Yours Naturally Naturally Yours Ltd v Kate McIver Skin Ltd
| Jurisdiction | England & Wales |
| Judge | Hacon |
| Judgment Date | 20 April 2023 |
| Neutral Citation | [2023] EWHC 890 (IPEC) |
| Docket Number | Case No: IP-2022-000014 |
| Court | Intellectual Property Enterprise Court |
[2023] EWHC 890 (IPEC)
HIS HONOUR JUDGE Hacon
Case No: IP-2022-000014
IN THE HIGH COURT OF JUSTICE
BUSINESS AND PROPERTY COURTS OF ENGLAND AND WALES
INTELLECTUAL PROPERTY ENTERPRISE COURT
Rolls Building
Fetter Lane
London, EC4A 1NL
Daniel Metcalfe (instructed by Irvine Yates Solicitors) for the Claimant
Michael Smith (instructed by AI Law) for the Defendants
Hearing dates: 28 February – 1 March 2023
Approved Judgment
This judgment was handed down remotely at 11.30 on 20 April 2023 by circulation to the parties or their representatives by email and released to the National Archives .
HIS HONOUR JUDGE Hacon
Introduction
The claimant (“YNNY”) was incorporated on 7 November 2018 by its sole director and shareholder, Georgina Tang. It serves as the vehicle for her business in the manufacture and sale of skin care products, a business previously conducted by Ms Tang in person.
The first defendant (“KMS”) sells skin care products. It, too, was set up as a vehicle for an existing business, that of Kate McIver, now deceased. KMS was incorporated on 20 August 2018 and started trading shortly afterwards. The second defendant, Christopher John McIver, is the widower of Ms McIver and is the personal representative of her estate, under her maiden name Kate Eleanor Dyment.
The dispute concerns an anti-age skin serum called “Elixir”. It was created in June 2015 by Ms Tang. From about that date until November 2018 Ms Tang made Elixir and supplied it to wholesale and retail customers around the UK. Since then YNNY has conducted the business.
YNNY alleges that Ms McIver and KMS have falsely stated on their business website and on social media that Ms McIver was the creator of Elixir Serum. YNNY says that this constituted (a) passing off, (b) unlawful interference with YNNY's business and (c) malicious falsehood. YNNY also claims that marketing materials used by Ms McIver and then KMS to sell their serum contained copies of YNNY's copyright works and that the copyrights have been infringed.
Insofar as any of these torts were committed by KMS, YNNY alleges that Ms McIver was jointly liable for the tort and that Ms McIver's estate is now accountable for everything in her place.
It was also not in dispute that all relevant goodwill, copyright and causes of action formerly held by Ms Tang have been assigned to YNNY.
Daniel Metcalfe appeared for YNNY, Michael Smith for KMS and Mr McIver.
The chronology of events
Ms Tang started her business in the sale of serum under the trade name Elixir in about June 2015.
Ms McIver was diagnosed with stage 3 breast cancer in 2016. Chemotherapy caused her to suffer from severe skin irritation. In March 2017 Ms McIver bought Elixir from Ms Tang for use on her own skin. The product had a formulation created by Ms Tang (“the Tang Formulation”).
In May 2017 Ms Tang became aware of Ms McIver beyond her being a customer. Ms Tang read on Facebook about Ms McIver's story and her cancer. The two began to correspond by social media.
In October 2017 Ms McIver asked Ms Tang whether she could buy Elixir wholesale and sell the product under Ms McIver's logo. She sent Ms Tang a copy of the logo which incorporated the words “Kate McIver Skin Specialist”. They agreed instead that to begin with Ms McIver would test the market with 5 bottles which were supplied with Ms Tang's labelling. This featured the name Elixir (“the Original Label”).
The marketing trial was a success and between October 2017 and April 2018 Ms Tang continued to supply Ms McIver with the product, still with the Original Label, still made according to the Tang Formulation. Ms McIver sold the serum on to her customers.
In an email dated 29 November 2017 Ms McIver told Ms Tang that she wanted to advertise the serum. Ms Tang's response included “You can get more information on [Ms Tang's] website to promote it”.
In March 2018 Ms Tang and Ms McIver discussed again the idea of Ms McIver selling the serum with Ms McIver's label on the bottles. Ms Tang was encouraging. In an email dated 21 March 2018 she said
“…its easier, if you have a range so you can say, you now have your own skin care range for your treatment. Promote it on Facebook and your website too…”.
