Philip Partington, JMW’s Intellectual Property Partner is named in a leading Court of Appeal decision as having set up an effective information barrier for his client, Dartington Crystal (Torrington) Ltd (“Dartington”).

On 7 May 2020, the Court of Appeal handed down the decision in Glencairn IP Holdings Ltd & Anor v Product Specialities Inc & Ors [2020] EWCA Civ 609, which dismissed an appeal brought by Glencairn. Please see full judgment here.

Glencairn’s appeal related to an earlier decision of July 2019 by His Honour Judge Hacon, sitting in the Intellectual Property Enterprise Court (“IPEC”), where he dismissed 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, who are the well-known Scottish glassware producer, and represented by Stobbs IP. Please see full earlier judgment here.

The Court of Appeal’s decision sheds new legal light on the implementation and strength of information barriers, especially for smaller firms who act for numerous defendants against the same claimant and ought to remind litigators that you can’t choose your opponent’s solicitors.

Earlier Dartington Proceedings

In 2018, Philip Partington, at that time a director at a leading IP boutique, successfully defended his client Dartington, who are a household name and supply the likes of John Lewis and TK Maxx, in a High Court interim injunction brought against them by Glencairn.

The Dartington Proceedings related to Glencairn’s Registered Design, known as the “Glencairn Glass”, which they had alleged was being infringed by Dartington’s new “Whiskey Experience” design. Please see comparison below:

In early 2018, the High Court dismissed Glencairn’s attempt to obtain an interim injunction against Dartington in relation to the Dartington Glass and were ordered to pay £26,000 towards Dartington’s legal costs, having already spent in excess of £80,000 on its own legal team.

While the parties continued with this dispute in the IPEC, the parties settled the proceedings on a confidential basis just before Christmas 2018. Since then, the Dartington Whiskey Experience glass went on to win “Gift of the Year” 2019 in the under £10 category. Indeed, https://www.giftoftheyear.co.uk/ and Dartington continue to go from strength to strength.

Product Specialities

In late 2018, Product Specialities Inc also found itself being aggressively pursued by Glencairn in relation to their own Durashield Whiskey Tasting Glass. Please see comparison below:

Product Specialities were aware that Dartington had been engaged with Glencairn in relation to a similar issue and were directed to Philip Partington to fight their corner.

Philip Partington represented Product Specialities until the conclusion of the Dartington mediation settlement, when an “information barrier” was set up by Philip. Product Specialties’ defence was then passed to the safe hands of Philip’s then partner who was unaware of the Dartington settlement terms and based in the firm’s Leeds office.

Glencairn’s Unusual Application

In March 2019, Glencairn objected to Product Specialities being represented by Philip’s Leeds based partner on the basis that a relatively small boutique firm would not be able act for Product Specialities, as some of its staff knew the confidential settlement terms Glencairn had entered into with Dartington.

On 5 July 2019, His Honour Judge Hacon dismissed Glencairn’s unusual application on the basis that while Philip’s team were “aware of the contents of the Settlement Agreement and that at least some of this is confidential to Glencairn,” he had placed an effective barrier and [t]he likelihood of any confidential information at all being passed to Final Touch 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.”

Glencairn then chose to appeal HHJ Hacon’s decision to the Court of Appeal, which was heard on 31 March 2020 before Lord Justices David Richards, Flaux and Arnold.

During the hearing, Arnold LJ pointed out to Glencairn that “by serving the evidence of Mr Miller openly, Glencairn had impaled itself on the horns of a dilemma. Mr Miller’s evidence in his witness statement is that Final Touch’s attorney, Mr Shapiro, called him and said that he had become aware of details of the Dartington Settlement and in particular that, as part of the Settlement, Dartington had obtained payment from Glencairn for redesigning its glass. Mr Miller does not say that what he alleges Mr Shapiro said to him was inaccurate. Moreover, if it was inaccurate, it is difficult to see why Glencairn would be concerned. Mr Miller’s evidence therefore implies that the statement as to the terms of the settlement attributed to Mr Shapiro was accurate. From all this it follows that by serving its evidence, Glencairn has “let the cat out of the bag” as to what confidential information was contained in the Settlement Agreement”.

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; and

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

Given Glencairn has failed in its appeal, they are expected to foot the bill for their own legal team as well as the legal costs of Product Specialities.

Conclusions

Philip Partington, JMW’s Intellectual Property partner, said:

“This is an interesting decision for lawyers and businesses alike across the UK, as it illustrates the importance of confidential information and the need to set up information barriers in certain circumstances. As solicitors, we advise upon and deal with confidential information day in, day out. As such, to learn that Glencairn have sought to bring this ill-advised application is concerning, but not surprising given their aggressive tactics during the litigation in which we were involved.

Now that this decision is public, it gives guidance for others in a similar position. However, it also serves as a reminder that litigants can choose their own lawyers, but not those of their opponents.

I am also astonished that Glencairn has wasted over 18 months fighting this misguided application, while the alleged infringing product remains on the market.”