In a recent unreported sheriff court decision, Jepson UK limited v E&A Jepuson UK Ltd v E&A International Ltd [Sh Ct (Edinburgh)] 23.07.24 (Unreported) - [2024] SC EDIN 35, the court considered whether there had been an infringement of an interim interdict in relation to an unregistered design right.
The Facts
Jepson UK Limited ("Jepson") had previously obtained an interim interdict (a Scottish injunction granted on a temporary basis) against E&A International Limited ("E&A"), to prevent E&A from infringing Jepson's unregistered design right in a mini satchel square shaped bag, which contained a swatch of Harris Tweed cloth on its forward-facing flap.
It was alleged by Jepson that E&A had breached that order by seeking to sell products which contravened the specific terms of the interim interdict, which set out detailed specifications of design features which could not be used by E&A.
Unregistered design rights are automatically conferred on designs that are original and possess individual character. Unlike registered designs, which offer stronger protection, unregistered designs are often harder to enforce, making the role of an interim interdict crucial in preventing potential infringers from copying a design before a final decision is made.
What is breach of interim interdict?
A remedy of interim interdict can be sought in order to prevent the opposing party from engaging in any alleged infringing activity until the outcome of the parties' dispute is determined by a final court order or until parties enter into a settlement agreement.
The court summarised the test which must be met for a breach of interim interdict to be established. It was held that the following factors had to be demonstrated:
- The defender’s knowledge of the interdict;
- Proof of the acts said to constitute breach of interdict;
- Whether those acts do in fact fall within the scope of the prohibition in the interdict; and
- The presence of mens rea, or wilful conduct.
Ultimately the main point for consideration by the court was (3) - namely whether the products fell within the scope of the interdict.
The parties' arguments
The court then considered whether E&A's products met the test for infringement of Jepson's unregistered design right in terms of section 226(1) of the Copyright Patents and Design Act 1988. The question was whether the disputed products were “exactly or substantially” similar to the design.
Jepson argued that the copy product was substantially the same, with the only difference being the replacement of Harris Tweed with patterned lambswool, and that the matter was one of overall impression.
E&A relied upon the fact that the order for interim interdict made specific reference to the use of 'Harris Tweed'. It was submitted that their products used lambswool and not Harris Tweed and that the texture of these two fabrics was distinctly different. Moreover, it was pointed out that Harris Tweed is specifically protected by the Harris Tweed Act 1993 and requires a specific label to be attached to the item. E&A argued that the reference to Harris Tweed "was a fundamental element if not the fundamental element of the interdict."
The court's decision
The court held that it was important to identify precisely which aspects of shape or configuration were relied upon to establish breach.
The court acknowledged that the products were similar in terms of their overall dimensions, layout and the general dimensions of the straps but that the prominence of the fabric covering the triangular flap was of particular importance. It was held that the terms of the interim interdict were very clearly directed against the use of Harris Tweed on the fabric covering specifically and that the interdict could not be interpreted as to read in the words “or any similarly patterned woollen cloth” after the words “Harris Tweed”. Therefore, it was held that there had been no breach of interim interdict.
Key takeaways
Interim interdict is a key weapon in an IP infringement dispute, often leading to a swift settlement. In Scotland, if a caveat is not lodged on behalf of the alleged infringer, an interim interdict can be obtained without advance notice. This is one of the key advantages of litigating IP disputes in Scotland, and you can find more information on this in our handy guide on protecting your IP in Scotland.
This case highlights the complexities surrounding the protection of unregistered designs, particularly where interim interdicts are concerned. Although unregistered designs provide a degree of protection, the specificity of what is protected can often make enforcement challenging. Careful drafting of interdicts is therefore essential to ensure that the scope of protection is as clear and comprehensive as possible.
If you would like to speak to one of our experts about interim interdict or your organisation's brand protection strategy more generally, please get in touch with a member of the IP, Technology & Data team or your usual contact at Brodies.
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