COURT PROVIDES GUIDANCE ON HOW TO ACHIEVE SHORTER TRIALS IN REGISTERED DESIGN CASES IN THE UK

At a case management conference during the case of Spin Master Limited v PMS International Group [2017] EWHC 1477 (Pat), Mr Justice Carr highlighted steps to be considered in order to achieve shorter trials in registered design cases.


Case Background

The Claimant has a Community registered design (002614669-0002) for a product known as “Bunchems”. This is a construction toy for children:

NP pic 1

The Defendant has produced a construction toy called “Clingabeez”. The dispute concerns the alleged infringement of the Claimant’s Community registered design. PMS counterclaimed that the threats were unjustified.
The main issue relates to Article 10 of Council Regulation (EC) No. 6/2002 of 12 December 2001 on Community designs: “The scope of the protection conferred by a Community
design shall include any design which does not produce on the informed user a different overall impression.”

In summary, the Claimant claimed that the alleged infringement creates the same overall impression as the registered design. The Defendant pleaded that the overall impression of the Clingabeez toy on an informed user is different.

Case Management Conference

Mr Justice Carr was concerned that the costs budget for both the Claimant and the Defendant (£776,000 and £360,000 respectively) was far too high for the simplicity of the case. Similarly, he was concerned that the time estimate for the trial was far too long. He referred to the cases of Procter & Gamble Co v Reckitt Benckiser (UK) Limited [2007] EWCA Civ 936; [2008] Bus LR 801; and Dyson Ltd v Vax Ltd [2011] EWCA Civ 1206; [2013] Bus LR 328 which both provided useful guidance in relation to registered design cases. Mr Justice Carr particularly highlighted:

(i) Registered design cases are concerned with the overall impression of the registered design, the alleged infringement and the design corpus. It is easier to see this than to describe it in words.
(ii) Admissible evidence in such cases is very limited, and is most likely to comprise technical evidence about design constraints. Such evidence is unlikely to require substantial cross-examination. It should be possible to decide a registered design case in a few hours.
(iii) If permission for expert evidence is to be given, then the precise ambit of that evidence should be defined. The expert should be told what question to address and the evidence should be confined to those questions.
(iv) It is clear law that whether the defendant has copied is irrelevant. It is equally irrelevant for the defendant to prove or to give disclosure about how his design was arrived at.

Mr Justice Carr added his own observations:

a) Registered design cases should not last for days
b) The interests of other court users need to be considered versus the parties having their say.
c) Copying is irrelevant and does not answer the question of limitation on design freedom. Whether design freedom is limited is an objective technical question
d) Proof of copying in a registered design claim may be considered by claimants to be useful prejudice, but it is no more than that.

Having considered the above points, Mr Justice Carr concluded:

• It would be a more productive course to exchange enlarged photographs of the products alleged to infringe. Further verbal descriptions are not helpful.
• Prior designs that the Defendant will rely upon should be disclosed
• Many of the requests for further information were irrelevant until financial relief is considered. Therefore, such requests should be considered, if necessary, at that stage.
• Disclosure should be limited to issues of liability. Some disclosure requested related to the issue of quantum rather than liability or additional liability for threats, which may not be relevant if no threats are held to have been made on existing evidence, as the defendant has infringed. If the threats were relevant, there could be later disclosure on liability for those extra threats and then quantum.
• An order for alternative dispute resolution should not be made at this stage. However, there was a warning that if either party does not participate in mediation, an explanation may need to be provided to the court.
• Expert evidence will be limited to an agreed number of pages on specific issues. For example, whether the features identified in the Particulars of Claim were solely dictated by its technical function; and to what extent, if any, was the degree of freedom of design limited by the functional nature, if any, of the features in the Particulars of Claim. Cross-examination will not be allowed without permission of the court.
• The length of the trial should be three days (not four to six as estimated by the parties).

Having considered various requests in relation to disclosure, expert evidence and amendments to pleadings, Mr Justice Carr concluded his decision with “Lessons for the future”. In summary, he stated that to achieve shorter trials in registered design cases in the future, the following steps should be considered:

1. Images to be produced by the parties at an early stage, which show the similarities/differences on which they seek to rely.
2. No disclosure should be introduced or sought in relation to copying
3. No expert evidence is to be introduced in relation to the ‘overall impression’ in cases concerning consumer products
4. Expert evidence limited to an agreed number of pages
5. Evidence of fact must be relevant
6. Identification of issues for cross-examination at the pre-trial review
7. Cases of multiple designs/infringements should use a sample on which issues can be tested
8. Consideration to be given to postponing issues which are only relevant if liability is established.

Comment

This case provides useful guidance to anyone embarking upon proceedings in relation to registered designs and will certainly focus the minds of parties involved. It is likely that parties who do not follow the guidance will be criticised. Costs should also be carefully considered.

Link to Judgment

Judgment Date: 9 MAY 2017

Court provides guidance on how to achieve shorter trials in registered design cases in the UK

 

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