Supreme Court dismisses appeal on admissibility of expert evidence regarding individual character of unregistered designs.

THE SUPREME COURT

55/08

Murray J.

Fennelly J.

O’Donnell J.

McKechnie J.

Clarke J.

BETWEEN:

Karen Millen Fashions Limited

Plaintiff/Respondent

-and-

Dunnes Stores and Dunnes Stores (Limerick) Limited

Defendants/Appellants

Judgment of the Court delivered on the 2nd of April 2014, by Mr Justice O’Donnell.

1 The court has already made a reference to the Court of Justice of the European Union pursuant to Article 267 of the Treaty on the

Functioning of the European Union seeking a preliminary ruling on questions of interpretation of Council Regulation (EC) No 6/2002 of

the 12th of December 2001 on Community designs. The questions posed for the Court relate to whether individual character for the

purposes of the Regulation is to be considered by reference to whether an asserted design differs from the impression produced on an

informed user by an individual design previously made available to the public or an amalgam of features of earlier designs, and whether

the court was obliged to treat a design as valid where the alleged right holder merely indicated what constituted individual character

rather than established it as a matter of fact. The decision of the Court of Justice is pending. This judgment addresses a single issue

of domestic law in respect of the admissibility of evidence as to the impact of a design upon witnesses called upon to address

questions of novelty and individual character. The facts are already set out in some detail in the Order for Reference of Questions for

a Preliminary Ruling dated the 6th day of June 2013 and in a careful and detailed judgment in the High Court. Nevertheless, it is

necessary to set out some background facts in order to understand the legal issue addressed in this judgment.

2 The plaintiff/respondent (who I will refer to hereinafter as “Karen Millen”) claims that the defendants/appellants (hereinafter

“Dunnes Stores” or “Dunnes”) infringed Karen Millen’s rights to unregistered designs pursuant to Community Regulation (EC) No 6/2002

of the 12th of December 2001 (“the Regulation”) in respect of three designs, a black knit top, a blue striped shirt, and a similar brown

striped shirt. In perhaps unduly simple terms, an unregistered right arises from the novelty and individual character of the design, and

is breached by copying. By the time the case was at hearing in the High Court, there was no longer any dispute that Dunnes had

indeed copied the top and the two shirts, or that the garments were novel. What was in controversy however was whether Karen

Millen was entitled to any unregistered design rights in relation to the items. In particular, it was disputed that the designs had the

requisite individual character.

3 Recital 19 of the Regulation provides that “A Community design should not be upheld unless the design is new and unless it also

possesses an individual character in comparison with other designs”. Recital 14 provides:

“The assessment as to whether a design has individual character should be based on whether the overall impression produced

on an informed user viewing the design clearly differs from that produced on him by the existing design corpus, taking into

consideration the nature of the product to which the design is applied or in which it is incorporated, and in particular the

industrial sector to which it belongs and the degree of freedom of the designer in developing the design.”

These concepts find expression in the Regulation in Articles 5 and 6 which provide as follows:

“5.1. A design shall be considered to be new if no identical design has been made available to the public:

(a) in the case of an unregistered Community design, before the date on which the design for

which protection is claimed has first been made available to the public;

(b) in the case of a registered Community design, before the date of filing of the application for

registration of the design for which protection is claimed, or, if priority is claimed, the date of

priority.

5. 2. Designs shall be deemed to be identical if their features differ only in immaterial details.

6. 1. A design shall be considered to have individual character if the overall impression it produces on the informed

user differs from the overall impression produced on such a user by any design which has been made available to

the public:

(a) in the case of an unregistered Community design, before the date on which the design for

which protection is claimed has first been made available to the public;

(b) in the case of a registered Community design, before the date of filing the application for

registration or, if a priority is claimed, the date of priority.

6. 2. In assessing individual character, the degree of freedom of the designer in developing the design shall be

taken into consideration.”

4 The particular issue of evidence to which this judgment is addressed is itself connected to the issue as to the onus of proof which

arose in the High Court and also on this appeal. Article 85.1 of the Regulation provides for a presumption of validity in the case of

registered Community designs. In the case of unregistered Community designs Article 85.2 provides:

“In proceedings in respect of an infringement action or an action for threatened infringement of an unregistered Community

design, the Community design court shall treat the Community design as valid if the right holder produces proof that the

conditions laid down in Article 11 have been met and indicates what constitutes the individual character of his Community

design. However, the defendant may contest its validity by way of a plea or with a counterclaim for a declaration of invalidity.”

