A classic case of small business IP infringement – involving Prosecco Pong

Product innovation is hard enough when people don’t copy you. Talking Tables director Mark McCormack revealed all about his latest case of IP infringement.

Talking Tables is a business which has grown by designing and selling innovative party accessories, but has found itself weathering numerous IP infringement storms.

McCormack opened up about the latest case, involving what he believes is a copycat example from ￡2bn turnover business B&M Retail.

Please tell us a bit about your business

“Talking Tables started in 1999 ahead of the turn of the millennium when we saw a gap in the market for design-led, colour co-ordinated party accessories. We have grown from the original two founders founders, Clare Harris and I, to a 65 strong-team in the UK, with a Shanghai sourcing office and a New York sales office. We currently have a turnover of ￡16m.”

What are the details of the IP infringement that has occurred?

“Our party game product, Prosecco Pong, has been very successful this year and has led to copycat businesses like B&M Retail taking our idea and creating their own versions. We invest heavily in product development and design. They don’t, so often their product is cheaper or inferior. In most cases, their versions mimic ours for size, look and colour – as you can see when they are lined up side by side.”

The two products side by side

When did you first create the product and what protection do you have for it and others?

“It was created in Spring 2017. We have trademark protection for the name and have also registered the design (including components). We are members of ACID (Anti-copying in design), the UK’s leading membership and campaigning organisation for design and intellectual property. We use their data bank to lodge designs for unregistered design rights. It is expensive to trademark and register everything but becoming more and more necessary.”

Is this the first time you’ve had something like this happen?

“No, we have had a number of issues over the years. Some companies copy product, others copy the look and feel of our photography and imagery. Our main problem is with UK companies, not China.”

What was the first thing you did to address the problem?

“We aim to gather as much evidence as possible, including website and social media postings.

“Sometimes customers will contact us to alert us of copycat product disrupting the market.

“We will often purchase a sample of an infringing product so we can compare its quality, construction method etc.”

What kind of expert advice have you sought and how has this helped?

“We work closely with Kelly Hudson of McDaniel & Co. They are an ACID accredited specialist IP law firm. They will approach offending companies on our behalf and attempt to get copied product removed from the market and damages paid.”

Do you think bigger brands think they can get away with what they want?

“Yes, because the cost of actually going to court, ￡50-100,000, is too expensive for small firms in most cases. Barrister fees alone for a legal opinion are ￡10,000. It is difficult to find a law firm that will act on a conditional fee arrangement (no win no fee).”

How could small firms be better protected from something like this happening?

“There could be the equivalent of the small claims court but for IP cases. Damages would limited to under ￡10,000 and both parties would represent themselves. No lawyers or barristers. No costs awarded other than travel. There is a system called the IPEC small claims track but that still allows legal representation which is then biased towards larger firms who have in-house legal teams.”

What is your advice to a fellow small business suffering from IP infringement problems?

“Join a lobbying body such as ACID and invest a sensible budget with a law firm to try to stop the most blatant IP infringements. Aim to make as much 'noise' as possible through press and PR whilst staying on right side of the law and not making groundless threats or accusations which are then publicised.”

Are you confident this is going to have a positive resolution?

“B&M have had a lot of negative publicity in recent years over product that is look-alike. We are hoping that by taking a firm position and publicising our case they will back down and withdraw their product from the market.”

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