Will sending a notice of infringement amount to an unjustified threat?

Cassie Creations Ltd v Blackmore and another [2014] EWHC 2941 - eBay

The claimant and second defendant were both online traders of cake stands who sold cake stands via eBay. Mr Blakemore, the first defendant and director of Second Defendant, sent notices to eBay complaining that the cake stands sold by the claimant infringed their registered designs. eBay subsequently removed the claimant’s listings.

The claimant’s contacted the second defendant and eBay in an attempt to get its products re-admitted to eBay. The products were not re-listed for a number of months. It was the claimant’s evidence that it approached this process with caution due to a concern that eBay could regard it as a serial infringer and permanently exclude its products. It was the claimant’s case that the notices to eBay from the second defendant constituted an unjustified threat.

The issues

The issues before the court were as follows:

  • Whether the second defendant had made groundless threats in accordance with s.253 of the Copyright Designs and Patents Act 1998 (“CDPA”).
  • Whether D1 (as director of D2) was jointly liable.
  • Whether the Defendants could avail themselves of the protection of either section 26(2A) of the Registered Design Act 1949 or Section 253(3) CDPA which prevent proceedings for groundless threats where the infringement relates to the making or importing of a product.
  • Whether the Claimant’s case was an abuse of process and as such its products could be relisted after seven days.


The court commented that eBay offer a service whose purpose is to avoid eBay becoming involved in disputes with rights owners. eBay take the line of least resistance as they insist upon a proper notification, but once received, eBay remove the listing.

An actionable threat is a communication that would be understood by the recipient as constituting a threat of proceedings for infringement. The key issues for the court were:

  • It is so clear that the notice to eBay was a threat so to enable the Claimant to obtain summary judgment?
  • It is so clear that the notice was not a threat so as to provide the Defendants with relief by way of strike out or summary judgment?
  • Or is the point so unclear, and that each side has a real prospect of success so that the matter should proceed to trial?

The court adopted the third position and held that both sides had real prospects of success. At first glance, the claimant appeared to have the stronger arguments about whether the threats were groundless (on the basis that it seemed unlikely that the second defendant could demonstrate that the designs had been infringed) but it was the second defendant’s position that the evidence was incomplete. It was therefore appropriate that the matter be determined at trial.

The court also found that the claimant’s approach had been reasonable. It appeared that eBay had not been prepared to reinstate the claimant’s listings after 7 days and therefore the claimant’s approach was neither disproportionate or an abuse of process.

It was also the case that the first defendant was also liable as he had signed the notices and claimed ownership of the designs that had been allegedly infringed. In reaching this decision, the court was mindful that the second defendant was a director of the first defendant, not simply an employee and had personally signed the notices.

Important points

For those retailers who are looking to protect their brand against infringing eBay sellers, this case highlights the need to make a careful decision before contacting eBay and alleging an infringement. In the event that an infringement is not established, there is a clear risk that it may amount to an unjustified threat.

For eBay traders, the case also reinforces that if a director is involved in the alleged infringement and has acted in more than just a constitutional role, this may be sufficient to establish personal liability.

This information is intended as a general discussion surrounding the topics covered and is for guidance purposes only. It does not constitute legal advice and should not be regarded as a substitute for taking legal advice. DWF is not responsible for any activity undertaken based on this information.