Anti Copying in Design (ACID) member, Studio William Cutlery, has won its copyright case against Italian manufacturer, Mepra S.p.A.
Despite denying liability, Mepra S.p.A paid Anti Copying in Design (ACID) member Studio William Cutlery / William Welch Designs an undisclosed, but substantial sum and settlement figure, for damages and costs. They also destroyed the remaining stock and the relevant tooling to make the “lookalikes” in the presence of a notary public. This followed a discovery during 2023, by Studio William when they were horrified to find what they believed were a blatant set of infringements by Mepra S.p.A who appeared to be selling what some would say were “direct replicas” of several designs in its “Grove” range at an international trade fair.
Facts of the case
Studio William / William Welch design and produce ranges of high quality, design led contemporary cutlery and flatware. Each piece combines the highest of standards of craftsmanship and attention to detail using an array of different materials to produce designs rich in individual character and their style is easily definable.
When Studio William discovered the alleged infringement, they instructed McDaniels to send a Civil Procedure Rules compliant letter before action to the Defendant in May 2023, asserting their IP rights. The Defendant instructed an Italian law firm to represent them and raised issues over jurisdiction and validity in respect of the rights claimed. The case was argued on the basis of registered and unregistered design rights as well as copyright infringement as copyright is reciprocal across jurisdictions who are signatories to the Berne Convention (https://www.wipo.int/treaties/en/ip/berne/) and with which Mepra S.p.A had to comply.
Kelly Hudson, Director of ACID Legal Affiliates, McDaniels Law said, “We responded immediately to Studio William Cutlery / William Welch Designs’ request to act for them in respect of UK registered design right infringement, community registered design right infringement, UK unregistered design right infringement and copyright infringement. The ensuing result demonstrates very clearly that a successful outcome was achieved, reiterating the importance of knowing and enforcing your rights, in the UK and abroad as well as making a global statement about the importance they place on the protection of their original designs”.
William Welch of Studio William Cutlery / William Welch Designs, commenting on the case said, “Protection of our IP is a business-critical activity for our business, for the small investment at the beginning in IP registrations, you are investing in your business for the future. We will always vigorously pursue any intellectual property infringement. Plagiarism maybe the greatest form of flattery but it is also the costliest for those that copy”.
Dids Macdonald OBE, ACID’s CEO said, “Understanding the implications of taking legal action against a non-UK company is essential and through McDaniels Law, Studio William Cutlery/ William Welch Designs were given expert advice which facilitated a positive settlement and substantial costs and damages. Taking legal action is not for the faint hearted so I hope this sends a strong message to companies who purport to “stay ahead of their competitors” that they act within the law, and that ethics, compliance, and respect are the IP cornerstones which should be adhered to regardless of territory”.
