La Hacienda

Opposing a copycat product

La Hacienda Limited is a well-established wholesale supplier of high-quality wood burning chimeneas, fire pits, fire baskets and multi-functional outdoor ovens. La Hacienda’s customers include garden centres, DIY stores and online retailers such as Wyvale Garden Centres, John Lewis, Next and Debenhams. Among La Hacienda’s range of products is the distinctive MALMO chimenea.

Case Study

Case Type

Design infringement

Action

Design revocation proceedings

Outcome

Settlement agreement

Issue:

La Hacienda discovered that a competitor was selling a copy of the MALMO chimenea. La Hacienda initially approached the infringer directly in an attempt to resolve the matter. During the course of discussions it was established that not only had La Hacienda’s competitor copied the design of the MALMO chimenea, it had actually registered the copied design itself at the UK Intellectual Property Office (IPO). La Hacienda was therefore faced not only with a copy of its design on the market, but also a registration for its design that was owned by the otherwise infringing party.

Action:

La Hacienda was unable to negotiate a resolution to the matter and engaged UDL to assist. It was decided that before dealing with the infringement, the issue of the design registration should be addressed to prevent it being used in retaliation to infringement proceedings. An application had already been submitted by La Hacienda at the UKIPO to have the design registration revoked. We completed the proceedings and represented La Hacienda at the hearing held by the UKIPO Design Registry, at which we successfully argued for the revocation of the design on the basis that the design was owned by La Hacienda, and was already in the public domain when the registration was filed.

Outcome:

The competitor’s design registration was removed from the UK Register and legal costs were awarded to La Hacienda by the UKIPO Hearing Officer. With the design registration revoked, we then turned to the matter of infringement. La Hacienda’s success in revocation proceedings significantly strengthened its position, as the facts and arguments relevant to the invalidity of the competitor’s design registration were the same as would be considered in infringement proceedings. As a result, a settlement was reached with the infringer, which included the immediate removal of the infringing product from sale and payment of La Hacienda’s legal costs.

For more information please contact Alan Jones daj@udl.co.uk.

029 2064 2150

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