Although it is a case management decision, there are so many hints in the recent decision Spin Master v PMS [2017] EWHC 1477 (Pat) that Mr Justice Carr wants the judgment to get wider circulation. As he puts it, the CMC raised the issue of "how to achieve short, cost-effective hearings where one or perhaps both parties are preparing for a much longer trial."
Background to the dispute
This dispute concerns alleged infringement of a Community registered design (002614669-0002) due to sales of PMS' "Clingabeez" products in UK stores and online. PMS counterclaimed for groundless threats. As the judge noted, both issues are interconnected and the second cannot succeed if infringement is found.
Legal principles for registered designs Mr Justice Carr reminded everyone of the guidance from Procter & Gamble Co v Reckitt Benckiser (UK) Limited [2007] EWCA Civ 936; [2008] Bus LR 801 and repeated and expanded by the Court of Appeal in Dyson Ltd v Vax Ltd [2011] EWCA Civ 1206; [2013] Bus LR 328.
In particular:
(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 their design was arrived at.
Mr Justice Carr added a few further observations, namely:
A. Each party understandably wants to have their say but the length of the hearing needs to be balances against the interests of other users of the court. B. Copying is not relevant to the question of design freedom (which is an objective, technical question). Indeed, an advantage of a registered design is that copying does not have to be proved. Proof of copying may be considered to be useful prejudice but it is no more than that.
Applying these principles at the CMC, the judge noted that:
Both costs budgets (£776k and £360k respectively) were "far too much given the simplicity of the issues".
As registered design cases turn on the overall impression, the images of the design and products are far more important than the verbal description of the design.
The only admissible evidence is likely to concern technical evidence re design constraints.
many of the requests for further information were not relevant until considering financial relief and should be left until that stage (if relevant).
He was not going to order mediation - but would ask serious questions at trial if there were no attempts at ADR after exchange of evidence.
Only limited disclosure was necessary, particularly where quantity was not relevant to establishing liability. E.g. the number of Amazon sellers that the Claimant allegedly wrote to would be relevant to quantum but not liability.
Only limited expert evidence was necessary on the features identified by the Claimant in the Particulars of Claim i.e. (i) whether they were solely dictated by its technical function; and (ii) the scope of design freedom which was limited by the functional nature (if any) of the features.
Evidence of the design corpus could be dealt with either by an expert witness or as evidence of fact - both approaches are admissible.
Lessons for the future
Another hint at the judgment's desired impact on the English IP community comes from the concluding paragraphs on "lessons for the future". This is a handy guide on how to to achieve shorter trials in registered design cases in the future (with emphasis added):
(i) The parties should, in appropriate cases, produce images at an early stage to show the differences or similarities upon which they rely, and in the case of the defendant, those features which are wholly functional or in which design freedom is said to be limited. Requests for further information are unlikely to be helpful.
(ii) Claimants should not try to introduce or seek disclosure in relation to copying. The parties should carefully consider why, if at all, disclosure is necessary, rather than agreeing to standard or even issue based disclosure.
(iii) Expert evidence as to whether the alleged infringement produces on the informed user the same or a different overall impression as the registered design should not be included in cases concerning consumer products.
(iv) The parties should try to limit the length of expert evidence to an agreed number of pages.
(v) If any evidence of fact is to be introduced, the court will need to be satisfied of its relevance.
(vi) The parties should be prepared at the pre-trial review to identify issues on which cross-examination is necessary, and to explain why.
(vii) Where multiple designs, or multiple infringements, are alleged, the parties should each select a limited number of samples on which the issues can be tested.
(viii) The parties should give careful thought to those issues which can be postponed to a damages inquiry, which will only need to be considered if liability is established.
You have been warned.
To find out more contact Rosie Burbidge, Intellectual Property Partner at Gunnercooke LLP in London - rosie.burbidge@gunnercooke.com
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