we cannot overlook content, particularly in the legal industry.
If there is anything that our 2021 report has proven, it is that no single factor makes or breaks organic search performance.
Our full report looks at each ranking factor in detail, with some eye-opening results – including how smaller firms are topping the charts. It is a positive outlook for all UK firms, then, proving that revenue does not always equal competitive advantage. With the right investment, any firm can compete with “the big guys”.
The Legmark 2021 Legal Sector Website Performance Analysis is available to download now.
Sam Borrett, Director
Legmark
Address: 5300 Lakeside, Cheadle Royal Business Park, Cheshire, SK8 3GP
Tel: +44 (0)161 818 8448
Email: hello@legmark.com
Website: legmark.com
Legmark is a digital marketing consultancy that offers legal marketing, digital marketing and communications for law firms. Legmark can also offer advice on social media, content marketing and customer retention.
Sam Borrett is a nationally regarded marketing expert with expertise in delivering for the legal sector. He works for a range of clients in the sector on business development, SEO, website performance and several other areas, and has won several awards for his marketing and PR campaigns.
One of the positive aspects of a 15-month lockdown has been the fact that many employees have now successfully shown to their employers that they are able to work from home. The initial fears of employees binge-watching box sets of Game of Thrones in their pyjamas all day have proved to be unfounded.
Despite a perception that the whole country was working from home in the first lockdown, an Office for National Statistics survey published in July 2020 showed that, of the 46.4% of people in employment who were working from home in April 2020, 86% were doing so as a result of the pandemic. Although 34.4% worked fewer hours than usual, 30.3% were working more hours.
There have been many anecdotal reports of employees being burned out and stressed. In some cases, this was due to an inability to set clear boundaries between working and homelife and the temptation to just ‘have a quick look’ at the inbox before going to bed. However, other causes have been as a result of managers and colleagues sending emails and expecting a response – or scheduling calls and Zoom meetings – out of hours and at weekends.
In Europe, France introduced legislation allowing employees to disconnect outside the business’s core hours and not suffer a detriment (e.g. to pay rises or promotions) for doing so. Their code came into effect on 1 January 2017 and was intended to stop employers from encroaching on family. An annual negotiation between employer and employees takes place about where the boundaries lie. Italy followed in 2017 and Spain in 2018. However, German lawmakers have not followed the same path but instead tried to tackle the issue by reaching an agreement with the large employers and using technology to enforce it. This includes putting in place software which prevents certain categories of employee from accessing company emails on their smartphones between certain hours.
There have been many anecdotal reports of employees being burned out and stressed.
In April this year, Ireland implemented a Right to Disconnect Code. Under this code, all employees whether home-working or office -based have the right to not routinely work outside normal working hours (appreciating that sometimes it might be necessary); not be subjected to a detriment for refusing to deal with work out of hours; and a duty to respect another employee’s right to disconnect. The code does not specify what ‘normal working hours’ are. The code also addresses the issues of doing work in different time zones and asks employers to manage expectations that their staff doing international business will only reply to emails during their own working day. It recommends training for managers to spot those not obeying the rules.
So, with the UK lagging behind putting in place safeguards for overworked employees, the calls for a Right to Disconnect clause to be included in the Employment Bill – due out later this year – remain louder than ever. Just this month the trade union Prospect asked the Government to legislate to ban out-of-hours emails from bosses and for a legally binding Right to Disconnect.
Some argue that this is not strictly necessary, as there is already legislation in place to protect employees. The Working Time Regulations put a limit on the working week, but we know that many employees are asked to opt out and many in managerial roles are not considered to be bound by these limits anyway. In any event, the issue is not necessarily the number of hours being worked, but the timing of those hours. If a manager is choosing to home-school and play golf during the daytime but then do all of their work at night, why should their direct reports have to be answering emails or sitting in on Zoom calls late into the night?
The issue is not necessarily the number of hours being worked, but the timing of those hours.
Employees might argue that not preventing managers from demanding answers or calls late at night contravenes an employer’s obligation to provide a safe place of work, enshrined in the Health and Safety at Work Act 1974. But realistically, is an aspiring young employee desperate to make a good impression going to raise their head above the parapet and make that claim? The first a business will know is when they leave or fall seriously ill and then it is too late. This is certainly the view that the Irish Government took when it implemented their code, which is there to supplement existing laws on working hours and safe places of work.
It may well be that employees who have been successfully working from home for over a year may feel that a return to the office will set some boundaries to their working day, and so employers planning to downsize and reduce their office space might find that demand for those returning is higher than they think.
Is legislation the answer? Probably, but faced with a shrinking talent pool and potential employees being much more focussed on work-life balance, employers are also going to have to lead the way with their own policies to attract the staff that they want.
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These policies must be applied consistently from the top downwards to be a success. There is no real excuse when simple technology can assist a manager eager to commit their thoughts and questions down in an email and get it out as quickly as possible. Use the delay function in Outlook (options/delay delivery) – then the creative juices can flow at 2 AM while ensuring that the email is delivered within working hours.
There also needs to be an education process for managers to understand that emails arriving late, or demands for late calls, can be seen as bullying and giving off the impression of a manager not in control of their own workload. How many times when an email popped into an inbox at midnight has your first thought been “someone is having a breakdown”? Far from impressing the recipient, generally the view is completely the opposite, but immature managers (sometimes at very senior level) lack this self-awareness and it is all about education.
Employers could go further and disable the email system between certain hours, but this is likely to increase stress levels rather than decrease them. After all, those distracted during the day when their children or pets are unwell may want to catch up on work out of hours – this is a personal choice, so long as they are not expecting input from others at that time. A simple monitoring of emails passing out of hours will soon highlight those who are not abiding by the rules. Although they may switch to WhatsApp or texts from their personal mobiles to avoid detection, having in place an anonymous reporting process will soon unearth them and the policy should spell out the sanctions.
These policies must be applied consistently from the top downwards to be a success.
There is also the tricky problem of dealing in a different time zone. Businesses will be reluctant to refuse to deal with those in the USA other than on their terms, because their competitors will. But many firms employ staff specifically to work the hours that suit their international clients and allow them time off during the day – employers need to start being creative.
