Leeds Plywood & Doors Limited v Deanta UK Limited [2025] EWHC 1376 (IPEC)

[2025] EWHC 1376 (IPEC)

Claim No. IP-2024-000029

IN THE HIGH COURT OF JUSTICE

BUSINESS AND PROPERTY COURTS

OF ENGLAND AND WALES

INTELLECTUAL PROPERTY LIST (ChD)

INTELLECTUAL PROPERTY ENTERPRISE COURT

Venue The Rolls Building, 7 Rolls Buildings, Fetter Lane

London EC4A 1NL

Date Tuesday, 3rd June 2025

Before

RECORDER AMANDA MICHAELS

(sitting as a Judge of the Chancery Division)

Between

LEEDS PLYWOOD & DOORS LIMITEDClaimant

DEANTA UK LIMITEDDefendant

MR. NICK ZWECK (instructed by Shakespeare Martineau LLP) appeared for Claimant.

MR. DANIEL SELMI (instructed by Addleshaw Goddard LLP) appeared for Defendant.

Approved Judgment

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[1]The application before me on behalf of the defendant (dated 10 April 2025) is to strike out certain parts of the evidence of Mr. Stuart Gordon, who is the managing director of the claimant company, and relates to his trial witness statement which is dated 28th March 2025. The defendant seeks to strike out a very substantial part of the witness statement, on two rather different bases.

[2]First, the defendant says paragraphs 29-49 amount to no more than a description by Mr. Gordon of the documents disclosed by the defendant, with commentary upon those documents, as well as references to correspondence between the parties, and various complaints about disclosure in the course of the proceedings.

[3]It seems to me that these paragraphs really do not go further than to comment on the disclosure documents, and upon the design documents, which are obviously going to be a very significant part of the trial, which is to be held in July. I asked Mr. Zweck, on behalf of the claimant, whether he could identify any parts of those paragraphs which are not mere commentary on the documents and his response was effectively to accept that those paragraphs did amount to commentary on the documents, but to contend that nevertheless the commentary was helpful. I agree that the commentary is helpful, and the paragraphs address many of the points which I anticipate are likely to have to be considered in the course of the trial. Nevertheless, it does seem to me that this is not evidence which is being given by Mr. Gordon. These are not the claimant's documents but the defendant's documents. He is commenting on the defendant’s design processes, to the extent that he can work those out from the documents, and commenting on the various proportions and technical elements of the designs. That is particularly the case from about paragraphs 43 to 49.

[4]It does not seem to me that this is properly evidence which Mr Gordon is giving as to the facts. To some extent he may be expressing an opinion, otherwise it is purely descriptive. These are precisely the sorts of points that one would expect to see in a skeleton argument or to be put forward by counsel at the trial. In normal circumstances, I would not have encouraged an application to strike out paragraphs of this kind, because obviously it is perfectly clear to the court precisely what these paragraphs are doing, which is making comments which are by way of submission, rather than by way of setting out evidence. They carry no weight as evidence. However, given that we have the application that has been made, the second part of it which I discuss below, and given the view that I take of those paragraphs, and the lack of any claim that they go further than providing a commentary, albeit a helpful one, I accept that those paragraphs should be struck out.

[5]The situation is rather different in relation to the remaining paragraphs that are challenged, which are paragraphs 50-55. I think all of them are challenged. It seems to me that there is no real basis to object to paragraph 50. That appears to me to be evidence which is given properly by Mr. Gordon, even if, to some extent, it might be described as giving his opinion. However, nevertheless, he is dealing with some factual matters, so I would not strike out paragraph 50.

[6]Paragraph 51 suggests that it is possible to draw an inference from a comment in an e-mail which has been disclosed by the defendant, dated 5th June 2023. That seems to me a perfectly reasonable comment to make, but I do not think it is evidence, so I would strike out that paragraph.

