Facts

Leighton Vans Ltd manufactures and sells bumpers for VW Transporter vans that are purchased and fitted to the vans to make them look more distinctive or aesthetically pleasing than the standard factory-fitted bumpers.

Leighton owns the unregistered design rights in the design of the bumpers. The evidence was that the bumpers were created using high quality, robust, plastic materials that met relevant regulatory and safety standards.

Leighton issued proceedings against Mr Harris and All Seasons Leisure Ltd (the Defendants) for infringement of its unregistered design rights, having discovered that the Defendants were selling products made to the same design as Leighton’s but in a fibreglass material, which is less robust than the plastic used in Leighton’s products. It sought an interim injunction.

In correspondence, the Defendants said that they had ceased making or using bumpers to the same design as Leighton’s design and were willing to undertake not to manufacture, use or sell products of that kind. However, they refused to disclose information about the manufacturers of the allegedly infringing products and declined to provide the more extensive relief sought by Leighton.

The court therefore had to decide whether the offered undertakings were sufficient and if not, whether an interim order should be granted, and if so, what its scope should be.  It also had to resolve issues around disclosure.

Decision

Undertakings

The Defendants said that any undertaking should be restricted to the manufacture and use of products identical to Leighton’s design.

Leighton sought undertakings concerning the production, sale, or use of products by the Defendants:

“…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””.

Mr Justice Miles did not consider Leighton’s wording to be appropriate, as it covered articles “incorporating the designs”, yet articles do not incorporate designs. Articles might be made to designs, he said, but they do not incorporate them. Further, under s 226(3) of the Copyright, Designs and Patents Act 1988, reproduction of a design by making articles to the design means copying the design to produce articles exactly or substantially to that design, but the wording sought by Leighton would prevent articles being made to Leighton’s designs or to any designs similar or substantially similar to its designs, which was different from the statutory prohibition and would not be justified. Essentially, Leighton’s wording would amount to an injunction to stop the Defendants from acting unlawfully, which was far too broad; the court had to specify the acts that would constitute a breach so that the Defendants would know what they could and could not do.

Miles J did not consider the undertaking offered by the Defendants to be sufficient either as it sought to tie the scope of any undertaking to an exact identity or correspondence between the goods and the design. This was too narrow and would allow the Defendants too much room to avoid the undertaking by making slight changes from Leighton’s designs.

Accordingly, Miles J considered whether an interim injunction should be granted on American Cyanamid principles relating to instances of production, manufacture or sale of identified articles. The Claimant argued for a broad injunction against infringement of their design rights.  The Defendant referred to a number of intellectual property cases on the scope of an injunction in intellectual property cases, including the first instance decision of Laddie J in Coflexip SA v Stolt Comex [1999] FRS 473 (a patent case in which the patent had been found to be valid and infringed).  The Defendant argued that interim injunctions should be expressed in terms which are sufficiently certain as to make it clear to defendants what they can or cannot do and without reference to rights which have not been established at the relevant stage.

Miles J said that he was not prepared to make a generally worded injunction in relation to goods being made to the claimant’s design or substantially to that design. Instead, (after applying the American Cyanamid principles) the injunction should be concerned with the two sets of alleged infringements that had been identified. If in due course the claimant complained that the defendants were seeking to get around the injunction by making further changes, it could return to court and seek to expand the relief. It will also be plain to the defendants that simply making minor or cosmetic amendments to the goods is unlikely to remove them from the protection of the statute.

Therefore, Miles J said, the court should grant a short-term injunction in relation to both versions.

Disclosure

On the disclosure issues, Miles J did not make any order. Just before trial, Mr Harris had supplied the name of the manufacturer used. Leighton wanted information on all parties involved so that it could pursue relevant third parties as joint tortfeasors. However, Miles J said that, to the event that infringing acts had taken place, it was the Defendants who were liable. While he understood that Leighton wished to protect its IP rights, Miles J was concerned about proportionality and that there should not be “overkill” in its protection of rights. Therefore, as a matter of discretion, he declined to make any order for disclosure.

Comment

It appears that Miles J was referred to the High Court decision in Coflexip v Stolt but not to the subsequent Court of Appeal decision, [2000] EWCA Civ 242 which overturned it.  The injunction to be granted in Coflexip v Stolt was being considered after a full trial in which the patent was found to be valid and infringed.

In the Court of Appeal decision, Aldous LJ, giving the lead judgment, says at paragraphs 65 and 66:

65. …injunctions which restrain[ ] infringement of a patent …equate to the statutory right given, a right which has been held to have been validly granted and infringed….
66. The usual form of injunction which protects the right established by the patentee, with its ambit construed by the court, does in general provide a fair solution. However, each case must be determined on its own facts and the discretion exercised accordingly.

Miles J says in para 26 of his decision

It seems to me that what the claimant is asking the court to do is grant an injunction preventing the defendants from acting in breach of the Copyright, Designs and Patents Act 1988 or, putting it another way, are seeking an injunction against the defendants to stop them acting unlawfully. It seems to me that the court will not generally make an order of that kind. What the court granting an injunction must do is specify the acts which would constitute a breach of the order so that defendants know what they are able to do and cannot do.

It is not clear whether Miles J was differentiating here between interim and permanent injunctions.  Permanent injunctions are of course regularly granted against infringement of the statutory right, without more.  Even if the Court of Appeal decision in Coflexip had been drawn to his attention, Miles J’s decision might not have changed.  Interim injunctions are sought and granted before decisions have been made on the merits and in such instances a narrow injunction may indeed be appropriate.

(Leighton Vans Ltd v Mr Harris [2022] EWHC 2386 (Ch) (29 July 2022) — to read the judgment in full, click here).