Licensing Design Rights And The Burden Of Protection

• Published date: 16 February 2022
• 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...