Background
The first Claimant, Zockoll Group Ltd, was the owner of two EU registered designs for an oversized model screwdriver attached to the roof of a conventional van. In one design, the screwdriver was approximately the same length as the roof (Design 1 above), in the other the screwdriver was slightly shorter (Design 2 above). The second Claimant ran a repair business for domestic goods and was the exclusive UK licensee of the two designs.
The first three Defendants (D1-3) were also domestic repair businesses, using vans with large model screwdrivers on the roof, trading under the name Mr Handy. The fourth Defendant (D4) was the sole owner and shareholder of D1-3.
Claim
The Claimants brought a claim for passing off and infringement of the registered designs and sought an injunction restraining the Defendants from using the vans for their businesses. This application by the Claimants only related to the registered design with a screwdriver the same length as the van roof (Design 1 above). The second Claimant sought to re-affirm that there was goodwill in its business and that this was associated with the get-up of the vans. The claim also listed D4 as joint tortfeasor on the basis that he had taken the relevant decisions for D1-3.
The Claimants applied for summary judgement and the Court held this was appropriate, considering the design was for a consumer product and Judge Hacon was able to form an overall impression without the need for special instructions.
Design corpus and design freedom
The Court held, on the evidence available at the date of registration of the design, that there was nothing particularly new in advertising products using a model on a van. However, because there was no available image of a van with a model screwdriver at the date of registration of the designs and no compelling reason to assume that D4 was likely to find any further relevant images of this kind, this warranted no further investigation. The registered design had been new in general terms and the designer would have had almost total freedom to design what appeared on the roof.
Comparison of overall impression
The Court discounted both surface decoration and colour of the designs. As the registered design was itself in the form of a monochrome line drawing, it was the shape of the design alone, which was relevant to this case.
The Court approached the analysis with two key points in mind: (i) the standout feature of the design was the presence of the screwdriver on the roof; and (ii) with respect to what appeared on the roof the designer had close to total design freedom. However, the Court went on to consider each parties’ designs as a whole, noting various differences between the designs including, ribbed / smooth handles of the screwdrivers and a subtle distinction between the tips of the screwdrivers. Both vans were deemed generic, and it was thought unlikely that an informed user would focus on the van, rather their attention would be diverted to the striking feature of the design, namely the screwdriver.
D4’s liability
In his capacity as sole owner and director of D1-3, there was an evidential burden on D4 to prove why the Court should not assume he had personally carried out the acts of D1-3. D4 conceded that he was liable for the personal acts of D1-3 and the Court held he was liable as a joint tortfeasor.
Outcome
The Court held that there had been infringement, finding the Defendants’ van not to create a different overall impression from that of the registered design. The Claimants were entitled to an injunction restraining the Defendants from using the vans.
Case Ref: ZOCKOLL GROUP LTD & ANOR v MR HANDY LTD & ORS [2018] EWHC 324 (IPEC)
