Ifejika v Ifejika & Anor

Registered design rights, as choses in action, may be assigned in equity as well as at law. Under the Registered Designs Act 1949, s.2(2) imposes no particular form of assignment or transmission. A sufficient intention to transfer, inferred from the transaction, may be completed by registering the intended transferee as proprietor. The application requirement in s.1(2) does not require a temporal gap between vesting and registration. It is enough that the applicant claims to be proprietor and will acquire title through registration by equitable assignment or operation of law. If the transfer or registration is challenged, the original proprietor may still establish title. Cancellation is inappropriate where the register can instead be varied to reflect that title.

Victor Ifejika appealed against an order of HHJ Fysh QC, sitting in the Patents Court, which granted the defendants judgment under Civil Procedure Rules 1998, Part 24, on his claim concerning a registered design for a contact lens cleaning device. The judge treated the absence of a prior written assignment to CCL Vision Limited as fatal to the registration.

The appeal concerned whether CCL could have acquired title by equitable assignment through the parties’ arrangements and the registration of the design in its name. It also concerned whether cancellation was appropriate if Victor remained the original proprietor. The unregistered design-right claim was not determined on the appeal.

1. Disposition. Patten LJ, with whom Rix and Maurice Kay LJJ agreed, allowed the appeal. The defendants’ Part 24 application should have been dismissed. The underlying factual dispute about who commissioned the design drawings remained for trial.
2. Design rights are choses in action and may be assigned either at law or in equity. Section 2(2) of the Registered Designs Act 1949 imposes no formal requirements for assignment or transmission. The general principles governing equitable assignments therefore apply.
3. An equitable assignment requires a sufficient expression of an intention to assign, considered in the context of a transaction from which the intended passing of the property can be inferred. The court applied the principle stated in William Brandt’s Sons & Co v Dunlop Rubber Co Ltd [1905] AC 454 at p. 462, while recognising that a mere agency to receive money is different from an assignment.
4. CCL was intended to exploit the design and therefore needed to become its registered proprietor. If Victor established that the design was intended to be transferred to CCL for that purpose, the evidence of intention coupled with registration in CCL’s name was likely to create an equitable assignment. It was immaterial that CCL might hold the design on trust, since only the registered proprietor could bring infringement proceedings or grant licences, and beneficial interests were excluded from the register.
5. The requirement in s.1(2) that an application be made by the person claiming to be proprietor was satisfied where the applicant would acquire the necessary rights through the registration by equitable assignment or operation of law. No scintilla temporis between vesting and registration was required. The court applied the title principle discussed in AL BASSAM Trade Mark [1995] RPC 511 at p. 522.
6. Alternatively, even if the arrangements had not created an equitable assignment or valid registration in CCL’s name, Victor would remain the original proprietor if he established that he commissioned the drawings. Since the register recorded Victor as proprietor, cancellation under s.20 was inappropriate; variation to reflect the correct basis of registration would avoid form triumphing over substance. Woodhouse UK PLC v Architectural Lighting Systems [2006] RPC 1 was distinguishable because the registration there had been made by mistake for a party never intended to have an interest.
7. A new and unpleaded allegation that Victor commissioned the drawings as CCL’s director was not taken into account. It would require amendment and consideration at a later case management conference.

• Court of Appeal (Civil Division): Allowed Victor Ifejika’s appeal against the order dated 8 October 2009.
• Chancery Division, Patents Court: HHJ Fysh QC granted the defendants’ Part 24 application on the registered design claim. The unregistered design-right claim was allowed to proceed to trial.