TEMPLE ISLAND COLLECTION V NEW ENGLISH TEAS. SECOND COURT JUDGMENT.
TEMPLE ISLAND WIN SECOND COURT JUDGMENT AGAINST NEW ENGLISH TEAS TO PROTECT THEIR FAMOUS RED BUS DESIGN
ACID (Anti Copying in Design) member, Temple Island Collection Ltd, have won a second victory against New English Teas in an intellectual property action in the Patents County Court to protect their famous Red Bus image. After lengthy legal proceedings resulting in New English Teas agreeing to no longer use the first design, New England Teas released a re-designed tea range in late 2010 (without reference to Temple Island Collection) which again featured a red bus image that Temple Island Collection and its legal team felt was once again an infringement of its copyright.
In his judgment, his honour Judge Colin Birss QC said, “On the question of copying, I find that the common elements between the defendant’s work and the claimant’s work are causally related. In other words, they have been copied… I have decided that the defendants’ work does reproduce a substantial part of the claimant’s artistic work.” Judgment was given in favour of Temple Island Collection Ltd on 12th January 2012, with his honour Judge Birss QC denying the Defendants permission to appeal.
Philip Partington, an intellectual property expert from ACID Accredited law firm McDaniel & Co said, “The action for copyright infringement was the second made by Temple Island Collection against New English Teas. Action was first taken in 2010, on discovering a range of products by New English Teas showing a red bus design, which Temple Island Collection and their lawyers felt was a copy of their famous image.”
The outcome was wholeheartedly welcomed by Managing Director of Temple Island Collection Ltd, Justin Fielder who said, “As creator of the Red Bus image and originators of the product concept we gave New England Teas the opportunity to license with us and work collaboratively, but this was declined. Upon discovery of their use of the imagery a second time, we felt we had no alternative other than to pursue legal proceedings once again. Now matters have been decided, we look forward to extending and developing this successful range, which we’re confident will sell exceptionally well before and during the Olympic Games. We’re also delighted that our licensing partners House of Dorchester are launching new Red Bus biscuit products this Spring.”
Dids Macdonald, ACID’s CEO said, “The proceedings have once again served to highlight the importance of protecting intellectual property. The UK has a heritage of innovation and design, with leading brands such as Doc Martin and Dyson serving as great examples, yet recent reports show 23% of small and medium sized enterprises have had their business significantly affected by IP crime.”
Temple Island Collection Ltd is one of the leading names in visitor and heritage retail for both skilfully designed bespoke product and their own successful gift ranges. Their customers range from multi-national corporations, major visitor destinations, councils and charities to independents and small sites.
TEMPLE ISLAND COLLECTION V NEW ENGLISH TEAS.
We are presently involved in an intellectual property action in the Patents County Court to protect our famous Red Bus image. We have taken action against New English Teas Limited. The court has now determined issues relating to the settlement which arose out of the first alleged infringement by New English Teas.
Action was first taken after a surprise discovery at the Spring Fair 2010, of a range of teas by New English Teas showing a red bus design which we and our lawyers felt was a copy of our famous image.
This action was settled however a number of issues then arose as to the scope of the settlement in particular the amount of royalty to be paid. New English Teas had wanted to reduce the royalty on certain products by 66% as the image they had produced only featured on one item in a 3 part multi pack. Regarding the issues arising out of the settlement the court has agreed with Temple Island as to the amount of royalties New English Teas have to pay and they have been finally forced to pay what Temple Island say was the ‘agreed’ royalty due. Please see below for the complete judgement link to the British and Irish Legal Information Institute (BAILII) and the announcement by ACiD
Temple Island Collection, Managing Director, Justin Fielder commented:
‘It is a shame it has come to this but Temple Island Collection have had no choice but to take action to protect their unique and well know image and their licensing partners.’
‘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”
After agreeing to no longer use the first design New English Teas released a re-designed tea range in late 2010 (without reference to Temple Island Collection) which again featured a red bus image that Temple Island and its legal team feel is an infringement of its copyright. As outlined above, the determination of the second image will take place in a Trial set for November 2011.
TEMPLE ISLAND SCORE COPYRIGHT VICTORY OVER NEW ENGLISH TEAS.
ACID (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.”