(via Microsoft Teams)
JUDGE HACON:1This is an application by the claimants for an order that the defendants disclose certain information in compliance with an Order made by me on 4 April 2022.2David Ivison appears for the claimants and Stuart Benzie for the first and second defendants. The third defendant neither appeared nor is represented today and has yet to file a defence. 3The first claimant is a designer of sailing boats. He licenses his IP rights associated with his designs through his company the second claimant. The first defendant is a UK company which makes and sells sailing boats. The second defendant is a Portuguese company which also makes and sells sailing boats. The third defendant is a company incorporated under the laws of Antigua and Bermuda. The claimants say that the third defendant is used for the management of the IP rights of the group of companies of which all three defendants form part. This is not admitted in the first and second defendants’ Defence, which is a curious because the first and second defendants must know. But in any event, it is also pleaded in that Defence that the third defendant is an independent company with its own management. 4There was a UK company called Laserperformance (Europe) Limited which, when it existed, was part of the group of companies (“LPE”) of which the first and second defendants form part. LPE conducted a business in the sale of boats. It went into voluntary liquidation on 22 June 2021. Four of the first claimants designs are relevant to this dispute. Those of boats named “Pico”, “Vago”, “Bahia” and “Bug”. By four licence agreements, the first and second defendants were licensed by the claimants to make and sell those four models of boat. The first such agreement was dated 10 April 1995 and granted a licence in respect of the Pico model. The license was granted by the first claimant to the first defendant. The other licenses were granted by the first claimant to LPE on 18 October 2006 in respect of the Vago model, on 20 April 2008 in respect of the Bahia model, and on 20 April 2008 in respect of the Bug model. 5The claimants’ primary case against the first and second defendants is that they were in breach of these licence agreements for reasons I need not go into. The claimants say they were entitled to and did terminate the four agreements. The claimants further allege that the first and second defendants carried on business in relation to the four models of sailing boat after termination and therefore in breach of the claimants’ IP rights.6The first and second defendants say that the agreements were not validly terminated and that consequently hey have not infringed the claimants’ IP rights. They also say that LPE’s rights under the Vago, Baya, and Bug agreements were assigned to the second defendant via the first defendant and therefore the second defendant was and remains entitled to exploit the licences.7The first and second defendants’ case is that by an undated assignment, stated on its face to be effective from 1 July 2019, LPE assigned its rights under the Vago contract to the first defendant. By an assignment dated 2 January 2020, effective as of 1 January 2021, the first defendant then assigned the rights to the second defendant. The first and second defendants’ case is similar in relation to the Baya and Bug agreements. In each case, there was an undated assignment from LPE to the first defendant effective as of 1 July 2019 and then an assignment dated 20 January 2020 from the first to the second defendant. In the case of the Baya and Bug assignments from the first to the second defendant, the effective date is stated to have been 1 January 2022. Copies of all the foregoing assignments asserted by the first and second defendants have been provided to the claimants and were in the court bundle in this application. 8The claimants assert (and the first and second defendants do not dispute) that a key issue in the case is the date on which the written assignments from LPE to the first defendant and from the first to the second defendant were signed, particularly given the dissolution of LPE on 22 June 2021. There was correspondence about this which led to a Part 18 request by the claimant dated 9 March 2022. After about two weeks, this elicited no response. So the claimants applied to the court by an application notice dated 25 March 2022 for an order that further information about the dates of the documents be provided. The notice was served on 25 March 2022.9Pursuant to CPR 63..25(1), the first and second defendants were required to respond within five working days which, in this instance, meant by the end of 1 April 2022. The first and second defendants did not respond. An order dated 4 April 2022 was made on the claimants’ application. Paragraph 1 of the order was in the following terms:“1. The First and Second Defendants shall, within 7 days of the date of service of this Order, serve on the Claimants a response to the RFI verified with a statement (or statements) of truth signed by a person (or persons) with knowledge of all the facts alleged stating, in relation to each of the assignments relating to the BUG Contract, the VAGO Contract, and the BAHIA Contract referred to in paragraph 39 of the First and Second Defendants’ Defence, the date upon which each document constituting the said assignment (to include each counterpart where applicable) was signed by the person identified as the authorised signatory of each party.”10The first and second defendants did not apply to vary or set aside the order. Instead, on 8 April 2022, they served a response to the claimants’ Part 18 request of 9 March 2022 and the response was dated 5 April 2022:“1. The First and Second Defendants are unable to recall the precise dates upon which each of the assignments (and any counterparts) were signed (though it may be that the disclosure process will elicit materials which will assist in this regard):1.1 Each of the assignments made between Laser Performance Europe Limited and Laser Sailboats Limited contain a recital that sets out the date upon which the agreement was made (being 1st July 2019) and the said date is thereafter defined as the “Effective Date”.1.2The BAHIA and BUG assignments between Laser Sailboats Limited and Laser Performance Unipessoal Lda each contain a recital that sets out the date upon which the agreement was made (being 2nd January 2020) and the said date is thereafter defined in the recital as the “Effective Date” (“