In the case of T&A Textiles and Hosiery Limited v (1) Hala Textile UK Limited (2) Abdul Hadi Shehezad and (3) Irfan Ahmad, T&A Textiles accused the Defendants of infringing their artistic copyright in the drawings of floral bed linen designs and also infringement of a design registered within the UK in respect of their packaging. The 1st Defendant, Hala Textile counterclaimed that the UK registered design was not valid and they also brought an action for groundless threats of proceedings for design infringement.
The groundless threats action could be grouped into two categories: threats to third party companies and communications sent to eBay about the Defendants' listings. The first communication was a document entitled 'notice of claimed infringement' threatening proceedings. The second was a letter dated 17 November 2014.
The Court dismissed the claim for copyright infringement on the grounds that the allegedly infringing articles were in fact imported into the UK prior to the creation of the Claimant's copyright works. This could not therefore constitute an act of copyright infringement.
The Court also ruled that the design right claim in respect of the packaging, which was a UK registered design, was also invalid on the basis that the allegedly infringing packaging had been made available to the public prior to the actual registration of the design. Hala Textiles were also successful in their counterclaim that the letters received by the Defendants were groundless threats. The issue of whether the notification of infringement to eBay via its Verified Right Owner (VeRO) programme would be a threat was not decided but the provisional view of the Court was that these could constitute a threat.
The VeRO programme is an initiative set up by eBay where intellectual property rights owners can report listings which infringe their rights, whether it be copyright, trade mark or patent rights. It is designed to be a quick way for individuals to look to enforce their rights on the site and individuals who have rights they would like to protect, are encouraged to sign up as members of this scheme. It can be a very useful, cost effective tool but this decision highlights that rights owners should still be very careful when sending such notices.
This decision provides a handy summary of the law relating to groundless threats. It confirmed that the test to see if a communication is a threat of proceedings or not is an objective one. It is the impression which the letters have on the recipient which is the critical aspect. It also reinforces that the single most important thing to consider when making any allegations of infringement is that the rights you seek to assert are actually valid.Posted by: in: Case Law, Designs, News