A case update on Whitby Specialist Vehicles Limited v Yorkshire Specialist Vehicles Ltd and others [2014] EWHC 4242 (Pat).SummaryThis case is about the design of ice cream vans and came out right at
A case update on Whitby Specialist Vehicles Limited v Yorkshire Specialist Vehicles Ltd and others [2014] EWHC 4242 (Pat).
Summary
This case is about the design of ice cream vans and came out right at the end of last year. It is worthy of comment since Mr Justice Arnold provides a useful reminder of how the courts approach validity and infringement of UK registered and unregistered design right, and interestingly, provides his view that the amendments introduced by the Intellectual Property Act 2014 on the meaning of "design" for UK unregistered design right purposes is unlikely to make any difference.
Background
Whitby Specialist Vehicles Limited ("Whitby") is the largest manufacturer of ice cream vans in the UK and, in 2006, designed a new model of ice cream van, which became known as the "Mondial". Photographs of this design are below:
Yorkshire Specialist Vehicles Ltd ("YSVL"), the First Defendant, is also a manufacturer of ice cream vans. The Second and Third Defendants are brothers and both are and were shareholders in YSVL respectively. The Fourth Defendant is their father who had sold ice cream from ice cream vans for many years.
Whitby claimed that the Defendants' van had infringed its UK unregistered design rights (UKUDRs) in aspects of the Mondial ice cream van, and infringed its UK Registered Design No. 4,000,395 (UKRD) in respect of the external appearance of the Mondial. Images of the UKRD are below:
It is worth noting that Whitby also asserted that the Defendants had infringed their Registered Trade Mark No. 2,229,302 for "WHITBY MORRISON" but this article will not consider this aspect of the case, nor the liability of the Fourth Defendant which was a major issue at trial owing to the dubious credibility of the Second and Third Defendants' evidence which appeared to be a cover up of their father's involvement.
The Judgment
UKRD validity and infringement
Mr Justice Arnold began by citing the key provisions of the Designs Directive (98/71/EC) followed by a useful recap of the legal principles to be applied, including: who the informed user is; the role the existing design corpus should play; assessing the designer's degree of freedom; and what individual character is. He ended by stating that "what matters is the overall impression produced on the informed user by each design having regard to the design corpus and the degree of freedom of the designer. As Jacob LJ has emphasised repeatedly, the most important thing about each of (i) the registered design, (ii) the accused design and (iii) the prior art is what they look like: see Procter & Gamble at [3], Dyson v Vax at [8] and Samsung v Apple at [28]."
It was agreed that the informed user in the present case was an ice cream van operator.
Mr Justice Arnold concluded that the design corpus showed that ice cream vans generally consist of a box-like structure mounted on a commercial vehicle chassis with a number of standard features including: a box-like body, extending over the roof of the cab; large side windows; name recesses for signs on all four sides; panels on the sides below the side windows for signage; a number plate at the rear; model ice cream cones at the front. He concluded that each of these features were constrained by either technical requirements; cost requirements; regulatory requirements; practical requirements; or commercial requirements/standard practice. Accordingly he was not surprised that there was considerable similarity between the various designs.
Mr Justice Arnold agreed with Counsel for the Claimant that the closest prior design to the UKRD was the Millenium van. Photographs of this design are below:
Side views
He also agreed that there were differences between the Millenium and the UKRD, and accepted that "these are differences which the informed user would notice and which combine to produce a different overall impression." Accordingly the UKRD did possess individual character and was therefore valid.
Having decided that the UKRD was valid, Mr Justice Arnold then needed to decide whether the Defendants' van infringed it. He concluded that, in light of the fact that the UKRD did not represent a significant departure from the design corpus and the fact there were various constraints on the designers design freedom (discussed above), then the scope of protection that the UKRD enjoyed was relatively narrow. Despite there being certain minor differences between the UKRD and the Defendants' van, Mr Justice Arnold concluded that the designs were very similar and, in his view, the Defendants' van did produce the same overall impression as the UKRD, thereby infringing it.
