Case Nos: IP-2023-000039 and IP-2023-000132 - [2024] EWHC 2889 (IPEC)

The related actions involve, on one side, I-Smart Developments Limited (‘ISD’), I-Smart Marketing SVSC Ltd (‘ISM’) and the owner of both, Susan D’Arcy. ISD and ISM are UK companies which trade in phototherapeutic devices. The two products relevant to these actions are a face mask and a neck bib, both of which are fitted with LEDs. I will refer to the companies jointly as ‘the I-Smart Companies’ and the three parties collectively as ‘the I-Smart Parties’.

In 2017 ISM contacted the claimant in claim no. IP-2023-000132 (‘Kaiyan’), a Chinese company, to discuss the possible sourcing of the products.

On 22 August 2017, to facilitate the discussions ISM and Kaiyan entered into a non-disclosure agreement (‘the NDA’). (The name given to ISM at the head of the NDA is different to that given in the pleadings but nothing was made of it). The NDA provided for mutual protection in respect of confidential information passing from one side to the other.

Kaiyan’s case is that it created designs of the face mask and neck bib. It is clear that by attachments to emails dated 13 April, 13 June and 12 July 2018, designs of a face mask and neck bib were sent by Kaiyan to the one or more of the I-Smart Parties.

The two products were then manufactured by Kaiyan in China and sent to ISM and/or ISD. There is a dispute about what happened with regard to these early supplies and when. It is agreed, though, that the products were passed by one or both of the I-Smart Companies to a company called The Light Salon. The I-Smart Parties say that the neck bib was disclosed in confidence. It is not clear what The Light Salon did with the products or, if they were marketed in the UK by The Light Salon, when this happened.

On 1 April 2019 ISD entered into a distribution agreement with the defendant in claim no. IP-2023-000039 (‘Currentbody’), a UK company (‘the Distribution Agreement’).

The I-Smart Parties say that the face mask and neck bib were advertised and sold in the UK at the latest in September 2019 and October 2019 respectively. All the products were made by Kaiyan at this time and were sent to one or both of the I-Smart Companies for distribution in the UK by at least Currentbody.

On 10 June 2020 ISD filed two applications for UK registered designs for face masks: UKRD 6091815 (‘RD 815’) and UKRD 6091816 (‘RD 816’), both later granted. RD 815 was declared invalid by the UKIPO in July 2022 and plays no further role.

On 12 June 2020 ISD filed an application for a UK registered design for the neck bib: UKRD 6091966 (‘RD 966’), later granted.

I will refer to RD 816 and RD 966 collectively as ‘the Registered Designs’.

ISD was able to obtain the two Registered Designs pursuant to applications in June 2020 despite both designs having been made available to the public in the UK from September and October 2019 because of the grace period provided for in s.1B(5)(b) and (6) of the Registered Designs Act 1949 (‘the 1949 Act’).

In or about 2020 there was a falling out between the I-Smart Companies and Kaiyan. Kaiyan stopped supplying the I-Smart Companies and they obtained the products from another manufacturer. Those events did not necessarily happen in that order – who did what first and why was not agreed. In 2022 Currentbody also fell out with the I-Smart Companies and began to obtain the products directly from Kaiyan.