John Hinde Limited and John Hinde (UK) Limited, companies specialising in tourism souvenir selections, have successfully sued a Spanish company, Pinesol S.L., for copying its "My Name" piggy bank product in Spain.

John Hinde distributes a number of novelty souvenir products under the "My Name" trade mark such as mugs, water bottles, plaques and piggy banks. In February 2005, it designed a moulded plastic pig money box with multicoloured soft plastic spot and name detail. The "My Name" piggy banks were subsequently released for sale to the general public in September 2005.

However, in July 2005, Pinesol, a former distributor of John Hinde in Spain applied to register the "My Name" piggy bank as a design in Spain in its own name unknown to John Hinde. Pinesol had obtained a sample of the "My Name" piggy bank in July 2005 during a meeting with John Hinde. In the summer of 2006, Pinesol filed complaints with the Spanish police that John Hinde, by selling the John Hinde "My Name" piggy banks in Spain, were infringing Pinesol's Spanish registered design for the piggy banks. This prompted the Spanish police to seize John Hinde's piggy banks in Spain.

In response, John Hinde filed civil proceedings before the Spanish courts seeking vindication of its design right in the piggy bank and seeking damages for unfair competition. The Commercial Court of Barcelona issued a judgment on 2 May 2007 declaring that John Hinde was the original owner of the piggy bank design and awarded damages in John Hinde's favour. A Court Expert had been appointed by the Court to determine the amount of damages owing to John Hinde and the Court awarded the full amount determined by the Court Expert. It is understood that this is a rare occurrence.

Niall Howard, Managing Director of John Hinde, explained that "the declaratory orders given against Pinesol vindicated our position and the position of our retailers who were selling genuine and non infringing products". Mr. Howard also stated that "John Hinde has a long history of design and product development in the tourism souvenir marketplace and we zealously protect our intellectual property rights from third party infringement".

Áine Matthews, an Associate in the Intellectual Property and Technology Unit of LK Shields Solicitors who led the team that advised John Hinde in association with Spanish lawyers stated that "Irish companies need to vigilantly protect and enforce their trade marks and design rights in every country in which they trade. In the global environment in which many firms operate, there are always third party infringers who will have no hesitation in attempting to "piggyback" on your success".

The case was appealed by Pinesol but following discussions between John Hinde and Pinesol, the parties agreed to settle the matter. The terms of the settlement included the payment of damages to John Hinde and undertakings not to infringe John Hinde's products in the future. The case highlights the importance of having a carefully managed intellectual property portfolio in addition to appropriate contractual arrangements with distributors.

January 2008.

For further information please contact Áine Matthews.