EXPERTS NOT REALLY NECESSARY WHEN A JUDGE LOOKS AT BALLET SHOES: EVIDENCE SHOULD HAVE BEEN MORE EN POINTE
Instructing experts in circumstances where they are not necessary, or their evidence is not admissible, is a common theme in litigation. This issue was considered by Mr David Stone (sitting as a Deputy High Court Judge) in Rothy’s Inc v Giesswein Walkwaren AG  EWHC 3391 (IPEC.
“I do not consider myself bound by the expert evidence: I have given it no weight. Significant costs and court time could have been saved had that evidence not been adduced.”
The action concerned an alleged breach of design rights in relation to a “pointed loafer” type of ballet shoe. The claimant alleged the defendant’s ballet shoe was infringing its rights.
THE USE OF EXPERT EVIDENCE IN THE CASE
The judge was sceptical about the usefulness of expert evidence in this case and reviewed the correspondence and procedural history in some detail.
Earlier this year, the solicitors for the Defendant wrote to the Claimant’s solicitors in the following terms:
“Expert Evidence: we do not consider that this is a case in which expert evidence is necessary or proportionate. The Court is asked to make visual inspection of designs of consumer goods. We do not agree that the Court would be assisted in that exercise by expert evidence.”
The Claimant’s solicitors responded, insisting on expert evidence, noting:
“An IPEC judge, and particularly a male judge, is very likely to need to be informed of the aesthetic context in which such articles fall to be considered.”
At the CMC before HHJ Hacon, the Defendant’s advocate is recorded in a letter from the Claimant’s solicitors to have said this:
“Second, there is a dispute as to the extent to which expert evidence should be permitted. The parties agree that expert evidence should be permitted to address the design corpus – to assist the court to orient itself in the state of the design field in question at the relevant time. However, the Claimant goes further. Its position is that the court will be assisted by experts submitting reports and being cross-examined on their views as to the ultimate questions for the court – opining upon whether the claimed designs create a different overall impression to the prior art and whether the alleged infringement likewise creates a different overall impression to the designs.
…limited expert evidence may be instructive are either agreed to be appropriate for limited expert evidence (design corpus) or not in issue (design freedom). What is not agreed is ranging expert evidence on questions of visual comparison – on overall impression and individual character.
The evidence should be tightly controlled in IPEC and allowing expert evidence on issues 2, 3, 6 and 8 is the antithesis of that. The Claimant’s approach has all the hallmarks of a party thinking that evidence is required on every point in dispute between the parties. This has been specifically deprecated in design right cases. It is no more the right approach to this case than it is generally in design right cases.”
By order of HHJ Hacon of 10 March 2020, the parties were given permission to adduce evidence from a single expert each. The relevant order read:
“Each party may rely on an expert witness’s report dealing with Issue 1 identified in the Schedule to this Order. Any such expert’s report may comment upon the reasons why a design feature relied upon is or is not found in the design corpus.”
As noted above, Issue 1 was:
“The state of the design corpus as at 10 May 2017.”
Neither party complied with His Honour’s order. Whilst each provided a single witness statement from a single expert, both of those witness statements travel beyond commenting on the state of the design corpus as at 10 May 2017. It should be recalled that 10 May 2017 was the priority date of the United States design patent application – and at that time, neither the Claimant’s Pointed Loafer nor the Defendant’s Pointy Flat had been launched in the European Union.
Correspondence ensued between the parties, each alleging that the other side’s expert’s witness statement was inadmissible. The Claimant issued an application notice asking for parts of the Defendant’s expert report to be struck out, or as an alternative that the Claimant be permitted to reply to it. The Defendant resisted the application, but stated that the Defendant did not object to the Claimant filing additional evidence. Thus, a further consent order was made by HHJ Hacon, and a further witness statement was filed by the Claimant.
The Court of Appeal has been clear, on a number of occasions, about the role of expert evidence in registered design cases. A Jacob LJ said in Procter & Gamble v Reckitt Benckiser  EWCA Civ 936 (P&G) at paragraphs 4 to 6:
“… The evidence of experts, particularly about consumer products, is unlikely to be of much assistance: anyone can point out similarities and differences, though an educated eye can sometimes help a bit. Sometimes there may be a piece of technical evidence which is relevant – eg 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 to cross-examination still less substantial cross-examination.
In Thermos v Aladdin  FSR 402 at 404 I said:
“I do not think, generally speaking that, `expert’ evidence of this opinion sort, (i.e. as to what an ordinary consumer would see) in cases involving registered designs for consumer products is ever likely to be useful. There is a feeling amongst lawyers that one must always have an expert, but this is not 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.”