[7]Paragraphs 52 and 53 seem to me to fall into a separate category, because in those paragraphs Mr. Gordon alleges, effectively, that the defendant is a serial infringer of the claimant's products, and he has produced some exhibits which set out photographs of the claimant's products side-by-side with what he says are similar products made by the defendant.

[8]Mr. Selmi took me to paragraph 30 of the Particulars of Claim. That gives particulars of the facts which are said to establish the necessary elements for a claim for design rights and/or copyright. Paragraph 30(a) says that the products are articles made exactly or substantially to the claimant's products; and 30(b) that they are copies, or copies of substantial parts of the claimant’s products. Paragraph 30(c) supports the case that the defendant knew and had reason to believe that the Malmo products were infringing products, and the claimant refers to three facts and matters:(i) that the products are so objectively similar that the similarity can only have arisen as a result of a deliberate act of copying;

(ii) that the defendant is aware of the claimant and other participants in the market and it is common practice to observe competitors; and,

(iii) that the defendant had been put on notice by a letter.

[9]That paragraph is then reflected, to some extent, in paragraph 34 of the Particulars of Claim, in which the claimant seeks an award of additional, aggravated or exemplary damages and in support of that refers to the particulars of knowledge which I have just read out.

[10]Mr. Selmi said that these parts of the Particulars of Claim do not set out a case of there being a propensity to copy on the part of the defendant. In my view, that is correct. All that paragraph 30(c)(ii) of the Particulars of Claim says is that the defendant was aware of the claimant and other participants in the market which is self-evidently the case, and it is common practice to observe competitors. There is no suggestion there that the defendant is a serial copyist, and no suggestion that there had been earlier designs of the claimant's which had been copied by the defendant. It seems to me that paragraphs 51 and 52 therefore do not fall clearly within the matters which are raised by the pleadings. Nor, indeed, do they clearly relate to the issue of copying, which may be the major one in this respect to be resolved at trial.

[11]Furthermore, the detail, or rather the lack of detail, which is given in paragraphs 52 and 53 of the witness statement as to these supposed examples of further copying, strikes me as being extremely unhelpful. If this case was going to be run at all, it would have to be run on a far more detailed basis. There is no application to do that. As far as I am aware, there is not the necessary disclosure documentation to seek to prove the allegation that these examples of door designs were also copied. It seems to me absolutely clear that paragraphs 52 and 53 should be struck out.

[12]Paragraph 54 seems to me to be unexceptional, and as to paragraph 55, again, whilst to some extent it reflects Mr. Gordon's personal belief, it seems to me there is no real reason to exclude it.

[13]So, on that basis, I accede to the application by the defendant, save that I do not consider it necessary to strike out paragraphs 50 and 54 and 55 of the witness statement.

[14]I should add that Mr. Selmi also mentioned to me that there had been some objections that there were similar comments made in the defendant's evidence, in terms of the witness statement of Mr. O'Toole, and it seems to me that it is right that the part of paragraph 16 of Mr. O'Toole's evidence, in which he makes comments about copying, which is not part of the pleaded case, should also be struck out. So that is the second two sentences of paragraph 16.

[15]I understand that a further objection has been raised by claimant. Paragraphs 12-15 seem to me unobjectionable comments on the nature of the market, as is paragraph 18, and paragraph 22 is a comment on one of the defendant's own documents, which, again, seems to me not to be objectionable. [Further Argument]

[16]I am going to deliver judgment now on the claimant's application for specific disclosure. This was an application dated 25th April 2025 and the order that was asked for is for specific disclosure of “documents related to Annex 4 of the defence and counterclaim, as exhibited at Exhibit SG6,” which is a reference to the trial witness statement of Mr. Gordon of the claimant company. The draft order that was attached to the application was in similarly broad terms and sought an order for disclosure of all documents “related to those documents referred to at Annex 4 of the defence and counterclaim, and which are reproduced as exhibit SG6, or provide a written explanation under a statement of truth as to why those documents cannot be disclosed.”

