Glencairn Fails to Prevent Opponent being Represented by Leading IP lawyers, Virtuoso Legal
Glencairn IP Holdings Ltd & Anor v Product Specialities Inc (t/a Final Touch) & Anor  EWHC 1733 (IPEC) (05 July 2019)
On 5 July 2019, His Honour Judge Hacon, sitting in the Intellectual Enterprise Court, dismissed an application to injunct Virtuoso Legal from acting for Product Specialities Inc. in their defence to a registered design right infringement claim brought by Glencairn IP Holdings Ltd (“Glencairn”), who are the well-known Scottish glassware producer, and represented by Stobbs IP.
Link to the judgment can be found here.
In a rather uncommon application, Glencairn sought to prevent the Leeds team at Virtuoso Legal from acting for Glencairn’s opponent, Product Specialities Inc. on the basis that Virtuoso Legal’s London team had previously acted for Dartington Crystal on an earlier similar set of proceedings brought by Glencairn, which resulted in a confidential settlement.
In summary, Glencairn unsuccessfully argued that internal information barriers (often known as “Chinese Walls”) were not sufficient to protect the confidential settlement agreement.
This case sets new law on the issue of information barriers within law firms and demonstrates that litigants can’t choose their opponents.
Earlier Dartington Proceedings
In 2018, Virtuoso Legal’s IP Protect team, led by Philip Partington, successfully defended their client Dartington Crystal (Torrington) Ltd. (“Dartington”), who are a household name and supply the likes of John Lewis and TK Maxx, in a High Court interim injunction brought against them by Glencairn.
The Dartington Proceedings related to Glencairn’s Registered Design, known as the “Glencairn Glass”, which they had alleged was being infringed by Dartington’s new “Whisky Experience” design. Please see comparison below:
In 2018, 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.
Virtuoso Legal are a results-based firm and often achieve such astonishing results for their clients, so it comes as no surprise that opponents would rather we were not on the other side.
Shortly after Glencairn’s defeat in these proceedings, the company changed their own legal team from Geoff Steward of Macfarlanes to Stobbs IP.
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. https://www.giftoftheyear.co.uk/ and Dartington continue to go from strength to strength.
Product Specialities Inc.
In late 2018, Product Specialities Inc found itself also being aggressively pursued by Glencairn in relation to their Durashield Whiskey Tasting Glass. Please see comparison below:
Product Specialities were aware that Dartington had been engaged with Glencairn in relation to a similar issue, and were directed to Philip Partington, director and head of IP Protect at Virtuoso Legal’s London office to fight their corner.
Virtuoso Legal London’s IP Protect team, led by Philip Partington, represented Product Specialities until the conclusion of the Dartington mediation settlement.
At this point an information barrier was set up by Philip and Product Specialties’ defence was passed to the safe hands of Virtuoso Legal’s Leeds team -headed by the highly experienced Principal of the firm, Liz Ward.
The Unusual Application by Glencairn
In March 2019, Glencairn objected to Product Specialities being represented by Virtuoso Legal’s Leeds team on the basis that a relatively small boutique firm would not be able act for Product Specialities since it knew the confidential settlement terms Glencairn had entered into with Dartington.
Despite reassurances from Virtuoso Legal that an information barrier had been put in place, as is common practice in law firms, and that the relevant Virtuoso Legal Leeds team were not aware of the earlier settlement terms, Glencairn nevertheless sought an injunction to prevent Virtuoso Legal from acting for Product Specialities.
On 5 July 2019, His Honour Judge Hacon dismissed the application the following basis:
While “the Dartington team at Virtuoso is aware of the contents of the Settlement Agreement and that at least some of this is confidential to Glencairn,” Virtuoso Legal has in place an effective barrier and, “[t]he likelihood of any confidential information at all being passed to Final Touch is very low.”
In addition, “any prejudice caused to Glencairn would only be significant if the entirety of the Settlement Agreement were disclosed and I believe that to be extremely unlikely, to the point of being fanciful.”
His Honour Judge Hacon also stated that: “Virtuoso were instructed for good reason and that a good working relationship has developed between Final Touch [Product Specialities] and the team instructed. If Virtuoso could not act for Final Touch, Final Touch would be put to the cost of instructing new solicitors afresh with whom there may or may not develop a similarly good working relationship.”
As such, Glencairn’s application was dismissed.
On this remarkable set of proceedings, Philip Partington, Director and head of the London Office of Virtuoso Legal said:
This is an interesting decision for lawyers and also business across the UK, as it illustrates the importance of confidential information and the need to set up information barriers in certain circumstances. As solicitors, we advise upon and deal with confidential information day-in-day-out and are eminently familiar with basic standards concerning the same within legal practice.
As such, to learn that Glencairn have sought bring this ill-advised application is concerning, but not surprising given their aggressive tactics during the litigation in which we were involved.
Now that this decision is public, it gives guidance for others in a similar position. However, it also serves as a stark reminder that litigants can choose their own lawyers, but not those of their opponents.”Philip Partington
To speak to Philip Partington or any member of our IP Protect team, call:
0207 412 8372