There are often a lot of cases brought by the fashion trade or toy or novelty manufacturers in the run up to Christmas. There don't seem to have been all that many this year judging by the Chancery Division cause list and the Patent Court and Intellectual Property Enterprise Court ("IPEC") diaries. However, there has been a case about ice cream or rather ice cream vans. In Whitby Specialist Vehicles Ltd. v Yorkshire v Yorkshire Specialist Vehicles Ltd  EWHC 4242 (Pat) the biggest manufacturer of ice cream vans in the UK sued one of its competitors or unregistered Community design, design right and trade mark infringement.
The trial took place in the Patents Court on the 10, 12-14, 20 Nov 2014 and judgment was delivered on the 17 Dec 2014. Usually actions of this kind proceed in IPEC where trials are limited to two days and costs are capped at £50,000 for the trial on liability and £25,000 for the account or inquiry. Those not in the case have to wonder why that did not happen in this case. A possible explanation is that the claimant had no incentive to limit costs that it confidently expected to recover from the other side and the defendants did not know about IPEC because they had no legal representation for much of the litigation. If that is what happened, it is an object lesson that while lawyers may be expensive not having a lawyer can be even more expensive - indeed sometimes ruinously expensive. Even if this case was unwinnable it could still have been settled. The costs of an early settlement would almost certainly have been less than those of a lengthy trial in the Patents Court.
Ice cream vans generally consist of a chassis and cab manufactured by a commercial van manufacturer onto which a body designed and manufactured by a specialist supplier such as Whitby Specialist Vehicles Ltd. ("Whitby") is added. The conversion can be done by starting from a bare commercial van chassis or a complete commercial van and adding the body and interior fittings which are commonly made of moulded glass reinforced fibreglass panels ("GRP").
In 2006 Whitby designed a new model ice cream van, known as the Whitby Mondial, based on a Mercedes Sprinter chassis. Photos of the Mondial appear above. No design drawings were created apart from rough sketches which were not retained. Instead Whitby created wooden "plugs" from which moulds were made for the creation of the GRP panels. In addition to those panels, Whitby designed certain mechanical components, in particular a stand for a soft ice cream making machine and a drive mechanism leading from the engine to the machine. Whitby registered the design of the Mondial and representations of the front, rear and side elevations of the registered design appear with those photos.
The defendant company, Yorkshire Specialist Vehicles Ltd. ("Yorkshire"), manufactured the Millennium van which is also shown in the photographs above. At trial the second and third defendants, who ran Yorkshire, admitted that they had used panels from a Mondial as plugs to produce moulds for GRP panels for the Millennium vam and that they had also copied the mechanical components for their product. Much of the trial was about whether and how far the fourth defendant, who was the second and third defendants' father, had participated in the copying.
Between paras  and  Mr Justice Arnold directed himself on the relevant provisions of the Designs Directive (Directive 98/71/EC of the European Parliament and of the Council of 13 October 1998 on the legal protection of designs OJ L 289 , 28/10/1998 P. 0028 - 0035), the Registered Designs Act 2001 and the case law. He identified the "informed user" as an ice cream van operator. From the perspective of such a user he considered photos of ice cream vans that had been supplied by the parties in their pleadings or on disclosure. He listed the common features of ice cream van design and the constraints on design freedom which he took to be cost, regulatory, practical and commercial requirements. He compared features of the registered design with the common features that he had identified and concluded at para  that the registered design possessed individual character and was therefore valid though he noted the Whitby's concession at para  that the registered design afforded a "relatively narrow scope of protection" which was right given that the Registered Design did not represent a significant departure from the design corpus and the constraints on the designer's freedom mentioned above. He compared features of the registered design with the Millennium van in a table and concluded at para  that the Millennium van did not produce a different overall impression and that it therefore infringed the registered design,
As usual, his Lordship analysed the legislation and case law thoroughly and accurately. The case is worth reading and following for that analysis alone. However, in the last few paragraphs he appears to have conflated the exercise of determining validity with that of deciding whether the registered design had been infringed. For instance, he compared features of the Millennium with the registered design at paragraph  before he had determined whether the registered design had individual character and was therefore valid. When construing a patent it is usual to consider the claims without reference to the alleged infringement. Once the specification is understood and the scope of the monopoly has been determined the judge decides whether the defendant's product or process falls within that monopoly. While there may be nothing in the legislation and authorities to mandate a similar approach in design law it is logical to do so. Because copying in this case was so obvious and was eventually admitted a different approach would have reached the same result. Nevertheless, there may be other cases when it would be safer to determine validity and infringement in separate exercises.
The judge next considered Whitby's claim for infringement of unregistered design right. Between paras  and , he set out the legislation and case law including the changes to the definition of "design" which I had discussed in my article "What is the definition of "design" in s.213 (2) of the Copyright, Designs and Patents Act 1988 following the deletion of "any aspect of" from the sub-section" 13 Dec 2014. In DKH Retail Ltd v H. Young (Operations) Ltd  EHWC 4034 (IPEC) at - it was agreed that the amendment to s.213 (2) of the Copyright Designs and Patents Act 1988 by s.1 (2) of the Intellectual Property Act 2014 was fully retrospective,
"with the potential consequence that an act committed prior to 1 October 2014 which was an infringement of design right as the law then stood retropectively ceased to have been an infringement."Mr Justice Arnold had some doubts as to whether that was correct though it did not matter for the purposes of the case. He found that some aspects of the design were commonplace, others fell within the "must fit" and "must match" exceptions and that there were differences between the Mondial and the Millennium but nonetheless concluded that the defendants' van was substantially to the design of the claimant's van and drive mechanism. Accordingly, Whitby's unregistered design rights had been infringed.
The drive shaft cover of Whitby's drive shaft bore its trade mark WHITBY MORRISON. In copying the drive shaft of Yorkshire also copied those words. By making and selling drove shafts bearing that marl Yorkshire infringed s.10 (1) of the Trade Marks Act 1994.
Although he denied copying there was evidence that the fourth defendant had funded the purchase of a Mercedes van, its conversion by Whitby and the conversion by the other defendants of other vans. There was also evidence that the fourth defendant knew how to fit GRPs. The judge concluded that the fourth defendant had participated in the copying, conversion and sale of a vehicle that he knew to be an infringing article and that he was therefore jointly and severally liable in the registered design, design right and trade mark infringement with the other defendants.
This has been an expensive exercise for the defendants and there is more expense to come if Whitby seeks an inquiry as to damages or an account of profits but in one respect they have got off lightly. Had they carried out their activities after 1 Oct 2014 they might have been prosecuted under s.35ZA of the Registered Designs Act 2014 which carries a maximum penalty of 10 years imprisonment, an unlimited fine or both.
Should anyone wish to discuss this case or indeed registered design, design right or trade mark law in general, he or she should call me after the Christmas holidays on 020 7404 5252 or use my contact form. I can also be reached through Facebook, G+, Linkedin, twitter or Xing.