Whether a Right to Disconnect clause will be included in the Employment Bill, expected this year, is yet to be seen. But clause or no clause, educating leaders on healthy working practices that create a positive workplace culture and a safe place to work should be a given. A positive culture that is inspired from the top rather than just by legal policy will nurture a more productive workforce – one that is happier, more motivated and much more energised.
Beverley Sunderland, Director
Crossland Employment Solicitors
Address: 99 Park Drive, Milton Park, Abingdon, Oxon, OX14 4RY
Tel: +44 (0)123 584 1506
Email: beverley@crosslandsolicitors.com
Website: crosslandsolicitors.com
Crossland Employment Solicitors is a UK-based firm that specialises in employment law. Their team of experts advises businesses and individuals in all aspects of employment law, calling upon more than 85 years of combined experience to guide their clients.
Beverley Sunderland established Crossland in March 2008. Top-ranked in Chambers’ Guide and boasting Elite status in Legal 500, she draws on more than 30 years of experience in law and as a commercial director for a PLC. She is also an experienced advocate in both the Employment Tribunal and the Employment Appeal Tribunal, and has taken cases as far as the Court of Appeal when necessary.
Collective redress has seen an enormous spike in the last 3-4 years. Group Litigation Orders are on the rise. 2021 promises to be a vintage year in this area. The Merricks decision has unlocked a long queue of potential opt-out collective actions being pursued in the Competition Appeals Tribunal. The legal world eagerly awaits the decision of the Supreme Court in Lloyd v Google, which is as important to the back door opt-out class action regime found within CPR 19.6 as it is to data protection law. Cases cover areas as broad as Dieselgate claims, data beach claims, privacy, foreign exchange rigging, shareholder claims, truck cartels, train ticket overcharging, equal pay and worker rights. The list goes on, and is growing.
There is no doubt that the lawyers (and the litigation funders behind them) are set to profit from these claims. Headline values run into the hundreds of millions of pounds, some into the billions. The truck cartel claims and the Merricks claim against Mastercard have headline claim values that exceed £10 billion. A 30% return to a law firm on a damages-based agreement or to a litigation funder represents a healthy return, even when the time cost of money over a typical case lifecycle of 4 years plus (often longer) is taken into account.
But is this wrong? Is it only the lawyers that profit, or is this new breed of litigation also to the benefit of the (often) consumer victims and, maybe, even society as a whole?
Collective redress has seen an enormous spike in the last 3-4 years.
Three years or so ago, I was asked what I thought of the group litigation landscape in England and Wales. Was there space in the market for a new breed of firm that would recruit well from traditional defendant firms, embrace technology and really take the fight to the well-resourced corporate defendants and their squadrons of lawyers from Magic and Silver Circle firms? I thought the answer was yes. At that time there were a limited number of focussed claimant-side firms, especially those representing the interests of consumers. There was the opportunity to apply technology to drive efficiency in the generation, aggregation and ongoing management of large groups of claimants. The need to embrace the collective redress mechanisms available and the necessary evil of litigation funding was becoming better appreciated by the Courts. And, most of all, there was no shortage of corporate wrongdoing, and therefore corporates that need to be brought to account. Many of the cases cited above are on behalf of groups of corporates (small, medium and large) or investment funds of different types, but many more are on behalf of consumers. It is the latter group who have historically been under-serviced by the legal profession.
In late 2019, we therefore set about establishing Keller Lenkner UK, a sister firm of Keller Lenkner LLC, a Chicago-based claimant side firm itself set up in early 2018 by the three founders of Gerchen Keller Capital (ironically the litigation fund originally behind the Merricks case). We would apply the same ethos – great people, heavy use of technology and a razor-sharp focus on the four ‘C’s – claimant, consumer, contingent and class. And by class, we meant any situation where individual clients could have their claims brought in a way to benefit from the economies of scale of so doing, be it group litigation, multi-claimant litigation, Competition Appeals Tribunal opt-out claims, CPR 19.6 actions or even a series of individual claims following the same path. We also agreed that a key ingredient to a successful case is helping the judge to see the facts from the claimant’s perspective. He or she has to see that the claimant is on the side of right and has a genuine grievance that needs to be remedied.
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In all of this, the technology is key. Gone are the days of pack out/pack back where adverts on the backs of buses led to call centre operatives taking claimant details before posting out hard copy sign-up documents and then chasing for responses. Instead, the modern aspiration is as digital a client journey as possible. Clients can be attracted through social media – Facebook, Instagram, Twitter, YouTube, TikTok – and then serviced by technology throughout. The new wave of group litigation firms does not measure client bases in the hundreds; it measures them in the thousands, tens of thousands or even hundreds of thousands.
So, what does our current caseload look like? Over the past 18 months or so, we have built a large roster of cases and represent over a hundred thousand individual clients. We are pursuing VW, Mercedes and Vauxhall on dieselgate claims. We are pursuing Uber for failing to recognise our clients as workers. We are pursuing Tesco for alleged failures to comply with equal pay legislation. British Airways for failing to protect its customers’ data. Numerous high street banks for profiting from secret commissions on the sale of payment protection insurance. We have many more cases in the pipeline.
The common theme is that these are all claims on behalf of individuals against large well-resourced corporate defendants who have (allegedly) committed systemic wrongdoing. And, we say, the litigation that we have, with other firms, progressed has made the difference. Would car manufacturers compensate the consumers they deceived voluntarily? Would Uber have agreed to treat its drivers as workers and issue holiday pay, national minimum wage and other entitlements? Would BA have compensated the victims of the data breach? Would the banks pay back to customers tens of billions of pounds in secret commissions? The answer is clear: absolutely not.
Clients can be attracted through social media – Facebook, Instagram, Twitter, YouTube, TikTok – and then serviced by technology throughout.
So, to all those who look upon the new wave of group litigation firms with an element of distaste, I say this. Yes, of course, we are here to make a profit. But firstly, that profit will not be as extreme as it might first appear when the risks of bringing these claims and the time cost of money is taken into account. And, more importantly, by flexing our muscles, embracing technology and levelling the playing field, we are providing a route to compensation for wronged consumers that previously didn’t exist. In fact, I would go one step further. This new threat of litigation that cannot be brushed to one side has a wider impact. It gives teeth to the laws that have been created to protect society. It brings corporates to account for their misdeeds. It provides a strong incentive to comply. Firms like mine, therefore, do not just therefore provide access to justice to individual consumers. They play a wider societal role in influencing corporate behaviour.
