In a rather rare application, Scottish glass producer Glencairn sought to prevent the Leeds team at IP law specialist Virtuoso Legal from acting for Glencairn’s opponent, Canadian-based Product Specialities Inc. The basis for the case was that the Virtuoso Legal London team had previously acted for Dartington Crystal on an earlier similar set of proceedings, also brought by Glencairn, which resulted in a confidential settlement.
Sitting in the Intellectual Enterprise Court in London, his Honour Judge Hacon, 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”), represented by Stobbs IP.
A link to the judgment can be found here.
In late 2018, Product Specialities Inc found itself being aggressively pursued by Glencairn in relation to their Durashield Whiskey Tasting Glass. The comparison designs are below:
Glenciarn’s UK Registered Design
The Durashield Whiskey Tasting Glass
In March 2019, Glencairn objected to Product Specialities Inc being represented by the Virtuoso Legal Leeds team on the basis that a relatively small specialist firm would not be able to act for Product Specialities Inc since another team within the firm reached confidential settlement terms Glencairn entered into with Dartington.
On 5 July 2019, His Honour Judge Hacon dismissed the application on 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 [and the team administering the Product Specialities matter] 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.”
Philip Partington, Director and Head of IP Protect at Virtuoso Legal said, “This decision illustrates the importance of effective so-called ‘Chinese Walls’. It cannot be assumed that a small firm would be automatically less likely to be able to administer an information barrier. It shows that parties can choose their own lawyers but not those of their opponents.”
Elizabeth Ward, the Principal at Virtuoso Legal said, “What’s happened here is the ultimate peer review. One of our client’s opponents has gone to desperate measures to stop us from representing Product Specialities Inc, on the ‘fanciful’ grounds that we were unable to keep their previous case private. They’ve clearly shot themselves in the foot – and it is now all over the legal press.
“It’s never been easier to install ‘Chinese Walls’ because of the secure electronic document system we have where everything is under a digital lock and key, making it possible to safely block access to documents, unlike the days when we relied on a paper system.
“Client are seeking us out because we get results. We were introduced to Dartington Crystal through a QC. The makers of the Durashield whiskey tasting glasses, Product Specialities Inc, were aware of our work for Dartington Crystal and approached us.
“We’ve had many messages of support from industry contacts who have been both mildly amused with the case and also relieved with the judge’s ruling because if it had gone the other way, it would have negatively impacted the business practices of those within the professional services industry as a whole.
“Essentially, this is about trust and we thank Judge Hacon for his clear direction on this matter which is good news for other firms like ourselves who attract clients due to specialist technical knowledge and expertise, together with experience within specific industry sectors”.