Whitby Specialist Vehicles Ltd v Yorkshire Specialist Vehicles Ltd & Ors

For registered design infringement, the decisive question is the overall impression on the informed user, assessed against the design corpus and the designer’s degree of freedom. A design that departs only modestly from commonplace forms may have narrow protection, but close copying may still infringe. For UK unregistered design right, originality is assessed at the level of the design embodied in the article, while commonplace and statutory exclusion issues are fact-sensitive. The must-fit and must-match exclusions do not remove protection where the relevant feature retains practical design freedom. Copying and substantial similarity are assessed objectively. Sale of an infringing registered-design article does not require knowledge, while sale of an unregistered-design infringing article does. Knowing assistance alone is insufficient for joint tortfeasance; common design or equivalent involvement is required.

Whitby claimed that Yorkshire Specialist Vehicles Ltd and the individual defendants had infringed UK unregistered design rights in the Mondial ice cream van, a UK registered design for its external appearance, and a trade mark. The first to third defendants counterclaimed for revocation of the registered design. The principal factual issue concerned the liability of the fourth defendant, including his ownership, funding, participation in copying and sale of copied vans. The court had to determine the validity and infringement of the registered design, the subsistence and infringement of the unregistered design rights, trade mark infringement, and the fourth defendant’s primary and joint liability.

Disposition. The registered design was valid. The first to third defendants infringed it. The defendants also infringed the relevant UK unregistered design rights, except in relation to the base frame. Amer and Omar infringed the trade mark, and Ghulam was jointly liable for those infringements.

1. For the registered design, the court applied the Designs Directive. The informed user was an ice cream van operator who was particularly observant, knew the design corpus and normally used direct comparison. Individual character was assessed by comparing the overall impression with earlier designs considered individually. The Registered Design differed sufficiently from the Millenium design to possess individual character.
2. The Registered Design had a relatively narrow scope because it represented no significant departure from the existing corpus and the designer faced technical, regulatory, practical, cost and commercial constraints. Nevertheless, the defendants’ van produced the same overall impression and infringed.
3. For unregistered design right under the Copyright, Patents and Designs Act 1988, the designs originated with Whitby and were original. The first exterior design and the interior designs were not commonplace at the level embodied by the Mondial, although the base frame was commonplace and the drive bracket was not. Certain individual panels and other features were excluded by the must-match or must-fit provisions. The defendants’ van and relevant components were copied and were substantially to the protected designs.
4. The court applied the objective substantial-copying approach stated in C & H Engineering v F. Klucznik & Sons Ltd [1992] FSR 421. Knowledge or reason for belief was required for sale of articles infringing unregistered design right, and Ghulam had the requisite reason for belief.
5. Ghulam was also primarily liable for selling a copied van. The court applied the joint-tortfeasance principles in Twentieth Century Fox Corp v Newzbin Ltd [2010] EWHC 608 (Ch): mere assistance was insufficient, but funding the purchase and conversion of vans, participating in copying and selling a copied van showed sufficient involvement in the infringements.

The conclusions were confined to the specific infringements considered. Ghulam’s liability for later infringements was left for the inquiry as to damages or account of profits.