UKUDR validity and infringement
In contrast to UKRD, copying must be established to infringe UKUDR, but the Judge did not need to consider this as the Second and Third Defendants admitted copying at trial.
Of particular interest are his obiter comments relating to the recent impact of the Intellectual Property Act 2014, which amended the definition of "design" under section 213(2) of the CDPA 1988 by removing the words "any aspect of". Section 213(2) now reads as follows:
"In this Part "design" means the design of any aspect of the shape or configuration (whether internal or external) of the whole or part of an article"
Mr Justice Arnold agreed with Judge Hacon's opinion in DKH Retail Ltd v H. Young (Operations) Ltd [2014] EWHC 4034 (IPEC) that in many cases this amendment will make no difference, and he was of the view that this case was just such a case.
In terms of design validity, Whitby sought to rely on no less than 21 designs, but abandoned two of these designs in closing submissions. Mr Justice Arnold felt that these designs were original and that they were not common place when looking at them at the level of abstraction exhibited by the Mondial (except for one aspect – the base frame) and were therefore valid. However a few of the designs did fall foul of the "must fit" exclusion, whilst a few others the "must match" exclusion – consequently design right did not subsist in these.
In terms of infringement, Mr Justice Arnold concluded that despite there being small differences between the Defendant's van design and the Mondial, they were substantially similar and accordingly found infringement.
Comment
This case provides a useful reminder of the courts' approach to assessing design validity and infringement (in relation to both UK registered and unregistered design right), and highlights key issues to be aware of. Mr Justice Arnold's opinion that the Intellectual Property Act 2014 is unlikely to make any difference as to what constitutes a UK unregistered design is an interesting one. The change made to the definition of UKUDR was introduced under this Act to simplify and clarify the law - some had criticised the previous definition because it could lead to designers basing claims for infringement of a new and competing design on a very small 'cropped' part of a product, even when the overall appearance of that product was not at all similar. Now, however, Mr Justice Arnold seems to be suggesting (albeit in passing) that the amendment will not have the effect it is supposed to (i.e. it does not actually narrow the scope of design right infringement as intended). This issue will no doubt be explored in future cases.
Summary
This case is about the design of ice cream vans and came out right at the end of last year. It is worthy of comment since Mr Justice Arnold provides a useful reminder of how the courts approach validity and infringement of UK registered and unregistered design right, and interestingly, provides his view that the amendments introduced by the Intellectual Property Act 2014 on the meaning of "design" for UK unregistered design right purposes is unlikely to make any difference.
Background
Whitby Specialist Vehicles Limited ("Whitby") is the largest manufacturer of ice cream vans in the UK and, in 2006, designed a new model of ice cream van, which became known as the "Mondial". Photographs of this design are below:
| Front view | Back view | Side view |
Yorkshire Specialist Vehicles Ltd ("YSVL"), the First Defendant, is also a manufacturer of ice cream vans. The Second and Third Defendants are brothers and both are and were shareholders in YSVL respectively. The Fourth Defendant is their father who had sold ice cream from ice cream vans for many years.
Whitby claimed that the Defendants' van had infringed its UK unregistered design rights (UKUDRs) in aspects of the Mondial ice cream van, and infringed its UK Registered Design No. 4,000,395 (UKRD) in respect of the external appearance of the Mondial. Images of the UKRD are below:
| Front view | Back view | Side view |
It is worth noting that Whitby also asserted that the Defendants had infringed their Registered Trade Mark No. 2,229,302 for "WHITBY MORRISON" but this article will not consider this aspect of the case, nor the liability of the Fourth Defendant which was a major issue at trial owing to the dubious credibility of the Second and Third Defendants' evidence which appeared to be a cover up of their father's involvement.
