 |
| Author Steve Fareham Licence CC BY-SA 2.0 Source Wikimedia Commons |
Barbara Cookson of Filemot Technology Law has sent me the transcript of District Judge Woodward's judgment in Charley Chau v Hugo and Otto and another which she handed down on 19 Aug 2021 after a one-day hearing on 29 July 2021.
This was an action for infringement of unregistered Community design, unregistered design right and copyright and passing off. The action proceeded in the small claims track of the Intellectual Property Enterprise Court. It is notable for two reasons. The first is that the district judge sat in Manchester Civil Justice Centre though the trial was conducted over a video link. The second is that she decided that the Intellectual Property Enterprise Court had no jurisdiction to try actions for infringement of unregistered Community designs that had lapsed before 23:00 on 31 Dec 2020.
According to the Business and Property Courts (B&PCs) Judges in Manchester web page, District Judge Woodward is one of two nominated Intellectual Property and Enterprise Court judges in Manchester. The other is District Judge Obodai. District Judge Woodward specialised in employment and discrimination law and in commercial litigation when she was at the Bar while District Judge Obadai was a commercial litigation partner at a Manchester law firm and president of the Manchester Law Society.
There are Business and Property Courts at Birmingham, Bristol, Cardiff, Leeds, Liverpool and Newcastle upon Tyne but none of the web pages for the other court centres mentions Intellectual Property Enterprise Court designated district judges.
The small claims track hears claims for the infringement of intellectual property rights other than patents, registered designs, chip topographies and plant breeders' rights worth £10,000 or less that can be tried in a single day. I have written several articles about this jurisdiction which can be accessed at Small IP Claims in NIPC News. Readers should also see the Guide to the Intellectual Property Enterprise Small Claims Track and The Intellectual Property Enterprise Court Guide.
According to the Business and Property Courts (B&PCs) Judges in Manchester web page, District Judge Woodward is one of two nominated Intellectual Property and Enterprise Court judges in Manchester. The other is District Judge Obodai. District Judge Woodward specialised in employment and discrimination law and in commercial litigation when she was at the Bar while District Judge Obadai was a commercial litigation partner at a Manchester law firm and president of the Manchester Law Society.
There are Business and Property Courts at Birmingham, Bristol, Cardiff, Leeds, Liverpool and Newcastle upon Tyne but none of the web pages for the other court centres mentions Intellectual Property Enterprise Court designated district judges.
The small claims track hears claims for the infringement of intellectual property rights other than patents, registered designs, chip topographies and plant breeders' rights worth £10,000 or less that can be tried in a single day. I have written several articles about this jurisdiction which can be accessed at Small IP Claims in NIPC News. Readers should also see the Guide to the Intellectual Property Enterprise Small Claims Track and The Intellectual Property Enterprise Court Guide.
As I said in How Brexit has changed IP Law in IP after Brexit on 17 Jan 2021, art 57 of the agreement for the withdrawal of the UK from the European Union provided for continued protection in the UK of unregistered Community designs that would have come into being before 23:00 on 31 Dec 2020 for the remainder of their term and the creation of a similar UK intellectual property right to protect such designs that might come into being afterwards. That article was implemented by para 30 of Sched 2 of The Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 which substituted a new art 82 for arts 82 and 83 of the Community designs regulation. That new article conferred a fresh jurisdiction on the Intellectual Property Enterprise Court in relation to unregistered Community designs that continued after 31 Dec 2020 but not in respect of infringements of unregistered Community designs that had expired before that date. Only a Community design court could entertain infringement cases in respect of unregistered Community designs that had expired before 31 Dec 2020 and the Intellectual Property Enterprise Court had ceased to be a Community design court at 23:00 on 31 Dec 2020.
District Judge Woodward said at para [7] of her judgment:
"In my judgment, Article 82 is clear in that the Community Design Regulations only apply to pending proceedings in the UK post Brexit where the EU unregistered design right was continuing on IP completion date. I accept the defendants’ case that as this court is not sitting as a Community Design Court I do not have jurisdiction to determine any issue therefore concerning a Community design that lapsed prior to IP completion date."
"In my judgment, Article 82 is clear in that the Community Design Regulations only apply to pending proceedings in the UK post Brexit where the EU unregistered design right was continuing on IP completion date. I accept the defendants’ case that as this court is not sitting as a Community Design Court I do not have jurisdiction to determine any issue therefore concerning a Community design that lapsed prior to IP completion date."
She, therefore, dismissed that part of the claim although the claimant succeeded on the other issues.
Even though it is not reported I shall mention District Judge Woodward's decision in my talk on IP after Brexit which I shall deliver between 11:50 and 12:40 on 9 Dec 2021 at the Cambridge IP Law Winter School at Downing College.
Anyone wishing to discuss this article or any of the topics mentioned in it may call me on 020 7404 5252 during office hours or send me a message through my contact form.
Anyone wishing to discuss this article or any of the topics mentioned in it may call me on 020 7404 5252 during office hours or send me a message through my contact form.
Comments