Rolls Building
Before:
HIS HONOUR JUDGE HACON
B E T W E E N :
THE ZOCKOLL GROUP LIMITED & Anr. Claimants
- and -
MR HANDY LIMITED & Ors. Defendants
MR T. JONES appeared on behalf of the Claimants.
MR A. GRAINGER appeared in person and on behalf of the First, Second and Third Defendants.
J U D G M E N T
JUSTICE HACON:
This is an application by the claimants for summary judgment. The first claimant is the owner of two EU-registered designs. The second claimant runs a repair business for domestic goods and is the exclusive licensee (at least in the UK) of the two designs. The designs are very similar, and both consist of images of a van of a fairly conventional non- descript type. More strikingly, on the top of the van, there is a model of an over-sized screwdriver. This is recognisably a screwdriver of a common shape and it is shown to be attached to the roof of the van. In one of the designs it is about the same length as the van's roof and in the second of the designs it is a bit shorter than the length of the van's roof. The other dimensions of the screwdriver, by which I mean dimensions other than length, are in proportion to what one would expect for a screwdriver shape.
The second claimant provides its services using a fleet of vans with a large model screwdriver on the top. The first to third defendants provide domestic repair services trading under the name Mr Handy. The fourth defendant, Andrew Granger, is the sole owner and sole director of the first to third defendants. The first to third defendants also provide their services using one or more vans with a large model screwdriver attached to the roof. The second claimant claims there is goodwill in its business and that the goodwill is associated with the get- up of its vans, specifically vans with a large model screwdriver on the roof.
The claimants have brought the present action for passing off by the first to third defendants by reason of their trading using similar vans. The claimants also allege infringement of the two EU-registered designs. The claimants say that Mr Grainger has personally used those designs while driving the accused vans himself. They also allege that Mr Grainger is jointly liable for the acts of passing off and infringement of the registered designs by the first to third defendants. No claim is made for damages. The claimants seek only an injunction.
The application this morning is for summary judgment. It is made solely in relation to one of the EU-registered designs, i.e. design number 001087217-0001. This is the design which shows the screwdriver on the roof of a van of a length about the same as that of the van's roof. Thomas Jones appears for the claimants. The defendants are not professionally represented but Mr Grainger has appeared in person on his own behalf and on behalf of the other defendants. He has clearly and helpfully explained the defendants' case.
I turn to the principles on which summary judgment may be granted. Mr Jones referred me to the judgments of Saleem Khatri v Cooperatieve Centrale Raiffeisen-Boerenleenbank BA [2010] EWCA (Civ) 397, and Virgin Atlantic Airways Ltd. v Delta Airways Inc [2011] EWCA (Civ) 162, [2011] RPC 18. I should also refer to the judgment of the Court of Appeal in Mellor v Partridge [2013] EWCA (Civ) 477. At para.3, Lewison LJ said this :
"O ur task is not to decide whether the claimants are right. Our task is to decide which parts of the case (if any) are fit to go to trial. If I may repeat something I have said before (Easyair Ltd v Opal Telecom Ltd [2009] EWHC 339 (Ch), approved by this court in AC Ward & Son v Catlin (Five) Ltd [2009] EWCA Civ 1098):
'The correct approach on applications by defendants is, in my judgment, as follows:
The court must consider whether the claimant has a "realistic" as opposed to a "fanciful" prospect of success: Swain v Hillman [2001] 1 All ER 91;
A 'realistic' claim is one that carries some degree of conviction. This means a claim that is more than merely arguable: ED & F Man Liquid Products v Patel [2003] EWCA Civ 472 at [8]
In reaching its conclusion the court must not conduct a "mini-trial":
Swain v Hillman
This does not mean that the court must take at face value and without analysis everything that a claimant says in his statements before the court. In some cases it may be clear that there is no real substance in factual assertions made, particularly if contradicted by contemporaneous documents: ED & F Man Liquid Products v Patel at [10]
However, in reaching its conclusion the court must take into account not only the evidence actually placed before it on the application for summary judgment, but also the evidence that can reasonably be expected to be available at trial: Royal Brompton Hospital NHS Trust v Hammond (No
[2001] EWCA Civ 550;
Although a case may turn out at trial not to be really complicated, it does not follow that it should be decided without the fuller investigation into the facts at trial than is possible or permissible on summary judgment. Thus the court should hesitate about making a final decision without a trial, even where there is no obvious conflict of fact at the time of the application, where reasonable grounds exist for believing that a fuller investigation into the facts of the case would add to or alter the evidence available to a trial judge and so affect the outcome of the case: Doncaster Pharmaceuticals Group
Ltd v Bolton Pharmaceutical Co 100 Ltd [2007] FSR 63;
O n the other hand it is not uncommon for an application under Part 24 to give rise to a short point of law or construction and, if the court is satisfied that it has before it all the evidence necessary for the proper determination of the question and that the parties have had an adequate opportunity to address it in argument, it should grasp the nettle and decide it. The reason is quite simple: if the respondent's case is bad in law, he will in truth have no real prospect of succeeding on his claim or successfully defending the claim against him, as the case may be. Similarly, if the applicant's case is bad in law, the sooner that is determined, the better. If it is possible to show by evidence that although material in the form of documents or oral evidence that would put the documents in another light is not currently before the court, such material is likely to exist and can be expected to be available at trial, it would be wrong to give summary judgment because there would be a real, as opposed to a fanciful, prospect of success. However, it is not enough simply to argue that the case should be allowed to go to trial because something may turn up which would have a bearing on the question of construction: ICI Chemicals & Polymers Ltd v TTE Training Ltd [2007] EWCA Civ 725."
