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A decision best served cold: High Court delivers judgment on ice cream van design

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03/02/2015

Ice cream vans may not be an obvious inspiration for intellectual property litigation but they were the focus of the recent High Court judgment in Whitby Specialist Vehicles Ltd v Yorkshire Specialist Vehicles Ltd [1].

In the case, the claimant argued that the defendants’ ice cream van infringed (1) certain UK unregistered design rights in aspects of the design of its own ice cream van; and (2) a UK registered design in respect of the external appearance of its van.

The Court gave judgment for the claimant.

On unregistered design right, there was no dispute that the defendants’ van had been copied from the claimant’s van, as the second and third defendants, being shareholders in the first defendant, admitted copying the claimant’s van by taking mouldings of its panels to construct their own vans. While it was undeniable that there were some modest differences between the two designs, they were nonetheless very similar. Regarding the validity of the design right in the claimant’s van, the Court found that the design was original and that, although it did not denote a significant departure from the existing design corpus, and indeed shared many common features with them, the design could not be said to be commonplace or lacking in originality. Only the design of one feature – the base frame – could be said to be commonplace.

On the validity of the claimant’s registered design, the Court considered that the claimant’s design would produce a different overall impression on the informed user than the closest prior design (incidentally being a prior design of the claimant). On infringement, by contrast, the defendant’s van would produce the same overall impression as the claimant’s registered design.

A claim that the defendant had infringed the claimant’s the trade mark WHITBY MORRISON, which was registered in the UK in respect of various goods, including ice cream vans and parts and fittings for those goods, was also upheld.

The subject matter – ice cream vans – is somewhat unusual but is a reminder of the scope of design right and registered design protection. Possibly the most interesting feature of this case, was the Court’s finding that the defendants’ father, who had invested in their business, was liable as a joint tortfeasor, as he had funded the purchase and conversion of at least two vans, had participated in the copying of the claimant’s design and had sold at least one of the infringing vans.

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[1] [2014] EWHC 4242 (Pat)