We all scream for ice cream vans!

Ice cream vans normally consist of a chassis made by a commercial van manufacturer with a body designed and manufactured by a specialist supplier.

Whitby Specialist Vehicles Limited (Whitby) is the largest ice cream van manufacturer in the UK. In 2006 Whitby designed a new model of its ice cream van, the ‘Mondial’, based on an earlier model and proceeded to register the design later that year.

Whitby claimed that Yorkshire Specialist Vehicles (the defendants) infringed their registered and unregistered design rights and trade mark and brought proceedings in the High Court. The defendants counterclaimed for revocation of the UK Registered Design No 4,000,395 but were unrepresented in relation to issues of either infringement or revocation.

Mr Justice Arnold inspected the allegedly infringing ice cream van, the Mondial and a few other vans made to previous designs presented by Whitby. With respect to the registered design right, Arnold J considered that the ‘informed user’ was an ice cream van operator. In relation to the design corpus, Arnold considered the features and categorised them according to design constraints such as: technical requirements; cost requirements; regulatory requirements; practical requirements; and commercial requirements. Arnold J agreed that the Registered Design had a narrow scope of protection as it did not represent a significant departure from the design corpus and constraints on the designer’s freedom, but accepted that it created a different ‘overall impression’ from the closest prior design. He held that despite the minor differences between the Registered Design and the defendants’ van, it produced the same overall impression and that the defendants therefore infringed the Registered Design.

In relation to the unregistered design right, Whitby relied on 21 designs consisting of aspects of: the shape and configuration of the exterior; the interior; the base frame, and the direct drive bracket of the Mondial. Based on evidence heard, Arnold J held that the designs were original in the sense of not having been copied from previous designs, (as required in order to be protected). On the question of whether the designs were commonplace, and therefore excluded from protection, Arnold J considered that though the Mondial shared many common features with the previous designs, the differences were such that taken at the level of abstraction exhibited by the Mondial, neither the interior nor the exterior were commonplace. He considered the design of the base frame to be commonplace but not the design for the drive bracket. A few aspects of the designs were excluded on grounds that they “must match” or “must fit” other components of the van. 

On 1 October 2014, section 213(2) of the Copyright, Patents and Designs Act 1988 was amended by the Intellectual Property Act 2014 to delete the words “any aspect of” in the definition of the design so that a design now stands to be “the shape or configuration (whether internal or external) of the whole or part of an original design”. This was done to avoid claimants from relying on trivial parts of the design. This amendment was considered in another designs case at the IPEC where Judge Hacon considered that the amendment to be fully retrospective, with the potential consequence that an act committed before 1 October 2014 which was an infringement under the old law ceased to be an infringement. Arnold J expressed some doubts as to whether this is correct but considered that in this case, the amendment does not make a difference.

Though one of the defendants had denied copying the Mondial in a witness statement, under cross examination they had admitted that they had copied the Mondial. Arnold J held that there was no dispute that the Defendant’s van design was copied from the Mondial and that their van is substantially to the design and therefore infringed the Claimant’s unregistered design. 

The Claimant owns the trade mark for “WHITBY MORRISON” and these words are moulded into the Mondial. The Claimants showed a photograph the defendants had posted on Facebook which showed a mould bearing the same words in reverse. Arnold J found that the defendants used the mould to make covers for their vans and therefore that they had infringed the claimant’s trade mark under sections 10(1) and 10(4)(a) of the Trade Mark Act 1994.

It is interesting to note that this case was brought in the Patents Court of the High Court as the IPEC (where damages are limited to £500,000 and the cost cap is £50,000) would have been a far more appropriate forum. This was probably due to the fact that the defendants were unrepresented in relation to the infringements and did not challenge the Claimant’s choice of forum.

Conclusion

This case provides useful guidance for automotive manufacturers and companies producing spare parts for vehicles as to the extent of protection the Courts will today give to relatively unadventurous designs. However, the decision differs from the Court of Appeal guidance in Procter & Gamble v Reckitt Benckiser in relation to the application of the “overall impression” and the factors which may amount to constraints on the designer’s freedom. If the defendants had had a specialist IP lawyer representing them, there could well have been a different outcome.