5 Karen Millen argued, and the High Court accepted, that Article 85.2 meant that it was for the plaintiff who was asserting the

existence of an unregistered design right to prove that the design had been made available to the public, and to indicate what

constituted the individual character of the Community design. However, where there was a challenge to the validity of the design by

reference to either novelty or individual character, the onus lay on the defendant to prove that the design was not novel, or did not

have individual character.

6 Consistent with this view of the onus which lay upon it, Karen Millen did not call direct evidence addressing the question of overall

impression or individual character. I can readily see that a plaintiff would wish to avoid calling evidence on these issues at least in the

first place, since to do so might mean that the shifting of the onus of proof would have little practical benefit. But the allocation of

the onus of proof is only decisive in cases when no evidence is called or when the court cannot decide which of the sides is more

probably correct. Once a defendant calls evidence on the issue which is at least capable of discharging the onus, there will inevitably

be a contest, and the issue will be resolved on the balance of probabilities where the onus of proof is unlikely to play an important

part. It may be that in an appropriate case the court would order the plaintiff to give evidence on matters such as placing on the

market and copying, and then address novelty and individual character in rebuttal or, in a case where novelty and individual character

were the only issues, the defendant might become the moving party and call its evidence first. However, those issues did not arise in

this case. Although Karen Millen did not call evidence directed to the issue of individual character they call Helen McAlinden, a dress

designer, who gave evidence that no similar or identical garments had been on the market before the plaintiff produced these

garments. Almost inevitably however, she was cross-examined by reference to the evidence to be given as to individual character by

three witnesses called on behalf of Dunnes. Those witnesses were a Susan Maher who was an internet boutique owner, Helen James

a designer, and Janine Corletta a wardrobe stylist. In addition to making reference to what was described as the design corpus

generally, (and notwithstanding Dunnes’ stance on the nature of the comparison to be made), some particular pieces of prior art were

relied on. Among these were a Dolce and Gabbana faux shrug and a Paul Smith shirt which the Dunnes witnesses said showed that

the Karen Millen garments did not have individual character within the meaning of the Regulation. In due course, these witnesses gave

evidence in chief and made a number of references to prior art and in particular gave evidence by reference to the Dolce and

Gabbana faux shrug and the Paul Smith shirt, which became the focus of a significant portion of the judgment

7 At the close of the case Dunnes sought what counsel for Karen Millen was, I think, correct to characterise as a form of technical

knockout. They sought to argue that Helen McAlinden’s evidence was wholly inadmissible since it was argued that she was over

qualified to be “an informed user”. The trial judge found that the notional informed user for the designs at issue was “a woman with a

keen sense of fashion, a good knowledge of designs of women’s tops and shirts previously available to the public, alert to design and

with a basic understanding of any functional or technical limitations on designs for women’s tops and shirts”. If that was the case,

then Dunnes argued that the only evidence from a person approximating to such an informed user was that given by the two defence

witnesses, Janine Corletta and Susan Maher. It was argued that in such circumstances the court was obliged to accept the only

evidence from informed users (as so defined) and that Dunnes were entitled to succeed since those witnesses had expressed the

opinion that Karen Millen garments did not have individual character.

8 The court dealt with this argument at pages 39-45 of the unreported judgment. The learned trial judge observed that Dunnes’

argument was that Karen Millen had not tendered any evidence from persons with the characteristics of an informed user for the

designs in issue and “that such lack of evidence [was] fatal to the plaintiffs claim”. The judge then addressed Karen Millen’s argument

in response “that evidence from a person who may have the attributes or characteristics of the notional informed user of the overall

impression created by the challenged design and earlier designs is neither essential nor helpful to determining whether the challenged

designs have individual character within the meaning of article 6”. Karen Millen submitted that such an issue was to be determined by

the court making its own assessment of the overall impression produced by the challenged designs on the notional informed user. The

judgment then referred to cases decided in England and Wales but relied particularly on the decision of the Board of Appeal of OHIM

of the 22nd November 2006 in case R 196/2006-3 Daka Research Inc. v. Ampel 24 Vertriebs-GmbH & Co. KG. Perhaps the most

relevant paragraph of that decision was paragraph 20:

“In spite of the overlap between novelty and individual character, there are certain differences between the two requirements.