As Lewison LJ noted in that passage, in certain circumstances the court may decide a short point of law or construction on an application for summary judgment, provided the court is satisfied that (a) it has before it all the evidence necessary for a proper determination of the question and (b) the parties have had adequate opportunity to address the relevant issues in argument. A case should not go to trial merely because something may turn up in evidence at a trial which would have a bearing. In this regard, Mr Jones also drew my attention to the judgment of the Court of Appeal in Nampak Plastics Europe Ltd v Alpla UK Ltd [2014] EWCA Civ 1293; [2015] FSR 11, in particular at para.11 of the judgment of Floyd LJ.
Registered design cases can be appropriate for consideration at an application for summary judgment, particularly where the design is in relation to a consumer product or otherwise the sort of product which the judge can view through the eyes of an informed user without special teaching. Frequently the only question the court has to decide is whether the accused design creates a different overall impression from that of the registered design. Subject to two matters, that generally involves the court looking at both designs and coming to a view. The court may be in no better position to do that at trial than at an application for summary judgment. The first of the two matters is the design corpus. The scope of protection will depend in part on the similarity between the design as registered and designs contained in the corpus. The second is freedom of design. If the registered design represents a substantial departure from the design corpus and the designer of the registered design has considerable freedom, a registered design will be entitled to a broad scope of protection: see the judgment of Arnold J in Magmatic Ltd. v PMS International Group plc [2014] RPC 23 at para.61. The observations of Arnold J in this regard were apparently approved by the Supreme Court in [2016] UKSC 12; [2016] RPC 11 at para.13.
In the present case the only point in dispute with regard to infringement of the EU-registered design in issue is whether the defendants' vans create a different overall impression to the registered design. Following what I have said, I am in as good a position to determine this as would be the trial judge, provided I am satisfied that the defendants do not require the opportunity to deal at trial, firstly, with the content of the design corpus and, secondly, with the issue of design freedom.
Before turning to this, there are two matters which I must consider briefly. As I have said, the defendants are not professionally represented today. Mr Grainger, when comparing the two designs in his written statements, has not said much about surface decoration on the defendants' vans or their colour. But particularly since the defendants are not represented, I must say something about them. The registered design in question is in the form of a monochrome line drawing. Since it is monochrome, colour is very likely to be irrelevant: see the judgment of the Supreme Court in Magmatic at paras.33 to 34. In my view, colour has no bearing in the present case, given the nature of the registered design.
The Supreme Court in Magmatic also considered surface decoration on the accused object: see in particular paras.45 to 47. Although each case must be decided on its own facts, I take the view, following what was said by the Supreme Court, that the registered design in this case, like that in Proctor & Gamble [2007] EWCA (Civ) 936; [2008] FSR 8, is a design defined by reference to shape only. Surface decoration is irrelevant.
I therefore turn to consider whether the defendants should have the opportunity to investigate at trial the issues of the content of the design corpus and the designer's freedom. Annexed to the defence at Annex 3 are about 20 images of vehicles with a model product attached to the roof of the vehicle. Clearly it cannot be said that at the date of the registered design there was anything new in advertising products by putting models of that product on the roof of a vehicle. There was thus nothing new in general terms about a design consisting of a vehicle with a product on its roof. However, the defendants have not been able to find any image of any vehicle of any kind with a model screwdriver on the top. I asked Mr Grainger whether this is something that he felt needed further investigation. He said the defendants would like to investigate it further, but he gave me no reason why I should suppose that there is any likelihood that further relevant parts of the design corpus are likely to be discovered between now and the time of the trial. It seems to me very unlikely that there will emerge images of a van or any other vehicle with a screwdriver on the top. I think I am entitled to go ahead now on the assumption that I have all relevant items in the design corpus.
