It’s nearly Christmas, and soon after that it will be 2025. So I thought it would be interesting to look back at what has gone on in 2024 in the Intellectual Property Enterprise Court.
At the time of writing, there are 17 published IPEC judgments on BAILII in the year of 2024. Perhaps there will be one or two more before the end of the year, but 17 was also the total count for 2023, quite a drop from 2022 (30).
This of course is a small percentage of cases which are issued. Sequentially typing case numbers into the Court’s public search facility suggests there have been about 135 claim forms issued so far this year, and a similar number issued in 2023. And who knows how many lawyers’ letters were written threatening litigation which never ended up happening. Most cases settle, and that is usually a good thing.
Of those 17 judgments in 2024, nine are strike-out applications, interim applications, and various procedural wranglings. Some of them are interesting but I am going to put those to one side and look at the eight left that actually dispose of some IP dispute.
The first one of the year, Thatchers Cider Company Ltd v Aldi Stores Ltd[1] is (you’d never guess) a trade mark infringement and passing off dispute about “lookalike” product packaging. Aldi are quite good at this game, and they won. There was no likelihood of confusion, and no unfair advantage taken. The case though is a nice illustration that, while the IPEC is for the smaller cases, it’s a perfectly suitable venue for a dispute between two rather large and well-known companies. Clearly this wasn’t bet-the-company stuff for either party, but they have used the streamlined IPEC procedure to resolve their dispute.
Not confusing
Other legally-unspectacular decisions on trade marks include Engineer.Ai Global Ltd v Appy Pie Ltd[2] (“Builder” is not a very distinctive trade mark for a tool used to make software) and Morley’s (Fast Foods) Ltd v Sivakumar & Ors[3] (if your evidence is “unreliable and, on some occasions, lacking in credibility or actually untruthful”, then you are probably going to lose).
Thurgood v Laight & Anor[4] is a passing off case which merits mention if only to show that goodwill and an enforceable right to prevent passing off can and does accrue even to quite small local businesses – in this case a dog grooming business where the sign “WASH WIGGLE & WAG” had been used mostly on the side of a van for about 18 months. The proprietor, a sole trader, was able to prevent a former employee from competing under the same name.
Before we leave the trade marks category, AGA Rangemaster Group Limited v UK Innovations Group Ltd & Anor[5] is an interesting story. The Defendant refurbished AGA cookers and converted them to electric operation using its “eControl System”. The Defendants asserted an “exhaustion” defence – they had, they said, every right to say that the second-hand cooker they were selling was an AGA just as if I sell you my car I can say it is a Hyundai. The conversion and refurbishment works themselves gave the Claimants no legitimate reasons to object to the use of the “AGA” mark, but in the end the Defendant went just too far with how the cookers were marketed. They sold their converted and refurbished cooker as an “eControl AGA”, and that “unfairly sought to link the eControl Cookers and the eControl System to the AGA brand”.
AGA Rangemaster also contained a copyright dispute, and is the first of a trio of cases this year which touch on the definition of an “artistic work” and the complete mess the CJEU have left us in following Cofemel[6]. Section 51 of the Copyright, Designs and Patents Act 1988 says that “it is not an infringement of any copyright in a design document… recording… a design for anything other than an artistic work… to make an article to the design”. AGA’s design documents had been (indirectly) copied, by making a control panel. Was the control panel an artistic work? And were the markings on it “surface decoration”? The judge said “no” to both, though this was treated shortly, is perhaps questionable in parts, and it is recorded that neither party really addressed the issues. Presumably, they both saw this as a subsidiary issue in what was primarily a trade mark infringement matter which needed to fit into the two days allowed for an IPEC trial.
