Intellectual Property Enterprise Court

IP-2022-000020 - [2023] EWHC 1303 (IPEC)

Fecha: 02-Jun-2023

Analysis

Analysis

47.

Given the close involvement of the First and Third Defendants in the creation of the Defendants’ products by S&S Swimwear, if I had concluded that the relevant products were infringing articles I would also have concluded that they both knew (and did not merely have reason to believe) they were such. It would not have been necessary to rely on the letter before action which the Claimant sent to these Defendants as providing such a reason to believe.

48.

The Claimant did not suggest that the Second Defendant knew that the products were infringing, which was realistic. The Second Defendant had no involvement with S&S Swimwear at all. Instead the Claimant relies on (a) the price and nature of the goods, and (b) the letter before action sent to the Second Defendant as providing a reason to believe they were infringing.

49.

I was not satisfied that there was anything about the price and nature of the goods which gave Mr Hassan reason to believe they were infringing, merely that they were cheap at less than £10.49. There was a suggestion that Mr Hassan should have done a Google search, but I do not see why a failure to do such a search equates to a “reason to believe” that the Defendants’ products were infringing.

50.

That leaves the letter before action. In many cases such a letter will be sufficient to fix a Defendant with “reason to believe” for the purposes of s 227, assuming that the relevant goods are in fact infringing. However that is not necessarily so. Sometimes a letter will have so little relevant detail that it will merely put a Defendant on notice that a claim is being made. The letter before action in this case fell into the latter category.

All it did was to allege that the Claimant is the owner of “the design right of BKS-001” and to identify the Defendant’s alleged infringing products by reference to a screenshot of the Defendants’ own eBay page.

It did not provide any of the Claimant’s BKS-001 design documents nor any particulars of the claim to ownership of any design right therein. Mr Hassan told me that he typed “BKS-001” into Google and he found biker jackets and bikers gloves, but not trousers; and that he could not find “KF Global” as a company on eBay either. He was not challenged on that evidence.

Nor did the letter before action include any screenshots or details of the Claimant’s eBay listing page beyond an assertion that this existed.

The letter did at least say that the Claimant had been selling its trousers since November 2015, but that statement was false because the Claimant was not incorporated until 2016.

51.

In this case, the Claimant did not properly clarify the nature of its claim until after the case management conference. Had it mattered, I would have held that the Second Defendant did not have reason to believe the goods were infringing before then. As it happens, the Second Defendant stopped selling the products complained of shortly after the case management conference in any event.

Additional damages

52.

Since there is no infringement this does not arise, and given that it is such a fact-sensitive question there is no point in considering it.