[17]The supporting witness statement, filed in support of the application, was the second witness statement of Ms. Russell of the claimant's solicitors. That witness statement, whilst explaining why it was that the documents were sought in relation to Annex 4, really did not make more specific the nature of the documents which the claimant felt were missing from the defendant's disclosure. It seems to me that, as drafted, the application was far too wide and far too vague and would simply have imposed a huge burden upon the defendant for reasons which were not wholly clear to me.

[18]The application moved on and became more specific in Mr. Zweck's skeleton argument for the hearing before me today. He set out, in paragraph 22 of his skeleton argument, a number of categories of documents that the claimant says one would, as a matter of common sense, expect to have seen. These were complete mood boards, development drawings and technical drawings, in addition to those already in Annex 4, internal e-mail communications of various kinds and external e-mail communications with the manufacturers. In addition, he said there should be product development or project management documents for internal presentations.

[19]Some of those categories of document are plainly, it seems to me, far too wide, in particular those at subparagraphs 22.6 and 22.7, which seem to me to be no more than a fishing expedition. However, one can understand the claimant's puzzlement at the lack of any internal e-mail documentation explaining how it was that the design progressed from the first thoughts, which are shown at page at page 107 of the electronic bundle before me (page 1 of KR3), a document headed "April 2020 - Mood board/design ideas from staff", and some mock-up doors on the following page, also from April 2020, to the design for Door 174, as it was then called, in June 2020. There is, on the face of it, potentially a gap there. On the other hand, it seems to me that there was some explanation given for that potential gap in the evidence of Mr. O'Toole, who is the managing director of the defendant, who gave an explanation, which is for the trial, as to how the designs were come up with. First, he deals with the new product development process and talks about drawings being sent out to the factory in China and so forth. He explained in relation to the Malmo door, at paragraph 27 onwards, how the design was created, to match an existing design for wall panels, which is what he is describing, I think, at paragraphs 29 and 30 of his witness statement. However, he also says, in relation to the Malmo door, at paragraph 34:

"Because the door needed to replicate the acoustic wall panels which were already in production, there was no need for detailed communications to finalise the design or communicate it to Deanta China. This meant there was very little internal discussion around the Malmo design."

[20]That, it seems to me, probably explains why it is that there are no documents which have been returned from the searches carried out up to date.

[21]I was taken to the defendant's form N265. That, first of all, identifies the persons whose documents were searched, and the nature of the documents that were searched, whether electronic or hard copy, and also set out a number of search terms that had been used in the searches carried out by the defendant, which cover a variety of pretty obvious search terms like “Malmo + design”, or “Leeds Plywood + copy.” As Mr. Selmi for the defendant pointed out to me, the search related to documents dating from January 2019 and therefore would have covered the dates in 2020 when Mr. Zweck pointed to a potential gap between the ideas, as shown at KR3, and the development of the Malmo door.

[22]Correspondence between the parties led the defendant's solicitors to volunteer that they would also search for the term "Door 174", as the early design drawings, which are included in exhibit SG6, or KR3, are headed "Door 174", which seems to have been, or may have been, the working name of that design at that stage. That search has been carried out, a small number of documents have been found, and none of them are apparently relevant.

[23]I was also told by Mr. Selmi, on instructions, that there are no further documents which can be identified as being relevant, and that all searches that have been carried out are sufficient and complete.

[24]Mr. Zweck suggested, partly as a result of prompting from the bench, that there should be an expansion of the searches, as I wished to know what further searches the claimant wanted the defendant to carry out. He suggested that there should be an extension of the custodians whose documents were searched to the whole marketing team, or those who contributed to design ideas from March 2020 to September 2020, and suggested adding in some additional search terms: Design 48, which was the number given to the very first picture showing a door with vertical grooves, Designer 8, being the person who appears to have come up with that idea, Door 174, which is a search which has already been carried out, and a code JL-SC007, which appears on the technical drawings. I do not think that counsel knows what that refers to, and I certainly do not either. Obviously it is not necessary to carry out a search of the term "Door 174", if that has not turned up in the searching of the existing custodians. I think it is plainly going to go nowhere at all.