Not artHowever, Equisafety Ltd v Woof Wear Ltd[7] and WaterRower (UK) Ltd v Liking Ltd[8] are all about artistic works, and in particular the famously elusive definition of a “work of artistic craftsmanship”. It has been widely thought for a while that UK law on this is just irreconcilably incompatible with the CJEU’s decision in Cofemel, but not a lot of disputes have gone to trial, and judges have found ways around the conflict in particular cases. In WaterRower however, there was no skirting around the problem. According to Marleasing[9] domestic legislation must be construed “as far as possible in conformity with, and to achieve the result intended by, the [EU] directive”, and following Brexit this still applies, at least in the lower courts, to “retained EU law”. But the Marleasing principle is an interpretive obligation, not an invitation to re-write the law. The judge in WaterRower found that it was simply not possible to interpret UK law in conformity with the EU directive and case law. No copyright subsisted in the rowing machine therefore because it was not a “work of artistic craftsmanship”. The story may not be over yet as the time for seeking permission to appeal does not start to run until the hearing on the form of Order.
Both Equisafety and WaterRower also addressed multiple versions of works, and whether a modified “version 2” of an artistic work qualifies for copyright protection as a new work. In both cases the modifications amounted to something like “functional improvements”, “practical solutions” (Equisafety), arising from “workmanlike, practical decisions” (WaterRower), and there was no originality (per EU law) in them.
Not art Not art either
In case you’ve lost count, there’s one left. Barber v Wakefield & Ors[10] is a registered design infringement about a “letterbox tool” – something used by locksmiths, security agents and sometimes the police to reach in through a letterbox to turn a handle or retrieve a key to open a door. Both parties represented themselves in this action, which was started on the IPEC small claims track but transferred, because the rules state that registered design cases must be heard in the multi-track. A few years ago there was a consultation on changing this (I wrote in to say I thought changing it would be a good idea), but things seem to have gone quiet. Perhaps that idea will be picked up again now because Barber is an obvious small claim about a registered design. HHJ Hacon seems to have handled it more or less as a District Judge would have done in the small claims track, the result was “honours are about even” and there was no order as to costs.
In Barber, the alleged infringement was found to produce the same overall impression on the informed user and therefore would have infringed. However, the making and giving away of a single product was found to have been done “privately and for purposes which are not commercial”. This seems questionable to my mind, but it hardly matters because there was only ever one of them and there is now an injunction to stop any more. If the Defendants want to make such a tool then they can, but it will have to look different. Overall, this seems like a dispute which was crying out for a bit of legal input and some sensible dispute resolution (if not outright dispute avoidance).
But what’s this? A novel legal point! The Defendant Mr. Wakefield pointed out that his allegedly infringing product had to be put together by the user, and could be put together in ways that looked like the registered design as well as ways that didn’t. HHJ Hacon could find no UK authority, and only a reference to a Dutch case the judgment of which could not be accessed in full. Given the lack of any authority or assistance from Counsel in what was essentially a small claim, the resolution of this probably needs to be taken with a bit of a pinch of salt, but what the judge decided was that “if the accused design would infringe in a configuration of the accused product likely to be used by the end user, that is sufficient to establish infringement”.
So that’s everything. No patent judgments this year (although in one of those interim decisions which I put aside, Well Lead Medical Co Ltd v CJ Medical Ltd[11], the Defendant accused of patent infringement successfully resisted an application for an interim injunction), but the Court seems to have done a pretty good job on the trade mark and passing off disputes for parties ranging from Thatchers Cider (turnover £175m) and Aldi (£17.8bn) down to Ms. Thurgood (one van). On copyright all the action has been here, and it will be interesting to see how the conclusion in WaterRower plays out in higher courts, and in the longer term in any amended legislation. Let’s see what 2025 bring us…
1[2024] EWHC 88 (IPEC) 2[2024] EWHC 1430 (IPEC) 3[2024] EWHC 1369 (IPEC) 4[2024] EWHC 2947 (IPEC) 5[2024] EWHC 1727 (IPEC) 6 C-683/17, EU:C:2019:721 7[2024] EWHC 2478 (IPEC) 8[2024] EWHC 2806 (IPEC) 9Marleasing SA v La Comercial Internacional de Alimentacion SA (C-106/89) ECLI:EU:C:1990:395 [1990] ECR I-4135 10[2024] EWHC 3058 (IPEC) 11[2024] EWHC 951 (IPEC)
