The High Court whips up a design rights treat

06 March 2015

Shortly before Christmas, the High Court handed down its judgment on a case relating to the design of ice cream vans5. Arnold J found that the Defendants had infringed Whitby Specialist Vehicles Ltd's ("Whitby") UK registered and unregistered design rights and that the second and third Defendants (brothers, Amer and Omar Rubani) had also infringed the Claimant's trade mark "WHITBY MORRISON".

The Claimant, Whitby, was the UK's largest manufacturer of ice cream vans and has been trading since 1962. Three of the four Defendants (Amer, Omar and Ghulam Rubani) were family members and YSVL, was a company operated by the brothers Amer and Omar.

In 2006, Whitby developed a new ice cream van called the Mondial (protected by a UK registered design), an evolution of an earlier Whitby model called the Millennium.  In March 2011 the Rubanis commissioned Whitby to convert a van into a Mondial and subsequently used that to produce at least 30 copies, which they sold through YSVL.

In considering the UK registered design, Arnold J noted that there were considerable similarities between ice cream van designs of different manufactures. This, he said, was due to technical, financial, regulatory and practical constraints. Nevertheless, Arnold J felt that the informed user would be aware of these constraints and concluded that Whitby's UK registered design produced a different overall impression on the informed user than that of the Millennium (the closest prior art design) and was valid and infringed by the Rubanis' vans.

In relation to its UK unregistered design rights, Whitby pleaded a number of designs;  a number of which subsequently fell away for being either commonplace or caught by the "must fit" / "must match" exclusions. The Rubanis' van design was held to be very similar to the Mondial and since copying was not denied, all the pleaded designs were found to be infringed by the Defendants' van.

In relation to Whitby's UK trade mark this was embossed on the drive shaft cover of the Mondial. The same mark (but in reverse!) was visible on a picture of an ice cream van uploaded by YSVL to its Facebook page.  Whitby argued that this was because the Defendants had used a mould of the Whitby cover in order to produce copies. In light of the Facebook picture and the Defendants' unreliable evidence at trial, Arnold J found that Amer and Omar Rubani had infringed the Claimant's Trade Mark.

Arnold J also held that Ghulam Rubani, the brothers' father, had infringed Whitby's UK registered and unregistered design rights as a joint tortfeasor. This was based on the fact that he had funded the purchase and conversion of at least two vans, participated in the copying of Whitby's Mondial van and sold at least one of the infringing vans.

[5] Whitby Specialist Vehicles Ltd v Yorkshire Specialist Vehicles Ltd ("YSVL") & Others [2014] EWHC 4242 (Pat), 17 December 2014.

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