Whitby Specialist Vehicles Ltd v Yorkshire Specialist Vehicles Ltd & Ors [2014] EWHC 4242 (Pat) (17 December 2014)

Whitby Specialist Vehicles Ltd v Yorkshire Specialist Vehicles Ltd & Ors [2014] EWHC 4242 (Pat) (17 December 2014)

The Defendants' van was copied from the Claimant's Mondial van and produced the same overall impression as the Registered Design, which was found valid and possessing individual character. The unregistered designs were original and not commonplace at the relevant level of abstraction. The Defendants' acts did not fall within the 'must fit'/'must match' exclusions for the main designs relied upon. Ghulam Rubani was found to have funded, owned, and participated in the copying and sale of infringing vans, making him both primarily and jointly liable for the infringements. Accordingly, the Defendants infringed the Registered Design, unregistered design rights (except the base frame), and the...

Citation
[2014] EWHC 4242 (Pat)
Parties
Claimant: Whitby Specialist Vehicles Limited; First Defendant: Yorkshire Specialist Vehicles Limited; Second Defendant: Amer Rubani; Third Defendant: Omar Rubani; Fourth Defendant: Ghulam Rubani
Jurisdiction
England and Wales
Judgment Date
17 December 2014
Procedural Posture
Intellectual Property Infringement (designs and Trade Mark) / First Instance Judgment After Trial
Outcome
Claim allowed in part; Defendants found liable for infringement of Registered Design, unregistered design rights (except base frame), and Trade Mark; Ghulam Rubani found jointly and primarily liable for certain infringements.
Legal Topics
Registered Design Infringement, Unregistered Design Right Infringement, Trade Mark Infringement, Joint Tortfeasance, Design Validity, Scope of Protection, Must Fit/must Match Exclusions
Intellectual Property Design Law Trade Mark Law Registered Design Infringement Unregistered Design Right Infringement Trade Mark Infringement Joint Tortfeasance Design Validity +2 more

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Parties

Whitby Specialist Vehicles Limited

Claimant

Yorkshire Specialist Vehicles Limited

First Defendant

Amer Rubani

Second Defendant

Omar Rubani

Third Defendant

Ghulam Rubani

Fourth Defendant

Procedural Posture

Intellectual Property Infringement (designs and Trade Mark) / First Instance Judgment After Trial

Legal Issues

  1. 1 Whether the Defendants infringed the Claimant's UK unregistered design rights in the Mondial ice cream van
  2. 2 Whether the Defendants infringed the Claimant's UK Registered Design No. 4,000,395
  3. 3 Whether the Defendants infringed the Claimant's UK Registered Trade Mark No. 2,229,302

Ratio Decidendi

The Defendants' van was copied from the Claimant's Mondial van and produced the same overall impression as the Registered Design, which was found valid and possessing individual character. The unregistered designs were original and not commonplace at the relevant level of abstraction. The Defendants' acts did not fall within the 'must fit'/'must match' exclusions for the main designs relied upon. Ghulam Rubani was found to have funded, owned, and participated in the copying and sale of infringing vans, making him both primarily and jointly liable for the infringements. Accordingly, the Defendants infringed the Registered Design, unregistered design rights (except the base frame), and the...

Court Disposition

Claim allowed in part; Defendants found liable for infringement of Registered Design, unregistered design rights (except base frame), and Trade Mark; Ghulam Rubani found jointly and primarily liable for certain infringements.

Orders

  • Declaration of infringement of Registered Design, unregistered design rights (except base frame), and Trade Mark
  • Inquiry as to damages or account of profits to be determined