Temple Island Red BusACID (Anti Copying in Design) member Temple Island Collection have scored an early victory against New English Teas in the first of a two part intellectual property case heard in the Patents County Court. Having settled the original dispute about the infringement of its iconic “Red Bus” image a dispute arose about the exact scope of settlement. In addition, New English brought out a second image which Temple alleged infringed its copyright. At a case management conference in June 2011 HHJ Birss QC decided the issues relating to the settlement of the first image could be hived off and dealt with separately and on paper. The second image issue will proceed to Trial in November 2011.  Three main issues required determination relating to the settlement.

The first was the Royalties due under the settlement. New English had agreed to pay 5% of the trade sale price of all past and pending sales of the first image. Later, New English attempted to reduce the royalty on “multi-packs” by 66% on the basis that of the 3 items in the multipack only one featured the first image. Temple disagreed, saying that it was clear that the parties had in mind a 5% payment on the sale price of the product sold which included the image. HHJ Birss QC agreed with Temple, the parties had not invented some complicated mechanism to decide the royalty and Temple’s reflected the parties’ intentions when viewed objectively.

The second issue was the amount of costs payable (by New English) for drafting a licence agreement, the rival figures being £500 and £2000. HHJ Birss QC accepted Temple’s submission that the time taken to draft the licence was not the only factor but that other factors, such as expertise and the value of the document to the parties, were relevant  and awarded £1500.

The third issue was as to whether or not the settlement required New English to enter into a formal licence, and whether that licence should include an ‘open book’ accounting term. This depended upon HHJ Birss QC analysing correspondence between the two parties’ representatives, and he ruled there was no requirement to enter into a formal licence. The Judge however indicated that he would have included an open book term had he found a licence was required.

New English have had to pay over £14,000 to Temple Island for royalties and the licence agreement as well as a previous unpaid amount in costs. Andrew Lee of ACID Accredited law firm McDaniel & Co. said, “This signifies a significant moral and financial victory for Temple Island heading into the determination of the second image in a trial set for November 2011.”

Justin Fielder, Managing Director of Temple Island Collection commented “It has been a long, exasperating road to get to this point, but we were obviously justified in taking this action to protect our intellectual Property rights and are pleased the court agrees.”

Dids Macdonald, ACID’s CEO said, “HHJ Birss QC would appear to be true to his word on simplifying the legal process at the new PCC, by giving both parties tight deadlines and page limits to adhere to relating to submissions. Inevitably, this leads to a more cost and time effective resolution, in this case in favour of ACID member Temple Island.”

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