England and Wales Patents County Court

IN THE PATENTS COUNTY COURT

		Rolls Building 7 Rolls Buildings Fetter Lane London, EC4A 1NL
		28/01/2013

JUDGE BIRSS:

1. This judgment deals with matters arising from my main judgment in this case handed down today [2013] EWPCC 2.

Who Won?

2. The first point I need to deal with is a dispute about who won. As Mr. Pritchard rightly says, this is not a free-standing point. It is a point which informs further decisions that have to be made relating specifically to costs and a possible order dissemination of the judgment.
3. I am not convinced that debating the question of who is to be regarded as the winner from the point of view of costs, is necessarily the same thing at all as any issue relating to dissemination. However it has been argued in this way. What I am focusing on really is the costs question. Whether it is right to say that there is someone who is to be regarded as the winner of this case and nothing more, and therefore on what basis the costs orders should be made.
4. Having heard Mr. Pritchard's able submissions, I am not prepared to accept that it is right to sat one party is the winner of this case. In my judgment Mr. Cuddigan put his finger on it. The simple answer in this case is that the claimant won the unregistered design case and the defendant won the registered design case. They were two legally separate cases, and one side won one of them and the other side won the other.
5. Mr. Pritchard focused, understandably perhaps, on the point that in the registered design case there was a counterclaim for revocation and his client succeeded on that. I agree with that and it is a matter which will need to be dealt with in due course. But it seems to me that just because Mira succeeded on the counterclaim for revocation, does not mean that suddenly Mira won the overall registered design action.
6. The reality is simple, as I have said already: one side won one bit and the other side won the other bit. If that is what happened, then the costs order will need to reflect it; and I will deal with costs separately bearing this in mind.

Dissemination of the Judgment

7. The claimant seeks an order for dissemination of the judgment. The difficulty which arises is that the claimant succeeded on the unregistered design case and failed on the registered design case. The claimant says that, nevertheless, I should make an order for dissemination. Essentially, the first draft proposed by the claimant reflected simply its victory in the unregistered design case.
8. Mr. Cuddigan, for the defendant, resisted an order for dissemination. Also, if an order was to be made, he suggested various elements of wording to deal with the fact that the unregistered design case includes a feature which is specific to UK unregistered designs, as follows. Having seen the draft judgment, the defendant, as it was entitled to, undertook to take a licence of right. That means that no injunction can be granted against the defendant and that the damages, assuming it takes the licence, will be capped in a particular way. Mr Cuddigan submitted that this needed to be reflected in the draft advertisement which the claimant proposed as well as the result of the registered design case. The claimant also then proposed a draft advertisement which included a reference to the fact that the claimant had not succeeded on the registered design side of this case.
9. All this goes to prove, it seems to me, that an order for the dissemination of the sort of advertisement which the claimant is proposing would run completely opposite to the guidance from the Court of Appeal in Samsung v. Apple [2012] EWCA Civ 1339. It would not act as a supplemental deterrent for future infringers. It would not contribute to the awareness of the public at large, it would contribute to their general confusion. It would not dispel commercial uncertainty; I believe it would create it.
10. I will not make an order for dissemination in this case. That of course means the parties are free, within the limits of the general law, to say what they like about the outcome in this case, as I say, within the limits of the general law.