Andrew Nugent Smith, Managing Director
Keller Lenkner UK
Address: 81 Chancery Lane, London, WC2A 1DD
Tel: +44 (0)208 057 7480
Email: Andrew.nugentsmith@kellerlenkner.co.uk
Website: kellerlenkner.co.uk
Keller Lenkner UK is a client-side firm whose team boasts exceptional credentials and expertise in a range of commercial, employment and consumer litigation across England and Wales.
Andrew Nugent Smith is managing director at Keller Lenkner UK and is responsible for the firm’s success and growth nationwide. He is also a seasoned commercial litigator with a deep understanding of group litigation and litigation finance.
The UK government recently announced that the Divorce, Dissolution and Separation Act 2020 will come into force on 6 April 2022, introducing no-fault divorce in England and Wales. This new legislation will allow divorce to be granted without any requirement to place blame on the other party, thereby making divorce proceedings far less contentious.
England and Wales’ divorce laws are over half a century old. They require petitioners for divorce to rely on one of five grounds, namely: unreasonable behaviour, adultery, two years’ separation, five years’ separation or desertion. Needless to say, the process of the parties making allegations relating to unreasonable behaviour or adultery is often very fraught. The process therefore often leads to a further deterioration of relations, which then adversely impacts the chances of parties amicably agreeing on other matters such as a financial settlement and arrangements for their children. Once they have decided to separate, few couples want to wait until the two- or five-year time limits have elapsed to make an application as it can have an impact on financial matters and leave families in a state of uncertainty.
The introduction of no-fault divorce means that, from 6 April next year, couples will merely have to show that the relationship has irretrievably broken down. One or both parties will simply need to provide a statement to that effect, and the divorce process can then proceed. The possibility of a party contesting the divorce will be removed, which will put an end to lengthy and costly proceedings that have often only increased acrimony. Couples choosing to divorce will also have the opportunity to submit a joint application, enabling them to progress through the divorce process in a more constructive way.
England and Wales’ divorce laws are over half a century old.
The introduction of no-fault divorce has been in the offing for decades. As long ago as 1990, the Law Commission Report on the Ground for Divorce found that the UK’s current law on divorce was unjust, discriminatory, confusing, distorted the parties’ bargaining positions, increased acrimony and resulted in worse outcomes for children. The team which drafted that report was led by the redoubtable Lady Hale, who since remained a staunch advocate for the introduction of no-fault divorce in England and Wales.
In a 2018 address to family law practitioners, Lady Hale noted the dysfunction of the current laws, stating that “The contents of the petition [for divorce] can trigger or exacerbate family conflict entirely unnecessarily. Respondents are encouraged by their lawyers to ‘suck it up’ even though the allegations are unfair. There is no evidence at all that having to give a reason for the breakdown makes people think twice. The decision to divorce is not taken lightly, but this is not because of need to prove one of the five facts.”
Political opposition to the introduction of no-fault divorce was very limited as it passed through Parliament last year, with MPs voting in favour of the bill’s second reading by 231 to 16. Only a few politicians spoke against the legislation, such as Conservative peer Lord Farmer, who argued that “Making marriage easier to exit and sanitising divorce may make it less painful to the adults involved, but it is far more likely to weaken the institution of marriage than strengthen it.”
As long ago as 1990, the Law Commission Report on the Ground for Divorce found that the UK’s current law on divorce was unjust.
Lord Farmer also predicted that “It will render marriage more voluntaristic and like cohabitation with its assumption that a couple may only stay together whilst it works for both of them. Marriage on the other hand is a solemn vow, an explicit statement of commitment, ‘until death’. Saying it’s no-one’s fault when one or both parties fail to live up to the promises made empties those promises of all meaning.”
It remains to be seen whether the introduction of no-fault divorce will have any impact upon the overall divorce rates. It is true that some academic research has suggested that the introduction of no-fault divorce in other European states may have contributed to an increase in the overall divorce rates. However, Scotland introduced no-fault divorce in 2006, and it did not cause an increase in divorce rates there but appears to have substantially reduced the number of divorces alleging fault.
Office of National Statistics figures from 2016 found that in Scotland just 6% of divorces relied on the fault-based grounds, whereas in England and Wales the proportion was 56%. These figures suggest that the introduction of no-fault divorce can help to deconflict the process, resulting in substantially less conflict and litigation overall. This can only be to the benefit of the adults and any children affected by the divorce.
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Upon the passing of the legislation last year, Law Society president Simon Davis called the introduction of no-fault divorce “a landmark moment”, predicting that it will “change for the better the way couples separate.” Mr Davis went on to state that “For separating parents, it can be much harder to focus on the needs of their children when they have to prove a fault-based fact or remain married to their former partner for years. Introducing ‘no fault’ divorce will cut unnecessary conflict from the separation process – allowing couples to move on as amicably as possible and focus on what really matters.”
As well as changing the legal grounds for divorce, the new legislation will also usher in an overhaul of the divorce process in England and Wales. The new procedure dispenses with archaic language such as Decree Nisi and Decree Absolute, replacing these Latin terms with the phrases Conditional Order and Final Order. The changes also apply to the dissolution of civil partnerships.
However, while the divorce process is being simplified, the legislation does recognise that divorce is not a step to be taken lightly and it does not allow divorces to be concluded with unseemly haste. The legislation requires that a 20-week period of reflection is observed from when the divorce application is initially made before a Conditional Order can be made. This waiting period is designed to give parties the time to decide whether they do in fact want to proceed with the divorce. It also provides the parties with ample time to take legal advice on the best way to move forward for their families. The 6-week period between the Conditional Order and the Final Order will remain as it currently is.
As well as changing the legal grounds for divorce, the new legislation will also usher in an overhaul of the divorce process in England and Wales.
Introducing a 20-week waiting period at an early stage in proceedings is wise, as it gives the parties time to take stock, allowing them the ability to take a more holistic perspective on their situation and how best to progress matters. In my experience, both parties to divorce proceedings fare much better if they begin the process constructively, with the shared aim of reaching a mutually suitable arrangement with minimum conflict. By imposing a waiting period before the process begins in earnest, couples will have time to explore the various dispute resolution options that are available to them, such as mediation, hybrid mediation, collaborative law, arbitration and adjudication. These processes can help divorcing couples to agree the best way forward, or at least to minimise any areas of disagreement, thereby making the process far less contentious and emotionally taxing and saving costs.
