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High Court grants injunction in customised bumpers design dispute

Posted on 10 November 2022

In a claim concerning the manufacture and sale of customised bumpers fitted to Volkswagen Transporter vans, the High Court has granted a short-term interim injunction. The move prevents the Defendants from manufacturing and selling their own bumpers (the "version two bumpers"), in circumstances where they had already agreed to cease manufacturing and selling an earlier design of bumpers (the "version one bumpers") following a complaint by the Claimant.

Scope of the injunction

The case required the Court first to consider carefully the wording of the undertakings to be given by the Defendants in relation to the version one bumpers. The wording suggested by the Claimant – a generally worded injunction in relation to goods being made to the Claimant's design or substantially to that design – was found to be too wide in scope as it amounted to asking the Court to prevent the Defendants "from acting in breach of the Copyright, Designs and Patents Act 1988 or, putting it another way, … an injunction against the defendants to stop them acting unlawfully". However, the Defendants' suggested wording was too narrow and sought to tie the scope of the undertaking to an exact identity or correspondence between the goods in question and the design. The Court said this wording would allow too much "wriggle room" to avoid the terms of the undertaking, for example, by allowing them to make slight changes to avoid a breach.

The Court reiterated that its task, when granting an injunction, was to be clear as to the specific acts which would constitute a breach of the order. This was necessary so that defendants understand what they can and cannot do.

As for the version two bumpers, the Court thought that there were grounds for concluding that the Claimant might suffer reputational damage if the Defendants were able to carry on supplying them due to a difference in materials. It therefore granted a short-term interim injunction also in relation to this later design.

Disclosure of information

The Claimant also sought disclosure of information about any person, company, firm, or other entity involved in manufacturing the Defendants' bumpers, particularly anyone involved in producing the moulds for the version one bumpers.

In considering such disclosure applications, the Court must be persuaded that the threshold requirement of necessity has been meant (and even if it is established, the Court still has a broad discretion as to whether to order disclosure).

Miles J did not consider there to be sufficient necessity to make this order, not least because the First Defendant had stated that he had destroyed the moulds. Moreover, the Court needed to strike a balance between protection of the Claimant's IP rights and "overkill" in establishing that protection. Even if the necessity requirement had been met, Miles J would not, in his discretion, have made an Order for disclosure. The high bar serves to emphasise the issues that can arise when pursuing third parties for infringement of intellectual property rights.

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