“Spanish Torpedo”, Defending Glassware Designer Against Interim Injunction for Alleged Design Right Infringement
Glencairn IP Holdings Limited v. Dartington Crystal (Torrington) Limited
Glencairn IP Holdings Limited v. Dartington Crystal (Torrington) Limited.
For manufacturers of category-leading designs, the threat of having a popular line removed from sale (let alone stock destroyed) is enough to elicit sleepless nights. It is crucial to be able to protect such designs from encroachment from competitors and defend them should the same competitors seek to stop you using them.
In early 2018, Virtuoso Legal’s client, Dartington Crystal (Torrington) Ltd (“Dartington”), who are the UK’s household name for luxury glassware and supply the likes of John Lewis and TK Maxx, faced a High Court interim injunction brought against them by Glencairn IP Holdings Ltd (“Glencairn”), the well-known Scottish whisky producers.
The proceedings related to Glencairn’s UK Registered Design, known as the “Glencairn Glass”, which they had alleged was being infringed by Dartington’s new “Whisky Experience” design.
Whether or not Glencairn’s UK Registered Design was infringed by Dartington’s new “Whisky Experience” design would have required Glencairn to prove that they created the same “overall impression”. The “look and feel” of the shape and contours of the design is vital in these cases.
If Glencairn were to have been successful in their interim injunction application, Dartington would have been required to immediately remove, pending trial, all of its new Whisky Experience design glasses from shelves of its distributors.
Whether you’re thinking of issuing an interim injunction against a suspected infringer, or you find yourself in the position where an interim injunction has been issued against you, they are highly risky and require a high degree of expertise to effectively bring or successfully defend. If it is not handled correctly, it can result in incredibly serious financial and legal exposure.
If an injunction is brought against a business and, through the process of litigation they are held not to be infringing, a claimant can then be found financially liable for their loss of trade a defendant experiences because of having an injunction issued against them.
His Honour Judge Hacon, sitting in the High Court, heard Glencairn’s request for an interim injunction and considered the usual three criteria for Glencairn to overcome, but concluded that, if Glencairn was denied the interim injunction but later won at trial, any damage caused by any infringement could easily be recovered from a defendant as reputable as Dartington.
This was balanced against the harm it would have caused Dartington to remove items of stock from its distributors’ shelves. The judge also ruled that the balance of convenience (i.e. the status quo) was in favour of rejecting Glencairn’s’ sought injunction.
Given Dartington had successfully defended Glencairn’s interim injunction application, Virtuoso Legal obtained an order that Glencairn pay £26,000 of Dartington’s legal costs. Glencairn had itself already spent in excess of £80,000 on its own legal team in its unsuccessful attempt to injunct Dartington.
While the parties continued with this dispute within the IPEC, the parties settled proceedings on a confidential basis just before Christmas 2018.
Since then, the Dartington Whisky Experience glass went on to win “Gift of the Year” 2019 in the under £10 category and Dartington continues to go from strength to strength.