How to achieve short and cost-effective hearings in registered design cases
Mr Justice Carr recently handed down a short but instructive judgment in the case of Spin Master v PMS International, providing useful guidance on how to achieve short, cost-effective hearings in registered design cases. Given the wider applicability of the principles involved, Carr J took the step of handing down a judgment to set out more detailed reasons for his decision, which were initially given in an unreserved judgment at the Case Management Conference.
Background
Spin Master (the claimant) claimed that PMS International's (the defendant) "Clingabeez" construction toy, consisting of balls with hook projections which can be combined to form larger structures, infringed its Community registered design. PMS counterclaimed for unjustified threats of infringement.
Decision
In his judgment, Carr J reiterated the following principles from the Court of Appeal decision in Dyson v Vax:
(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 visually than to describe it in words.
(ii) Admissible evidence in such cases is very limited, and will most likely comprise technical evidence on design constraints. Substantial cross-examination is unlikely to be necessary, and 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 given the question(s) to be addressed, and their evidence should be confined to those questions.
(iv) Copying by the defendant is irrelevant. It is equally irrelevant for the defendant to prove or give disclosure about how it arrived at its design.
Carr J added that the interests of other court users should be considered, and that there is no reason why registered design cases should last for days. In the present case, he considered that a three day trial would be ample, in contrast to the defendant's and claimant's estimates of four and six days, respectively.
He also disagreed with the claimant's suggestion that copying could be relevant in that it would refute the suggestion that features were similar due to lack of design freedom. As with patents, an advantage of registered designs is that proof of copying is unnecessary. Such proof may be considered as no more than useful prejudice.
Carr J's judgment concludes with eight steps, which in his view, should be considered in order to achieve shorter trials in registered design cases:
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Parties should, where appropriate, produce images at an early stage to illustrate the differences or similarities relied on, and in the case of defendants, to illustrate features which are wholly functional or in which design freedom is said to be limited. Requests for further information are unlikely to be helpful.
On this basis, the parties accepted that the exchange of enlarged photographs of the allegedly infringing products would be a more productive course of action, than requests for further information.
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Claimants should not introduce or seek disclosure on copying. Parties should carefully consider why, if at all, disclosure is necessary, rather than agreeing to standard or even issue based disclosure.
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Expert evidence on 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.
In this case, expert evidence was allowed on (i) whether any design features were solely dictated by technical function, (ii) the extent to which the degree of design freedom of such features was limited by their functional nature, and (iii) the design corpus.
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Parties should try to limit expert evidence to an agreed number of pages.
Carr J imposed a limit of 15 pages, which was in between the claimant's suggestion of 10 pages and the defendant's suggestion of 20 pages.
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Only relevant fact evidence should be admitted by the court.
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Parties should be prepared at the pre-trial review to identify issues on which cross-examination is necessary, and to explain why.
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Where multiple designs or infringements are alleged, the parties should each select a limited number of samples on which to test the issues.
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Parties should carefully consider whether any issues can be postponed to a damages enquiry, i.e. those which will only need to be considered if liability is established.
These issues included whether the claimant was entitled to "bonus" damages under Regulation 3 of the Intellectual Property (Enforcement etc.) Regulations 2006, and whether the defendant was a person aggrieved by the alleged threats. Given that both of these issues hinged on liability, Carr J deferred his decision on related amendments to pleadings until conclusion of the trial.
Comment
Carr J's judgment contains invaluable guidance which parties involved in registered design litigation would be well advised to take heed of, as they could be penalised in costs otherwise. His judgment is also reflective of the wider principle that litigation should be conducted as efficiently and cost-effectively as possible.
Certain of the steps outlined by Carr J, such as those relating to cross-examination and the postponement of certain issues until conclusion of the trial, may be equally applicable to proceedings involving other intellectual property rights and potentially civil litigation in general. It will be interesting to see whether the English courts will give wider application to his judgment.