Scotland-based Munro Vehicles has found itself in legal action in the USA over alleged infringement of a group of design patents owned by Bollinger Motors of Detroit, Michigan. Both Munro and Bollinger are start-up electric vehicle manufacturers offering rugged off-road trucks for a variety of hard wearing applications. Bollinger alleges that one of its former contract designers, Ross Compton, who went on to become head designer for Munro, took confidential information from the design of the Bollinger B1 and B2 which led to the design of the Munro MK1.
Should Bollinger be able to prove misuse of confidential material by Compton, this would put Munro in a very difficult legal position. However, proving such misuse can be hard to achieve, as this requires extensive record-checking through the document discovery process. Nevertheless, because Bollinger's accusation relies on two US design patents (USD836027 & USD836487) it would still be possible for Bollinger to stop Munro even if it is unable to prove misuse of information by Compton. This is because, unlike breach of confidence, US design patents are true monopoly rights that prevent third parties from producing products that look substantially similar to the designs they protect. By registering its designs early in the product development process, Bollinger has put itself in what appears to be an advantageous position over Munro in respect of the recently initiated litigation.
Whilst the legal action is currently limited to the USA, the problems for Munro may not stop there. Bollinger is the owner of UK and EU registered designs corresponding in scope to the US design patents, and could therefore feasibly take corresponding action against Munro at home. With a slew of recent cases in the UK courts proving the reliability of registered design protection, this could put Munro in a worrying position. It is worth noting that, should Bollinger have decided not to file for protection in the UK and EU its position would be considerably weakened. In particular, whilst two types of unregistered design rights are available this side of the Atlantic, the first of these are generally only available for designs that are first published in the UK / EU, and the second can only be held by domestic UK companies (which would exclude the US-based Bollinger). Moreover, unregistered rights require proof of copying in order to be infringed, and are therefore not true monopoly rights.
With more and more companies entering the electric vehicle space every year, this will be an interesting case to watch for those companies looking to rely on a range of IP rights to protect their products.