A win for FFW in firemen’s helmet design right case
17 February 2006
Field Fisher Waterhouse (FFW) has successfully defended
entrepreneur Mitchell Tunnard against claims brought by his former
employer Helmet Integrated Systems Ltd (HISL). The company’s
allegations of personal dishonesty and unregistered design right
infringement were found to be totally false, whilst the judgement
clarified aspects of the law surrounding design and employees’
breach of duty.
Mr Tunnard worked as a salesman at HISL, a leading manufacturer
of helmets for firefighters and other emergency services
personnel. In the course of his work, Mr Tunnard came up with
an idea for a new kind of helmet, one that was modular and so could
be modified according to the individual wearers requirements.
He went to his employers with the idea but they did not wish to
take it further. As a result, Mr Tunnard decided to go into
business on his own and, whilst also working for HISL, he worked
with designers to take the helmet to concept stage. He also
looked for outside investment. Mr Tunnard then left HISL and
completed the development of his product over the next 3 years and
has successfully marketed his new helmet since early 2005. Mr
Tunnard set up a company Modular Helmet Systems Limited
(MHSL). MHSL is now a subsidiary of Lion Apparel Systems Inc,
a US manufacturer specialising in protective clothing.
HISL brought two separate claims against Tunnard. The first
was that he had fiduciary obligations to his employer, which he
breached, and that he had also broken his duty of fidelity.
FFW successfully defended Tunnard on this count, demonstrating that
an employee can take steps to prepare to compete with his / her
employer whilst they are still working for them, (including
commissioning a design of a product which one day may compete with
the employer’s product) without breaching their contract. As
long as they are not actually competing it is lawful.
On the unregistered design rights point, Mr Tunnard was accused
of copying five features of HISL’s helmet design. This was
found to be false and, most interestingly, this part of the case
clarified the law on what constitutes ‘surface decoration’ –
something that is not protected by design rights. The helmet,
like HISL’s model had ‘scalloping’ on the surface. The
scalloping was incorporated to improve the appearance of the helmet
and was not necessary to its function. As such, the
judge ruled it to be surface decoration.
The claimant was ordered to pay the defendant’s costs in
relation to all the issues.
Nick Rose, IP partner at FFW lead on the case, assisted by
Charlotte Hinton and James Martin.
Nick Rose said: “I am delighted to have won this case on
every count. The case proves that Tunnard, a salesman with
little qualifications, but with entrepreneurial ambitions, and with
a novel design idea and a good knowledge of the market, has acted
completely lawfully, both in the design of the new helmet and in
the development of his own company. Mr Tunnard’s design is
now attracting interest from fire and emergency services around the
world and we wish him every success in the future.”
Mathys & Squire advised HISL.
For further press information, please contact:
Louise Eckersley, PR Executive, on +44 (0)20 7861 4120