The test for novelty is essentially of an objective nature. The Board simply has to decide whether two designs are identical.

The only area where difficulties of interpretation might arise is in relation to the term ‘immaterial details’. The test for individual

character is less straightforward and is likely to give rise to slightly more subjective appraisals. The Board is required to take

into account the overall impression on the informed user, having regard to the degree of freedom of the designer in developing

the design. Presumably this means that if the designer had relatively little freedom in developing the design, especially on

account of technical constraints, even small differences in relation to earlier designs may be sufficient to endow the design with

individual character.”

The Board then went on to makes its own assessment of the contested items and concluded that the contested design was invalid

for lack of individual character.

9 The learned High Court judge then continued:

“The plaintiff appears to me correct in submitting that in accordance with the above decision it is neither necessary nor

relevant for the Court to consider evidence of the overall impression produced on a witness, even if that witness has the

characteristics of the relevant notional informed user. Rather, it appears that the approach of the Board of Appeal is for the

court to make its own assessment of the overall impression created by, in the Daka case, the RCD as compared with earlier

designs relied upon. That assessment appeared to be based on the allegedly differing elements of the overall design noted by

the Board of Appeal, either from its own observation and considered in the context of submissions made by the parties recorded

earlier in the decision at para. 13 or possibly with the assistance of evidence which identified the differing and similar elements

of the two designs.” (Emphasis added)

10 The judgment of the learned High Court Judge then referred with approval to the test applied in the English case of The Procter &

Gamble Company v. Reckitt Benkiser (UK) Limited [2006] E.W.H.C. 3154 (Ch) and [2007] E.W.C.A. Civ. 936 where Lewison J. had

himself identified the overall impression produced by each of the designs. The High Court noted that while the Court of Appeal of

England and Wales had overturned the decision, it did not in any way question the approach. The High Court judgment then quoted

with approval Jacob L.J.’s statement in the Court of Appeal decision that:

“The court must ‘don the spectacles of the informed user’ to adapt the hackneyed but convenient metaphor of patent law.”

(para. 35(v))

Accordingly, the High Court concluded:

“By reason of this conclusion it is unnecessary to consider the objection to the evidence of Ms. McAlinden.”

11 Dunnes challenged this conclusion. At paragraph 43 of their written submissions they argued:

“The learned trial judge, consequently, it appears, completely ignored the appellants evidence on the issue of overall impression.

Certainly there was no analysis of it, and it was not further mentioned in the judgment; the assessment of individual character

at pages 48-53 was done without the benefit of evidence. The appellants contended that failure properly to consider or weigh

the evidence – which was not found inadmissible – is an error of principle.”

12 In order to address this argument it is in my view necessary to go back and consider the context in which the issue arose. At the

outset it is useful to observe that in my view, the defendants’ objection to the evidence of Ms McAlinden and the consequent

attempt to seek to succeed by default was, while ambitious, wholly misconceived.

13 First, the “informed user” contemplated by the Regulation is not an individual living person or persons: he or she is an entirely

notional construct. The closest anyone comes to an informed user is when the court, once educated by evidence from whatever

source, or indeed its own experience, can “don the spectacles” of the informed user. Therefore the only evidence that is relevant to

that issue is that which allows the court to put itself in the position of donning the spectacles of the informed user. The evidence can

in principle, I think, be from persons either over or under qualified since it is not necessarily the case that there will ever be a single

person who approximates to the standard of knowledge and experience of the notional informed user. The whole purpose of the

exercise is to allow the court to come to a hypothesis about the view of such a notional person. While cognisant of the risks of too

ready an analogy with other areas of law, I do think a useful comparison can be drawn between the informed user in design law and

the person “skilled in the art” in patent law. In a patent case, the court must “don the mantle” of the skilled addressee. That person

was described memorably by Laddie J. in Re Pfizer Ltd. [2000] E.W.H.C. Patents 49 as follows:

“This is not a real person. He is a legal creation. He is supposed to offer an objective test of whether a particular development

can be protected by a patent. He is deemed to have looked at and read publicly available documents and to know all public

uses in the prior art. He understands all languages and dialects. He never misses the obvious nor stumbles on the inventive. He

has no previous idiosyncratic preferences or dislikes. He never thinks laterally. He differs from all real people in one or more of

his characteristics.” (para. 62)

14 The basis of expert evidence in relation to the hypothetical skilled addressee in the law of patents is discussed in Terrell on the

Law of Patents (16th edition; London; Sweet and Maxwell; 2005) where the authors comment:

“In practice the experts called by the parties tend to be over skilled. However the courts generally found it helpful to have the

best possible guidance from persons steeped in the art, and have been able to make allowances where necessary. As well as

being qualified the experts may come to the case with personal prejudices and preferences that must be discounted.”

