Designer Mr Whippy?

A recent case demonstrates how a design with similar features to existing designs can nevertheless be protected from being used by others without the designer’s permission. It provides a useful reminder of how design rights can be a powerful business asset.

Yorkshire, ice cream vendors who made their own ice cream vans, had taken mouldings from parts of ice cream van made by Whitby, a manufacturer and repairer of ice cream vans, and then copied the mouldings to make a similar van. Whitby subsequently brought a claim against Yorkshire for infringement of Whitby’s design rights.

All ice cream vans are built with similar features due to the need to incorporate certain functional features. Consequently there is limited design freedom in developing new ice cream van designs. It was held Whitby’s registered designs (above right) were different enough from existing ice cream vans (above left) to produce a different overall impression, and they possessed an individual character. They were therefore protected by registered design rights. Also, Whitby’s designs were protected by unregistered design rights as they were original in that sufficient skill, effort and aesthetic judgement had been expended on the new designs and they were not commonplace.

In deciding whether Whitby’s design rights were infringed by Yorkshire, the court held:

  1. Yorkshire’s van was very similar to Whitby’s registered design and produced the same overall impression.
  2. Yorkshire’s van was made substantially to Whitby’s design.

Accordingly, Yorkshire’s vans infringed Whitby’s rights in both the unregistered and registered designs. Yorkshire is liable to pay Whitby damages or an account of profits, in addition to costs (yet to be determined).

It is important to note that, had the infringing acts been carried out after 1 October 2014, Yorkshire could have fallen foul of the new criminal offence of intentional copying of a registered design, which carries a maximum sentence of 10 years in prison, a fine, or both.

For more information on the protection offered by design rights, please contact our Intellectual Property team.