Between April and June 2018 Ms McIver sold the serum to her customers under her own brand. It was still the Tang Formulation supplied by Ms Tang. The label bore the name KATE MCIVER in upper case, the word “Elixir” in prominent script, together with a description of the product, a list of contents and Ms McIver's email address and post code (“the First McIver Label”).
In May and June 2018 Ms Tang and Ms McIver discussed alternative arrangements for the packaging of the serum. Ms McIver asked whether it was possible for her to have her own distinctive bottles or packaging. In a message dated 18 May 2018 Ms Tang said:
“Possibly say it's your own label made by an ethical, cruelty free, local company in Liverpool, what do you think? Don't mention about being exclusive because I am the creator, so copy right stays with me.”
On 6 June 2018 Ms McIver posted a message on her Instagram account directed to her customers. There was a description of her wedding, the difficulties she had since suffered from her cancer and from her chemotherapy and she continued:
“To get through this I needed to have a focus, something I loved, something I was obsessed with to take my mind from the pain…Kate McIver skin was born [original ellipsis] and I literally put my life and soul it too [sic] researching and training, creating bespoke treatment and tailor making the ingredients for each session meaning treatments that I could be remembered for. …
The Kate McIver serum was designed to turn my skin around to help my cells recover and rejuvenate, it also healed all my scars. Fast forward 7 months and I'm in remission, my skin and hair is healthy and glowing and it's safe to say the business is thriving.”
I have no doubt that that Ms McIver's account of the painful difficulties inflicted on her by her condition and consequent therapy were accurate. She showed her strength by the way that she dealt with those difficulties. But while her story of being driven to create a serum to cure her bad skin was presumably attractive from a marketing point of view, it was not true.
There was no objective evidence that Ms Tang knew at this stage about Ms McIver's claim to be the creator of Elixir.
On 7 June 2018 Ms Tang and Ms McIver met in person at Cheshire Oaks, a retail centre in the Wirral. They continued their discussions by social media after the meeting. On 7 June 2018 Ms McIver asked Ms Tang to send her a few lines on the Elixir serum for marketing purposes. Ms Tang responded on the same day quoting a description of the serum from the YNNY website.
On 8 June 2018 there was another Instagram post from Ms McIver for her customers and potential customers. She referred to a skin product, a serum that can only have been a reference to the Elixir serum. The post further said:
“I made this with my very own hands [to] remove a scar last year & yes it worked!!!!
This serum is still hand made but unfortunately the cost of making it has increased so there will be a small increase at the end of the month.”
Other Instagram posts at about the same time from “katemciverskin” referred to the serum having been made by Ms McIver, or as now being produced by “us”.
On 12 June 2018 Ms McIver asked Ms Tang for “a few lines how the serum is compared to mass produced”. Ms Tang provided a few sentences, apparently for Ms McIver's use.
From 20 June 2018 to August 2018 Ms McIver sold the serum (the Tang Formulation) under a label branded with the words SECRET WEAPON and KATE MCIVER in prominent upper case script (“the Second McIver Label”). As before the label contained a description and ingredients, an email address and post code. For the first time it included in a small typeface the letters YNNY.
Although the label no longer used the trade name Elixir, Ms McIver told the public that it was still the serum that she had created. In an Instagram post dated 3 July 2018 Ms McIver used “before and after” photographs of her mother and said, referring to her mother:
“My first Guinea Pig for my serum back when it was a case of making up the serum in my back room at home.”
On 20 August 2018 KMS was incorporated and took over Ms McIver's business, including sales of Elixir under the Second McIver Label. Ms Tang's evidence was that towards the end of August 2018 she discovered that Ms McIver had been representing that Ms McIver created the Elixir serum. The defendants' contention was that Ms Tang had known about this all along. Whatever may have been the date on which Ms Tang first became aware of Ms McIver's representation, there is no record of a complaint about it at this time. Nothing turns on it; there was no claim by the defendants of an estoppel or other similar barrier in law to Ms Tang's entitlement to enforce any right she now relies on.
On 6 September 2018 Ms McIver sent an email to Abdur Rahman of Pelham Group (“Pelham”), a manufacturer of cosmetics in Petworth. Ms McIver referred to an earlier conversation between them and suggested that Pelham might make the Elixir serum, quoting the ingredients identified on the label – the ingredients of the Tang Formulation. Ms McIver spoke of a startup order of 1000 units and said:
“I am currently feeling very threatened by investors and companies wanting to jump on the back of the product success and use my brand to resell for themselves. Obviously as I currently do not own the copy...
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Yours Naturally Naturally Yours Ltd v Kate McIver Skin Ltd
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