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England and Wales High Court (Patents Court) Decisions |
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You are here: BAILII >> Databases >> England and Wales High Court (Patents Court) Decisions >> Whitby Specialist Vehicles Ltd v Yorkshire Specialist Vehicles Ltd & Ors [2014] EWHC 4242 (Pat) (17 December 2014) URL: http://www.bailii.org/ew/cases/EWHC/Patents/2014/4242.html Cite as: [2016] FSR 5, [2014] EWHC 4242 (Pat) |
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CHANCERY DIVISION
PATENTS COURT
Rolls Building, Fetter Lane, London, EC4A 1NL |
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B e f o r e :
____________________
WHITBY SPECIALIST VEHICLES LIMITED |
Claimant |
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- and - |
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YORKSHIRE SPECIALIST VEHICLES LIMITED AMER RUBANI OMAR RUBANI GHULAM RUBANI |
Defendants |
____________________
The Second Defendant appeared in person and on behalf of the First Defendant
The Third Defendant appeared in person
Christopher Cook (instructed by Blacks Solicitors LLP) for the Fourth Defendant
Hearing dates: 10, 12-14, 20 November 2014
____________________
Crown Copyright ©
MR JUSTICE ARNOLD :
Topic | Paras |
Introduction | 1-2 |
The parties | 3-4 |
The witnesses | 5-9 |
The development of the Mondial | 10-14 |
Amer and Omar's copying of the Mondial | 15 |
Inspection | 16 |
The claim for infringement of the Registered Design | 17-39 |
The Registered Design | 17 |
Key provisions of the Designs Directive | 18-19 |
Legal principles | 20-29 |
The informed user | 20-21 |
The existing design corpus | 22-23 |
The designer's degree of freedom | 24 |
Individual character | 25 |
Effect of design freedom on the scope of protection | 26 |
Effect of differences between the registered design and the design corpus on the scope of protection | 27-29 |
Overall impression | 30 |
Assessment | 31-39 |
The informed user | 31 |
The design corpus | 32-33 |
Design freedom | 34-35 |
Does the Registered Design possess individual character? | 36-37 |
Scope of protection of the Registered Design | 38 |
Does the Defendants' van produce the same overall impression as the Registered Design? | 39 |
The claim for infringement of design rights | 40-52 |
The legislation | 40-42 |
Legal principles | 43-48 |
Original | 43 |
Commonplace | 44-45 |
"Must fit" and "must match" | 46 |
Exactly or substantially to the design | 47 |
Knowledge or reason for belief | 48 |
The design relied on | 49 |
Assessment | 50-53 |
Are the Designs original? | 50 |
Are the Designs commonplace? | 51 |
Are the Designs excluded on the basis of "must fit" and/or "must match"? | 52 |
Is the Defendants' van exactly or substantially to the Designs | 53 |
The claim for infringement of the Trade Mark | 54-57 |
Liability of Ghulam | 58-93 |
Factual background | 59-76 |
Main factual issues | 77-90 |
Primary liability | 91 |
Joint liability | 92-93 |
Conclusions | 94 |
Introduction
i) infringement of (UK unregistered) design rights in aspects of the design of Whitby's Mondial ice cream van;ii) infringement of UK Registered Design No. 4,000,395 ("the Registered Design") in respect of the external appearance of the Mondial; and
iii) infringement of UK Regustered Trade Mark No. 2,229,302 (the "Trade Mark").
The parties
The witnesses
The development of the Mondial
Amer and Omar's copying of the Mondial
Inspection
The claim for infringement of the Registered Design
The Registered Design
Key provisions of the Designs Directive
"Article 3
Protection requirements
….
2. A design shall be protected by a design right to the extent that it is new and has individual character.
….
Article 5
Individual character
1. A design shall be considered to have individual character if the overall impression it produces on the informed user differs from the overall impression produced on such a user by any design which has been made available to the public before the date of filing of the application for registration or, if priority is claimed, the date of priority.
2. In assessing individual character, the degree of freedom of the designer in developing the design shall be taken into consideration.
