Ifejika v Ifejika & Anor

The Court of Appeal allowed the claimant's appeal against a Part 24 dismissal of his registered design claim. Central legal principles were the meaning of "the person claiming to be the proprietor" under s.1(2) of the Registered Designs Act 1949 and the scope of s.2(2) in recognising proprietorship arising by assignment, transmission or operation of law. The court held that design rights, like other choses in action, can be assigned in equity and that the combination of an intention to vest rights in a vehicle company and registration in the company's name can be sufficient to effect an equitable assignment. The judge at first instance erred in concluding that failure to show a prior written legal assignment was fatal and in treating s.1(2) as requiring a coastal timing distinction between assignment and registration. The appeal court concluded that, on the pleaded case, it was at least seriously arguable that CCL acquired title in equity or, alternatively, that the claimant remained original proprietor and that cancellation was therefore inappropriate.

This was an appeal from a Part 24 judgment of HHJ Fysh QC made on 8 October 2009 in the Patents Court. The claimant, Victor Ifejika, sued for an injunction and damages for alleged infringement of UK Registered Design No. 2 003 357 and for unregistered design right in a contact-lens cleaning device. The registered design had originally been registered in the name of CCL Vision Limited in 1989. The defendants applied under CPR Part 24 seeking judgment that the registered design was invalid and that the action was an abuse of process; the judge acceded to that application in respect of the registered design claim.

Nature of the claim and relief sought:

• The claimant sought injunction and damages for registered design infringement and for unregistered design right infringement.
• The defendants sought summary judgment under CPR Part 24 dismissing the registered design claim as invalid.

Issues framed by the court:

• Who was the proprietor of the registered design for the purposes of s.1(2) and s.2(2) of the Registered Designs Act 1949?
• Whether an equitable assignment (or other operation of law) could have vested title in CCL such as to entitle it to register the design in its name.
• Whether the absence of a written legal assignment prior to registration meant the registration was invalid and should be cancelled under s.20 RDA.

Court's reasoning:

• The appellate court held that design rights can be assigned in equity and that the general rules of equitable assignment apply. The evidence that CCL was intended to be used to exploit the design, together with registration in CCL's name, could be sufficient to create an equitable assignment. The judge at first instance had been wrong to treat non-compliance with a prior written assignment as necessarily fatal.
• The court rejected the requirement for a temporal "scintilla temporis" between assignment and registration: an applicant's claim to be proprietor is satisfied where, as a result of registration, the applicant will acquire the necessary rights by equitable assignment or operation of law.
• Alternatively, even if no equitable assignment to CCL were established, the claimant could establish title as original proprietor and the register as it now stood recorded the claimant as registered proprietor. Cancellation was therefore a disproportionate remedy: the Part 24 application should have been dismissed.

Other procedural and factual points included that the unregistered design claim was not finally determined by the Part 24 application and would proceed to trial, and that there were ancillary company issues (dissolution, restoration and possible bona vacantia under s.654 Companies Act 1985) that were not resolved on the appeal.

This was an appeal and it was allowed. The Court of Appeal held that the judge erred in concluding that the absence of a prior written legal assignment meant the registration was invalid. The court held that (i) equitable assignment of design rights is possible and the pleaded facts made such an assignment at least seriously arguable, and (ii) alternatively the claimant could establish title as original proprietor, so cancellation was inappropriate. The proper course was to dismiss the Part 24 application rather than cancel the registration.

Appeal from the Chancery Division (Patents Court) before HHJ Fysh QC, order dated 8 October 2009 (Part 24 judgment). Permission to appeal was granted by the judge and the Court of Appeal (Patten LJ, Rix LJ, Maurice Kay LJ) heard the appeal on 12 May 2010 and handed down judgment on 25 May 2010, allowing the appeal.