A dispute over an anti-age skin serum called “Elixir” has resulted in a finding of passing off and copyright infringement, but claims for malicious falsehood and causing loss by unlawful means have been dismissed in the IPEC.
The case was brought Your Naturally Naturally Yours Limited (YNNY), a company owned by Georgina Tang, against Kate McIver Skin Limited (KMS) and Christopher McIver. The defendant company was set up by Kate McIver, who died in 2019. Mr McIver is her surviving husband and the representative of her estate.
The relationship between the two women was complex and the description of it accounts for about half of His Honour Judge Hacon’s judgment. In summary, Ms Tang started to sell Elixir in 2015. Ms McIver (who had been receiving chemotherapy for cancer) was a customer and became a re-seller of the serum, subsequently selling it under her own brand name.
In 2018, Ms McIver falsely began to claim that she had created the serum. Later that year, she placed an order for the serum with a third party, with added ingredients to enhance it. She promoted this in media appearances and with celebrity endorsements. A further reformulation of the serum was sold under the names “Kate McIver” and “Secret Weapon” but without “Elixir”.
Passing off
HHJ Hacon found that goodwill was associated in the public mind with the trade name “Elixir”. He also found that from June 2018 until March 2019, and even after, Ms McIver repeatedly misrepresented that she had created the Elixir serum:
“Ms McIver's express representation was that she was the creator of the Elixir serum. By inevitable implication, she also made the further representation that she was the creator of the Elixir serum sold by anyone else, including Ms Tang. Both the express and the implied representation were false.”
The judge said that, contrary to the defence’s arguments, there was no agreement between the two women allowing Ms McIver to claim she had created the Elixir serum.
Turning to damage, he found that no loss of sales was proved but there was damage to the reputation of Elixir, a risk of this recurring and of loss of the distinctiveness of the Elixir brand name:
“Continued branding by KMS of its product as ‘original’, which suggests that it is a return to the first formulation of Ms McIver’s Elixir product, is likely to leave YNNY still exposed, at least to some degree, to quality issues in respect of KMS’s product. Further, the misrepresentation up to the present and the possibility of continuing misrepresentation risks rendering Elixir as the name of a generic type of skin serum.”
Passing off was therefore proved.
Other allegations
The claim for malicious falsehood failed as there was no evidence that YNNY had suffered any pecuniary loss. YNNY had also not established intention on the part of Ms McIver to cause loss, meaning that the causing loss by unlawful means claim failed.
The copyright claim concerned marketing text that Ms McIver copied from Ms Tang. This was freely supplied by Ms Tang up to November 2018, meaning there was a bare licence. But any use after that date would be infringing.
What does this mean?
The judgment is a reminder that the law of passing off can be a powerful weapon, especially in circumstances where there are no registered IP rights on which to base a claim. However, it is essential to prove the three requirements of goodwill, misrepresentation and damage – something the claimant achieved in this case.
Please contact us if you would like to know more about how to bring actions based on unregistered rights.
To find out more about the issues raised in this blog contact Rosie Burbidge, Intellectual Property Partner at Gunnercooke LLP in London - rosie.burbidge@gunnercooke.com