The Divorce, Dissolution and Separation Act 2020 replaces long-outmoded legislation which too often exacerbated the already difficult situation of relationship breakdown. By eliminating the concept of blame from divorce proceedings, the new process provides a framework which should help to radically reduce unnecessary conflict and so help couples work together more positively towards separation.
Naomi Lelliott, Lawyer
Excello Law
Address: 110 Bishopsgate, London, EC2N 4AY
Tel: +44 (0)845 257 9449
Email: nlelliott@excellolaw.co.uk
Website: excellolaw.co.uk
Excello Law is a new-model law firm that holds 9 offices in the UK, with more than 120 lawyers operating nationally. Its staff support clients across the full range of business issues and legal services.
Naomi Lelliott is a specialist family lawyer, hybrid mediator and collaborative lawyer at Excello Law. She has particular expertise in guiding families constructively through the processes of divorce, separation or dissolution of civil partnerships.
In 1789 when the US Constitution was ratified, the word privacy was nowhere to be found. Rather, it was baked into the Third, Fourth, Fifth Amendments’ limitations on governmental intrusions into personal territorial, bodily, and communication privacy. In 1890, Samuel Warren and Louis Brandeis published “The Right to Privacy” in the Harvard Law Review, describing privacy as “the right to be let alone”. Elsewhere in the world, in 1948 the General Assembly of the United Nations proclaimed privacy as a human right, declaring: “no one shall be subjected to arbitrary interference with his privacy, family, home or correspondence”.
In contrast, the 1972 amendment to the California Constitution added an explicit guarantee of the right to privacy, stating: “All people are by nature free and independent and have inalienable rights. Among these are enjoying and defending life and liberty, acquiring, possessing, and protecting property, and pursuing and obtaining safety, happiness, and privacy”.
Regardless of the historical or societal origins, it is clear that a person’s right to privacy is universally viewed as a fundamental individual right and an essential element of personal freedom. In the New Millennium, the concept of personal privacy has expanded past unlawful governmental intrusions and grown more sensitive in this digital age. Technological advances have produced exponential growth in the volume and variety of personal data being generated, collected, stored, and analysed, which presents both promise and potential peril. It is true that the ability to harness and use data in positive ways drives innovation and brings beneficial technologies to society, but it also has created risk to privacy and freedom.
Regardless of the historical or societal origins, it is clear that a person’s right to privacy is universally viewed as a fundamental individual right and an essential element of personal freedom.
The unauthorised disclosure of personal information and loss of privacy can have devastating impacts ranging from financial fraud, identity theft, and unnecessary costs in personal time and finances to destruction of property, harassment, reputational damage, emotional distress, and physical harm. Therefore, a critical question is: can privacy laws coexist with enterprise growth innovation?
In the US, privacy laws have developed sector-specifically, with notable examples including the 1978 Family Educational Rights and Privacy Act (FERPA) protecting student education records; the 1996 Health Insurance Portability and Accountability Act (HIPAA) governing personal healthcare date (as augmented by the 1999 HIPAA Privacy Rule, the 2003 HIPAA Security Rule, and the 2010 Health Information Technology for Economic and Clinical Health Act (HITECH)), the 1998 Children’s Online Privacy Protection Act (COPPA) concerning children’s online privacy; and the 1999 Gramm-Leach-Bliley Act (GLBA) governing personal information as used by financial institutions. To date, however, there is no comprehensive federal data privacy or protection law.
The European Union (EU) led the world in 2018 with its General Data Protection regulation 2016/679 (“GDPR”), setting up a legal privacy framework for all 27 EU nations and countries in the European Economic Area (“EEA”). GDPR is now being modelled by some US States, such as California, Colorado, and to a lesser degree, Virginia; the first three US States to enact comprehensive personal data protection legislation. This article is meant to describe these laws’ statutory constructs in broad terms and examine differences, commonalities, and the protection gaps these laws create for US consumers and the confusion they place on business compliance efforts.
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The enacted States’ data privacy and protection laws (CA, CO, VA) all set a two-tiered jurisdictional threshold model for assessing applicability of these laws. In the first instance, the laws apply to all businesses that collect, process, or store personal information of each States’ residents. eCommerce has transformed consumer data into a core asset of all enterprises; big, small or in between.
Obviously this applicability standard makes such laws’ applicability very broad. However, to lessen the burdens on small business, the laws become more tailored and set screening mechanisms by judging enterprises by annual worldwide gross revenues ($25 million in CA, no revenue thresholds in CO or VA); or by volume of personal information (50,000 records in CA (as counted by residential consumers, households, or devices) and 100,000 records in CO and VA); or by a percentage of worldwide annual revenue derived from selling residents’ personal information (50% in CA, at least 25,000 records for CO residents, and 50% in VA involving at least 25,000 VA residents).
Generally, these States’ consumer privacy laws grant exclusions for personal data already protected by HIPAA, HITECH, GLBA, etc. and exempts certain categories of personal information such as public records and aggregated or deidentified personal data.
The enacted US States’ data protection laws all include key definitions and assign meanings to the backbone words and terms of consumer data protection legislation. These always include: “Consumer”, being the residents of the enacting State; “Covered Entity” or similar scoping term that sets the thresholds for the law’s reach; “Personal Data” or sometimes “Personal Information” which is generally described as information that is linked or reasonably linkable to an identified individual, and “Sensitive Personal Information” which adds special protections for categories of personal information such as biometric and genetic data, racial or ethnic origin, religious beliefs, mental or physical health conditions, sexual orientation and, sometimes, citizenship status. Each definitional difference matters because enterprises seeking to comply must first know each consumer’s home state and then also assess whether their data is included within such definitions.
The enacted US States’ data protection laws all include key definitions and assign meanings to the backbone words and terms of consumer data protection legislation.
