Expert evidence in UK registered design proceedings: guidance on admissibility and limitations
In ICAP Laundry Care SL v Persan SA, an invalidity action was brought against a UK registered design for a detergent capsule. The rightsholder filed a witness statement presented as an expert report to try and prove the design was new and had individual character. The Tribunal deemed this to be expert evidence, and its admissibility was challenged as no permission had been sought.
While permission is required to adduce expert evidence in trade mark proceedings, where issues are generally determined by reference to the “average consumer”, this decision confirms that expert evidence may be filed in registered design proceedings without seeking permission. There is nothing in the Registered Designs Act 1949 or the Registered Designs Rules 2006, nor any UKIPO guidance specific to registered designs, imposing a permission requirement.
However, where expert evidence is admitted into proceedings, its evidential value will depend on the issues it addresses. Here, the hearing officer noted that Tribunal Practice Notice (TPN) 1/2000 was relevant to registered design proceedings, and requires the Tribunal to adhere to the same overriding objective as the court for dealing with cases justly, as set out in rule 1.1 of the Civil Procedure Rules 1998. The hearing officer also acknowledged the treatment of expert evidence in design case law (including in P&G v Reckitt Benckiser [2007] EWCA Civ 936 and Rothy’s v Giesswein Walkwaren [2020] EWHC 3391 (IPEC)).
In short, the parts of the report that were granted evidential weight in this case included: the summary of the laundry market; and the designer’s degree of freedom, in particular, the extent to which the size and shape of the capsule was dictated by functional constraints and manufacturing techniques. Conversely, no evidential weight was granted to the report’s comments on issues that were ultimately for the Tribunal to decide, such as: the identity of the informed user; comparing the designs; and the overall impression produced on the informed user.
Useful links
- O/0497/26, ICAP Laundry Care SL v Persan SA (PDF): https://dycip.com/icap-persan
- TPN 1/2000: https://dycip.com/tpn-1-2000
