27 December 2014

Leeds Ice Cream Van Makers lose Design and Trade Mark Infringement Claim

In Whitby Specialist Vehicles Ltd v Yorkshire Specialist Vehicles Ltd and Others [2014] EWHC 4242 (Pat) (17 Dec 2014) a company in Leeds which converts commercial vehicles into ice cream vans and the individuals behind it were sued in the Patents Court by Whitby Specialist Vehicles Ltd for registered design, design right and trade mark infringement. I have discussed the case in detail in Designs in Ice Cream Vans: Whitby Specialist Vehicles Ltd v Yorkshire Specialist Vehicles Ltd and Others 27 Dec 2014 NIPC Law.

The case was unusual in that it proceeded in the Patents Court which is a specialist court within the High Court for the trial of patent, registered design, semiconductor topography and plant breeders' right claims worth over £500,000. The case against the defendants was that they had bought one of the claimant's vans and used it as a template for making parts that they used to convert other vans. While any copying is serious it is unlikely that the damages or accountable profits will come close to the £500,000 figure. The usual forum for disputes of this kind is the Intellectual Property Enterprise Court ("IPEC") which I mentioned in Holding your Own - How to stop others from ripping you off if you are a Private Inventor 5 April 2014. There trials are completed in one or at most two days and the costs of  trial on liability are limited to £50,000. The costs in the Patents Court will be much higher.  Why the case was not transferred to IPEC is curious and that may be because nobody asked for such a transfer. That could be because the brothers and their company were unrepresented and the father, who was represented by Leeds solicitors and Manchester counsel, contested only his personal involvement in the infringement.

This case is worth reading for Mr Justice Arnold's analysis of the law relating to registered designs and unregistered design right infringement and the meticulous way in which he dissected the factual evidence against the father.  It is likely to be referred to in future cases on registered design and design right infringement. Finally, the claimant company has nothing to do with the seaside town. It is actually based in Crewe. It takes its name from its founder whose surname was Whitby.  If anyone wants to discuss this case or registered design and unregistered design right law with me after the Christmas holidays, call me on  01484 599090 or use my contact form.