A dispute between Logitech, a Swiss-based peripherals supplier and Tech21, a UK technology protection products company, sheds light on where you can and can’t sue for infringement of EU-wide rights.
In 2013, Logitech and Tech21 began attempts to collaborate on the design of a range of protective cases for iPads. They signed an NDA and later a manufacturing and sales agreement. And they began working together on the design. Things did not go well, however, and they went their separate ways early in 2014.
It was only six months later that Logitech discovered Tech21’s “Impact Folio” protective cases on sale at Apple Stores in London and Cologne.
Logitech were furious. They felt that Tech21’s cases infringed their “Big Bang” design. Logitech’s German lawyers wrote a strongly worded letter. Tech21, they said, were infringing Logitech’s unregistered community design rights and should stop immediately or face the consequences.
Tech21 promptly responded by suing Logitech in the UK courts. They said that their product did not infringe any Logitech designs and Logitech had threatened them in a way that is not allowed under UK law.
The English court had to untangle things, and answer the following questions:
Should it deal with the question of design infringement?
No. Unregistered community design right is a short-lived form of protection for the look of a product. It arises automatically when a new design that has ‘individual character’ hits the marketplace. When the right was introduced, legislators tried hard to prevent users of the system from ‘forum shopping’, that is, choosing a court system from the various EU options to suit their own ends. So the rules aim to be clear about where any disputes have to take place.
Here, because Logitech had an EU presence in both the Netherlands and Croatia, the rules meant that disputes over design right would have to be resolved in one of those countries and not the UK.
What about the threatening letter?
The threats made in Logitech’s German lawyers’ letter were vague and did not say where Logitech intended to sue. The court said that what Tech21 actually believed Logitech would do was not relevant. The key question here was what a reasonable business person receiving the letter would think, assuming that they had legal advice on what the options for Logitech were. Again, because of the rules on where you can sue on an unregistered community design, it would make sense to expect Logitech to sue Tech21 in the UK.
As a result, the letter did trigger the UK threats law, and so that part of the case could carry on in the English court.
Threatening letters over IP rights have to be carefully drafted to avoid getting you into trouble. Demands for Europe-wide relief, for example, can trigger laws against threats not just in the UK, but in other EU jurisdictions that have similar rules.
Cross-border litigation is expensive and can involve a lot of management time and effort. Careful consideration in advance of what you can say in letters to infringers, and where you can sue or be sued, will help to minimise waste of time and money.