Yours Naturally Naturally Yours Ltd v Kate McIver Skin Ltd
| Jurisdiction | England & Wales |
| Judge | Lord Justice Arnold,Lord Justice Stuart-Smith,Lady Justice King |
| Judgment Date | 19 December 2023 |
| Neutral Citation | [2023] EWCA Civ 1493 |
| Court | Court of Appeal (Civil Division) |
| Docket Number | Case No: CA-2023-000886 |
[2023] EWCA Civ 1493
Lady Justice King
Lord Justice Arnold
and
Lord Justice Stuart-Smith
Case No: CA-2023-000886
IN THE COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM THE HIGH COURT OF JUSTICE, BUSINESS AND PROPERTY
COURTS OF ENGLAND AND WALES, INTELLECTUAL PROPERTY LIST (ChD),
INTELLECTUAL PROPERTY ENTERPRISE COURT
His Honour Judge Hacon
Royal Courts of Justice
Strand, London, WC2A 2LL
Michael Smith (instructed by Ai Law) for the Appellants
Daniel Metcalfe (instructed by Irvine Yates Solicitors) for the Respondent
Hearing date: 30 November 2023
Approved Judgment
Introduction
This is an appeal by the Defendants from an order made by His Honour Judge Hacon sitting in the Intellectual Property Enterprise Court on 20 April 2023 granting the Claimant (“YNNY”) relief for passing off and copyright infringement for the reasons given in his judgment of the same date [2023] EWHC 890 (IPEC). I granted permission to appeal, but recommended mediation. It is regrettable that the parties have not been able to resolve their dispute because it seems likely that the costs of the appeal will have exceeded what is at stake.
The facts
The following account of the facts is taken largely verbatim from the judge's judgment with some light editing. I have inserted images of the various labels referred to.
The Claimant (“YNNY”) carries on a business in the manufacture and sale of skin care products which was formerly carried on by Georgina Tang trading under the name “Yours Naturally Naturally Yours” and the acronym “YNNY”. The First Defendant (“KMS”) carries on a business in the sale of skin care products which was formerly carried on by Kate McIver, previously Kate Dyment, now deceased. The Second Defendant, Christopher McIver, is the widower of Ms McIver and is the personal representative of her estate.
The dispute concerns an anti-aging skin serum called “Elixir” which was created in June 2015 by Ms Tang. From about that date until November 2018 Ms Tang made Elixir and sold it to beauty practitioners and directly to the public around the UK. Since then YNNY has made and sold Elixir.
In 2016 Ms McIver was diagnosed with stage 3 breast cancer at a very young age. Chemotherapy caused her to suffer from severe skin irritation. In March 2017 Ms McIver bought Elixir serum from Ms Tang for use on her own skin. The product was made in accordance with the 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. The two began to correspond by Facebook messages.
In October 2017 Ms McIver asked Ms Tang whether she could buy Elixir wholesale and sell the product under her own logo. She sent Ms Tang a copy of the logo which incorporated the words “Kate McIver Skin Specialist”. They agreed that, to begin with, Ms McIver would test the market with five bottles which were supplied with Ms Tang's label featuring the name Elixir. This label (“the Original Label”) is shown below.
The trial was a success. Between October 2017 and April 2018 Ms Tang continued to supply Ms McIver with the product, still with the Original Label and made according to the Tang Formulation. Ms McIver sold the serum on to her customers.
In a message dated 29 November 2017 Ms McIver told Ms Tang that she wanted to advertise the serum. Ms Tang responded “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.
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. This label (“the First McIver Label”) is shown below.
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 and potential customers. There was a description of her wedding, and the difficulties she had since suffered from her cancer and from her chemotherapy. 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 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.”
On 7 June 2018 Ms Tang and Ms McIver met in person. 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 her website.
On 8 June 2018 there was another Instagram post from Ms McIver for her customers and potential customers. She referred to a serum that can only have been a reference to the Elixir serum. The post 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 bearing the names KATE MCIVER and SECRET WEAPON (rather than Elixir) in prominent script. As before, the label contained a description and ingredients, an email address and post code. It also included in a small typeface the letters YNNY. This label (“the Second McIver Label”) is shown below.
Although the label no longer bore the 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 the serum under the Second McIver Label.
On 6 September 2018 Ms McIver sent an email to Abdur Rahman of Pelham Group (“Pelham”), a manufacturer of cosmetics. 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 write or IP of my best selling product I am in a very vulnerable position and my business is massively at risk.”
Mr Rahman asked for a sample. On 13 September 2013 he told Ms McIver that Pelham's chemists had made the product and that samples were ready to go. Mr Rahman later added that there were no new ingredients, the product was “the same as benchmark but we can add any ingredients you like”. Ms McIver replied:
“The next steps now we need to add in a few ingredients so the serum is not identical to the original product by my current lady. I would also like to use this as a chance to increase the quality and effectiveness of the serum.
Would it be possible to connect with a lab tech who may able to advise what ingredients would really enhance the serum?”
On 25 September 2018 Mr Rahman emailed to say that new samples had been developed, giving lists of added ingredients for two new proposed formulations which he called samples 3 and 4. Ms McIver chose sample 3, to which, at her suggestion, frankincense oil was added (“the First Pelham Reformulation”). She and Mr Rahman discussed packaging.
On 1 October 2018 there was a post on Facebook for Ms McIver's customers and potential customers announcing “Launch of New Secret Weapon Serum”. It included a statement from Ms McIver, speaking of her treatment for cancer:
“I was in my twenties, and it was just heartbreaking to see my body deteriorating so rapidly from the pharmaceuticals … I threw myself into researching and creating bespoke treatments that could be used on all skin types, and this was where the ‘magic’ serum was born.”
The announcement added:
“Following months of intensive research and experimentation, Kate's new wonder serum began...
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