…
Article 7
Designs dictated by their technical function and designs of interconnections
1. A design right shall not subsist in features of appearance of a product which are solely dictated by its technical function.
…
Article 9
Scope of protection
1. The scope of the protection conferred by a design right shall include any design which does not produce on the informed user a different overall impression.
2. In assessing the scope of protection, the degree of freedom of the designer in developing his design shall be taken into consideration."
Legal principles
"33. The designs are assessed from the perspective of the informed user. The identity and attributes of the informed user have been discussed by the Court of Justice of the European Union in PepsiCo Inc v Grupo Promer Mon-Graphic SA (C-281/10 P) [2012] FSR 5 at paragraphs 53 to 59 and also in Grupo Promer v OHIM (T-9/07) [2010] ECDR 7, (in the General Court from which PepsiCo was an appeal) and in Shenzhen Taiden v OHIM (T-153/08), judgment of 22 June 2010.
34. Samsung submitted that the following summary characterises the informed user. I accept it and have added cross-references to the cases mentioned:
i) He (or she) is a user of the product in which the design is intended to be incorporated, not a designer, technical expert, manufacturer or seller (PepsiCo paragraph 54 referring to Grupo Promer paragraph 62; Shenzhen paragraph 46).
ii) However, unlike the average consumer of trade mark law, he is particularly observant (PepsiCo paragraph 53);
iii) He has knowledge of the design corpus and of the design features normally included in the designs existing in the sector concerned (PepsiCo paragraph 59 and also paragraph 54 referring to Grupo Promer paragraph 62);
iv) He is interested in the products concerned and shows a relatively high degree of attention when he uses them (PepsiCo paragraph 59);
v) He conducts a direct comparison of the designs in issue unless there are specific circumstances or the devices have certain characteristics which make it impractical or uncommon to do so (PepsiCo paragraph 55).
35. I would add that the informed user neither (a) merely perceives the designs as a whole and does not analyse details, nor (b) observes in detail minimal differences which may exist (PepsiCo paragraph 59)."
"72. In the specific assessment of the overall impression of the designs at issue on the informed user, who has some awareness of the state of the prior art, the designer's degree of freedom in developing the contested design must be taken into account. … the more the designer's freedom in developing the contested design is restricted, the more likely minor differences between the designs at issue will be sufficient to produce a different overall impression on the informed user.
…
82. In the absence of any specific constraint imposed on the designer, the similarities noted in [79]–[81] above relate to elements in respect of which the designer was free to develop the contested design. It follows that those similarities will attract the informed user's attention…"
" … as the Board of Appeal pointed out at paragraph 19 of the contested decision, in so far as similarities between the designs at issue relate to common features, such as those described at paragraph 67 above, those similarities will have only minor importance in the overall impression produced by those designs on the informed user. …"
"… if a new design is markedly different from anything that has gone before, it is likely to have a greater overall visual impact than if it is 'surrounded by kindred prior art' (H.H. Judge Fysh's pithy phrase in Woodhouse at [58]). It follows that the 'overall impression' created by such a design will be more significant and the room for differences which do not create a substantially different overall impression is greater. So protection for a striking novel product will be correspondingly greater than for a product which is incrementally different from the prior art, though different enough to have it own individual character and thus be validity registered."
Assessment
i) The vehicles shown in Part I of Annex 2 to the Amended Defence and Counterclaim which contains photographs of a number of earlier Whitby, Morrisons and Cummins designs including the Millenium.ii) The vehicles shown in Part II of Annex 2 to the Amended Defence and Counterclaim which contains photographs of a number of vans produced by other manufacturers.
iii) The registered designs in Annex 3 to the Amended Defence and Counterclaim which show designs of a number of Whitby or Cummins vehicles photographs of which are included in Annex 2.
iv) Various photographs of earlier van designs in Whitby's disclosure.
i) A commercial vehicle chassis.ii) A box-like body, extending over the roof of the cab.
iii) Large side windows. The rear section of the side window is often smaller where the freezer cabinet is present.
iv) Louvres or name recesses for signs on all four sides.
v) Panels on the sides below side windows for signage.
vi) A number plate at the rear.
vii) A bumper at the rear.
viii) Lighting at the rear to comply with applicable regulations (typically horizontally mounted at the corners in or above the bumper region).
ix) Model ice cream cones at the front.
x) GRP construction, resulting in smooth edges.
xi) A vent on the side for the ice cream machine, which is usually behind the passenger seat.
xii) A rear window because of the need for rear view vision.
