A bumper decision
[2022] EWHC 2386 (Ch), Leighton Vans Ltd v Harris and another, High Court, 29th July 2022.
Abigail Wise explains why limits and scope were driving factors in a VW case
Key points
- This case provides useful practical guidance to IP practitioners on the scope and terms of potential injunctions in design rights cases
- The Court will not make a generally worded injunction ordering a defendant to cease engaging in infringing conduct
- The Court will only grant a disclosure order about the identity of third parties involved in infringing activities if it is necessary, not merely desirable
The Claimant, Leighton Vans, had been producing and selling an altered VW Transporter van plastic bumper.
The Defendant, All Seasons Leisure, began offering for sale two fibreglass versions of an altered bumper that the Claimant argued were made to its design.
The Defendant accepted that the first of the two bumpers was made to the Claimant’s unregistered design and was willing to cease offering it for sale.
In relation to the second bumper, the Defendant disputed the design infringement and argued that the design was different in form and function, and that any similarity was a result of the shared requirement to fit the VW Transporter.
Although the Defendant was prepared to offer undertakings, these did not satisfy the Claimant.
Further, the Claimant also wanted information on the Defendant’s bumper manufacturers and suppliers to either pursue them as joint tortfeasors or to inform them about its designs.
The Defendant resisted the disclosure, as it accepted that, to the extent infringing acts had taken place, this was its responsibility and it would answer for any losses.
The questions before the Court were therefore the terms of any injunction and whether disclosure should be ordered.
Mr Justice Miles’ judgment provides useful insight and guidance on the approach to scoping injunctions in design rights cases, as well as the circumstances in which the disclosure of the identity of third‑party manufacturers or suppliers will be ordered.
Injunction terms
Whether an injunction should be granted was a fairly straightforward question as, on the American Cyanamid principles, (American Cyanamid v Ethicon [1975] RPC 513 HL) there was a serious issue to be tried in relation to whether both bumpers amounted to design infringement.
Damages would not be sufficient because of the potential reputational damage, and the cross‑undertakings offered by the Claimant justified a short‑term injunction in relation to both bumpers.
However, the bulk of the judgment turned on what the terms of the injunction should be.
The Defendant’s proposal was for undertakings restricting the manufacture and use of products identical to the Claimant’s design.
The Claimant wanted the prevention of production, sale or use of products “incorporating the designs or any of them set out in schedule 2 to this order (‘the designs’) or to which the designs (or any of them) are or have been applied and/or made to the designs (or any of them) or made to any substantially similar designs to them, such articles being referred to as ‘prohibited articles’.”
The Defendant’s proposal was too restrictive such that minor changes would release the Defendant from any liability.
In contrast, the Claimant’s draft injunction extended beyond the protection offered by s226(3) of the Copyright, Designs and Patents Act 1988 (CDPA).
In particular, s226(3) prevents copying of a design so as to produce articles exactly or substantially to that design.
The Claimant’s proposal would prevent articles being made to designs substantially similar to the Claimant’s design, a level of protection different from the statutory prohibition.
On questioning, it was clear the Claimant did not intend this over‑extension, and instead sought wording that would reflect the protection offered by s226(3) CDPA.
The Claimant’s approach remained problematic as it effectively sought to prevent the Defendant from breaching the CDPA.
The Court is generally unwilling to grant injunctions preventing unlawful activity as it does not sufficiently enable the Defendant to work out what it can and can’t do. (See Biro Swan Limited v Tallon Limited [1961] RPC 326)
Compounding this problem is that any question of a breach would require an analysis of whether there had been infringement under s226(3).
Suggestions that the Defendant should obtain consent from the Claimant in scenarios where it thinks its activities may be infringing did not solve the uncertainty, as it would give the Claimant an effective veto and would allow it to decide what the Defendant should and should not be allowed to do.
Ultimately, the Court granted a short‑term injunction to prevent the Defendant from making and selling the two sets of alleged infringements that had been identified.
Miles J noted that if the Defendant sought to avoid the injunction by making further changes to its bumper designs, the Claimant would be able to return to the court and expand the injunctive relief.
Disclosure
On the issue of disclosure of the identity of manufacturers and suppliers of the Defendant’s products, the question was whether this was necessary.
The consideration of necessity derives from the Norwich Pharmacal principles. (Norwich Pharmacal Co v Customs and Excise Commissioners [1974] AC 133, HL) Counsel for the Defendant noted these principles were summarised recently in Orb ARL v Fiddler ([2016] EWHC 361 (Comm)) by Popplewell J, who stated that necessity was a threshold condition for making a Norwich Pharmacal disclosure order.
A disclosure order can only be made if it is a necessary and proportionate response in all the circumstances.
The Claimant wanted all parties related to the manufacture of the bumpers to be disclosed. It wasn’t clear that there would be any real prejudice to the Defendant or third parties if this information were provided, nor would the disclosure involve a breach of confidence.
However, as there was no reason to doubt the moulds the Defendant had obtained had been destroyed and the Defendant had accepted it would be primarily liable to the extent infringing acts had taken place, there was no necessity for a disclosure order.
Miles J was also concerned that the Claimant’s desire to protect its IP rights was disproportionate. As a result, Miles J refused to make a disclosure order.
This case reiterates that the terms of an injunction should spell out exactly what actions would constitute a breach.
Should a defendant attempt to get around any specific terms, there is an option to return to court and seek to expand the scope.
The Court will not make a generally worded injunction ordering defendants to cease engaging in infringing conduct.
The case also confirms that the Court will only grant a disclosure order about the identity of third parties involved in infringing activities if it is necessary, as opposed to merely being desirable.
