Neale Christy (London) authored an article for World Trademark Review providing a high-level overview of recent copyright infringement allegations brought to the High Court in Leighton Vans Ltd. v Harris regarding two unregistered designs of aftermarket bumpers for VW Transporter vans. The article examines the potential effect of interim injunction during copyright proceedings, such as possible confusion between the competing parties.
“While the court is not making a final decision on confusion, the potential success of infringement proceedings is a key factor to be considered when granting an interim injunction,” Christy noted. “However, granting interim relief must always strike a balance between protecting the claimant without severely prejudicing the defendants.”
Read the full World Trademark Review article here (subscription may be required) or view the article below.
High Court considers alleged infringement of Leighton Vans’ unregistered design rights
Leighton Vans Ltd v Harris ( EWHC 2386 (Ch)) concerned an application for an interim injunction relating to designs for bumpers for VW Transporter vans in terms of unregistered design and copyright infringement.
Claimant Leighton Vans designs and sells aftermarket bumpers. One of its plastic bumpers (‘bumper 1’) comprises a chin, a splitter and a fin.
Around March 2022 the claimant discovered that Ukpoptops was selling vans fitted with a replica of bumper 1, but in fibreglass. The replicas, initially manufactured by Excel Group Limited, were subsequently manufactured by the defendants by means of a commissioned mould of bumper 1. Ukpoptops’ business was intended to be transferred to the second defendant.
The defendants responded to the complaint by destroying the infringing mould, undertook not to sell vans fitted with bumper 1 and disclosed Excel’s details. However, they refused to stop selling vans fitted with a revised bumper (‘bumper 2’) or to provide details of the manufacturer of the commissioned mould.
The claimant applied for an interim injunction.
The scope of the interdict
The court rejected the claimant’s proposed interdict, given that it exceeded (at first) or reproduced (in the alternative) the provisions of Section 226(3) of the Copyright, Designs and Patents Act, which only limits substantial copying of a design. A requested blanket restriction on potentially infringing action without the claimant’s consent was also rejected. The court held that its role was to specify the ambit of a breach, and that granting veto power to the claimant was excessive.
However, the defendants’ request to limit the scope of the order to bumper 1 was also rejected, on the basis that this would have been too narrow, encouraging further infringing action.
In considering the bumpers, the court accepted that there were similarities and differences between bumpers 1 and 2. However, it accepted that prima facie evidence had been provided that confusion may nevertheless arise as to a connection between the businesses of the competing parties through use of bumper 2. As such, an interim injunction in respect of both bumper 1 and bumper 2 was justified. Whilst the court did not rule on the final question of similarity between bumpers 1 and 2, it concluded that there was at least a serious question to be considered.
Finally, before interim relief can be granted, the court must consider whether damages would be a reasonable alternative. As reasonable prospects of consumer confusion existed, the court ruled that a short interim injunction in respect of both bumpers was justified, along with joining Ukpodtop to proceedings.
Claimant’s request for further information
The claimant sought disclosure of all entities involved in the creation of bumpers 1 and 2. The court accepted the findings in Orb ARL v Fiddler (2016) that a threshold of necessity had to be met before an order for further information could be granted. This differs from mere consideration of the reasonableness of the claimant’s request.
The court accepted that, following initial manufacture by Excel, the defendants had commissioned a mould to manufacture bumper 1 themselves. Any potential infringement was accordingly committed by the defendants exclusively. The court found no reasonable risk of any third party creating infringing articles independently, concluding that ordering further disclosures would be disproportionate to the spirit of the act.
This case reminds us of the importance of the potential of confusing similarity in interim injunction proceedings, even when considering copyright and unregistered designs. While the court is not making a final decision on confusion, the potential success of infringement proceedings is a key factor to be considered when granting an interim injunction. However, granting interim relief must always strike a balance between protecting the claimant without severely prejudicing the defendants. As such, particularly when seeking further information to enable action against infringing suppliers, evidence of necessity - and not just reasonableness - must be led.
Reprinted with permission from the November 8, 2022 edition of “World Trademark Review”© 2022 Law Business Research. All rights reserved.
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