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UK: The importance of accuracy with RCDs

A recent case Scomadi Ltd & Anr v RA Engineering Co at the Intellectual Property Enterprise Court (IPEC) referencing two Registered Community Designs (RCD) showed the importance of accurate agreements between parties involved in manufacture and sales. The issues before the judge were breach of contract and infringement relating to three scooter models manufactured and sold by RA Engineering. The registered rights were two Registered Community Designs for motor scooters. The RCDs were owned by Scomadi who themselves sold a portfolio of retro-style vehicles with the look of the well-known 1960s Lambretta scooters.

Although the case was decided on the contractual issues, RA Engineering were, in the end, found to have the right to deal in the scooters and there were some useful comments on the issue of RCD validity and infringement. In particular, on the test of novel and individual character the informed user was considered to be a user of scooters and one that was familiar in the design field with both classic and modern scooter designs. The RCDs were found to be novel and have enough detailed differences over the prior published Lambretta scooters (prior art) to be valid, although the scope of the protection was narrow. Novelty was mainly due to a difference in the detail of the length:width ratio of certain side panels of the designs. The judge's findings were that out of three scooter models manufactured and sold by RA Engineering only one was found to infringe. The infringing model did not create on the user a different overall impression to one of the two RCDs.

The infringement verdict, however, was not part of the final outcome as on the true construction of an agreement between the parties the judge considered that RA Engineering were entitled to manufacture and sell the three models of motor scooters of the agreement. This is a stark reminder that there is value in getting agreements and contracts right at the start of a commercial relationship.

The IPEC was created as a specialist court within the High Court and has operated since October 2013. The court deals with smaller, simpler claims and so is intended to provide a venue where proceedings are quick, less complex and less expensive than those at the High Court.

Catherine Bonner

Chapman IP
Kings Park House
22 Kings Park Road
Southampton SO15 2AT
United Kingdom
Tel: +44 1962 600 500  



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