Court rules you can’t choose your opponents’ solicitors

Glencairn has lost its 18-month battle with Product Specialities and now faces significant legal costs for both parties.

Glencairn appealed an earlier case dismissal of an application to injunct a law firm from acting for Product Specialities Inc. in their defence to a registered design right infringement claim brought by Glencairn. The Court of Appeal’s decision today will be especially welcomed by smaller firms who act for numerous defendants against the same claimant.

Glencairn was pursuing an injunction against Product Specialities in relation to its Durashield Whiskey Tasting Glass infringing the copyright of the ‘Glencairn Glass’. Product Specialities instructed IP specialist Philip Partington to defend them, following his experience successfully defending Dartington against a similar claim.

Philip Partington represented Product Specialities until the conclusion of the Dartington mediation settlement, when an ‘information barrier’ was put in place and the Product Specialities defence was passed to another team. That team was based in a different location in the UK, and none of the team were aware of the settlement terms of the Dartington case.

Glencairn objected to Product Specialities being represented by the same company that represented Dartington. Glencairn claimed that it would be impossible for the terms of the settlement to be kept confidential within the firm, therefore giving information to the team representing Product Specialities that should not have been available to them.

The Court of Appeal dismissed Glencairn’s appeal on the basis that:

(1)  Glencairn’s legal team had applied the wrong legal test in seeking to equate the position of a solicitor who formerly acted against the applicant with that of a solicitor who was formerly acting for the applicant;

(2)  Philip Partington put in place an effective information barrier, so that the Product Specialities team could not become aware of the Glencairn/Dartington settlement;

(3)  There was no credible evidence to show that the information barrier had been breached, despite speculation from Glencairn.

Philip Partington, intellectual property partner at JMW, said: “This decision illustrates the importance of confidential information and the need to set up information barriers in certain circumstances. However, I am astonished that Glencairn wasted more than 18 months fighting a misguided application. But it acts as a reminder that litigants can choose their own lawyers, but not those of their opponents.”

Full judgements:

07 May 2020

Glencairn IP Holdings Ltd & Anor v Product Specialities Inc & Ors [2020] EWCA Civ 609

05 July 2019

Glencairn IP Holdings Ltd & Anor v Product Specialities Inc & Ors [2019] EWHC 1733 (IPEC)

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