Court determines ownership issues in brotherly dispute

United Kingdom

In Ifejika v Ifejika ([2011] EWPCC 31, November 23 2011), in a fraternal dispute that has raged over many years, the Patents County Court of England and Wales was called upon to determine issues of ownership and infringement of UK registered and unregistered design rights.

Victor Ifejika claimed to be the proprietor of Registered Design 2 003 357 in respect of a design for a contact lens cleaning device. The registration consisted of photographs of a prototype of a product called the CLC 60 device. Victor Ifejika’s case was that the prototype had been produced pursuant to a commission from him. This registered design was alleged to be infringed by the Lens Care and AMO devices. 

The defendants, Charles Ifejika (brother of Victor) and Lens Care Limited (of which Charles Ifejika was a director), admitted that the Lens Care product would infringe but denied that the AMO product would infringe. In any event, they argued that the registered design was invalid due to the application of the rules of proprietorship. 

The registered design was applied for and granted to a company called CCL (Vision) Ltd (of which the two brothers had been owners). The defendants put forward various alternative arguments, each of which were said to produce the result that the registration would be invalid. All of the propositions hinged on the argument that CCL (Vision) Ltd was never, and could never, have been the proprietor.

The primary position was that Charles Ifejika had commissioned the making of the CLC 60 prototype and, because CCL had not acquired title from him, the registration failed. In the alternative, it was said that the brothers were joint proprietors, but, again, CCL had not acquired title so the registration failed. Finally, it was argued that, even if the court found that Victor Ifejika had commissioned the CLC 60 prototype, Victor Ifejika had not passed title to CCL. 

Assuming the registration to be valid, the defendants argued that there was no infringement by the AMO device, as the registered design and the AMO device created a different overall impression on the informed user. 

Victor Ifejika claimed to be the owner of UK unregistered design right that subsisted in a prototype lens cleaning device referred to as the Hot House prototype. It was alleged that both the Lens Care and AMO devices were made by copying parts of the Hot House prototype.

The defendants contended that most of the features of the Hot House prototype were not original. To the extent that any features were original such that unregistered design rights subsisted, they argued that only those specific features could be relied on. The defendants also argued that the term of any unregistered design right had expired due to Victor Ifejika having sold some examples of a product that included some of the features of the Hot House product. In any event, according to the defendants, neither of their two products infringed because neither had been produced exactly or substantially to the design.

In coming to his decision on registration, the judge was required to unravel a complex set of facts concerning the generation of various different designs over 20 years ago. Ultimately, the judge found that both brothers had commissioned the design in issue. 

As a consequence, the design did not belong to CCL when it was applied for and should not have been registered to that company. Further, it did not belong to Victor Ifejika (who had subsequently amended the register to become the sole owner) either. Therefore, the judge cancelled the registration.

On originality, the judge found that, externally, the Hot House prototype did not differ much from the CLC 60 prototype. However, there were some differences, including the lens holder body (the hinge detail, the distinctive style of the lens covers and the separately moulded rubberised lens support), the battery door, the battery holder, the internal aspect of the casing, the external undercut detail of the casing and the combination of drive shaft and beaker cap. 

The judge found that design rights did indeed subsist in the aspects listed above, as they each represented original, not commonplace, designs of aspects of the shape and configuration of the whole, or parts of the article. There was no challenge to Victor Ifejika's assertion that he had commissioned the Hot House prototype; thus, the conclusion was that Victor Ifejika was the owner of the unregistered design right.

Section 216(1) of the Copyright, Designs and Patents Act 1988 provides that the term of UK unregistered design right is 15 years from the end of the calendar year in which the design was first recorded or articles were made to the design (whichever is first) or, if articles made to the design were made available for sale or hire within five years from the end of that calendar year, 10 years from the end of the calendar year in which that first occurred. To find the start date for this calculation, the defendants contended that Victor Ifejika had sold certain 'barrel' contact lens cases from 1992 onwards and that this meant that the term of the right had now expired.  Victor Ifejika argued that he had indeed sold some such items, but that the amount was minimal and therefore irrelevant. He argued that only sales on a sufficient scale to satisfy the reasonable demands of the public would count and that sales on a lower scale would not trigger Section 216(1)(b) (which refers to articles being made available for sale). 

The judge disagreed, finding that any making available for sale, on any scale, is relevant for the section to apply: "I can see no reason why a term requiring sales to be on a certain scale should be read into the provision". Accordingly, the sales were relevant. However, comparing the products in question, the judge found that only the lens holder body (including the hinge detail, the distinctive style of the lens covers and the separately moulded rubberised lens support) was present in the 'barrel' cases sold by Victor Ifejika. As a result, unregistered design right in that feature expired at the end of 2002. Since none of the other features of the Hot House prototype were present in the 'barrel' case, unregistered design right in those features expired at the end of 2007.

On a comparison of the unregistered design features and the defendants’ products, the judge ultimately found that both the Lenscare and the AMO devices infringed Victor Ifejika 's unregistered design right in the Hot House prototype.

This fraternal dispute has already seen a separate patent dispute and has run through summary judgment (with appeal). There will likely be further opportunity for acrimony as the parties move on to an enquiry as to damages. However, in this case, ultimately, both brothers were judged to be in the wrong. Charles Ifejika was found to have infringed some of his brother’s intellectual property, but on the other hand, he was found to be jointly entitled to the design of the original prototype lens cleaner where his brother had denied this. Following his making these observations, the judge ended his judgment with a comment that he hoped that the brothers may now reconcile:

I cannot end without expressing the hope that the parties now take the time and effort to settle what remains of this bitter dispute once and for all. In the biblical story of Esau and Jacob, Jacob steals his brother's birthright. It leads to a bitter dispute which lasts for many years but even then the brothers are finally reconciled (Genesis 33:1-20). Victor and Charles Ifejika should now strive to do the same.”

Robert Lundie Smith, McDermott Will & Emery UK LLP, London

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