Whisky glass ruling illustrates the high threshold of ‘irreparable harm’ that is needed for IP rights holders to be awarded an interim injunction pending trial
Glassmaker Glencairn Crystal has failed to obtain an interim injunction from the High Court against rival glassware manufacturer Dartington Crystal. The injunction requested was to prevent the sale by Dartington, of a whisky glass that Glencairn claim infringes its UK registered design 2093670 for a ‘drinking glass’ pending a full trial. The decision means that Dartington will not be prevented from making sales of its allegedly infringing product pending the final court decision, which is expected to be at least 12 months away from this interim hearing.
Judge Hacon’s decision is a reminder for right holders of the difficulties they are likely to experience when looking to the courts for interim relief. Outside of industries such as pharmaceuticals, where prices can fall by 80% or more on a second entrant to the market, it is very hard for rights holders to succeed in an ‘irreparable harm’ argument. The courts have a long line of authority to support a finding that losses caused from infringement of intellectual property rights, are the sort of financial loss that can be compensated adequately by a damages award following trial.
Glencairn make a range of glassware including whisky glasses, wine glasses and decanters. Dartington is a rival glassware manufacturer that makes whisky and wine glasses, as well as other glass homewares. In February of this year, Dartington started revocation proceedings against Glencairn's UK registered design, and requested a declaration of non-infringement from the IPEC. On the same day it started revocation proceedings in the European Union Intellectual Property Office against a Glencairn registered trade mark (EUTM 008690083). The Glencairn Glass is a three-dimensional shape mark registered in class 21 for Glassware, and consists of glasses andwhisky glasses. The present High Court proceedings were started by Glencairn in the High Court two days later, with the application for an interim injunction to prevent Dartington from selling its allegedly infringing glass following shortly after.
Injunction hearing – American Cyanamid
It was the second stage of what is known as the ‘American Cyanamid’ analysis on which the judge was able to make his decision: the question of whether there was a risk of irreparable harm to Glencairn if no injunction were granted. The judge was not convinced that lost sales would necessarily lead to irreparable harm, nor did he find that there would be any particular difficulty in assessing the alleged loss of profit to Glencairn. This is because Glencairn accepted that one sale of an ‘infringing’ glass by Dartington should be taken as the loss of the sale of one glass by Glencairn.
Further arguments that Dartington would get a ‘foot in the door’ by launching this product, and gaini access to customers for its broader range of products were also rejected. The judge accepted that Dartington may increase its sales of that sort of glass at the expense of Glencairn, but he was not convinced that Dartington would gain access to customers to which it would not already have access.
The judge nevertheless went on to consider the rest of the American Cyanamid test and whether Dartington could be adequately compensated if, hypothetically, an injunction were to have been granted against it but it were later to succeed at trial. The judge was convinced to some extent by arguments from Dartington that there may be damage to (a) its commercial relationships and (b) its reputation if an injunction were granted and it were forced to cancel orders made by its customers.