The famous British fashion designer Dame Vivienne Westwood O.B.E (“Dame Vivienne”) is probably best known for her association with the punk movement, but she is also a very successful business woman and reached the stratosphere with her designs in recent years.
Her designs and the designs of the group of designers of which she leads undoubtedly makes her a visionary innovator. Fashion Designers and Intellectual Property? Dame Vivienne became (even more) famous to IP practitioners for a rather unusual reason following a case against Mr Knight in the Patents County Court (please see Dame Vivienne Westwood OBE v Anthony Edward Knight  EWPCC 016). Dame Vivienne’s claim was against Mr Knight, who was and apparently remains a trader who sells fashion clothing and accessories online. Mr Knight used various names and marks of which Dame Vivienne complained. Dame Vivienne has Trade Mark registrations for an orb device and Mr Knight used a logo which was a copy of the Claimant’s orb device and was therefore confusingly similar to it. Dame Vivienne also uses a slogan “Too fast to live too young to die” both alone and as part of a device with the slogan placed around a skull and cross-bones. Mr Knight also used a device which was found to be a copy of the Claimant’s device and confusingly similar to it. In addition, Mr Knight registered the following internet domain names. Costs and the Patents County Court Dame Vivienne’s claim was the first to be subject to the new Patents County Court procedural rules which came into force on 1st October 2010. These new procedure rules, amongst other things, limit the amount in costs any party can be awarded following judgment. Judge Birss QC’s judgment at the Case Management Conference demonstrated that the new procedures and costs cap would apply to those cases transferred into the Patents County Court on or after those rules have come into force. This case was transferred on 1st October 2010 and therefore the new procedures applied. Costs procedure rules could not to be retrospective either to cases being transferred in and possibly extended to current cases, which, upon Judge Birss’ reasoning in this case, could also not have the new cost caps imposed. In a decision in March 2011, Mr Knight was banned from breaching Dame Vivienne’s trademarks after she complained he had her above famous logos and slogans. The question of costs actually to be paid was addressed two months later (Dame Vivienne Westwood OBE v Anthony Edward Knight  EWPCC 11). Dame Vivienne claimed to have incurred costs of £113,533 at that stage. As a result of the costs cap, Mr Knight was ordered to pay Dame Vivienne £60,625 by Judge Birss QC. Some might ask why was Dame Vivienne awarded £60,625 when the cap is £50,000? The reason for this is £25,000 of the costs awarded where in relation to costs incurred in the High Court, which were therefore not subject to the Patents County Court cap. The means of Mr Knight to pay the costs has been questioned and therefore it is unclear how much Dame Vivienne will recover from him. It seems that this case is still not over as Mr Knight was recently warned by Judge Birss QC that he could face jail after hearing that Knight had continued to sell the goods online – meaning he was in contempt of court. Judge Birss QC said it was plain Mr Knight was in contempt but Dame Vivienne would need to identify which of her’s trademarks he had continued to infringe before passing sentence. Key issues for Brands (i) The use of another’s slogan: can amount to Trade Mark Infringement where one party has copied another’s slogan and therefore are confusingly similar. (ii) Costs: are now capped at £50,000 in relation to a trial on liability in the Patents County Court. It should be noted that there is a further costs cap of £25,000 in relation to deciding upon damages or share of profits. (iii) Contempt of Court: if a party fails to comply with an order of the court he or she may face imprisonment. Conclusions In this case despite the Judge has set out strict guide lines in relation to costs in order to allow Small and Medium businesses to bring claims without the fear of a “large” costs bill from the other side if they are not successful. Although, even many medium sized businesses would see £50,000 as a large chunk of money! It remains to be seen whether Mr Knight will face imprisonment for contempt of court, but we shall keep you posted upon any further developments. We look forward to your thoughts on this case at our Twevent on Thursday!
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