So far as design freedom is concerned, the corpus shown in Annex 3 of the defence suggests, as one would imagine, that the designer of the registered design had almost total freedom when it came to designing what was shown on the roof of the van. Mr Grainger agreed with this. Therefore there is nothing new that would emerge in that regard at the trial.
Therefore I can approach the comparison between the registered design and the accused vans with two points in mind. Firstly, that the most striking feature of the registered design, as I have said earlier, is the presence of a large screwdriver on the roof, w hich is about the same length as the van's roof. Secondly, with regard to what is shown on the roof of the van, there is something close to total design freedom.
That said, I must compare the two designs as a whole. Mr Jones helpfully prepared a schedule at Appendix 1 of his skeleton argument which shows the four images taken from the registered design, i.e. views of the van from the side, from the back, from the front, and in plan view from the top. Next to these are shown photographs of the defendants' van taken from suitable angles to assist in the comparison. At an earlier stage of this application, I understand there was an allegation that the claimants had doctored images of the defendants' vans, but today Mr Grainger, when asked, accepted that the photographs of the defendants' vans shown in the schedule are accurate representations of what the defendants' vans look like.
I turn to whether the defendants' vans created a different overall impression to that of the registered design when seen from the various perspectives. There are undoubtedly differences. Mr Grainger pointed out that whereas in the registered design the handle of the screwdriver is ribbed - this is apparent from the views taken from the back and the front of the van - the defendants' vans have a smooth, round handle. Mr Grainger also pointed out that the indentation in the handle of the screwdriver is different in shape between the two designs. He said the tip of the screwdriver is of a different design, although that seems to me quite a subtle distinction. I should also say that the details of design of the two vans, leaving out the screwdriver, are different in several respects. However, as I have mentioned earlier, it seems to me that the informed user would focus more on the striking feature of the design, i.e. the screwdriver on the roof, rather than taking in detailed aspects of what the van looks like. I would also say that, in very broad terms, the registered design shows what looks like a van of a fairly generic type. The actual van used by the defendants is a Ford Connect van which is also, if I may put it this way, of a fairly generic type. In other words, there is nothing very striking in the design of the defendants' van which stands out as obviously different from the generic van as shown in the registered design.
I have come to the view that the defendants' van does not create an overall impression which is different from that of the claimants' design as registered. I also believe that I am in as good a position to reach this conclusion today as would be the trial judge. For that reason, I find that the claimant succeeds in its claim for infringement of the registered design as against the first to third defendants.
Turning to the liability of Mr Grainger himself, the claimants' main case is that he was a primary tortfeasor because he used the design, and that is said to have come about because he drove the vans himself. I was asked to infer this as a fact. I had the opportunity to ask Mr Grainger whether he personally drives the vans. He told me he does not, and I have no reason to doubt what he says. Therefore the claimants' primary case against Mr Grainger personally does not succeed. However, the claimants also run a case of joint tortfeasance. Mr Jones referred me in this regard to the judgment of the Supreme Court in Fish & Fish Ltd. v Sea Shepherd UK [2015] UKSC 10.
It is relevant that Mr Grainger is the sole owner and director of the first to third defendants. In Grenade (UK) Ltd. v Grenade Energy Ltd. [2016] EWHC 877 (IPEC), I said this at para.23:
"Mr Chawla is both the sole director and sole shareholder of the first defendant. As Mr Sampson put it, he is a one-man company. In my view, this raises an evidential presumption that all acts done by the first defendant were done at the instigation of Mr Chawla alone. In effect, he was under an evidential burden to show why, contrary to what one might expect, the acts complained of were not initiated and controlled by him."
As I said, in Grenade, where an allegation of joint tortfeasance is raised against an individual who is the sole shareholder and director of the company, in effect there is evidential burden on the person to explain why the court should not assume that he or she personally carried out the acts of the company which are complained of in the proceedings. In this instance, I had the opportunity to ask Mr Grainger whether any other person took any significant role in the running of the first to third defendants. He said very fairly that while he took advice, including professional advice, from others about the running of the companies, the buck stopped with him, and that he took all significant decisions. That being so, it seems to me that Mr Grainger is liable as a joint tortfeasor.