Friday, 1 April 2011

Trade Mark, Copyright and Passing Off: Westwood v Knight

I have published this case note on Westwood v Knight [2011] EWPCC 8 (22 March 2011) in this blog rather than my IP/IT Update blog because the defendant Anthony Knight came from Manchester. It is an important case because it was the first trial in the Patents County Court since the new rules came into force. The causes of action were trade mark and copyright infringement and passing off.

In the consultation on the new rules I expressed reservations as to whether the two day limitation in CPR 63.31.2 would be realistic for cases where there was likely to be a dispute on the facts:
"Two days may be enough for patent trials which are more likely to turn on the law or the construction of the specification than on fact. They are unlikely to be enough for copyright, breach of confidence or passing off where there is more likely to be a dispute of fact."
I need not have worried. Judge Birss QC seems to have coped admirably with a case where there no less than 12 issues plus the defendant's conduct as a whole and each topic had to be divided into a consideration of the claimant's rights, the conduct complained of and the relevant cause of action.

The decision itself contains only one point of law and that was the effect of paragraph 20 of Sched 1 to the Copyright, Designs and Patents Act 1988 on s.52 of that Act. S.52 limits the term of copyright in design drawings for industrially produced articles to 25 years. The corresponding provision under the 1956 Act had reduced the term of copyright to 15 years. The claimant had argued that s.52 had extended the term that existed under the old Act to 25 years. The judge held at paragraph [69] that it was the other way round:

The effect of the transitional provision is that the period of protection referred to in s52 is cut down from 25 years mentioned in the 1988 Act to the 15 year period mentioned in the 1956 Act. The claimant submitted that the effect of the transitional provision was the other way round - lengthening the period from the 15 years in the 1956 Act to the 25 years in the 1988 Act. However the provision does not work that way. The 1988 Act repeals the 1956 Act. If s10 applied before the 1988 Act then it would have applied with a 15 year period. Paragraph 20 of Schedule 1 applies s52 instead. The period in s52 is normally 25 years. Paragraph 20 substitutes
that 25 year period with the 15 year period of s10 of the 1956 Act.

The rest of the trial addressed such matters as whether












infringed this:














Not surprisingly the action was substantially successful.

This claim shows how well the new procedure works. The case was over in a day and the costs will be a fraction of those that would have been run up in the District Registry. The Patents County Court should be the usual forum for all intellectual property claims involving small businesses wherever they arise.

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