The same can be said in the area of designs. Accordingly, in my view over qualification, which was the charge levelled at Ms

McAlinden, was not in itself a reason to discount any evidence, if that evidence assists, or is capable of assisting the court in putting

itself in the position of the informed user.

15 However, Dunnes do not now seek to maintain the argument that Ms McAlinden’s evidence should have been excluded or that they

were entitled to succeed by default. Rather, it is argued that the High Court, in rejecting the argument went further than was

necessary and rather than admitting Ms Mc Alinden’s evidence, discounted all the evidence addressed to the question of the overall

impression created on an informed user, including that of Dunnes’ expert witnesses, and moreover, did so without finding that the

evidence was inadmissible.

16 There is perhaps some confusion on this issue which may be traced to Karen Millen’s submission that evidence from a person who

may have the attributes or characteristics of the notional informed user was “neither essential nor helpful” to determine whether the

challenged designs have individual character. Furthermore, it does not appear to me that the Daka decision is of particular assistance

in resolving this issue. If the High Court judgment is to be understood as concluding either that expert evidence as to the overall

impression created on an informed user was inadmissible, or if admissible should be discounted, I could not agree. Therefore, if indeed

the trial judge had “completely ignored” the evidence given by Dunnes’ witnesses then that would be an error which in an appropriate

case might require the appeal to be allowed and a retrial ordered, although in this case Dunnes invited the Court to form its own

conclusion on the issue. However it is necessary to look at what occurred in this case to determine if this characterisation is a

correct interpretation of the approach of the learned trial judge.

17 First, there is much merit in the observation of Jacob L.J. in the Court of Appeal of England and Wales in The Procter & Gamble

Company v. Reckitt Benkiser that the place for evidence on the assessment of overall impression is limited:

“By and large it should be possible to decide a registered design case in a few hours. The evidence of the designer, e.g. as to

whether he/she was trying to make, or thought he/she had made, a breakthrough, is irrelevant. 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 –

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 still less substantial cross-examination.” (para. 4)

In this jurisdiction where trial judges must deal with a large range of litigation and where cases on designs are relatively rare, courts

might justifiably take a less robust approach. It is often the case that expert evidence is useful in identifying the key issues and

presenting them clearly to the court for decision. Nevertheless it is important to approach such evidence, and indeed the case,

keeping in mind the fact that fundamentally the matter should not be one of great complexity and that the principal value of such

evidence is in identifying the similarities and differences between the respective products.

18 Second, the question of the evidence in this case was closely linked to the view the court took of the legal test which was

applicable. Karen Millen had contended that it was necessary to judge the overall impression by reference to another existing garment

or garments. Dunnes by contrast sought to argue that an overall impression of individual character could be determined by reference

to a hypothetical amalgam of elements drawn from different designs. The conclusion the individual witnesses gave as to the overall

impression created on them of the garments in issue was itself necessarily influenced by the differing approaches by the parties to

this question.

19 Third, it was apparent that the witnesses’ conclusion as to individual character involved their own view of what that term

comprehended. That however is ultimately a legal test. The difficulty is well illustrated by the fact that one of Dunnes witnesses, in

illustrating her contention that the clothes did not in any way create a different impression from any other wrap or shirt she had seen

in the past, gave an example of a garment which “did at the time create a different impression”. That was the Gianni Versace dress

described as “that dress” worn by Elizabeth Hurley for the premiere of the film “Four Weddings and a Funeral”. As she observed, the

dress appeared on the front page of nearly every daily publication the following day. If that standard was to be applied it was

understandable that she could conclude that the Karen Millen top and shirt did not create a different, let alone a clearly different,

impression (and indeed few garments might) but, that assumes that interpretation of the concept of individual character was correct.