[25]I am concerned that simply adding in an unknown number of members of the marketing team to a list of custodians, or, alternatively, adding in additional terms, even the few terms which Mr. Zweck has identified with the help of his instructing solicitors, potentially is going to lead to there being a very large number of documents which might have to be searched. That would perhaps not have been a problem had this application been being heard at a safe distance from the trial. I am concerned that the fact that the application is being heard only some six weeks before trial is not conducive to there being time for the defendant to investigate the situation and then for there to be, if necessary, a further decision as to whether any further searches of perhaps many thousands of documents would be appropriate or proportionate. I note that whilst the application was issued at the end of April, unfortunately today was the first date on which it could be heard, and it was the claimant which wished it to be dealt with at a hearing.

[26]It seems to me that there is a very real risk that if I were to order any further disclosure this morning it would lead to further arguments about proportionality and a further spin-off dispute as to what is or is not appropriate to order. We are rather too close to the trial to deal with that. That seems to me to be a point which would militate against me making any order for further disclosure, and I bear in mind two further reasons why I should not order further disclosure. First, that Mr. Selmi told me, on instructions, that there are no other relevant documents which are likely to be turned up by any such search, but I also bear in mind the comments made by Mr. O'Toole in paragraph 34 of his witness statement as to the reasons why there might, in fact, have been fewer documents relating to this design than one might have expected in the normal course of events.

[27]I also bear in mind a point which neither party has really concentrated on this morning, but which seems to me to be important, which is that all of this disclosure relates to the defendant's defence that their own designs were created independently. That is a matter which the defendant may have to prove to the court's satisfaction at trial, and it would plainly be in the defendant's interests to produce a further run of documents, if such documents were in its control, and I have no doubt at all that that is a matter which the defendant has considered in carrying out proportionate and sensible disclosure.

[28]The claimant has made it plain that if there is not a full explanation, or if there are points which can be made about the inadequacies of the returns on the searches that have been made, it will invite the court to draw inferences as to the claim of independent creation. Plainly that will be open to the claimant at the trial, and the defendant is well aware of the argument that is going to be made against it in that respect.

[29]Therefore, it seems to me, balancing all the factors which are before me, that I should not make the order sought this morning, certainly not in the terms in which it was originally sought, and indeed not in the terms which were discussed in somewhat more detail and drilled down to this morning. An application which might have been acceptable three months ago is simply not acceptable at this stage so close to the trial, particularly, as it seems to me, that whatever order I were to make this morning, there would have to be further discussion between the parties, and probably further communication with the court before any order could be finalised.

[30]So I reject that part of the application.

[31]The only other part of the application which I think is live is the application that Mr. Zweck made to see the documents which are shown in the extract from Annex 4, which is Exhibit KR3. There was an application to see the native form of the images which are shown in the four pages extracted from Annex 4. Mr. Selmi did not address me specifically on that point, and subject to anything he feels he does need to say on that point, I would propose to order that the native form of those limited number of images should be disclosed. To make it plain, on page 107 of the electronic bundle that order would extend only to door 48, (because I simply cannot see the relevance of the doors which are shown numbered 45, 46 and 47), as well as the development of ideas which is shown on page 108 “Development by marketing team on design 48”, and the two technical drawings shown on pages 109 and 110.

[32]My understanding of the evidence I have had before me as to the way in which Annex 4 was put together is that there were images which were on a central database, effectively, which was reviewed and images identified by Ms. Cherry, and I hope that is not an onerous task for those few images to be extracted at this point from the database so that the native form can be reviewed and disclosed.

[33]What I am going to do is this. I am going to make the order that those documents be disclosed in their native form. But I am going to give the defendant permission to apply. If, on taking instructions and looking at the database, it is, in fact, a Herculean task which requires going through thousands of images, then I will not require the defendant to do it. However, if it is something that can be done relatively easily, then it seems to me it is not unreasonable for the native form to be disclosed. - - - - - - - - - -