The Judgment
UKRD validity and infringement
Mr Justice Arnold began by citing the key provisions of the Designs Directive (98/71/EC) followed by a useful recap of the legal principles to be applied, including: who the informed user is; the role the existing design corpus should play; assessing the designer's degree of freedom; and what individual character is. He ended by stating that "what matters is the overall impression produced on the informed user by each design having regard to the design corpus and the degree of freedom of the designer. As Jacob LJ has emphasised repeatedly, the most important thing about each of (i) the registered design, (ii) the accused design and (iii) the prior art is what they look like: see Procter & Gamble at [3], Dyson v Vax at [8] and Samsung v Apple at [28]."
It was agreed that the informed user in the present case was an ice cream van operator.
Mr Justice Arnold concluded that the design corpus showed that ice cream vans generally consist of a box-like structure mounted on a commercial vehicle chassis with a number of standard features including: a box-like body, extending over the roof of the cab; large side windows; name recesses for signs on all four sides; panels on the sides below the side windows for signage; a number plate at the rear; model ice cream cones at the front. He concluded that each of these features were constrained by either technical requirements; cost requirements; regulatory requirements; practical requirements; or commercial requirements/standard practice. Accordingly he was not surprised that there was considerable similarity between the various designs.
Mr Justice Arnold agreed with Counsel for the Claimant that the closest prior design to the UKRD was the Millenium van. Photographs of this design are below:
Side views
He also agreed that there were differences between the Millenium and the UKRD, and accepted that "these are differences which the informed user would notice and which combine to produce a different overall impression." Accordingly the UKRD did possess individual character and was therefore valid.
Having decided that the UKRD was valid, Mr Justice Arnold then needed to decide whether the Defendants' van infringed it. He concluded that, in light of the fact that the UKRD did not represent a significant departure from the design corpus and the fact there were various constraints on the designers design freedom (discussed above), then the scope of protection that the UKRD enjoyed was relatively narrow. Despite there being certain minor differences between the UKRD and the Defendants' van, Mr Justice Arnold concluded that the designs were very similar and, in his view, the Defendants' van did produce the same overall impression as the UKRD, thereby infringing it.
UKUDR validity and infringement
In contrast to UKRD, copying must be established to infringe UKUDR, but the Judge did not need to consider this as the Second and Third Defendants admitted copying at trial.
Of particular interest are his obiter comments relating to the recent impact of the Intellectual Property Act 2014, which amended the definition of "design" under section 213(2) of the CDPA 1988 by removing the words "any aspect of". Section 213(2) now reads as follows:
"In this Part "design" means the design of any aspect of the shape or configuration (whether internal or external) of the whole or part of an article"
Mr Justice Arnold agreed with Judge Hacon's opinion in DKH Retail Ltd v H. Young (Operations) Ltd [2014] EWHC 4034 (IPEC) that in many cases this amendment will make no difference, and he was of the view that this case was just such a case.
In terms of design validity, Whitby sought to rely on no less than 21 designs, but abandoned two of these designs in closing submissions. Mr Justice Arnold felt that these designs were original and that they were not common place when looking at them at the level of abstraction exhibited by the Mondial (except for one aspect – the base frame) and were therefore valid. However a few of the designs did fall foul of the "must fit" exclusion, whilst a few others the "must match" exclusion – consequently design right did not subsist in these.
In terms of infringement, Mr Justice Arnold concluded that despite there being small differences between the Defendant's van design and the Mondial, they were substantially similar and accordingly found infringement.
Comment
This case provides a useful reminder of the courts' approach to assessing design validity and infringement (in relation to both UK registered and unregistered design right), and highlights key issues to be aware of. Mr Justice Arnold's opinion that the Intellectual Property Act 2014 is unlikely to make any difference as to what constitutes a UK unregistered design is an interesting one. The change made to the definition of UKUDR was introduced under this Act to simplify and clarify the law - some had criticised the previous definition because it could lead to designers basing claims for infringement of a new and competing design on a very small 'cropped' part of a product, even when the overall appearance of that product was not at all similar. Now, however, Mr Justice Arnold seems to be suggesting (albeit in passing) that the amendment will not have the effect it is supposed to (i.e. it does not actually narrow the scope of design right infringement as intended). This issue will no doubt be explored in future cases.