• Rosie Burbidge

When is an interim injunction appropriate in design cases?


In a case concerning unregistered designs for bumpers for VW Transporter vans, Mr Justice Miles recently ruled on the scope of an interim injunction and on whether the defendants should disclose the identity of the suppliers of the infringing articles (Leighton Vans Ltd v Harris & Anor).


The action was brought by Leighton Vans Limited, which makes bumpers that fit on to VW vans, against Mr David Harris and All Seasons Leisure Limited, which makes products made to the same design but manufactured from fibreglass rather than plastic.


Interim injunction

The defendant admitted infringement and had offered an undertaking not to manufacture or use products identical to the claimant’s design. However, the claimant sought an injunction preventing the manufacture of sale of any articles made exactly or substantially to the claimant’s designs.


The judge rejected both positions and preferred a middle ground. He said the defendants’ proposal was “too narrow” and “would allow the defendants too much room to avoid the terms of the undertaking by making slight changes from the claimant's designs”. The claimant’s proposal, however, would amount to “either a veto right or a qualified veto right” enabling the claimant to decide what the defendants should/should not be allowed to do.


He noted that it was clear that an interim injunction should be granted in relation to identified articles, including both the original kind of bumpers produced by the defendants (known as version 1) and another version that was shown on Facebook (called version 2). On the latter, he considered that there was a serious issue to be tried and that the cross-undertaking offered by the claimant in relation to damages was sufficient at least for a short-term interim injunction.


He therefore decided to grant an injunction in relation to both versions for a length of time to be determined but not down to trial because “on fuller evidence and more mature consideration, a court might reach a view that it is not appropriate to continue the injunction in relation to version 2”.

He added that if the claimant feels the defendant is trying to get round the injunction it can return to court and seek to expand the relief.


Disclosure

The claimant also sought disclosure of information about any other party or company that had supplied the defendants or been involved in the copying/reproduction of the designs.


However, the defendants had accepted responsibility for any infringing acts, and said that any moulds they had obtained had now been destroyed.


In light of this, the judge decided a disclosure order was not necessary, concluding:

It appears that the defendants asked for the moulds to be produced and no doubt provided instructions for that to take place. I do not think there is any evidence that whoever it was responsible for producing the moulds has itself produced separate moulds or other goods … There is also a question of proportionality here. I can quite understand that the claimant wishes to protect its intellectual property rights but there is also a concern that there should not be overkill in its protection of its rights.”

A balanced approach

The judge has taken a considered and balanced approach to the two issues before him at this interim hearing. It’s probably the case that neither side feels they have got everything they wanted – which may be an indication that justice has been served!


Similar to the Au Vodka passing off case that we covered recently, this case demonstrates that judges will consider carefully the granting of interim injunctions and weigh up all the relevant facts in deciding on their scope and duration.


To find out more about the issues raised in this blog contact Rosie Burbidge, Intellectual Property Partner at Gunnercooke LLP in London - rosie.burbidge@gunnercooke.com


#interiminjunction #unregistereddesigns #disclosure