Ifejika v Ifejika and Another
| Jurisdiction | England & Wales |
| Judge | Lord Justice Patten,Lord Justice Rix,Lord Justice Maurice Kay |
| Judgment Date | 25 May 2010 |
| Neutral Citation | [2010] EWCA Civ 563 |
| Docket Number | Case No: A3/2009/2472 & 2472(A) |
| Court | Court of Appeal (Civil Division) |
| Date | 25 May 2010 |
[2010] EWCA Civ 563
IN THE COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM THE CHANCERY DIVISION
PATENTS COURT
His Honour Judge Fysh QC
Before: Lord Justice Maurice Kay
Vice President of the Court of Appeal, Civil Division
Lord Justice Rix
and
Lord Justice Patten
Case No: A3/2009/2472 & 2472(A)
HC08C00480
The Appellant appeared in person
Anna Edwards-Stuart (instructed by Jenson & Son) for the Respondents
Hearing date: 12 th May 2010
Lord Justice Patten:
This is an appeal by the claimant, Mr Victor Ifejika (“Victor”), against an order of HHJ Fysh QC (sitting as a Deputy Judge of the Chancery Division) dated 8 th October 2009 which was made on an application by the Defendants for judgment under CPR Part 24. The appeal is brought with the permission of the judge.
The action was commenced on 21 st February 2008. Victor seeks an injunction and damages in respect of the alleged infringement of UK Registered Design No. 2 003 357 and of unregistered design right in what is referred to in the pleadings as the Hot House prototype. Both are designs for a contact lens cleaning device. The registered design is said to have originated out of drawings produced by a design company called Murdoch's Industrial Design Limited (“Murdoch”) which in the particulars of claim Victor alleges that he commissioned and paid for in order to enable him to produce a prototype (the CLC 60) which forms the subject matter of the registered design (“the Design”). The Hot House prototype was created from manufacturing drawings produced by a firm called Hot House Development Partners and again (it is alleged) was commissioned and paid for by Victor.
Although the Defendants’ Part 24 application related to both aspects of the claim, the judge acceded to it only in respect of the registered design claim and it is not therefore necessary to say anything further about the allegations of infringement in respect of unregistered design right. These will proceed to trial in any event in accordance with the amended pleadings, permission for which was given as part of the order of 8 th October. It will, however, be necessary to refer to parts of the consolidated particulars of claim (which were served after the hearing but before judgment) because these also set out the latest version of Victor's pleaded case on registered design infringement.
As of the hearing on 23 rd July 2009 Victor's pleaded case (in the form of amended particulars of claim dated 26 th May 2009) was that he is the registered proprietor of the Design as a result of an assignment in writing made between him and CCL Vision Limited (“CCL”) dated 19 th February 2008. The Design was first registered on 15 th December 1989 in the name of CCL as a result of an application made on behalf of the company by a firm of chartered patent attorneys, Graham Jones & Company.
CCL was incorporated in 1989 as a joint venture company between Victor and his brother, Charles, the first defendant. Each of them had one share. But subsequently the share capital was increased in May 1991 to 19,999 issued shares of which Victor held 19,998. We are told that this was done in order to satisfy the requirements of banks and other creditors but nothing turns on this for the purposes of this appeal.
As mentioned earlier, the amended particulars of claim alleged (in paragraph 5) that the Murdoch design drawings used to produce the CLC 60 were commissioned and paid for by Victor but no date was given as to when they were made. However, in a request for further information served on 3 rd July 2008, the defendants asked for particulars of when the drawings referred to were commissioned and produced. This information was supplied on 8 th September 2008. The response was that the drawings were commissioned on or about 7 th February 1989 and that they were produced on or about 10 th February 1989.
