The High Court recently issued judgment in the case of Fresh Trading Limited v Deepend Fresh Recovery Limited and another  EWHC 52 (Ch). This case highlights the importance of obtaining a written assignment signed by the assignor when transferring IP rights. If this is not obtained the purported assignee will only have equitable rights to the title until a written assignment is provided.
The logo used on Innocent’s products was originally created by Deep End Design, who offered design services to Fresh Trading Limited. Prior to the High Court’s declaration, the OHIM had ruled that Innocent’s Community Trade Mark registration of the logo was invalid on the basis of there being no signed written assignment of the IP rights.
Before the High Court, both Innocent and the design agency failed to provide any evidence of the signed contract and the judge was unable to conclude that there had been any legal assignment. However, an unsigned draft contract in the context of the conduct of both parties was found to evidence an equitable assignment of the IP rights in the logo.
The expense and difficulty incurred by Innocent in establishing their interest in their own trade mark in this instance shows that there is a real lesson to be learned by companies acquiring design services or purchasing IP rights. Those who are seeking to establish and rely on a strong brand identity are well advised to ensure that the rights between them and any design agency are set out clearly from the beginning of any such arrangement to avoid disputes.
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