The recent Sheriff Court case of Jepuson UK Limited v E&A International Limited, serves as a helpful reminder that the terms of any interim interdict sought, particularly in intellectual property cases, must be carefully crafted to achieve the protection desired.
While the matter principally at issue was the scope of the pursuer’s interim order, the basis of that order was alleged infringement of the design right under the Copyright Designs and Patents Act 1988 (“CDPA”), which is often referred to as the ‘unregistered design right’. Cases involving such rights do not appear regularly in the Scottish courts and the case raises some interesting questions about how unregistered design rights might be applied to be used most effectively.
Background
On 31 August 2023, the court granted the pursuer, online fashion retailer Jepuson UK Limited (“Jepuson”), an interim interdict against the defender, E&A International (“E&A”), a supplier of Scottish-themed souvenirs, from infringing on the pursuer’s unregistered design right for a satchel bag. One of the features of the Jepuson bag was a swatch of Harris Tweed® on the front flap. E&A appears to have produced a bag which closely resembled Jepuson’s design, which also featured a swatch of Harris Tweed® on the front flap. Following grant of the interim orders, E&A withdrew the bag from circulation and the parties reached a substantial resolution of their dispute. The only item remaining was an alleged breach of interdict by E&A, who, after the orders were granted, offered for sale an altered version of their original bag, changing the fabric on the front from Harris Tweed® to a swatch of patterned lambswool.
The dispute
The terms of the interdict granted to Jepuson contained a detailed specification of the design protected, which included reference to the Harris Tweed® swatch. The point in dispute was whether this new iteration of the bag fell within the scope of the interdict and was therefore in breach.
Jepuson accepted that the fabric swatch used in the second iteration of the bag was not Harris Tweed®. They claimed that despite this, the patterned lambswool fabric did not take E&A far away enough from the protected product and was therefore in breach of the interdict. E&A claimed that the fundamental protected element of the interdict was the Harris Tweed®, which both parties agreed was not used in the second design.
Decision
The court accepted E&A’s argument, emphasising the importance of the specificity of the interdict. Following Kelso School Board v Hunter, Sheriff Campbell KC found that it was Jepuson’s responsibility as pursuer to ensure that the terms of the order are “so precise and clear that the defender is left in no doubt what he is forbidden to do”. The court concluded that because the interdict was “clearly directed against the use of Harris Tweed”, the second iteration of the bag did not breach the interdict.
Comment
While interim interdict is a key tool in protecting intellectual property rights, there are inherent risks to the pursuer if the order is granted. If the terms are too wide or too onerous, they risk a claim for wrongful interdict, while if the terms are too specific, they run the risk of limiting the effectiveness of the order.
While the judgment does not provide the full specifics of the underlying infringement claim, it is notable from the judgement that there was significant time devoted to the difference in textures and overall impression between Harris Tweed® and lambswool. The reference to the use of Harris Tweed® was interesting for two reasons. First, while Harris Tweed® is a cloth which has certain characteristics and is made in a certain location with specified methods, visually it can vary in colour from bright pink to black and white checks. Secondly, while s.213 of the CDPA protects the ‘shape and configuration’ of a design, it specifically excludes ‘surface decoration’ from that protection. Mere colourways on clothing are an established example of such surface decoration (Lambretta v Teddy Smith [2004] EWCA Civ 886), as are textures which do not have any functional effect and are merely decorative (Dyson v Qualtex [2006] EWCA Civ 166). On that basis, it seems likely that the terms of the interdict could not have been deemed too wide or prohibitive if the reference to Harris Tweed® had been omitted.
If the surface decoration of a particular article is deemed to be key to the design, then one option to prospective designers is to have their design registered under the Registered Designs Act 1949, which protects the ‘textures’, ‘materials’ and ‘ornamentation’ of a product.
For more information on the historic of protection of Harris Tweed, see Colin Hulme’s article in Scottish Legal News.
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