These laws give their residents certain rights to control their personal information, including:
These consumer rights require enterprises to set up one (CO and VA) or two (CA) methods for making consumer requests, and duties to respond to such requests and implement processes to do so fairly, without charge or discrimination, and on a timely basis, which is usually 45 days at the most. Some States, such as Colorado, also require the business to have an internal appeal process for requests they refuse to process. Also, a Consumer’s exercise of these rights cannot face obstacles such as added fees, new account creation, or discrimination in pricing or service in the future.
Countervailing consumers’ data rights are controllers and processors duties. Broadly speaking, these duties include:
In addition to having the means to respond to consumer requests, businesses controlling personal information must also give consumers an accessible, clear, and meaningful privacy notice that includes a laundry list of required disclosures, such as the categories of personal data collected or processed and by whom; the reasons these categories of personal data are processed; Instructions on how consumers can exercise their data rights; the personal data that is shared, with whom, and why; and conspicuous notices about its “sale.” On 1 January, 2023 (the effective date for CO, VA, and the California Privacy Rights Act (“CPRA”)), enterprises must conduct and document annual “data protection assessments” to measure whether their data processing activities create a “heightened risk of harm” to consumers.
Each of CA, CO, and VA’s regulations impose a reasonable data security requirement for enterprises to establish, implement and maintain reasonable administrative, technical and physical data security practices to protect the confidentiality, integrity, and accessibility of personal data. In CA, under the CPRA, annual cybersecurity audits will also soon be required.
Without a private right of action (only available in California on a limited basis), these laws are to be enforced by each States’ Attorneys General statutorily empowered to write regulations and impose civil penalties. Said penalties are: $2,500 per violation ($7,500 for intentional or willful violations) in CA; $20,000 per violation in CO, and $7,500 per violation in VA.
As CA, CO, and VA’s consumer privacy laws illustrate, legislators view privacy as an individual fundamental right and an essential element of personal freedom worthy of protection. With 10 or more other States considering similar legislative protections for their citizens, it is obvious that privacy laws will soon dominant enterprise use of personal information. That said, the current US approach stands in stark contrast to GDPR, produces an expensive compliance matrix for all enterprises seeking to be good data stewards, creates an unlevel playing field for enterprises that can afford compliance and those that cannot, and differentiates residents with fundamental privacy rights and those without them.
Rita W Garry, Shareholder
Robbins, Solomon & Patt
Address: 180 N. La Salle Street, Suite 3300, Chicago, Illinois 60601
Tel: 312 456 0285
Email: rgarry@rsplaw.com
Website: rsplaw.com
RSP is an Illinois-based law firm that has represented clients across the Chicagoland and Midwest area for over 50 years, building strong relationships with small- and medium-sized businesses across a broad range of industries.
Rita W Garry is a seasoned corporate, transactional and data privacy attorney. Among her other work, she guides enterprise clients, both nationally and internationally, in designing and operationalising data management and protection law compliance programmes.
According to Modern Attorney, about 400,000 personal injury claims are filed each year. A majority of these are settled out of court, but a small number make their way to trial. If you are a personal injury attorney, it's important to make sure your client leaves the court properly compensated.
Regardless of the number of personal injury cases you take, expect a few to enter into trial. This often happens if the other party has a solid defence. To prepare you for this eventuality, you will need to focus on a few key skills that guarantee victory. Here are four of the most critical skills that will determine the outcome of your personal injury case:
Much of what you do as an attorney is to examine facts and evidence. Your client may not provide the full story of what really happened on the day they got injured, so you might as well investigate on your own. Building a solid case will depend on how well you connect different facts together and disprove any claims that the other side may lob against you. It also pays to interview people who were present at the time and place of the personal injury. It’s best to assume that you don’t have all the facts with you, so let your curiosity lead you to the right information.
To be a good personal injury lawyer, you will need to take a look at medical records and previous court decisions to support your case. It’s also important to know how certain injuries could lead to long-term hardship for your client. Try to get expert opinions and interview your client’s doctor. You can also read medical articles and reports of other similar cases. Taking time to do extensive research helps you find facts that could strengthen your case and maximise your client’s claims.
It takes experience and a good grasp of psychology to present facts in a clear, engaging, and logical manner. Legal experts have done well in helping victims of personal injury take home larger compensation packages through well-structured arguments. It’s also important to come across as empathetic. You will want to build rapport with your clients, and come up with opening and closing statements that favour proper compensation.
Given all the facts you need to build your client’s case, it’s important to stay organised. You have a lot on your plate each day and it’s easy to get lost in the details. Apart from relying on a paralegal for researching and compiling documents, you should also keep track of everything you need for your case using apps such as Evernote or Google Keep. Being tech-savvy goes a long way when it comes to preparing for a major legal battle.
If you haven’t experienced a personal injury case being challenged in court, you will need to prepare for one in case. Get started on honing these skills so you can win your first lawsuit.
While first being criticised for allegedly not having placed the protection of the environment at the heart of their strategic development decisions, companies are now accused of "greenwashing" consumers.
As such, on 28 January 2021, the European Commission published the result of its "Screening of websites for ‘greenwashing'". This screening, or so-called "sweep", was conducted on the grounds that "national consumer protection authorities had reason to believe that in 42% of cases the claims were exaggerated, false or deceptive". The sweep of 344 claims found that:
On its website, the European Commission states that greenwashing refers to "companies giving a false impression of their environmental impact or benefits".
In 2012, the French Agency for Ecological Transition published a specific anti-greenwashing guide. In this guide, greenwashing is defined as:
The report already highlighted the fact that the three main greenwashing mistakes made by companies are to make excessive promises, to lack sufficient scientific data to back up claims and to use confusing visuals which make consumers believe that the product has a positive impact on the environment, even when it does not.
On its website, the European Commission states that greenwashing refers to "companies giving a false impression of their environmental impact or benefits".
More recently, on 29 April 2020, the French professional regulatory authority for advertising (Autorité de Régulation Professionnelle de la Publicité – ARPP) published an update on its recommendations around fair trade, in force since 1 August 2020. This document defines "ecological argument" as "any claim, indication or presentation, in any form whatsoever, used primarily or incidentally, establishing a link between the brands, products, services or actions of an advertiser, and respect for the environment". While the recommendations firstly aim to prevent adverts which denigrate fair trade, they provide a number of rules around loyalty, clarity, truthfulness and proportionality of the messaging when referring to environment-related allegations. There is also a specific set of recommendations relating to logos and labels, raising awareness of the fact that they are also part of a company’s messaging.
