Scomadi Ltd & Anor v RA Engineering Co. Ltd & Ors [2017] EWHC 2658 (IPEC) (27 October 2017 )

Scomadi Ltd & Anor v RA Engineering Co. Ltd & Ors [2017] EWHC 2658 (IPEC) (27 October 2017 )

The Supplementary Agreement was a binding contract supported by consideration, including continuation of the venture and variation of royalty terms. Hanway made a significant design contribution, resulting in joint ownership of the designs. The SA permitted Hanway to manufacture and sell scooters post-termination if the Claimants found a third-party manufacturer. The Defendants' scooters did not infringe the Claimants' RCDs, except the GT model infringed RCD2. Features of the RCDs were not solely dictated by technical function.

Citation
[2017] EWHC 2658 (IPEC)
Parties
Claimant/defendant to Additional Counterclaim: Scomadi Limited; Claimant/defendant to Additional Counterclaim: Scomadi Worldwide Limited; Defendant: RA Engineering Co. Limited; Defendant: Yiming Chen; Defendant: MotoGB Limited; Additional Counterclaimant: Changzhou Hanwei Vehicle Science & Technology Limited Company
Jurisdiction
England and Wales
Procedural Posture
Intellectual Property Dispute (contract and Design Rights) / First Instance Judgment
Outcome
Claim dismissed except as to GT infringing RCD2; otherwise, Defendants succeed on contract and design right issues.
Legal Topics
Registered Community Design, Contract Interpretation, Consideration, Joint Ownership of IP, Infringement, Estoppel
Intellectual Property Contract Law Registered Community Design Contract Interpretation Consideration Joint Ownership of IP Infringement Estoppel

Case Brief

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Parties

Scomadi Limited

Claimant/defendant to Additional Counterclaim

Scomadi Worldwide Limited

Claimant/defendant to Additional Counterclaim

RA Engineering Co. Limited

Defendant

Yiming Chen

Defendant

MotoGB Limited

Defendant

Changzhou Hanwei Vehicle Science & Technology Limited Company

Additional Counterclaimant

Procedural Posture

Intellectual Property Dispute (contract and Design Rights) / First Instance Judgment

Legal Issues

  1. 1 Whether the Supplementary Agreement (SA) was a binding contract and supported by consideration
  2. 2 Correct interpretation of the SA and DMA
  3. 3 Whether Hanway had joint ownership rights in the scooter designs

Ratio Decidendi

The Supplementary Agreement was a binding contract supported by consideration, including continuation of the venture and variation of royalty terms. Hanway made a significant design contribution, resulting in joint ownership of the designs. The SA permitted Hanway to manufacture and sell scooters post-termination if the Claimants found a third-party manufacturer. The Defendants' scooters did not infringe the Claimants' RCDs, except the GT model infringed RCD2. Features of the RCDs were not solely dictated by technical function.

Court Disposition

Claim dismissed except as to GT infringing RCD2; otherwise, Defendants succeed on contract and design right issues.

Orders

  • Declaration that the Supplementary Agreement is binding and permits Hanway to manufacture and sell scooters post-termination if Claimants use a third party manufacturer.
  • Declaration that Hanway made a significant design contribution and has joint ownership rights.