The Zockoll Group Ltd & Anor v Mr Handy Ltd & Ors

Summary judgment may determine a short point of law or construction where the court has the evidence necessary for proper determination and the parties have had an adequate opportunity to address it. A registered-design infringement claim may be suitable for summary judgment where the judge can assess the informed user’s overall impression as well as the relevant design corpus and design freedom. A monochrome design may be treated as a design defined by shape, making colour and surface decoration irrelevant. The comparison remains one of the designs as a whole, with particular weight given to striking features. Where a company’s sole shareholder and director controls its significant decisions, an evidential presumption may arise that the individual instigated and controlled the company’s tortious acts.

The claimants sought summary judgment on infringement of one EU-registered design depicting a van with an oversized screwdriver attached to its roof. They also pursued passing-off claims and alleged that the sole owner and director of the defendant companies was personally liable as a joint tortfeasor.

The defendants’ vans used a similar roof-mounted screwdriver. The principal design issue was whether they produced a different overall impression. The court also considered whether the evidence justified determining infringement summarily and whether the individual defendant was personally liable.

1. Summary judgment. The court applied the principles stated in Mellor v Partridge [2013] EWCA Civ 477. The court must assess whether the claim has a realistic prospect of success, avoid a mini-trial, and consider evidence reasonably expected to be available at trial. It may decide a short point of law or construction where the necessary evidence is before it and the parties have had an adequate opportunity to argue the issue. A case should not proceed merely because something might emerge at trial.
2. Registered-design infringement. A design case may be suitable for summary judgment where the judge can assess the informed user’s overall impression without special teaching. The design corpus and the designer’s freedom are relevant to the scope of protection. Here, the evidence showed no likely additional corpus material involving a vehicle with a model screwdriver and almost total freedom in designing the roof feature.
3. Overall impression. Colour was irrelevant because the registered design was a monochrome line drawing. Following the approach in Magmatic Ltd v PMS International Group plc [2016] UKSC 12, the design was defined by shape, so surface decoration was also irrelevant. Although the vans differed in detail, the informed user would focus on the striking oversized screwdriver and the generic character of the van. The defendants’ vans did not create a different overall impression.
4. Liability. The claim that Mr Grainger was a primary tortfeasor because he personally drove the vans failed, since he said he did not drive them and the court accepted that evidence. Applying Grenade (UK) Ltd v Grenade Energy Ltd [2016] EWHC 877 (IPEC), his position as sole owner and director raised an evidential presumption that the companies’ acts were instigated and controlled by him. His evidence that he took all significant decisions established joint tortfeasance.
5. The claimants succeeded in the design-infringement claim against the first to third defendants, and Mr Grainger was liable as a joint tortfeasor.