In April 2021, the French Government introduced an increase of the existing fine for misleading commercial practices to up to 80% of the false promotional campaign cost when it comes to claims related to the environment. This is the new step of a brass-knuckle approach that was initiated through the so-called "duty of vigilance" law introduced in 2017 which requires large French companies and groups to establish a vigilance plan to prevent and detect violations – in France or abroad, by its subsidiaries and subcontractors – of human rights and the environment and to preserve the health and safety of the employees involved. A number of claims on the grounds of alleged breach of this duty of vigilance law have already been filed before French Courts.
Interestingly, and right before the above fine increase, in March 2021, the French Agency for Ecological Transition published a report designed to demonstrate why the claim "carbon neutral" should be banned and to push for a law to be enacted in this respect.
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At a European level, the new Sustainable Finance Disclosure Regulation (SFDR), which had its first provisions enter into force in March 2021, not only asks funds to disclose what they do to promote environmental, social and sustainability objectives, but to also provide an assessment of the main negative impacts their investments will have on such objectives. This is the way selected by the European legislator to try to find a balance in green marketing initiatives.
In the United States, on 3 March 2021, the SEC’s Division of Examinations announced that one of its annual examination priorities will be to review ESG funds’ advertising.
Client Earth claims to have filed the first such claim in 2019 against BP, and later against Chevron (which was also subject to a claim in the United States in March this year). In the United States, ExxonMobil, Wesson Oils, and Tyson Foods Inc. have each been targeted by greenwashing claims. Still in the United States, it is worth noting that securities litigation has also been launched by investors claiming that they purchased securities in reliance of false green marketing.
It appears that more is to come when looking at Client Earth's "Greenwashing Files" on its website, stating that "there may seem to be nothing wrong with companies highlighting ‘green’ projects. But these ads are a problem where they create a misleading impression of their overall business and its environmental harms". Companies such as Aramco, Chevron, Drax, Equinor, ExxonMobil, Total or Shell are mentioned.
ExxonMobil, Wesson Oils, and Tyson Foods Inc. have each been targeted by greenwashing claims.
To conclude, the law and rules around greenwashing are still works in progress. This consequently makes companies' lives complicated as they are being asked to promote their actions to preserve the environment while, when doing so, they are exposing themselves to criticism. One can realise that we are at a difficult stage where what is expected from companies is not yet regulated and experience shows that this is the recipe for a future wave of litigation.
Sylvie Gallage-Alwis, Partner
Signature Litigation
Address: 49/51 Avenue George V, 75008 Paris
Tel: +33 (0)1 70 75 58 00
Email: sylvie.gallage-alwis@signaturelitigation.com
Signature Litigation is an international law firm founded in 2012. Its senior lawyers bring years worth of experience to tackle multijurisdictional transactions and disputes, specialising in high value commercial litigation and arbitration.
Sylvie Gallage-Alwis became one of the founding partners of Signature Litigation’s Paris office after spending 10 years practicing at a major international law firm. She leads SL’s product liability practice and represents a variety of globally recognized manufacturers across a broad range of industries.
Market intelligence is invaluable to lawyers. They must understand the key trends in the industries they serve if they are to capitalise on the opportunities they offer. For those lawyers in European real estate, what current trends are impacting them that they should know about?
To understand such trends, as well as needs and challenges in European real estate, Drooms conducted research1 among professionals in the industry.
The findings of the study reveal that sustainability is currently the biggest area of development for the sector in Europe, with more than a third (36%) of our respondents identifying sustainably managed assets as the most likely significant future trend. Other key trends identified by respondents included digitisation (26%) and Artificial Intelligence (21%).
Sustainability appears to have climbed the agenda rapidly: a similar survey we conducted last September found that ‘more remote working’ was the biggest theme, also cited by 36%.
‘Sustainable’ investing, which integrates environmental and social goals, has been gathering momentum in the asset management industry for some years. But the growing worldwide consciousness of climate change and social issues accelerated during the pandemic in 2020.
‘Sustainable’ investing, which integrates environmental and social goals, has been gathering momentum in the asset management industry for some years.
In real estate asset management, sustainability is gaining prominence, not least because of the substantial impact buildings have on our environment and society. ESG factors are increasingly seen as an essential element of real estate corporate processes, including legal and tax decision-making.
Full integration of ESG requirements is still some way off being achieved in the real estate industry, however. If it is to be achieved, having the right data management tools will be crucial. Data and its evaluation are the basis for successful ESG management and digitisation is key to implementing it (the use of paperless processes helps the environment too).
Unfortunately, the real estate industry has lagged behind in implementing technology. According to our survey respondents, a lack of knowledge about existing technology (48%) and not understanding the true benefits of it (45%) are identified as the most common reasons for a delay in digitising the real estate industry.
However, the industry is clearly changing: 87% of our respondents say they are very likely in the next two years to raise their technology budget.
In terms of key hurdles, though, nearly all (97%) of our respondents recognise some degree of challenge posed to the workflows of real estate firms by searching, locating, and managing asset-related documentation. Only 3% see it as no challenge at all.
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Virtual data rooms (VDRs) go a long way towards meeting the technological needs of the real estate sector. They were launched around 20 years ago as online versions of the physical spaces in which confidential or sensitive information could be reviewed by authorised parties in a transaction. Today, they offer many new functionalities and provide secure online platforms for accessing confidential documents and managing business processes. They bring efficiency to real estate transactions and even enable management of assets throughout their life cycles.
According to our respondents, VDRs significantly optimise workflows: 16% see an extremely positive impact, 48% a positive impact and 32% a moderately positive one. Real estate professionals can combine all stages of the entire lifecycle asset management process onto a single platform and transparently using Drooms PORTFOLIO. It requires no additional technologies, which makes it a sustainable and highly efficient solution.
There is a pressing need for the real estate industry to digitise its processes further. This will certainly enhance the integration and management of ESG principles, but there are other areas highlighted by our research in which it will be crucial, such as AI, dealing with ‘big data’ and connecting systems and information, such as via application programming interfaces (APIs).
There is a pressing need for the real estate industry to digitise its processes further.
