David Ivison

Kigen v Thales

Iain Purvis KC, Kathryn Pickard, David Ivison and Miruna Bercariu were instructed by Reed Smith LLP to act for Kigen in the Kigen v Thales HP-2022-000011 FRAND dispute relating to standards-essential eSIM patents. This...

Abbott Diabetes Care Inc. & ors v Dexcom Incorporated & ors [2024] EWHC 36 (Pat) – Trial A

Abbott Diabetes Care Inc. & ors v Dexcom Incorporated & ors [2024] EWHC 36 (Pat) This is a patent case relating to continuous glucose monitoring (“CGM”) technology, which now plays an important role in the man...

Gnat and Company Limited & anr v West Lake East Limited & anr [2022] EWHC 319 (IPEC)

This was a dispute between two restaurant businesses. The Claimants' group has operated the “China Tang” Cantonese restaurant at the Dorchester Hotel in London since 2005. The Defendants had operated a Chinese takeaway...

Original Beauty Technology Company Ltd & ors v G4K Fashion Ltd & ors [2021] EWHC 3439 (Ch)

This was the damages inquiry in an unregistered design case involving two fashion brands: House of CB (the Claimants) and Oh Polly (the Defendants). A liability trial was heard towards the end of 2020: see [2021] EWHC 2...

This was the damages inquiry in an unregistered design case involving two fashion brands: House of CB (the Claimants) and Oh Polly (the Defendants). A liability trial was heard towards the end of 2020: see [2021] EWHC 294 (Ch).

Oh Polly had sold 15,393 garments which infringed House of CB’s unregistered UK and/or Community design rights. House of CB claimed “standard damages” on two bases: (i) lost profits where Oh Polly’s sales had substituted for sales which would have been made by House of CB; and (ii) “user principle” damages where sales substitution had not taken place. Oh Polly accepted that it was liable to pay “user principle” damages, but not damages for lost profit. House of CB sought c. £275,000 in standard damages, while Oh Polly maintained that only c. £15,000 was due.

The liability trial had determined that House of CB was entitled to additional damages pursuant to §229(2) of the Copyright, Designs and Patents Act 1988. House of CB sought a “top up” award of additional damages to take the total to c. £500,000. Oh Polly’s position was that additional damages should be calculated as an “uplift” on standard damages of 20% (on Oh Polly’s case coming to c. £3,000).

The Court held that House of CB was entitled to standard damages under both heads claimed. It determinexd that 20% of Oh Polly’s infringing sales would have been made by House of CB had the infringing garments not been available, and awarded damages for lost profit accordingly; on the remainder of sales a reasonable royalty was awarded of 10% of Oh Polly’s net sales with a guaranteed minimum royalty of £4,000 per design. Standard damages totalled c. £150,000.

In relation to additional damages, the Court determined that an award of £300,000 was appropriate, having regard to the scale of the infringement and its flagrancy, and the need to punish and deter the Defendants from further infringements. This represents the largest reported UK award of additional damages in a design right (or copyright) case.

Thus total damages of c. £450,000 were awarded to House of CB.

Anna Edwards-Stuart and David Ivison appeared for House of CB. Chris Aikens appeared as sole counsel for Oh Polly.

[2021] EWHC 3439 (Ch)

Promptu v Sky [2021] EWHC 2021 (Pat)

In these proceedings the claimant (Promptu) alleged infringement of EP(UK) 1,290,889 (“the Patent”) by the defendants (“Sky”). The Patent is concerned with the voice control of television set-top boxes, and Promptu alleg...

Claydon Yield-O-Meter Limited v Mzuri Limited & anr [2021] EWHC 1007 (IPEC)

This was a claim for infringement of two patents relating to agricultural machinery. The patents were directed to apparatus for performing one-pass “strip tillage”, in which one row of leading tines produces strips of d...

Original Beauty Technology & ors v Oh Polly & ors [2021] EWHC 294 (Ch)

This was a dispute between two fashion brands: House of CB and Oh Polly. Both sides sell bodycon and bandage dresses and other garments, styles made famous by celebrities including Kim Kardashian and Jennifer Lopez, eit...

This was a dispute between two fashion brands: House of CB and Oh Polly. Both sides sell bodycon and bandage dresses and other garments, styles made famous by celebrities including Kim Kardashian and Jennifer Lopez, either primarily or exclusively online. House of CB claimed that Oh Polly copied 91 of their garment designs, thereby infringing their unregistered design rights under UK and EU law. There was also a claim for passing off: House of CB claimed that Oh Polly had copied their business model, social media, marketing, packaging and presentation (including using the same models and the same locations for photoshoots) such that consumers would be deceived into thinking that Oh Polly was a sister brand of House of CB.

Proceedings were streamlined such that at this trial, the Court was asked to determine the claims for unregistered design right infringement in respect of 20 out of the 91 garments in issue, in addition to the claim for passing off. The trial took place remotely over seven days. Following closing submissions, an in-person physical inspection of the garments was held at Oh Polly’s solicitors’ offices at which the parties’ counsel had the opportunity to point out similarities and differences to the judge.

