Registered design for ice cream van held to be valid and infringed

In Whitby Specialist Vehicles Ltd v Yorkshire Specialist Vehicles Ltd ([2014] EWHC 4242 (Pat)), the High Court of England and Wales (Patents Court) has held that the defendants’ ice cream van produced the same overall impression as the claimant's registered design.

Whitby Specialist Vehicles Ltd, a manufacturer of ice cream vans, asserted that its registered design (No 4,000,395) and unregistered design rights relating to a design for an ice cream van called the 'Mondial' had been infringed. The defendants were another ice cream van manufacturer, two brothers and their father: whilst the brothers were directly implicated in the infringement, there was dispute over the father’s involvement.

The defendants filed a counterclaim for revocation of the registered design; although this counterclaim was prepared by specialist counsel, the defending manufacturer and the brothers were not professionally represented at trial, and their father’s counsel was instructed only in relation to the issue of his personal liability.

In the manufacture of ice cream vans, the usual approach is to modify a commercial van, by using moulded fibreglass panels. The judge noted a number of constraints upon the designer of an ice cream van, such as technical, cost, regulatory, practical and commercial requirements. Whitby acknowledged 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 'Millenium', which the judge took to be the closest prior art. When comparing the registered design to the 'Millenium', the judge considered that there were enough differences between them for the registered design to have individual character. Accordingly, the registered design was held to be valid.

By the time of trial, the two brothers had admitted to physically copying the fibreglass panels of the claimant’s product by casting moulds from the panels of the van, for use with their own products. Unsurprisingly, therefore, despite certain minor differences between the defendants’ van and the registered design, the defendants’ van was deemed to produce the same overall impression, and so was found to infringe. It is rare for the Patents Court to hold a registered design valid and infringed, and so the positive outcome here will be welcome to rights holders, even though this is hardly a typical case.

The claimant also submitted that there were 21 aspects of design constituting unregistered design rights, most of which were found to be original and not commonplace. The defendants’ van was thought to be substantially to the claimant’s designs in which valid design rights subsisted and, accordingly, was found to infringe under this head as well.

Much of the trial actually explored the extent of the brothers’ father’s involvement in the infringement: the brothers each denied their father’s involvement, but the judge did not accept this testimony.

The father was found to be responsible for the sale of at least one of the infringing ice cream vans, and had participated in the copying of the claimant’s product. For infringement of a registered design, sale of an infringing article is an infringement without proof of knowledge or reason for belief. For unregistered design rights, knowledge or reason for belief is required. As the judge had already decided that the father had been involved with the copying, it stood to reason that he had requisite reason for belief. Therefore, it was ruled that each of the defendants infringed the registered design and the unregistered design rights, and the father was jointly liable for their infringement.

It is remarkable that a case such as this was both started and remained in the High Court: the Intellectual Property Enterprise Court, with its caps on damages and costs, would be expected to be a more attractive venue. As the defendants were not apparently professionally represented, perhaps they were unaware of the possibility to change the forum.

Darren Smyth and Robert Barker, EIP, London