Design Rights

Registered Design Infringement – Expert Evidence

This article discusses the relevant considerations in relation to a potential claim against a third party for registered design infringement.

In a registered design infringement case it is important to consider the following factors

1) Assess the registered design in questions

2) Assess the object/ design which is subject to the potential claim (i.e. the infringing article)

3) Asses the prior art that exists (i.e. what else is on the market that could defeat the novelty/ newness of the design).

Put simply, the most important factor to consider is what the designs look like.

In most cases it should be possible to examine a registered design case in a few hours and make conclusions as to the merits of that case. It will be important to consider the evidence of the designer however whether he/she was trying to make, or thought he/she had made, a breakthrough, is irrelevant. The evidence of experts, particularly regarding consumer products, is unlikely to be of much assistance: anyone can point out similarities and differences, though an educated eye can sometimes help more. Sometimes there may be a piece of technical evidence which is relevant – e.g. that design freedom is limited by certain constraints. But even so, that is usually more or less self-evident and certainly unlikely to be controversial to the point of a need for cross-examination.

Most registered designs are for consumer articles and objects purchased or to be appreciated by ordinary members of the public. Experts are not usually required in cases involving registered designs for consumer products. There is a feeling amongst the legal profession that one must always have an expert, but this is not strictly so. No-one should feel that their case might be disadvantaged by not having an expert in an area when expert evidence is unnecessary. Evidence of technical or factual matters, as opposed to consumer ‘eye appeal’ may, on the other hand, sometimes have a part to play – that would be to give the court information or understanding which it could not provide itself.

The spirit and effect of the CPR require the court to look even more closely at the need for expert evidence. In registered design actions, it could be argued that the court should take care before allowing any expert evidence. In particular, the court should know precisely to what areas that expert evidence will be directed. If blanket permission is given, each side feels compelled to get an expert who then has to say something. What is then said has to be read by the other side. Thereby time and cost to no particular use is expended.

It is for instance, clear law that whether or not the defendant copied is irrelevant see, for example, per Aldous J. in Gaskell & Chambers Ltd v. Measure Master Ltd [1993] R.P.C. 76, 81. So it is irrelevant for the claimants’ witness to throw down a challenge that he thought the defendant copied, as was done here, and it is equally irrelevant for the defendant to prove or to give disclosure about how his design was arrived at.

Similarly, it is irrelevant for the claimant to prove, if it be the case, that he spent funds in arriving at his design. It matters not whether he thought of it at random or by engaging the most prestigious design consultants in the world.

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