Community designs: lessons to achieve shorter trials

Mr Justice Carr has recently issued a decision following a case management conference which provides advice to parties involved in litigation relating to RCD infringement on how to achieve short, cost-effective hearings. In particular, Mr Justice Carr made the following comments in relation to the directions and cost budgets proposed by the parties at the case management conference:

• The cost budgets of £776,000 for the claimant and £360,000 for the defendant were far too high and should be reduced.
• Generally there is no reason why registered design cases should last for days. In this instance the claimant’s estimate of six days for trial and the defendant’s estimate of four days, were too long. Three days was ample.
• The fact that a defendant may have copied a claimant’s design is not relevant to the question of design freedom. Proof of copying in a registered design claim may be useful prejudice, but it goes no further than that and disclosure was not ordered in respect of allegations of copying.
• Verbal descriptions of the alleged infringing products in question are of limited assistance and enlarged photographs of the products will be more helpful.
• Disclosure of further information which related to the nature and magnitude of the claim for financial relief in the counterclaim was not ordered, as this was a matter for the inquiry (if the counterclaim was successful).
• The claimant was not allowed to amend its pleadings to seek bonus damages at this stage, nor to plead an ex turpi causa defence. If the claimant was successful in its infringement action it could apply for the amendments at that stage.
• In relation to alternative dispute resolution (ADR), this would not be ordered at this stage. However, following an exchange of evidence the parties would be expected to mediate.
• There are very limited issues upon which expert evidence is admissible. Expert evidence would be allowed in relation to two issues only (1) whether any of the features of appearance of the product are solely dictated by its technical function, and (2) to what extent, if any, is the degree of freedom of design limited by the functional nature, if any, of certain features. Such evidence should be limited in length and there should be no cross-examination without permission.

Mr Justice Carr also set out a number of “lessons for the future” which should be considered by those conducting litigation in order to try to achieve shorter trials in RCD cases, as follows:

1. The parties should ideally 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.
2. 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.
3. 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.
4. The parties should try to limit the length of expert evidence to an agreed number of pages.
5. If any evidence of fact is to be introduced, the court will need to be satisfied of its relevance.
6. The parties should be prepared at the pre-trial review to identify issues on which cross-examination is necessary and to explain why.
7. 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.
8. The 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.

In short

This decision provides a useful overview of the approach a court is likely to take to the directions and costs budgets proposed at the case management conference by those involved in RCD infringement proceedings. It also contains a useful overview of practical issues which should be considered by the parties to help achieve shorter trials in RCD cases in future.