A bumper warning for unregistered design rights holders: High Court applies the brakes on scope of interim relief

Introduction:

In Leighton Vans Limited v David William Harris & another [2022] EWHC 2386 (Ch), the High Court has granted a limited short-term interim injunction and refused to make an order for disclosure in a claim relating to infringement of unregistered design rights for bumpers fitted to VW Transporter vans. This judgment serves as a practical reminder of the court’s reluctance to grant interim relief to protect intellectual property rights beyond what is necessary and proportionate.

The facts:

The case concerned two sets of bespoke bumpers for VW Transporter vans made by the Defendants, which allegedly infringed the Claimant’s unregistered design rights.

• The similarity of the first contested set of bumpers (‘version 1’) to the Claimant’s original designs was not in dispute. The Defendants submitted that they had stopped making or using their version 1 bumpers (having also destroyed the manufacturing moulds) and therefore that the infringing activities had ceased. Accordingly, they were willing to undertake not to manufacture, use or sell products corresponding to the version 1 bumper’s design.
• Shortly before the hearing, the Defendants filed a witness statement responding to the complained-of ‘version 2’ of its bumpers, which they asserted did not infringe the Claimant’s unregistered design rights, claiming they were ‘different in both form and function’ – but provided no further design particulars.

The Claimant sought an interim injunction prohibiting the Defendants’ infringement of its design rights. It also sought an order for disclosure of information by the Defendants regarding any person, company, firm, or other entity who was involved in the copying and/or reproduction of its designs.

Scope of the interim injunction

The main issue in dispute concerned the breadth and wording of the interim order to be awarded. The Claimant had sought orders or undertakings to prohibit the Defendants from manufacturing and selling any articles (i) made to the Claimant’s designs, or (ii) made to any design “similar or substantially similar” to the Claimant’s designs.

The court took issue with limb (ii) of the Claimant’s proposed undertakings. Specifically, it noted that s.226(3) of the Copyright, Designs and Patents Act 1988 (“CDPA”) prohibits copying of a design so as to produce articles “exactly or substantially” to that design. The Claimant’s wording, seeking to capture “any designs similar or substantially similar to the Claimant’s designs”, would have gone much further than what was prevented by statute. Insofar as the Claimant had sought to mirror the wording of the CDPA, this too was problematic, as it effectively amounted to the Claimant asking the court to make an order against the Defendant “not to act contrary to s.226(3) of the CDPA” – or, put simply, “not to infringe”.

Recounting the principles from American Cyanamid on interim injunctions, the judge ruled that a court would only grant an injunction specifying the acts which would constitute a breach of the order, so that defendants would know precisely what they could and could not do. In this case, that involved specifically identifying the articles that were caught by the order. Otherwise, the injunction carried the risk of being “too vague”, contrary to established case law (as emphasised in the case of Biro Swan Limited v Tallon Limited [1961] RPC 326).

Conversely, the Defendants’ attempt to limit the scope of the order to designs identical to its version 1 bumpers was deemed too narrow, as it would have allowed the Defendants too much wriggle room to escape the terms of the injunction by making token changes to its design. The judge was also satisfied that there was a ‘serious issue to be tried’ as to whether the version 2 bumpers infringed the Claimants’ design rights, coupled with the Defendant’s late filing of evidence relating to version 2 which the Claimant needed time to consider.

Accordingly, the judge ruled that the court would grant a short-term injunction relating specifically to the Defendants’ version 1 and 2 bumpers, rather than granting the far-reaching, future-proofing undertaking sought by the Claimant extending to all designs “similar or substantially similar to the Claimant’s design”. The court reasoned that, if in due course the Claimant had concerns about the Defendants trying to circumvent the order by making cosmetic tweaks to its designs, they could return to court and seek to expand the scope of the injunction – but the court refused to do so pre-emptively.

Disclosure order

The Claimant had also sought disclosure of information by the Defendants regarding any person, company, firm, or other entity who was involved in the copying and/or reproduction of the contested designs. The Claimant asserted that it required this information in order to either pursue the relevant third parties as joint tortfeasors or, alternatively, to inform them about the Claimant’s designs to “warn them off” any further infringements.

The judge was not satisfied that it was necessary to make the disclosure order, describing it as “overkill”. The judge considered the case of Orb ARL v Fiddler [2016] EWHC 361 (Comm), which summarised the Norwich Pharmacal principles for interim disclosure orders and explained that there was a threshold requirement of necessity before such an order could be made, setting a higher bar than whether such an order might be “desirable” or “reasonable”. The Defendants had accepted that they (and not any other third party) were primarily liable – and would take full responsibility – for any infringing acts. Therefore, ordering disclosure of information about “anyone involved” in the production of the moulds would have been disproportionate.

Implications of the decision on design holders

This ruling is a helpful reminder of how specific non-infringement undertakings must be when parties are seeking to enforce intellectual property rights. It highlights the court’s resistance to order broadly or vaguely worded injunctions which might overstep the scope of a claimant’s rights and lead to uncertainty. The court will not give a ‘sweeping’ or general non-infringement injunction, and any undertakings must explicitly relate to identifiable infringing acts. In the case of unregistered design rights, this means going beyond the notion of articles made “substantially” to a design and specifically identifying the prohibited items at the outset, even if this leaves defendants with some theoretical wriggle room to ‘design around’ the order.

This raises the important practical note of caution for all litigants (whether on the claimant or defendant side) to consider the wording of their proposed undertakings carefully. Broad or sweeping undertakings are commonly sought by claimants in pre-action correspondence, particularly where the full scope of the defendant’s infringing activities may not be known. However, claimants should remain realistic about the scope of any interim (or indeed final) relief that they would achieve in court, given the court’s emphasis on clarity and proportionality. Conversely, defendants under pressure of aggressive litigation may feel compelled to concede broad undertakings which do not reflect the strength of the claimant’s case and far exceed the relief that a court would likely grant. This presents particular difficulties in the design industry, where ‘David versus Goliath’ inequalities in litigation prowess and funding are a known problem.

This ruling also provides a useful summary of the legal principles surrounding disclosure orders for information about third parties who may have had some involvement in an infringing article’s lifecycle, such as suppliers and customers. This case demonstrates that any such disclosure must be necessary and proportionate, going a step further than the standard test for specific disclosure (where it must be reasonable to suppose that the source may contain information or lead to a train of enquiry that will assist the applicant's case or damage the respondent's case). The High Court also flagged that, once past the “necessity” threshold, the court still had a broad discretion as to whether or not to order disclosure. On the facts, it found that the Claimant’s legitimate wish to protect its intellectual property had to be balanced with a concern to avoid “overkill” in the scope of relief.

Co-authored by Emma Martin, Trainee Solicitor at CMS