Date: 14 May 2018
By Andrew van den Bent Kelly
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  EWCA Civ 936;  Bus LR 801 and Dyson Ltd v Vax Ltd  EWCA Civ 1206;  Bus LR 328. The key points were as follows:
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: