Spin Master Ltd v PMS International Group

Registered design disputes should usually be determined by the overall impression produced by the registered design, the alleged infringement and the design corpus. Admissible evidence is ordinarily limited, particularly where technical evidence concerns functional constraints or design freedom. Expert evidence should address defined questions and should not ordinarily express an opinion on the overall impression made on the informed user. Copying and the defendant’s design history are irrelevant to liability for registered design infringement. Case management should therefore promote short hearings, focused evidence, early visual identification of similarities and differences, and postponement of damages issues until liability is established.

This was a case management conference in a claim by Spin Master Limited for infringement of a Community registered design relating to a construction toy, and a counterclaim by PMS International Group for unjustified threats concerning several intellectual property rights. The parties disputed requests for further information, disclosure, amendments, expert evidence, alternative dispute resolution, trial length and costs. The central case management issue was how to ensure that a relatively straightforward registered design dispute, together with the threats counterclaim, was tried proportionately and efficiently.

1. The court made case management directions in part and refused or deferred other applications. No order for further verbal information was made. The parties were instead directed towards an exchange of enlarged photographs identifying the alleged similarities and differences. The defendant was required to disclose the prior designs on which it intended to rely, subject to supplementation in evidence.

2. The guidance in Procter & Gamble Co v Reckitt Benckiser (UK) Limited [2007] EWCA Civ 936 and Dyson Ltd v Vax Ltd [2011] EWCA Civ 1206 was applied. Registered design cases focus on the overall impression of the registered design, the alleged infringement and the design corpus. Admissible evidence is ordinarily limited, and technical evidence should be confined to properly defined questions.

3. Copying is irrelevant to liability for registered design infringement. It does not answer the objective question whether design freedom is limited, because copying may occur whether design freedom is extensive or constrained. Evidence of copying and design history was therefore excluded from liability disclosure. Such allegations may be relevant to other intellectual property causes of action, but not to infringement of a registered design.

4. The court itself should assess whether the alleged infringement produces the same or a different overall impression on the informed user. Expert evidence on that ultimate issue was not permitted. Expert evidence was permitted only on whether specified features were dictated by technical function and the extent to which design freedom was thereby limited. The evidence was limited to 15 pages, with cross-examination requiring permission.

5. The proposed claim for bonus damages under regulation 3 of the Intellectual Property (Enforcement etc.) Regulations SI 2006/1028 was not allowed into the action at that stage. Permission to apply for the amendment was reserved if the infringement claim succeeded. Related amendments concerning the threats counterclaim and an ex turpi causa plea were treated similarly.

6. Mutual disclosure concerning the effect of alleged threats was ordered in limited form. Alternative dispute resolution was not ordered immediately, but mediation was considered appropriate after exchange of evidence. The trial estimate was reduced to three days including reading time, with the possibility of further reduction at the pre-trial review.

Not stated in the judgment. This was a first-instance case management decision.