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High Court issues guidance on how to shorten design trials

Date: 14 May 2018

Spin Master Ltd vs PMS International Group


The High Court has outlined steps that should be taken in order to achieve shorter trials for cases concerning registered designs, following a Case Management Conference (CMC) in which the Judge expressed concern at the costs and timeframe involved.


The CMC in question concerned a claim for infringement of a Community Registered Design by the claimant, Spin Master Limited. The defendant, PMS International Group, subsequently lodged a counterclaim for unjustified threats of infringement.


Spin Master, a Canadian toy manufacturer, registered a design for their “Bunchems” product at the EUIPO in 2015. The toy, which the claimant alleged had been extremely successful and had sparked something of a craze, was named “Activity Toy of the Year” in 2016. Spin Master also added that the product was a substantial departure from the design corpus, and that the visual impact it had on the informed user was significant.


PMS produce a construction toy called “Clingabeez”, which comprises individual balls with hook projections. The balls can be combined to create larger structures. Although the claimant argued that this toy created an identical overall impression to their registered design, the defendant pleaded that certain features were dictated by function and in respect of other features, design freedom was restricted.


According to the Judge, Mr Justice Henry Carr, both the claim and the counterclaim raised straightforward disputes that were commonplace for cases of this nature. It was noted that the counterclaim would stand or fall based on the outcome of the original claim.


Given this, the Judge stated that both the defendant and claimant had wildly overestimated the necessary costs and time needed to complete the trial. PMS estimated that four days, including reading time, were required, while Spin Master had suggested six days were necessary.


The defendant had allocated themselves a budget of £336,000, but even this was dwarfed by the claimant’s total of £776,000, a figure the Judge branded “far too much given the simplicity of the issues.”


Henry Carr J voiced his concern that lessons had not been learned from previous registered design cases before the Court of Appeal, namely Procter & Gamble Co v Reckitt Benckiser (UK) Limited [2007] EWCA Civ 936; [2008] Bus LR 801 and Dyson Ltd v Vax Ltd [2011] EWCA Civ 1206; [2013] Bus LR 328. The key points were as follows:


  1. 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.
  2. 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.
  3. 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.
  4. 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.


Henry Carr J went on to add that although he appreciated the parties’ desire to have their say and recognised that completing a trial in a few hours would not give either side enough time to present their arguments, it was important to respect the needs of other users of the court. He stated that “there is no reason why registered designs cases should last for days, when one understands what really matters.”

Henry Carr J concluded his judgment by outlining eight key steps that should be

undertaken in order to achieve shorter trials:


  1. 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.
  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.