Trade Marks Designs

Design Success in Ice Cream Dispute

January 16, 2015

We are pleased to report that our client Whitby Specialist Vehicles Ltd has recently been successful in the High Court in bringing infringement proceedings based on their registered trade mark WHITBY MORRISON, and also on a registered design we obtained for them, as well as unregistered design rights in the shape of ice cream vans.

In a recent High Court action our client Whitby Specialist Vehicles Ltd was successful in bringing intellectual property infringement proceedings against the company Yorkshire Specialist Vehicles Ltd (“Yorkshire”) and their directors. Yorkshire had purchased an ice cream van from our client, taken it apart, and used it to make their own ice cream vans based on a copy of our client’s design. Registered design infringement was brought against Yorkshire, and as a counterclaim they attacked the validity of our client’s registered design obtained by us in 2006. During the trial it was held that as the market for ice cream vans does not show a large degree of variation in design between different models, the informed user would notice these differences. The attack on our client’s registered design therefore failed. From the evidence supplied it was clear that copying of our client’s designs had taken place, and therefore our client was also successful in relation to unregistered design infringement. Interestingly our client also succeeded in relation to trade mark infringement in relation to their registered trade mark WHITBY MORRISON which we registered for them in 2000. Yorkshire had copied a panel from our client’s design which had their trade mark embossed on it, and they had put a picture of the panel bearing our client’s trade mark on Facebook. This successful litigation illustrates the value of obtaining registered design protection for products. As the scope of the design was held in the judgment to be relatively narrow, it is therefore worth protecting individual different designs, and/or parts of designs as relevant to particular products. We can advise on potential design filing strategies for particular products. As indicated in previous articles, the potential scope of UK unregistered design right has been reduced by recent legislation changes. This means that now more than ever it is important wherever possible to obtain relevant registered design protection. A particular advantage with registered designs is that it is not necessary for copying to have taken place for there to be infringement. Therefore infringement of registered designs can be held where copying of a design has not taken place or perhaps cannot be proven. For unregistered design right protection it is appropriate to keep good records of designs, including relevant drawings and details concerning when the particular designs were made, by whom, and when respective products were first marketed. Care should also be taken that the correct party actually owns any unregistered design right, rather than for example an independent or freelance designer or design company who may have produced the designs for a party. The fact that our client had registered their valuable trade mark meant that they were also able to succeed in a trade mark infringement action. Whilst designs, both registered and unregistered, have a limited duration, registered trade marks do not, and can be renewed indefinitely if a mark is still in use.

If you have any comments or questions concerning any of the points raised in this article please contact your usual contact at Swindell & Pearson or [email protected]