Case Nos: IP-2023-000039 and IP-2023-000132 - [2024] EWHC 2889 (IPEC)

On 24 April 2023 ISD issued the claim form in claim no. IP-2023-000039 (‘the ISD Claim’). The defendant is Currentbody. ISD alleges that (1) Currentbody has acted in breach of the Distribution Agreement, (2) Currentbody has infringed the Registered Designs and (3) ISD owns UK unregistered design rights (‘UKUDRs’) in the designs of the neck bib and face mask and that those rights have been infringed by Currentbody.

Although ISD did not create the design of either the face mask or the neck bib as supplied by Kaiyan with the emails of April, June and July 2018, it asserts entitlement to claim UKUDR in respect of both because, among other reasons, Kaiyan, the employer of the designer or designers, is not a qualifying person within the meaning of s.217(1) of the Copyright, Designs and Patents Act 1988 (‘the 1988 Act’) and therefore cannot be entitled to UKUDRs. That being so, ISD (or whichever qualifying person first marketed the products in the UK) may claim entitlement to UKUDR as the party which first marketed articles made to the designs in the UK, pursuant to s.220(1) of the 1988 Act.

Currentbody has filed a counterclaim seeking (1) a finding that ISM or alternatively ISD is in breach of clause 2.5 of the NDA by (a) applying for and seeking to enforce the Registered Designs and (b) seeking to enforce UKUDRs, and (2) cancellation of both the Registered Designs or alternatively a declaration that they are invalid.