Licensing Design Rights And The Burden Of Protection

• Published date: 16 February 2022
• Subject Matter: Intellectual Property, Licensing & Syndication
• Law Firm: Dehns
• Author: Mr Paul Harris

In this article, Paul Harris, Dehns' Head of Litigation, reviews the recent Evans V Joseph Joseph Ltd case which considers the licensing of design rights and the burden of protection.

Mini-summary

The legal principles surrounding the construction of a contract, have followed well trammelled lines ever since Lord Neuberger set out his six criteria in Arnold v Britton [2015] UKSC 36, considered by Lord Hodge in Wood v Capita [2017] UKSC 24. Of these criteria, the two generally fought over the most are 'the natural and ordinary meaning' of words or phrases, and 'the facts and circumstances' relevant at the time.

In considering the extent of a specific burden on a party, the relevant factual matrix has now become a key battleground. This was explored in the case of Evans and anor v Joseph Joseph Ltd and anor [2022] EWHC 192 (Ch). Of particular interest, were the terms 'best efforts', 'parties mutually agree' and 'beneficial'. Important too was the extent of the obligation on a party relating to renewals of designs.

What are the practical implications of this case?

It is doubtful there is any lawyer reading this, who has drafted a contract (most likely under client pressure to get it done), who has not wondered as time has passed whether the parties were going to fall out and his/her drafting was going to be picked apart and torn to shreds.

Like many things, words and phrases have something of a fashion cycle, and what was once prevalent and understood 20 years ago, may have long since been dropped from the contractual vocabulary by the time the parties being their dispute. Some words and phrases, however, do stand the test of time.

Although this case relates to design rights, the legal principles, and particularly the finding (in the factual matrix and context of this case) upon whom the burden of renewals is placed, is applicable across the board of IP rights. This is all the more so if there is any variation of the contract relating to ownership of the rights.

Also of interest is the impact on the original bargain entered into, of any variations. As the contract must be construed as at its date, any Deed of Variation will change that to the date the Deed is entered into. This means the court is obliged to reconsider the factual matrix at that point, and whether, therefore, any meaning has been altered as a result.

Finally, and a perennial issue, consideration was given to what reporting and accounting information JJL needed to provide Mr Evans with.

What...