It was therefore Victor's pleaded case before the judge that the CLC 60 prototype was based on February 1989 Murdoch drawings and this is confirmed in the consolidated particulars of claim served subsequently on 28 th July 2009 which (in paragraph 3) described the 1989 drawings as modifications of some initial drawings produced by Murdoch in November 1988. As part of this appeal Victor has made an application to adduce further evidence which includes some of the prototype designs, although he tells us that the 1989 design drawings no longer exist. That application was not, however, pursued when we indicated that we could not embark on any kind of fact-finding exercise of our own. What is, however, important, as I have indicated, is that it was Victor's pleaded case at the time of the Part 24 hearing that the CLC 60 prototype emerged from the February 1989 design drawings and not from the work originally carried out by Murdoch in 1988.
The claim that the Design has been infringed is based on the manufacture and sale of at least two contact lens cleaning devices by the Second Defendant which is a company owned and controlled by Charles. The sales relied on took place between March 2002 and October 2003. By 1991 CCL was in severe financial difficulties. On 12 th December 1995 it was struck off the Register of Companies and subsequently dissolved for failing to file accounts. By the time that the sales of the allegedly infringing products took place it had therefore ceased to exist and the Design had probably become the property of the Crown as bona vacantia pursuant to the provisions of s.654 of the Companies Act 1985. But on 17 th November 2003 (on the application of Victor) Registrar Derrett made an order under s.653 of the Companies Act restoring CCL to the register. The statutory effect of that order was that the company was deemed to have continued in existence as if its name had not been struck off the register: see s.653(3). Notwithstanding this there may be an issue if the registered design claim is tried as to whether CCL is entitled to damages for infringement in respect of the period when it remained struck off. That is not, however, a matter for us and will not, of course, affect the claim for an injunction or for delivery up.
In their defence served on 3 rd July 2008 the Defendants (in paragraphs 14–17) do put in issue the effect of the dissolution of CCL and whether it retained the right and title to the Design. But their principal defence was to deny Victor's claim that he commissioned the drawings on which the Design is based and to allege that the relevant commission was by Charles or by Charles and Victor jointly. This was pleaded by reference to the initial design drawings made by Murdoch in 1988. The defence does not make any reference to the drawings produced in 1989 and was not amended even when the further information supplied in September 2008 confirmed that Victor was relying on the 1989 drawings in the particulars of claim. On the basis that Charles commissioned the relevant drawings (or did so jointly with Victor), the Defendants denied that Victor was ever the sole proprietor of the Design. In paragraph 7 of the defence they pleaded that there had been no assignment of title to CCL by either Charles alone or by him and Victor jointly and that, in these circumstances, Victor could confer no title to the as yet unregistered design rights on CCL. The registration of the company as the proprietor of the Design on 15 th December 1989 was therefore invalid.
In their request for further information the Defendants had also asked for particulars of the basis on which it was alleged that CCL was entitled to register itself as proprietor of the Design and for copies of any relevant assignments of the design rights relied upon. This request was answered by paragraph 9 of the reply also served on 8 th September 2008. In paragraph 8 of the reply Victor repeated his claim that Murdoch produced design drawings prior to the application for registration of the Design and that the 1988 drawings were preliminary drawings produced for the purposes of a DTI project which ended on 30 th November 1988. In paragraph 9 his counsel (Mr Hamer) pleaded that:—
“… The Claimant chose to register the design in the name of CCL Vision Limited, because CCL Vision Limited was the vehicle by which he intended to exploit the said design. No assignment was necessary: the company held the same on trust for the Claimant.”
The Defendants’ application for Part 24 judgment was issued on 27 th January 2009. It asked for judgment for the Defendants in the action on the basis that the registered design was invalid and that the entire action was an abuse of process. The second ground relates to some earlier proceedings in the Patent Office in which Victor unsuccessfully sought a declaration of entitlement to European Patent (UK) No. 394254 and to the points taken in the defence about the dissolution of CCL. But the only reference to the validity of the registration contained in Charles’ witness statement in support of the application is his evidence that he commissioned the relevant Murdoch designs and that CCL was intended to be no more than an exclusive licensee of the Design and not the owner of it. Victor, he alleges, procured the registration of Charles’ design rights in the name of the company without his knowledge or consent. There has, however, been no application either as part of the proceedings or otherwise for cancellation of the registration under s.20 of the Registered Designs Act 1949 (“RDA”).
If Charles is right and...
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