Navigating Legal Pitfalls: Your Questions Answered on Trademarks, Virtual Events, and Part-Time Worker Entitlements

Welcome to our weekly LinkedIn newsletter! This week, we cover important legal topics like trademark infringement, terms and conditions for virtual event order bumps, and bank holiday entitlements for part-time employees. Keep reading to learn more!

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What should I do if a business that is infringing my registered trademark doesn’t reply to my cease and desist letter?

Your registered trademark gives you the legal right to a monopoly on your mark (whether that be a name, logo, strapline or something else) in the class that is registered in and for the activities that you listed in the specification.

If another organisation uses an identical mark in relation to goods or services which are identical with those for which it is registered, then this is an infringement.

Equally if an organisation uses a mark that is identical with the trademark and is used in relation to goods or services similar to those for which the trade mark is registered, or the mark is similar to the trade mark and is used in relation to goods or services identical with or similar to those for which the trade mark is registered and there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the trademark, then this is also an infringement.

Finally, if an organisation uses a mark that is identical with or similar to the trade mark where the trade mark has a reputation in the UK and the use of the sign takes unfair advantage of, or is detrimental to, the distinctive character or the reputation of the trade mark, this is also an infringement. This applies irrespective of whether the goods and services in relation to which the sign is used are identical with, similar to or not similar to those for which the trade mark is registered.

If you discover that your registered trademark is being infringed, the first thing to do is gather evidence and take screenshots or photos of the infringement. Then send an informal email to the infringer alerting them to the fact that they have infringed your trademark and providing them with a period of time in which to cease using it and to confirm this to you in writing together with a declaration that they won’t use it in the future.

If the organisation infringing your trademark is a small business, you might find that they don’t understand the law about registered trademarks. Some small businesses may simply respond that they don’t think there is any risk of confusion and that they intend to keep using the infringing mark. Hence, you might also want to explain to them at this point that if the matter went to court, any infringement of your registered trademark would be ordered to cease and they would be liable to pay for your costs (because it should not have been necessary to have taken them to court).

If the informal email fails to elicit the confirmation, then you would send a more formal cease and desist letter. There is a template for this in my Small Business Legal Academy. You need to be sure that a) you own the registered trademark and b) there has been an infringement before you send the cease and desist letter; otherwise the third party could bring a claim against you for unjustified threats.

Then if the infringer fails to respond within your stated timescales to the cease and desist letter, the next step would be to send a letter before action. This is the final step before filing a court claim. It may carry more weight to have a lawyer who specialises in intellectual property litigation to send the letter before action for you. I imagine that it would cost anywhere between ￡500 and ￡1000 plus VAT to have such a letter before action drafted and sent on your behalf.

If I sell several services, can I have one set of composite terms of business or do I need to have one set for each service I offer?

Legally, it is entirely possible to do this, but you should think about the customer experience in doing so.

If you have services that are very distinct and customers are only likely to buy one of those services, then it might not be a good idea to combine your terms, as the customer will need to read through a lot that isn’t relevant to them. However, if a good number of your customers consume two or more of your services, then it would potentially make sense to combine the terms.

It is also worth considering the customer journey. Are there some services that you provide where you have a telephone conversation with the prospect or an email exchange with them and then send them an invoice? Whereas with other services, there is an online sales page with payment taken upfront online? In that case, it would make sense to have terms for the services where you invoice and separate terms for the services where payment is taken online.

If you are dealing with consumers for some services and businesses for other services, then it would be neater to have separate terms for the services that you offer to consumers and separate terms for the services that you offer to businesses, as the terms for consumers will need to contain all of the require consumer protection terms such as the 14 day cooling off period. If however you sell the same services to a mixture of consumers and businesses, then you can use the same terms and would simply say “if you are purchasing the services as a consumer (as defined in the Consumer Contracts (Information, Cancellation and Additional Charges) Regulations 2013, namely that you are purchasing the services wholly or mainly for purposes outside of a business, trade, craft of profession, then the following applies…” Then you would go on to include the cancellation clauses, for example. For business customers you would add a line to say “if you are not purchasing the services as a consumer (as defined above), then the above cancellation clauses do not apply.”

I have a part-time employee who works Tuesdays, Wednesdays and Thursdays and have been told that I need to pro rata Bank Holidays for them. Is that correct?

Assuming that the annual holiday entitlement is 5.6 weeks plus bank holidays, the employee who does not work on Mondays will be disadvantaged if they are only permitted paid time off for bank holidays that fall on days when they would normally work.

This raises a potential issue under the Part-time Workers (Prevention of Less Favourable Treatment) Regulations 2000 (SI 2000/1551*)*, which entitles part-time workers to be treated equally with comparable full-time colleagues. However, the law is still unclear on whether less favourable treatment in this situation can be said to be on the grounds of part-time status (see below).

The simplest way to achieve equality in this situation is to give both part-time workers a pro-rated entitlement to all public holidays. For example, assuming the employees are working three full days each week, they would each be entitled to three-fifths of the normal bank holiday entitlement for a full-time employee, which amounts to 4.8 days.

While a pro rata apportionment of bank holidays presents the least risky course of action and is undoubtedly good practice, it is not necessarily the case that a policy of only paying for bank holidays that are normal working days will be unlawful. The normal working days approach will always result in a part-time worker who does not work Mondays being treated less favourably than a full-time employee who does, but this is not sufficient in itself to establish liability.

In one case on this point, the employer took a normal working hours approach to paid bank holidays. A tribunal held that the claimant (who worked part-time Wednesday to Friday) was treated less favourably than his chosen full-time comparator (who worked Monday to Friday) as his entitlement to paid bank holidays was less than he should have received applying the pro rata principle.

However, the Tribunal accepted that the reason for this was not the claimant's part-time status, but the fact that he did not work Mondays. The business operated seven days a week, and both full-time and part-time workers could work patterns which did not include Mondays. Indeed, the claimant's line manager had in the past worked full-time on Tuesdays to Saturdays and had lost out on paid bank holidays as a result.

On appeal, the Appeal Tribunal held that the tribunal had been entitled to reach that decision on the reason for the less favourable treatment and acknowledged that the employer's policy disadvantaged more part-time workers than full-time workers. However, the PTW Regulations give no protection from indirect discrimination and therefore the claimant's case failed.

The case was appealed again and the Court of Session agreed with the Appeal Tribunal. In particular, when deciding the "reason why" issue, the tribunal was entitled to consider the position of a hypothetical comparator. There was nothing wrong with the tribunal asking itself what would have happened if there had, at that time, been a full-time employee in the same team who worked Tuesdays to Saturdays (that is, not Mondays), and it was open to the tribunal to conclude on the evidence before it that such an employee would have been treated the same as the claimant with respect to statutory holidays falling on Mondays.

The Court confirmed the approach that part-time status must be the sole reason for the treatment, rather than one of a number of different reasons.

The full impact of this case on the rights of part-time workers to pro rata paid bank holidays has yet to be determined. Following more recent decisions, it is likely that it will be confined to cases in which the employer's business is operational seven days a week with both full-time and part-time workers on a variety of patterns that may or may not include Mondays. This in itself would encompass a great many sectors including retail, hospitality, healthcare and transport.

Employers who operate a Monday-to-Friday week (at least in England and Wales) will find it more difficult to avoid a finding of less favourable treatment by arguing that the reason for the treatment is not (or at any rate, is not solely) the part-time status of the affected workers, but the fact that they do not work on Mondays. Such employers are likely to have to provide pro rata holiday entitlement or seek to rely on objective justification.

And that's it for this week's newsletter!

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