High Court examines ice cream van design after manufacturer alleges infringement

Posted by Ben Evans on

There's a frosty atmosphere in the High Court as ice cream van manufacturers battle over alleged infringement. Whitby Specialist Vehicles, the largest manufacturer of ice cream vans in the UK, was rather annoyed when it found out that one of its competitors, Yorkshire Specialist Vehicles, had begun manufacturing very similar vans. Whitby brought proceedings against the company, the brothers who ran/ were shareholders of the company and their father (a true family affair), alleging design right, unregistered design right and trade mark infringement.

By way of a brief overview of this case (and subsequently ice cream van manufacturing), ice cream vans are not made from scratch. Generally, they consist of a chassis/ cab made by a commercial van manufacturer and a body is designed, made and fitted by specialist manufacturers. The process of converting a commercial vehicle into an ice cream van is relatively straightforward, the van is stripped back to its bare chassis, the vans body and interior fittings are made (commonly from reinforced fibreglass panels) and then everything is fitted together.

The design in dispute was Whitby's "Mondial" (UK Registered Design No. 4,000,295). It is this design that the defendant's allegedly copied in their "Millennium van". The brothers had in fact used the Modial's panels as plugs to produce moulds from which further panels were made. Additionally, the brothers also copied some of Whitby's bespoke mechanical components. Whitby produced overwhelming evidence of the brothers' work and despite denying the allegations at first, the brothers (and the company) eventually confessed to copying the Mondial before trial. The 3 defendant's counterclaimed for revocation of Whitby's mark on the grounds of invalidity but the Judge, Mr Justice Arnold, dismissed their claim. This left one issue for trial - the father's input.

Whitby claimed that all 4 defendants had infringed its registered design and unregistered design rights in respect of the vans external appearance and its UK mark WHITBY MORRISON which was embossed into the Mondial's drive shaft.

At trial the court found in favour of Whitby. The judge found that Whitby's registered design had been infringed as well as many of its unregistered design rights because the bulk of them were not commonplace or subject to "must fit" and "must match" exceptions. The Judge also held that Whitby's trade mark WHITBY MORRISON had been infringed as the defendants had copied and sold drive shafts bearing the mark. Finally, in respect of the father's role, the Judge found him to be jointly liable because he had been involved in the business which included the provision of financial support, assisting in the copying of the Mondial and the sale of vehicles he knew to be infringing.

Whitby will be delighted with this decision. There is currently a freezing order in place over the defendant's assets and damages and costs are being assessed. Whitby has also asserted that no one is authorised to manufacture, sell or buy a new or second hand Mondial conversion not made by Whitby Morrison.  

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Ben is a dual-qualified Solicitor and chartered trade mark attorney and advises clients on both contentious and non-contentious intellectual property matters.

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