Whitby Specialist Vehicles Ltd v Yorkshire Specialist Vehicles Ltd and Others
| Jurisdiction | England & Wales |
| Judge | The Hon Mr Justice Arnold,Mr Justice Arnold |
| Judgment Date | 17 December 2014 |
| Neutral Citation | [2014] EWHC 4242 (Pat) |
| Docket Number | Case No: HP13A00329 |
| Court | Chancery Division (Patents Court) |
| Date | 17 December 2014 |
[2014] EWHC 4242 (Pat)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
PATENTS COURT
Royal Courts of Justice
Rolls Building, Fetter Lane, London, EC4A 1NL
The Hon Mr Justice Arnold
Case No: HP13A00329
Michael Hicks and Jonathan Moss (instructed by ORJ Solicitors LLP) for the Claimant
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
Approved Judgment
I direct that pursuant to CPR PD 39A para 6.1 no official shorthand note shall be taken of this Judgment and that copies of this version as handed down may be treated as authentic.
Contents
| Topic | Paragraphs |
| 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 | 27–29 |
| design corpus on the scope of protection 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
This is a case about the design of ice cream vans. The Claimant ("Whitby") contends that the Defendants have committed the following infringements of its rights:
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 Defendants deny infringement and the First to Third Defendants counterclaim for revocation of the Registered Design. Other counterclaims were not pursued at trial. As explained below, the issue which occupied most of the time at trial was the liability of the Fourth Defendant. It is important to note that, although the Fourth Defendant was represented at trial by solicitors and counsel, they were instructed only in relation to the issue of his liability, and not in relation to the underlying issues of validity and infringement. The First to Third Defendants were not professionally represented at trial, and had understandable difficulty in effectively presenting their cases on those issues. Their Amended Defence and Counterclaim had, however, been settled by specialist counsel, and so I have carefully considered the points made there.
The parties
Whitby is the largest manufacturer of ice cream vans in the UK. The business was founded by Bryan Whitby in 1962 and acquired by Whitby in 197Since then, Whitby has acquired two other ice cream manufacturers, Morrisons and Cummins, in 1989 and 1999 respectively. It remains a family-owned and run business. It has no connection with the Yorkshire town of Whitby, and is based in Crewe. There are two main aspects to Whitby's business: the first is the design and manufacture of new ice cream vans and the second is the repair, maintenance and restoration of existing vans.
The Second and Third Defendants are brothers and the Fourth Defendant is their father. For convenience, and without intending any disrespect, I shall refer to the Second, Third and Fourth Defendants as "Amer", "Omar" and "Ghulam" respectively. Ghulam has sold ice cream from ice cream vans for many years, although he also runs a grocery shop with his wife and has some interests in property. When they were younger, Amer and Omar joined their father in his ice cream business, which traded as Paradise Ices. Subsequently, Amer decided to go into business making ice cream vans. It appears that, to begin with, Amer traded as Yorkshire Specialist Vehicles, and that subsequently the business was carried on through the First Defendant ("YSVL"). Amer is, and Omar was, a shareholder in YSVL. Omar has worked for Amer and for YSVL. There is a major dispute as to whether or not Ghulam has had any involvement in this business.
The witnesses
Whitby's principal witness was Stuart Whitby ("Stuart"), Whitby's Managing Director, who gave both factual and expert evidence. Much of his evidence was not challenged. He was a clear and measured witness, and I have no hesitation in relying on his evidence. Whitby's other main witnesses were Stuart's son Edward Whitby ("Edward"), who is Whitby's Production Manager, and Antonio Coronato, a sales executive employed by Whitby. Edward's evidence was not challenged. Mr Coronato was briefly cross-examined. He was a straightforward witness and I accept his evidence. Whitby also called Sean Moss, a private investigator, but his evidence is of peripheral relevance to the issues I have to decide.
Amer struck me as a person who, despite lacking much formal education, was of some intelligence and ability. It is therefore regrettable to have to record that, in his oral evidence, he gave me the impression of someone who was saying whatever was necessary to attempt to exculpate Ghulam from involvement in the alleged infringements while maintaining an appearance of candour. There were several problems with his credibility. First, he had previously signed a witness statement with a statement of truth in which he denied copying the Mondial. As he accepted, that denial was untrue. Secondly, he admitted lying to Stuart at their meeting on 1 June 2011 (as to which, see below). Thirdly, he accepted that, on his account of events, he had behaved dishonestly with regard to insurance (as to which, again see below). Fourthly, various aspects of his evidence were either simply incredible or difficult to reconcile with such documents as have been disclosed by the Defendants or internally inconsistent. Fifthly, it is plain that the Defendants' disclosure has been deficient, and that Amer bears at least some of the responsibility for this. Counsel for Whitby submitted that Amer was covering up his father's involvement, and I accept that submission.
Omar clearly played second fiddle to his brother, and therefore his evidence is of less significance. He suffered from similar credibility problems to his brother, however. Counsel for Whitby again submitted that Omar was covering up his father's involvement, and again I accept that submission.
Ghulam gave evidence through an interpreter, it being his evidence that he only spoke broken English. It was also his evidence that he was illiterate. Despite making every allowance for those difficulties, I found him to be a very unsatisfactory witness. He frequently took refuge in claims that he did not know, or could not remember, matters which he must have known about. When he did answer questions informatively, much of his evidence was incredible or inconsistent. Furthermore, after he had given evidence on the third day of the trial, he gave late disclosure of further documents which necessitated him being recalled the next day. I do not believe that Ghulam told me the truth about his involvement in the infringements.
As well as giving factual evidence, Stuart gave expert evidence which was barely challenged. YSVL, Amer and Omar had served an expert report from a Derek Appleby, but they did not call Mr Appleby to give evidence at trial.
The development of the Mondial
Ice cream vans generally consist of a chassis (and cab) manufactured by a commercial van manufacturer such as Ford or Mercedes onto which has been added a body designed and manufactured by a specialist supplier such as Whitby. This can be done in one of two ways: either starting from a bare commercial van chassis or starting from a complete commercial van, from which the body is then removed. Both ways are referred to as "converting" the commercial chassis/van. The body and interior fittings are commonly made of moulded GRP (glass reinforced plastic – i.e. "fibreglass") panels.
In 2006 Whitby designed a new model of ice cream van, which came to be known as the Mondial, based on the Mercedes Sprinter chassis. The design team was led by Stuart and also included five...
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