These issues cannot be addressed overnight, but real estate professionals – including lawyers – should take comfort in knowing that important first steps can be made by applying technologies that already exist, such as VDRs, which facilitate the immediate exchange of data and thus efficient workflows - no matter how large a portfolio is and how many thousands of users are involved.
Such tools will be invaluable going forwards to capitalise on all the real estate opportunities that become available, including both asset ownership and debt vehicles.
(1)Source: Survey conducted in March 2021 by Drooms. The panel of 225 real estate professionals covers both fund managers and investors across Europe.
Rosanna Woods, Managing Director UK
Drooms GmbH
Address: 11-12 Tokenhouse Yard, London, EC2R 7AS
Tel: (+44) 207 118 1100
Email: office-uk@drooms.com
Website: www.drooms.com
ESG has emerged as a top priority for governments, corporations, banks, funds and multilaterals. Why is that?
A range of factors, including: accelerating regulation in the EU and the anticipated disclosure requirements in the US; escalating shareholder activism; growing climate-related litigation (including the recent Shell decision in the Netherlands); increasing public commitments by corporations, financial institutions and governments to reduce carbon emissions; intensifying focus on supply chain sustainability and human rights, and surging media focus on all of the above.
These developments are causing major market changes that will produce winners and losers. Those that anticipate and adapt will thrive. Those that cannot will have a difficult time.
How are your clients managing these developments?
Some are managing this brilliantly. They staffed up, fully assessed their operations (including supply chains) and developed a workable approach for collecting ESG-related data. They have also begun developing strategies to adapt to evolving demands on their business, mitigate climate and ESG-related risk and exploit opportunities as they arise.
Others are struggling due to, among other things, inadequate staffing, limited support from senior management, a muddled mandate –and limited oversight– from their boards, and a tendency to react to headlines and “hot” trends rather than proceeding in a measured way based on a coherent strategy.
Those that anticipate and adapt will thrive. Those that cannot will have a difficult time.
March of this year saw the SEC seeking public comment on the development of a new framework for climate and ESG disclosures. How significant is this development for corporations in the US?
The public comments ranged widely. Some called for increased disclosure requirements backed by rigorous enforcement, while others argued for maintaining the status quo. SEC Chairman Gensler has since directed SEC staff to develop climate and ESG disclosure recommendations by fall 2021, building on other recent SEC steps in this area such as creating a Climate and ESG Task Force within the Division of Enforcement.
For issuers, these changes mean heightened focus on existing disclosure based on existing rules (including increased enforcement risk) and the increased likelihood that tougher disclosure rules will come into force over the next 2-3 years.
And what does this mean for the environment?
The immediate impacts will be limited, but increased transparency will impact behaviour at least to some degree. The ability to tell the right story on ESG will increasingly impact corporations’ ability to access capital.
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The SEC has attributed the need for a climate change disclosure update to growing investor and consumer demand for transparency over organisations’ climate change risks. How far has the appetite for this information grown over the past decade?
The demand for transparency has grown exponentially. Consumers increasingly insist on knowing the provenance of the products they purchase, use, and consume, from coffee beans to furniture to engagement rings), while corporate proxy ballots and board member elections are driven more and more by climate and other ESG concerns. SEC Commissioner Allison Herren Lee recently affirmed that because of this demand, the SEC has “begun to take critical steps toward a comprehensive ESG disclosure framework aimed at producing the consistent, comparable, and reliable data that investors need.”
The demand for transparency has grown exponentially.
Do you have any expectations for what the SEC’s proposed framework will look like or how it will affect business in the US?
It is too early to say with any certainty. Everything is on the table, including specific disclosures on:
Given where you sit as head of A&O’s Global Environmental Law Group, how does this all look for companies and financial institutions working across borders?
Across the board, my clients increasingly recognise that their ability to adapt to the challenges posed by climate change, economic inequality, racial injustice and similar issues is essential to their ability to survive, and to thrive. Their main worries are whether the EU, the US and others will harmonise disclosure rules, the potential for conflicting requirements, the availability of reliable, verifiable data, and the costs of compliance. As someone who has advised on ESG for my entire career, well before it was called “ESG,” it is exciting and gratifying to see these issues become a mainstream priority. But we are only in the first inning – we have a long way to go before the game is over.
Ken Rivlin, Partner
Allen & Overy
Address: 1221 Avenue of the Americas, New York, NY 10020
Tel: +1 212 610 6460
Email: ken.rivlin@allenovery.com
Website: allenovery.com
Allen & Overy is an international law firm with 44 worldwide offices and expertise in banking & finance, M&A, funds, litigation and IP, the firm has offered business solutions to its clients for nearly a century. In 2019, Allen & Overy advised on more transactional deals than any other law firm in the world.
Ken Rivlin is a long-term partner at Allen & Overy’s New York office. He founded the firm’s US Environmental Law Group and heads its International Environmental Law Group. He also co-heads the firm’s International Trade and Regulatory Law Group and founded its sanctions practice. He advises clients on a wide range of environmental, ESG and regulatory issues and is a frequent speaker on environmental and regulatory matters.
A brand is often the most valuable asset that a business owns, although it rarely appears on the balance sheet.
A business’s brand is really a trademark (which is identifiable and capable of being registered in respect of named goods or services) combined with the ‘goodwill’ that has been generated by that business. Goodwill is difficult to define, but put simply it is a combination of what a business says about itself and what others say about the business. It can be created by the exclusivity of goods, or how cheap they are, by luxury service or by a ‘no frills’ service. Gucci has goodwill, but so does Primark. In practice, goodwill is a crucial revenue driver because it draws consumers to a business, and this is what lends a brand value.
A brand is also one of only a few assets that can increase in value the longer it is used, provided that its owner invests in protection. Brand protection consists of the varied steps that should be taken to maintain the value of that asset. Practical steps would typically include registering your trademarks and paying subsequent renewal fees, taking action to prevent third parties from using a potentially conflicting trademark or seeking to take advantage of the associated goodwill, and ensuring that your trademarks are used in accordance with the registration. However, a key component of brand protection is ensuring that everyone in a business truly understands the importance of the brand to the success of that business.
A brand is often the most valuable asset that a business owns, although it rarely appears on the balance sheet.
