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The decision of Mr Justice Arnold in Whitby Specialist Vehicles Ltd v Yorkshire Specialist Vehicles Ltd and others [2014] EWHC 4242 (Pat) (17 Dec 2014) shows the value of design registration. It costs relatively little and is very quick because there is no substantive examination unlike patents and trade mark registration. Unlike claims for unregistered design right infringement there is no need for the registered proprietor to prove copying or knowledge of the infringement on the part of the defendant. However, if copying and knowledge of the registration can be proved the infringer may now be prosecuted under s.35ZA of the Registered Designs Act 1949.
In the case that I just mentioned above a Crewe specialist vehicle converter successfully sued a company in Leeds and the individuals behind it for registered design, unregistered design right and trade mark infringement. I have set out the details in Designs in Ice Cream Vans: Whitby Specialist Vehicles Ltd v Yorkshire Specialist Vehicles Ltd and Others 27 Dec 2014 NIPC Law.
The claimant converts commercial vehicles into ice cream vans. One of its models, the Whitby Mondial, wis based on the Mercedes Sprinter. The company registered the design of the Mondial under the Registered Designs Act 1949. Because all ice cream vans share a lot of common features and designers are constrained by technical, commercial, regulatory, cost and practical restraints the registration afforded a relatively narrow scope of protection but it was enough for the purposes of this litigation.
The judge found that the defendants had purchased one of the claimant's converted vans, made moulds from its parts and used those moulds to make a competing product called the Millennium. The copying was so blatant that the defendants even reproduced the claimant's trade mark.
Design registration is relatively straightforward and many businesses do it for themselves. You can find a lot of information on the Register a Design page of the Intellectual Property Office website. It is usually a good idea to instruct a patent or trade mark attorney to assist you. If you do not already have a patent or trade mark attorney you can search the databases of the Chartered Institute of Patent Attorneys or Institute of Trade Mark Attorneys through their websites. Alternatively, you can call my clerk Steve or George on 0161 850 0080 and he can give you the names of several with whom I or my colleagues have worked successfully in the past. Probably nobody is in a better position to judge whether an attorney knows his or her stuff than counsel for the reasons I explained in IP Services from Barristers 6 April 2013 4 to 5 IP.
If you want to discuss this case or design registration in general give me a call on 0161 850 0800 during office hours or use my contact form.
I wish all my readers a happy New Year.
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