Bottle design belongs to designer
The curved design of the Waiwera water bottle belongs to its designer, the High Court in Auckland has decided.
The Waiwera Infinity Water bottle design was based on the original bottle shape used by Waiwera in 1875.
Designer David Melrose had been in negotiations with Waiwera Water New Zealand to sell rights to the distinctive curved glass bottle shape, however, had not accepted the offered deal.
Melrose was originally sued by Russian billionaire Mikhail Khimich, the owner of Waiwera Group, over his use of the design.
But Melrose counter-sued, arguing that he had never relinquished the rights to the water bottle’s design. He claimed the design’s intellectual property belonged to him.
The legal drama extends back to an agreement made almost 15 years ago.
In 2005, Melrose signed a memorandum of understanding with Waiwera’s then-owner, John St Clair Brown.
The agreement between the two men said Waiwera could use the design but the rights would remain with Melrose.
Brown eventually sold his stake in the business in 2011 to Khimich.
Justice Timothy Brewer said that while it was clear there had been subsequent negotiations to sell the rights of the bottle design to Khimich, this had not actually happened.
As discussions dragged on, the relationship between Melrose, Khimich and a third man, Leon Fingerhut, deteriorated.
From 2015, Fingerhut and his own company, Waiwera LLC, negotiated on behalf of Khimich.
To exert pressure, Melrose withdrew permission for his bottle design to be used in the manufacture of bottles from December 2016.
Negotiations broke down completely two months later.
Unbeknown to Melrose, since 2011 Khimich had attempted to trademark elements of the design in New Zealand and overseas.
Khimich applied to trademark ‘‘Waiwera’’, a word which was a major feature on Melrose’s designed bottle.
The trademark was granted because of the reputation and presence in the market of Melrose’s bottle.
But Justice Brewer found Melrose had never sold, assigned, transferred or by course of conduct relinquished any of his intellectual property.
‘‘None of the other parties to the litigation acquired any beneficial or legal interest in Mr Melrose’s IP,’’ Justice Brewer said.
‘‘Mr Melrose did no more than permit his IP to be used as part of a common business in accordance with the memorandum of understanding.’’
Justice Brewer issued an injunction against Khimich and Waiwera Group, halting any production of the water bottle.
He also said Khimich, Waiwera Group and other related companies had no right to trademark the design without Melrose’s permission.
Melrose was entitled to damages and interest against Fingerhut and Waiwera LLA.
But financial redress was ‘‘complicated’’ by the fact that Khimich had been declared bankrupt on October 8 and Waiwera Group was put into liquidation on October 29.
Brewer said any payout was dependent on the results of the insolvency process.
Melrose was also awarded costs, to be decided by March.