In two recent decisions, both the High Court and the Intellectual Property Enterprise Court have provided useful guidance on how to draft pleadings and conduct trials in registered[1] and unregistered[2] design infringement and validity cases. On the back of these rulings, we have compiled a table of best practice (see below) for the conduct of such disputes.

The registered design case involved a claim for infringement of a Community design by the claimant coupled with a counterclaim for unjustified threats by the defendant. The Spin Master case relates to toys, specifically the claimant's "Bunchems" and the defendant's "Clingabeez", which are individual balls with hook projections which can be stuck together to build larger structures. In the case management conference decision from 9 May 2017, Mr Justice Henry Carr made some recommendations for achieving shorter and more cost-effective trials.

The claim at hand was, as described by the judge, a "...simple..." design dispute with straightforward issues for the court to decide, namely whether the alleged infringement created the same overall impression as did the registered design. Given the simplicity of the issues, the judge expressed his surprise at the costs budgets of each of the defendant and the claimant which were £360,000 and £776,000 respectively. He therefore went on to itemise some "…lessons for the future…" which should be considered in order to achieve shorter and far less costly trials in registered design cases.

The unregistered design case guidance comes from a judgment in the Action Storage Systems case handed down late in 2016 by His Honour Judge Hacon, which gave guidance on how to conduct claims in UK unregistered design cases. The Action Storage case involved UK unregistered design in plastic lockers, the type commonly used in schools. Hacon HHJ took the opportunity to specifically comment on the drafting of pleadings, as well as some other aspects of the life cycle of an unregistered design case.

It is evident that, in an effort to prevent costs escalating, and in order to ensure design cases are resolved in an efficient and timely manner, these lessons – set out in the table below (along with some of our practical guidance) – should be followed.

The below applies to claims brought before the courts in England.

Registered Design

Unregistered Design

Legislation

UK: Registered Design Act 1949 (as amended) applies.

Community: Community Design Regulation 6/2002 (as amended) applies.

UK: Copyright, Designs and Patents Act 1988 (as amended) applies.

Community: Community Design Regulation 6/2002 (as amended) applies.

Test for infringement

UK: using (which includes making, offering, putting on the market, importing and exporting) a product which does not produce on the informed user a different overall impression (no copying required).

Community: using (which includes making, offering, putting on the market, importing and exporting) a product which does not produce on the informed user a different overall impression (no copying required).

UK: making articles to the design or recording the design in a design document for the purpose of enabling the making of copies, which reproduction requires direct or indirect copying the design; or dealing in (importing, selling, hiring, offering and/or possessing) articles with the knowledge and/or reason to believe the article is infringing.

Community: using (which includes making, offering, putting on the market, importing and exporting) a product which does not produce on the informed user a different overall impression, where the use results from copying the protected design.

Copying

In view of the test for infringement, allegations of copying should not be introduced as it is clear and settled law that the question as to whether the defendant has copied is entirely irrelevant in registered design cases.

In Spin Master, Henry Carr J reinforced this point by stating "[a]n advantage of a registered design is that, as with patents, copying does not have to be proved, and is not relevant".

The appropriate causes of action for allegations of copying are infringement of unregistered design and/or infringement of copyright. A claimant must show that its design has been (directly or indirectly) copied. If copying cannot be established, there is no infringement.

UK: If a claimant is alleging indirect copying, the claimant must show that the copying was done in order to produce articles exactly the same, or substantially the same, as the claimant's design.

Pleadings and requests for further information

Requests for further information are unlikely to prove helpful.

Once the parties have set out their respective cases in words, further verbal descriptions do not help; instead the exchange of enlarged photographs of the allegedly infringing products is more useful. A claimant should supply good quality copies of any images contained in the registered design, as necessary.

Parties should produce images at an early stage of proceedings to demonstrate differences and similarities and a defendant should specifically produce images showing any features which they claim are wholly functional or where design freedom is limited.

It is helpful if a claimant has identified the significant features of the design(s) in the particulars of claim and the extent to which those features are to be found in the defendant's article. It is also useful if the claimant produces a labelled diagram which locates each significant feature.

A defendant should then adopt and/or amend the claimant's list as appropriate in the defence, and should proceed to admit or deny the presence of significant features in the allegedly infringing article.

A defendant should also plead the significant features of the design he alleges to be commonplace and identify the prior art in which those features are to be found (UK), or any features which they claim are wholly functional or where design freedom is limited (Community).

Such a list of design features will greatly help the court as the list will clarify the points of dispute between the parties. However, it should be noted that the list does not have to be agreed, as the court can settle this.

Disclosure

Parties should consider whether disclosure is necessary at all, rather than simply agreeing to standard or specific disclosure without giving thought to those issues which need or need not be proved.

The point about copying is re-enforced in relation to disclosure: a claimant should not introduce or seek disclosure in relation to copying.

Further, a defendant should disclose prior designs that they intend to rely upon up front if they are available, without prejudice to their right to supplement that disclosure in evidence.

Disclosure should still be limited, as any disclosure needs to be relevant to the issues in dispute between the parties. As suggested above, these will hopefully be narrowed if the parties plead their cases fully.

In respect of disclosure on copying, a case will be stronger where a claimant can identify its own specific earlier designs and any information it has regarding the copying (e.g. attendance by a designer of the defendant at an event where the product was presented).

The point regarding prior designs to be disclosed by the defendant as early as possible also applies.

Witness evidence and cross-examination

The guidance provided in the registered design case is equally applicable to unregistered design cases.

The court must be satisfied of the relevance of evidence in order for it to be introduced. The issue of infringement will be decided by the court, and is not to be opined upon by witnesses. Admissible witness evidence is limited and will likely comprise only technical evidence about design constraints.

In respect of cross examination, parties need to identify the issues on which cross-examination is necessary and be prepared to explain why at the pre-trial review. It should be noted that such evidence is unlikely to require substantial cross-examination.

In respect of multiple designs, or where multiple infringements are alleged, the parties should each select a limited number of samples on which the issues can be tested.

Expert evidence

In cases concerning consumer products, the decision as to the overall impression can be made without any expert evidence as to the similarities and differences.

In the event that it is decided that expert evidence is necessary (e.g. on the point about design constraints, if this comes from an expert rather than a witness), parties should aim to limit the length of the evidence to an agreed number of pages (in the case at hand this was 15 pages); the precise ambit of that evidence should be defined; and the expert should be told what question to specifically address.

In cases concerning issues of validity (i.e. novelty, commonplaceness – also applicable to registered design cases), a defendant should not plead the case broadly and leave it up to expert evidence to develop the issues further. This results in unfocussed reports which is a waste of time.

A defendant should have a properly reasoned argument that a design is invalid and be aware of the prior art. Experts can then focus on whether significant features of the design have been correctly identified, whether they are found in the prior art and the extent to which the prior art was known to the designers/the Community at the relevant date, for the purposes of discussing validity.

Trial

Registered design cases should not last for days, but rather a few hours. In the specific case, the judge commented that the claimant's estimate of six days and the defendant's estimate of four days for trial is "far too long".

To minimise length of trial on liability "parties should give careful thought to those issues which can be postponed to a damages enquiry, which will only need to be considered if liability is established".

Although there may be a few more issues at play because copying is in issue in unregistered design cases, if the pleadings are full and the witness evidence sufficient, unregistered design cases should only last a day or two.

On this point, Hacon J mentioned that the adequacy of pleadings (particularly on commonplace design) is something the parties should take up at the case management conference so that it does not become an issue much later on, i.e. during trial.