Ifejika v Ifejika & Anor
2014
INTELLECTUAL PROPERTY ENTERPRISE COURT
United Kingdom
CORAM
- HIS HONOUR JUDGE HACON
Areas of Law
- Intellectual Property Law
2014
INTELLECTUAL PROPERTY ENTERPRISE COURT
United Kingdom
CORAM
AI Generated Summary
In this case, Victor Ifejika sued his brother Charles Ifejika over design right infringements related to a contact lens cleaning device. Judge Birss initially ruled on the design right issues, leading to the cancellation of the registration and finding certain infringements. Damages for one product were assessed previously, while an inquiry for the selling profits of the second product was conducted. In the current proceedings, Judge Hacon determined the total net profit from infringing sales was £790,000, of which £15,800 was attributed to the infringing feature. The decision concluded that Charles must pay this amount to Victor.
Judgment
Judge Hacon :
Introduction
This is an account of profits. It marks the end phase of a long dispute between Mr Victor Ifejika and his brother Mr Charles Ifejika. I hope they will not take objection to my referring to them by their first names in this judgment for obvious reasons of avoiding confusion and for brevity.
Victor brought proceedings against Charles for infringement of a UK registered design and infringement of UK unregistered design rights. All rights relied on by Victor concerned the design of a contact lens cleaning device. Two products were alleged to infringe, called the ‘Lenscare product’ and the ‘AMO product’. These were marketed by the Second Defendant (“Lens Care”).
In a judgment dated 23 November 2011 HH Judge Birss QC found that Charles was jointly entitled to have been registered as proprietor of the registered design and cancelled the registration. He ruled that some of the unregistered design rights relied on by Victor were infringed by sales on the part of Lens Care of both the AMO and Lenscare products. He also found that Charles was personally liable for the infringements of Lens Care.
Damages in relation to the Lenscare product were summarily assessed. The parties had agreed that in relation to that product the maximum damages could be was £35. Judge Birss pointed out that the infringing parts of the Lenscare product were by no means the whole of the article and made an apportionment taking into account the significance of the infringing part. He awarded damages of £10.
Judge Birss ordered an inquiry (or alternatively, by implication, an account) in relation to the sales of the AMO product, noting (at [192]) that the parties’ position on likely damages ranged from £25,000 (Charles) to £½ million (Victor). He made three observations. First, that fewer aspects of the AMO product infringed Victor’s unregistered design rights than was the case in relation to the Lenscare product and that this would influence the apportionment to be conducted when assessing damages (or profits). Secondly, a licence of right was available under the unregistered design rights from 2003 to 2007 (specifically 1 January 2003 to 31 December 2007). Thirdly, what Judge Birss referred to as the ‘hinge aspect’ of the unregistered design rights expired in 2002.
The design rights relied on by Victor were in the design of what was called the ‘Hot House prototype’ lens care product. Before Judge Birss Victor identified 10 features of the Hot Hous