In the UK, a strong legal framework provides for the protection of your brands; it provides for the registration of trademarks and recognises unregistered trademark rights. Unregistered trademark rights are acquired as a result of the use made of it in the marketplace, but they are uncertain in that a business cannot be sure that they exist before it needs to rely on them. If a business wants to assert unregistered rights, perhaps to prevent a third party from using a similar trademark, it must first demonstrate to the satisfaction of a court or tribunal that those rights exist. To do this, a business must present detailed evidence of use of the trademark over a long period of time that demonstrates that it has educated the public to recognise a particular sign as a trademark – as an indicator of the origin of your goods or services.
However, if a trademark is registered, its owner has already satisfied the technical requirements of ownership. A trademark registration is also incredibly powerful; it provides the owner with exclusive rights to use that trademark and the ability to stop third parties from using a conflicting trademark quickly and cost-effectively. Trademark registration provides businesses with the strongest platform from which to protect their brands, and whilst every case is different I very rarely recommend that a business should rely upon unregistered rights.
A trademark is the only form of registrable IP right that can be maintained for an indefinite period of time. Provided that its owner uses the trademark in the right way and pays the renewal fees, that registration will go on serving the business. The protection is not ‘time-limited’ like patents, designs or even copyright.
However, whilst a trademark registration is an effective tool in terms of protecting a brand, a business can boost that effectiveness by choosing a strong trademark. I spend a lot of time working with clients who are looking for new trademarks, whether it is a house mark or a product mark, and my message is always ‘pick a strong mark and you will rarely have to talk to me’! A ‘strong’ trademark is one that has a high level of inherently distinctive character. Avoid using a mark that is not descriptive of the relevant goods or services in any way. One should also avoid invented words, or words that are meaningless. The scope of protection for a distinctive trademark is broader than it is for a less distinct mark, even where there is a registration in place.
Whilst a trademark registration is an effective tool in terms of protecting a brand, a business can boost that effectiveness by choosing a strong trademark.
A Chartered trademark attorney has been specifically trained to a very high standard to work with businesses and organisations to create and protect trademarks and brands and to maintain their value. The life cycle of a brand can include the prosecution of applications to register, contentious proceedings, license agreements, transfer and everything in between. This can be a broad scope of closely inter-related work that requires specialist advice and guidance in order to ensure that the value of the brand is maintained now and in the future. In fact, an important part of our role is to ensure that the protection in place for trademarks and brands is future-proofed insofar as is possible; the applications that a business files today need to be capable of protecting that same business in 5 years’ time and potentially forming the basis of applications filed in other countries.
I also think that there is a real benefit to having an experienced external advisor on your team; a business’s relationship with its brand can be quite emotional – which is a very good thing - and sometimes a third party can act as a practical sounding board. This can be particularly relevant for family-owned businesses.
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Brand abuse can fall into two categories: harm from third parties, and self-inflicted harm.
As a business grows and becomes more successful, it is almost inevitable that competitors will want to take advantage of that success. The competitor may use similar trademarks in an attempt to benefit in the goodwill that another business has created; they may begin selling counterfeit goods either in the UK or abroad; they may file applications to register the same trademark in non-UK countries in an effort to hinder the success of a business.
Brand abuse can also be self-inflicted, believe it or not. For example, if a business allows its brand to become a generic term for goods or services, it may surrender its exclusive rights to use that trademark. Another key challenge is to ensure that the protection for a trademark matches growth, for instance into new commercial or territorial markets.
As a business grows and becomes more successful, it is almost inevitable that competitors will want to take advantage of that success.
As your business grows, it is likely to become more important to rely on your attorney to ensure the safe management of your brand portfolio, to monitor administrative deadlines and third-party activity. In respect to monitoring their competitors’ activity, I strongly recommend that businesses and organisations make sure that their attorneys put in place a ‘watch’ service. This is designed to monitor applications (in specified territories) to register trademarks similar to their own and provides information that allows the business to take proportionate action, as necessary.
It is critical that brand owners have good protection in place (by way of registration wherever possible) which is regularly reviewed to ensure that the protection is in line with your commercial growth. If the range of goods expands, if the business has plans to trade in a new country, if the brand is re-freshed, some consideration and possible additional protection is required.
I usually review my clients’ portfolios at least twice a year to capture any changes that have occurred in a timely manner. This process also includes a review of the manner in which my clients are using their trademarks in order to ensure that the are being used properly.
In 2017, academics at George Washington University published a study suggesting that trademark count rather than patent count is a better indicator of innovation. I remember reading the study and being genuinely delighted, because it represented such a shift in thinking. I think that over the last 5 years there has been a real increase in the understanding of how important a brand is to the success of a business, whereas previously that role had been undervalued.
Also, the scope of what can technically constitute a trademark has broadened considerably. Non-traditional trademarks could now include touch (‘tactile’ or ‘texture’) marks, motion marks and holograms and hashtags. In part, this recognises that real commercial value may lie in whatever it is that distinguished your trademark from your competitors’ trademarks, and should be capable of protection, but in some respects it is also due to recognition that trademarks must now be capable of operating in a digital world.
Non-traditional trademarks could now include touch (‘tactile’ or ‘texture’) marks, motion marks and holograms and hashtags.
The UK courts have sometimes struggled to apply the trademark decisions issued by the CJEU with enthusiasm and one of the effects of Brexit is that the UK courts have the opportunity to develop its own body of case law. Another, particularly pressing matter following the UK’s departure from the EU concerns the exhaustion of rights, which underpins parallel trade.
Changes to statutory protection are long overdue and perhaps now can be addressed. The current law was enacted in 1994 and whilst it has been ‘tweaked’ over time, it does not cater for the commercial world that exists today.
Rigel Moss McGrath, Partner
HGF
Address: 4th Floor, Merchant Exchange, 17-19 Whitworth Street West, Manchester, M1 5WG
Tel: +44 (0) 161 247 4900
Email: mcgrath@hgf.com
Website: hgf.com
HGF is one of Europe’s leading Intellectual Property firms, bringing together over 200 patent attorneys, trademark attorneys, design attorneys, IP solicitors and attorneys-at-law across 22 offices in seven European countries to provide a dynamic and complete IP solution.
Rigel Moss McGrath is a Chartered Trademark Attorney and Partner at HGF. She has practiced in the UK for almost 20 years and has particular experience in brand protection and contentious trademark proceedings.
