Company that threatened cyclist with legal action over close pass video makes more “unjustified” threats against barrister

A company that threatened to sue a cyclist for using its trademark without permission, after the cyclist posted a video of a close pass by one of its employees driving a company-branded van – for which the motorist was prosecuted by police – has now launched more “unjustified” threats against a barrister who criticised the business’s actions.

Daniel ShenSmith, who posts legal advice on his BlackBeltBarrister YouTube channel, says the company has made “veiled threats” concerning his conduct as a barrister in a letter, and called on the lawyer to remove a video in which he criticised the motorist’s driving and the company’s “ridiculous” claim that the cyclist’s close pass clip breached trademark infringement.

The firm also said the video spawned several “unkind” and “nasty” comments about the company and its staff, which the barrister claimed are “nothing to do with me”.

Earlier this month, we reported that a London-based cyclist uploaded a close pass video to their Chapona Bicyclette YouTube channel, before forwarding a copy to Cornices Centre, the company whose van driver passed him on Chelsea Embankment in November.

However, instead of an expected apology and notice of “some form of disciplinary action” against their driver, who has since been prosecuted by police for the close pass, the road.cc reader instead received a lengthy email from a company director claiming that “unauthorised use” of their ‘CORNICES CENTRE®’ trademark was “confusing our customers, negatively impacting our brand reputation, and potentially harming our sales and the exclusivity of our trademark”.

The company also requested the prompt removal of its name from the “video content and descriptions”, and said that, if their demands were unaddressed or refused, it would be “prepared to take legal action if necessary” and would “seek legal redress and claim any related expenses, including lost sales”.

It argued company advertisement on vehicles does “not imply our responsibility for incidents involving those mediums” and accused the road.cc reader of damaging their “reputation by misleading the public in your videos by focusing on our company rather than the drivers featured”.

> Cyclist threatened with legal action for posting video of close pass by driver in company-branded van

The footage and subsequent email from the company was the subject of a video by YouTube barrister ShenSmith, in which he suggested, while stressing the video is not legal advice and for educational purposes only, that “infringing use is when you are using someone else’s trademark to market goods or services”, highlighting Section 10 of the Trade Marks Act 1994 which defines infringement.

“The point is, it must be used in the course of business to market goods or services,” BlackBeltBarrister said. “Unless Chapona Bicyclette is somehow marketing goods or services using this company’s name, then he is not going to be infringing the trademark by the definition in the Trade Marks Act.”

Since that initial trademark infringement claim, which has been withdrawn, the cyclist says Cornices Centre has now issued threats of legal action for alleged harassment, libel, a data protection infringement, the publication of their client’s name (which the cyclist notes is publicly available on Companies House), and an injunction.

The cyclist told road.cc today that, despite withdrawing their initial complaint, the company says it will only refrain from “taking matters further” if the video is taken down. The road.cc reader also says that Cornices Centre forwarded a letter sent to the motorist by the police, which included a conditional offer of points or a driving course as punishment for the close pass.

> Here's what to do if you capture a near miss, close pass or collision on camera while cycling

In a video posted on his YouTube channel this weekend, ShenSmith also revealed that the company has threatened him over his response to their initial complaint, calling on him to remove the video in which he criticises both the driver’s actions and the firm’s trademark infringement claim, a move he describes as “out of order” and designed to quell public criticism of the company.

“It’s not trademark infringement because he wasn’t marketing goods or services, it just happened on the side of the van,” ShenSmith says in his new video, which was posted on Saturday.

“If you don’t want to be caught on videos that go public, don’t put it on the side of the van, it’s that simple. In fact, making threats of trademark infringement might amount to unjustified threats,” he continued, before noting on social media that the company had conceded that their claim of trademark infringement against the cyclist was “misconceived”.

“Then I receive a letter threatening to sue me,” he said in the video. “I think, at least, it doesn’t really set out what the claim is. But what it does do is make direct threats against me.”

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The barrister shared a section of the letter sent to him by the company, which read: “What is egregious here is that you reproduced Chapona’s blog in its entirety with replies. Have you enquired of the Bar Council whether you have acted within the Barristers’ professional rules of conduct?”

“That is a veiled threat against me for misconduct as a barrister. That’s out of order. In fact, that in itself is misconduct. Lawyers shouldn’t be threatening other lawyers,” ShenSmith argued in response to the letter’s claims, which he said he will report to the Solicitors Regulation Authority (SRA).

“I’m not breaking any rules by saying this is poor behaviour,” he continued. “This veiled threat doesn’t make any underlying claim against me. But it does say that there were lots of unkind, threatening, and generally bad comments made to and about the company and anyone within the company, either underneath my video or the other video.

“Just to be clear – I don’t condone that. But those comments are nothing to do with me. I’m not making those comments. If they have a grievance with the people making those comments, they take it up with them.”

The barrister added that the company’s legal action amounts to what the SRA describes as a ‘Strategic lawsuit against public participation’ (or SLAPP), which intends to discourage public criticism of the claimant.

“I’m not going to take the video down, because there is no legal basis at all that would require me to take it down. My video was of public interest, because it was a driver driving badly, who was caught by a cyclist, and ultimately prosecuted. I was giving my opinion on the driving in the video as a barrister and it turns out I was right, as he was prosecuted.

“Facts are facts, the roads are safer, and the general public are now more informed and less likely to be bullied.”