This case was started before the new Civil Procedure Rules came into effect. Leave was given to each side to call expert evidence by an order of April 15, 1999. The spirit and effect of the new Rules require the court to look even more closely at the need for expert evidence. In future in registered design actions, I think 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 was suggested to me that an expert might be able to assist the court about technical matters in this case, such as the fact that the I-beam type of construction used in the handles of the flasks has a function. But this is so obvious that one hardly needs an expert, and certainly one does not need two experts. The expert evidence in this case was completely redundant.
As to factual evidence, again it is clear that there is a temptation, bordering on the compelling, to overdo things. Much the most important matters in a registered design action are what the various designs look like. Everything else is secondary. 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  RPC 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 a fortune in arriving at his design. It matters not whether he thought of it in the bath or by engaging the most prestigious design consultants in the world.
One area of evidence which I think is admissible, and is of some secondary assistance, is the reaction of the public and trade (who expect to sell to the public) to the design.”
Thermos was decided in relation to the then UK domestic law of registered designs. This case is the first to reach this Court concerning a Community Design Registration (“CDR”) granted pursuant to Council Regulation EC 6/2002 (“the Regulation”). But everything I said then applies also to actions about CDRs too.”
In this case, it was common ground that there were no relevant restraints on design freedom and no elements of the designs were said to be solely dictated by technical function. Both parties conceded that interpretation of the RCD was a matter for the Court, as was the identity of the informed user, and the overall impression produced on the informed user by the various designs and shoes. Shoes are basic household items, with which all people have day-to-day experience. Reading the experts’ reports helped me to “don the spectacles” of the informed user. However, that could readily and more cost-effectively have been achieved by an agreed, brief primer along the lines of the section I have set out below headed Shoe Design.
Having heard submissions from counsel for both parties during the trial, I said that I would not formally exclude any of the experts’ evidence, but that that did not mean that I would give it any weight. As counsel for the Defendant put it, the Court “should place no weight on anything that goes to comment on infringement or validity or comparison of the designs in the way that Jacob LJ said is not going to be helpful”. I agree. I have therefore admitted the evidence of the experts as to the state of the design corpus as at 10 May 2017 (which was almost entirely agreed), but in relation to the issues that are for determination by the Court, I do not consider myself bound by the expert evidence: I have given it no weight. Significant costs and court time could have been saved had that evidence not been adduced. I return to this issue below.
The statement of Jacob LJ above is clear. Litigants would do well to keep it in mind, particularly litigants in the IPEC, where costs capping applies and proportionality is a guiding principle.
There is a further point. On the first day of the two-day trial, counsel for the parties asked the Court to sit early, late, and through half of lunch in order to complete the evidence. The Court sat for an extra two hours on top of a usual sitting day of 5 hours. When parties agree to take advantage of the IPEC costs cap, they thereby agree to fit their case within the IPEC case limits. They must therefore trim their sails to ensure that the case can be determined within the allocated time. In this case, that could readily have been achieved, including by not cross-examining the experts. This is no criticism of the experts who gave of their time to assist the Court.
LATER IN THE JUDGMENT
There was a lack of clarity in the expert view as to what an “informed user” was.
76. I must say something further about the expert evidence in relation to the informed user. Ms Hawkins was shown the definition of the informed user set out in the Amended Particulars of Claim, and asked if “a buyer of women’s fashion shoes is discerning, knowledgeable and pays a high degree of attention”. She answered in the affirmative. She was then asked a series of questions about the reaction of “the informed user” to various features of various shoes. I had understood Ms Hawkins to have accepted the concept on the basis that the “buyer” was a buyer for, say, a department store. Counsel for the Defendant assured me he had meant a consumer – a customer buying the shoes in a retail store. They were not the words he used and this was never clarified with Ms Hawkins. At least in the fashion industry, a buyer refers to someone who buys as part of their job, rather than an individual customer. Ms Hawkins’ answers also suggested to me that she meant a wholesale buyer, because of the close level of attention she suggested such a person would pay, and how even very minor differences would “strike” her informed user. As Shenzhen makes clear, the informed user is a user of the product, not a “buyer”. Ms Hawkins’ informed user was, in my judgment, clearly too close to a sectoral expert. To her informed user, who is struck by every difference, many designs will be valid, but few will be infringed. Ms Wright, on the other hand, took the view that the most important thing about all the shoes in issue was that they were what she described as an Albert cut – this meant, to her, that the Allegra K and the Bonnibel were similar to the RCD and the UCD. This was too high a level of abstraction – to such an informed user, few designs will be valid, but those that are will have a very broad scope of protection.
77. In any event, as the parties conceded, the definition of the informed user is not a matter for the experts, each of whom is obviously a sectoral expert, rather than an informed user. Therefore, their evidence of what would or would not have struck the informed user is of limited assistance to me, particularly where it is not clear the basis on which that evidence was being put forward, or, as previously outlined, the basis was, through no fault of their own, incorrect.