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| The H2O Mop X5 (not actual size) |
Often described as the new broom sweeping clean the Patents County Court for England and Wales, Judge Colin Birss QC is sometimes rewarded for this Cinderella role by being invited to hear the occasional real High Court application. Thus in
Thane Direct Co. and others v Pitch World Ltd (Patents Court, England and Wales), 27 February 2012, Judge Birss found himself sitting as an additional High Court judge. His job on this occasion was to decide whether it was appropriate to grant an interim injunction to halt the sale of an allegedly infringing five-function steam mop after the defendant had already undertaken to stop selling the product within a few weeks, where the claimant's losses were largely quantifiable.
Both sides in this dispute were TV marketers of household products. Thane's leading product was a five-function steam mop, the clumsily-named H2O Mop X5. Thane had actually sold two million of these steam mops worldwide, incidentally mopping up 80% of the market for steam mops sold by TV. Pitch World then launched its own five-function product, the Vapour Mop X500 which, Thane objected, was similar to its own in several respects. Thane sued, alleging infringement of its registered Community designs and trade marks and, to be on the safe side, passing off. Four weeks later, the parties were in court, Thane seeking interim relief and Pitch World saying it shouldn't be granted.
Delivering an extempore decision, Judge Birss QC agreed with Pitch World that no interim relief should be ordered. The first condition for success in obtaining interim relief was achieved without too much hardship: Thane plainly had an arguable case based on Community design right infringement and passing off -- arguable, sure, said the judge, but not particularly strong.
So far as interim relief was concerned, the big issue was whether Thane or Pitch World would suffer irreparable harm if an interim injunction were granted or refused. In this case the losses that Thane said were unquantifiable were actually pretty well both quantifiable and remediable by means of a damages award. The killer blow for Thane's application was however the fact that Pitch World had obtained only a small quantity of Vapour Mop X500s in the first place and that they had undertaken to stop advertising and selling their device within three weeks of the hearing. Under the circumstances the best thing to do, rather than intervening and stopping sales sooner, was to let Pitch World draw its sales to an orderly conclusion.
Says the IPKat, one rather gets the feeling that Thane wasn't very comfortable with the undertaking to stop marketing. In financial terms this might seem irrational, since each further sale by Pitch World might be accounted for. However, both in terms of trade mark infringement and passing off, there seems to be a bigger issue, one which would justify at least a shot at getting an interim injunction, and that would be the damage that might be inflicted on Thane's goodwill and credibility by purchasers of Pitch World's machines -- which
haven't received rave reviews from customers -- deciding that there was some connection between the two, based on their similarity, which would encourage them to avoid Thane's mop too on the basis that the Vapour Mop X500 and the H2O Mop X5 were, er, tarred with the same brush ... Merpel says, she's keeping out of the kitchen. If Hello Kitty is licensing floor mops, she wants no part of it.
Who mops the floor now? How domestic service shaped 20th century Britain
hereHow mopping spreads germs
hereSource: a handy note on the Lawtel subscription-only service