Feature | Millennium | Registered Design |
Front view | Front view | |
A | Front face consists of two planes when viewed from side elevation. The upper plane angles more steeply towards the back of the van. (This two plane feature runs around the side of the van above the cab.) | Front face consists of a single plane and runs vertical . |
B | Louvre is curved on the top, flat on bottom and confined to the upper plane. | Louvre's upper and lower edges are parallel, ends are rounded and occupies majority of front face. |
C | No crown visible and upper edge more curved. | Crown visible and only gently curved upper edge. |
Back view | Back view | |
D | Rear name panel recess is smaller with nearly parallel sides. | Rear name panel recess is larger and follows curve of roof. |
E | Upper rear lights are on a raised panel. | Upper rear lights are flush with body and no distinct raised panel. |
F | Lower rear lights are on the side and are vertical (traditional set-up). | Lower rear lights are horizontal and recessed into bumper region. |
G | Bumper is one piece. | Bumper is two pronounced pieces. |
Side view | Side view | |
H | Small wheel arch surround. | Larger wheel arch surround. |
I | Top of wheel arch merges into body. | Top of wheel arch has a distinct recessed grove framing the wheel arch. |
J | Back corner piece (which runs around the side from the bumper) runs along the side about a foot. | Back corner piece (which runs around the side from the bumper) runs along the side for a few inches. |
K | Upper front portion above the cabin is different in shape. | Upper front portion above the cabin roughly rectangular. |
L | Height of body above cabin is larger. | Height above cabin is shallower. |
M | Top of side windows level with the upper plane of the front portion. | Top of side window is roughly level with bottom of front portion above cabin. |
N | No ridge on bottom edge. | Ridge on bottom edge. |
The claim for infringement of design rights
The legislation
"(1) Design right is a property right which subsists in accordance with this Part in an original design.
(2) 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.
(3) Design right does not subsist in—
(a) a method or principle of construction,
(b) features of shape or configuration of an article which—
(i) enable the article to be connected to, or placed in, around or against, another article so that either article may perform its function, or
(ii) are dependent upon the appearance of another article of which the article is intended by the designer to form an integral part, or
(c) surface decoration.
(4) A design is not 'original' for the purposes of this part if it is commonplace in the design field at the time of its creation.
…"
Legal principles
"'Under section 226 there will only be infringement if the design is copied so as to produce articles exactly or substantially to the design. Thus the test for infringement requires the alleged infringing article or articles be compared with the document or article embodying the design. Thereafter the court must decide whether copying took place and, if so, whether the alleged infringing article is made exactly to the design or substantially to that design. Whether or not the alleged infringing article is made substantially to the plaintiff's design must be an objective test to be decided through the eyes of the person to whom the design is directed."
The designs relied on
Assessment
The claim for infringement of the Trade Mark
Liability of Ghulam
Factual background
Main factual issues
i) Was Ghulam the owner of SJ10 VTA, MH06 XJM/W111 PYX and WU57 YHX at the relevant times?ii) Did Ghulam fund the purchase and conversion of MH06 XJM/W111 PYX and the copying of the Mondial onto the chassis of SJ10 VTA?
iii) Did Ghulam purchase, or at least fund the purchase of, parts for conversions?
iv) Is Ghulam an experienced GRP moulder?
Primary liability
Joint liability
"I derive from those passages that mere (even knowing) assistance or facilitation of the primary infringement is not enough. The joint tortfeasor must have so involved himself in the tort as to make it his own. This will be the case if he has induced, incited or persuaded the primary infringer to engage in the infringing act or if there is a common design or concerted action or agreement on a common action to secure the doing of the infringing act."
Conclusions