A design infringement case for the holidays

Just before the United Kingdom generally shuts down and stops functioning for a few days, Mr Justice Arnold slipped out a decision that is positively anti-Arnoldian.  It comes in at slightly less than 100 paragraphs, but retains the characteristic table of contents that is suggestive of a much longer judgment. The reason - well, it is a design case.  Relating to ice cream vans, no less.  The case is Whitby Specialist Vehicles Ltd v Yorkshire Specialist Vehicles Ltd & Ors [2014] EWHC 4242 (Pat) (17 December 2014).

As the judgment found, the defendants Yorkshire Specialist Vehicles Ltd, and the individuals Amer and Omar Rubani, had the claimant Whitby Specialist Vehicles Ltd make for them an ice cream van according to Whitby's "Mondial" design.  Ice cream vans are not made from scratch, but are converted from other vehicles, in the present case a Mercedes Sprinter 213 van, which the defendants supplied.  The defendants Amer and Omar then physically copied the purchased Mondial by using panels from the Mondial as plugs to produce moulds from which further GRP panels were made and by copying the mechanical components. At trial, Amer and Omar admitted that this was what they had done, despite having previously denied it.  It was alleged that up to 30 infringing vans had been made by the defendants.

The design of the Mondial was protected by UK Registered Design No. 4,000,395.  Despite the concession "Whitby entirely accepts that the design of the Mondial was not revolutionary, but an evolution of earlier Whitby ice cream van designs, and in particular a model called the Millennium", the judge found that the design was novel and had individual character.  He considered a number of standard features of ice cream vans in the design corpus, and a number of differences between the Millennium and the registered design, before coming to this conclusion.

Despite "minor differences" between the design of the Defendants' van and the Registered Design, the judge concluded that the designs were very similar, and so found infringement.

UK unregistered design right was found to subsist in a number of aspects of the design:  21 were initially pleaded, 2 were abandoned, all of which were held to be original.  One of the remaining aspects was considered commonplace, and a further few designs were excluded by the must-fit/must match exclusions.  The designs that valid design right thus subsisted in were found to be infringed - copying was not in the end denied, and the defendants' designs were "very similar".

There was also found to be trade mark infringement deriving from the fact that one of the copied panels had the words "WHITBY MORRISON" moulded onto it.

The largest single issue to be determined was not a validity or infringement matter, but the liability of the fourth defendant, Ghulam Rubani, father of Omar and Amer.  All three maintained that he had had no involvement.  The judge found, after consideration of the surrounding circumstances, that he had both primary and joint liability for all of the design infringements specifically mentioned in the judgment, but left for the enquiry into damages how many further infringements he may have participated in.

This Kat regrets that so few UK registered design cases result in a finding of infringement.  This is a rather sad and messy tale (tail?), but he is at least heartened that it shows that registered designs do provide real protection.