Mr David Stone (sitting as a Deputy High Court Judge) held that Oh Polly had infringed unregistered design rights in seven out of the 20 garments in issue and that House of CB were entitled to additional damages as a result of the flagrancy of that infringement. The unregistered design right infringement claims in relation to the remaining 13 garments were dismissed. The claim for passing off was also dismissed, the judge having held that although House of CB had proved its case in relation to goodwill in some of the pleaded indicia, they had not established on the evidence that sufficient members of the relevant public had been deceived into thinking that Oh Polly was a sister brand of House of CB.

Anna Edwards-Stuart and David Ivison appeared for House of CB. Chris Aikens appeared as sole counsel for Oh Polly.

[2021] EWHC 294 (Ch)

(1) Fit Kitchen Limited (2) Amar Lodhia v Scratch Meals Limited [2020] EWHC 2069 (IPEC)

This was the trial of a claim for trade mark infringement and passing off. The Claimants operate a business called “Fit Kitchen" delivering ready meals tailored to its customers’ specific nutritional requirements. Th...

TQ Delta, LLC v ZYXEL Communications Ltd & Anor [2019] EWHC 562

The Claimant, TQ Delta, was the proprietor of two patents relating to Digital Subscriber Line (“DSL”) broadband internet technology. EP (UK) 1 453 268 concerned a method for controlling the proportion of transmission b...

easyGroup Limited v Easy Rent A Car Limited & anr [2019] EWCA Civ 477

easyGroup commenced proceedings against a Cypriot company and its director for trade mark infringement and passing off. The Defendants had, by the time the English claim was issued, already commenced proceedings in the...

Signature Realty Ltd v Fortis Developments Ltd [2016] EWHC 3583 (Ch)

The Claimant, Signature Realty, is a property development company which, in 2013, commissioned architects to draw up plans in order to apply for planning permission to develop two office buildings in Sheffield into stude...

The Claimant, Signature Realty, is a property development company which, in 2013, commissioned architects to draw up plans in order to apply for planning permission to develop two office buildings in Sheffield into student accommodation. At the time the permission was granted, the Claimant did not own the buildings, and they were subsequently purchased from the landowner by the First Defendant, Fortis Developments. Following the purchase of the site, the Defendants together developed it into student accommodation.

The Claimant alleged that the Defendants had obtained its planning drawings from the Sheffield City Council planning website and infringed copyright in them in a variety of ways, including by: (i) using the planning drawings and altered copies thereof to market and sell units of student accommodation “off-plan” to investors before construction had commenced, and for construction tendering purposes; (ii) copying them in an altered form in order to create plans for the purpose of obtaining amendments to the existing planning permission; and (iii) constructing a building in accordance with the amended planning permission drawings.

At an interim hearing on 15th January 2016 the Claimant obtained summary judgment in respect of a number of the drawings in issue on several defences, in particular: (i) that the Claimant was estopped from asserting its copyright against the Defendants because it had allegedly stood by while the Defendants started building on the site; and (ii) that the Defendants had the benefit of an implied licence originally granted by the Claimant or the Claimant’s architects to the landowner and/or the Defendants.

At trial the Defendant challenged subsistence and infringement, and the Claimant’s entitlement to injunctive relief and additional damages. The Court held that copyright did subsist in the Claimant’s plans, and that the Defendants had infringed it in particular by creating and using identical copies of the Claimant’s plans for marketing and tendering purposes, and creating and using altered copies of some of the Claimant’s plans (including by constructing the buildings in question), but that it was not entitled to additional damages or to injunctive relief.

Mark Vanhegan QC and David Ivison appeared for the Claimant.

Signature Realty Ltd v Fortis Developments Ltd [2016] EWHC 3583 (Ch)

David Ivison

Recent & Notable Cases

Kigen v Thales

Abbott Diabetes Care Inc. & ors v Dexcom Incorporated & ors [2024] EWHC 36 (Pat) – Trial A

Gnat and Company Limited & anr v West Lake East Limited & anr [2022] EWHC 319 (IPEC)

Original Beauty Technology Company Ltd & ors v G4K Fashion Ltd & ors [2021] EWHC 3439 (Ch)

Promptu v Sky [2021] EWHC 2021 (Pat)

Claydon Yield-O-Meter Limited v Mzuri Limited & anr [2021] EWHC 1007 (IPEC)

Original Beauty Technology & ors v Oh Polly & ors [2021] EWHC 294 (Ch)

(1) Fit Kitchen Limited (2) Amar Lodhia v Scratch Meals Limited [2020] EWHC 2069 (IPEC)

TQ Delta, LLC v ZYXEL Communications Ltd & Anor [2019] EWHC 562

easyGroup Limited v Easy Rent A Car Limited & anr [2019] EWCA Civ 477

Signature Realty Ltd v Fortis Developments Ltd [2016] EWHC 3583 (Ch)

Gianni Giudicianni v Teoxane SA (O-039-17)

Trinity Haircare AG v EUIPO Case T-453/13

Newbran Entertainments Limited & Marlon Anthony Brown v Ashley Charles

Gary Hambyln v Jeremy Hoye O-211-16

What the Directories say