20 All of this led to an important exchange at an early stage in the trial. On Day 1 when counsel for the plaintiff was opening the

case, he made reference to the different view that Dunnes took of the concept of individual character and the example given of the

Versace dress. The judge intervened to observe that:

“It was surely not a matter for counsel for [Dunnes] witnesses to give evidence about what is required under the regulation … it

is a matter for them to explain as a matter of fact why they say it does not create a different impression. At the end of the day

the court is going to have to decide on the evidence. It is a matter for both sets of witnesses to try and explain to the court

why they say either it is identical to a previous matter or it is not identical, or why it creates a different overall impression or

why it does not create a different. They are the two issues.. the witnesses can only give evidence of fact. It seems, subject to

[counsel for Dunnes], to me that the question of overall impression is inevitably subjective. Any witness can only give evidence

of the impression that it creates on that person. They will have to explain why it creates a particular impression and at the end

of the day it will then be a matter of submission as to which of the evidence, if there are differences, I should prefer in

determining the probable impression on this notional person.”

21 This in my view sets in context the trial judge’s observations about the objection to the evidence of Ms McAlinden. At page 43 of

the judgment she stated:

“The plaintiff appears to me correct in submitting that in accordance with the above decision it is neither necessary nor

relevant for the Court to consider evidence of the overall impression produced on a witness, even if that witness has the

characteristics of the relevant notional informed user. Rather… [i]t is for the court to make its own assessment of the overall

impression…” (Emphasis added)

22 This does not amount to ignoring all the evidence of the witnesses. Instead it is consistent with the approach taken on Day 1. It

seems clear that what the trial judge had decided was that the question of individual character was to be decided by the judge

herself having regard to the evidence of differences and similarities which was the basis of the evidence given by all the witnesses. It

seems quite clear as a matter of fact that the judge did give careful consideration to all of the evidence of factual distinctions relied

upon by the various witnesses. In fact, the comparator Dolce and Gabbana faux shrug and the Paul Smith shirt, to which the

judgment devoted much analysis, were both introduced by the defendants’ witnesses. The court’s conclusion on individual character

addressed the Paul Smith shirt and the Dolce and Gabbana top in some detail before concluding that the overall impression created by

the Karen Millen top and shirts was clearly different from that created by the Paul Smith shirt and the Dolce and Gabbana faux shrug.

Therefore, it seems clear that what the judge did is what she had ruled on the first day was the correct approach; namely to permit

witnesses to give evidence of fact as to why they considered each garment did not create a different overall impression before

deciding with the assistance of evidence identifying the differing and similar evidence of the designs the objective question of

whether the individual character clearly differed. It also follows that the High Court did precisely what it said it did: it excluded from

consideration the evidence of the overall impression “produced on a witness”. This analysis is consistent with the ruling on the

challenge to Ms McAlinden’s evidence. Clearly, if evidence of the impression produced on a witness was excluded it followed that the

identity and degree of expertise of that witness, and his or her approximation to the notional informed user, were irrelevant.

Accordingly, it seems clear that what the court did was to simply exclude the evidence of the individual witnesses as to the

impression created on them. The High Court judge did not ignore the evidence of fact given by the witnesses or the reasons given by

them.

23 There remains to consider whether the judge was entitled to disregard even the limited evidence of the impression formed on the

individual witnesses. In fact in so doing the court was applying the rule often honoured in the breach, that expert witnesses should

not give evidence as to the ultimate issue, which is reserved for the court. In McGrath, Evidence (Dublin; Thomson Round Hall; 2005)

it is stated that the rule is obsolete. For my own part, I can see how it is at least convenient to permit experts to give evidence in

general as to their conclusions, so long as it is very clearly understood that what is important are the reasons leading the expert to

that conclusion rather than the fact of the conclusion itself. Anything else is somewhat artificial. It is a matter of near certainty that

the only expert witnesses called by either side will have formed an opinion favourable to that side and their evidence can often be

best understood when both the reasons and conclusions are stated so long as it is understood and appreciated that the reasons

leading an expert to a particular conclusion are the important matters for the court to consider. But in my view, that does not lead to

the conclusion that a court is in error if it adheres to the traditional rule.

24 That is particularly so in the present case because of the limited scope for expert evidence. Again I think a useful analogy can be

drawn from the field of patents. In the United Kingdom the rule against evidence on the ultimate issue is no longer applied. Thus

experts in patent cases may give evidence as to that question so long as it is not one of law. But in Rockwater Ltd. v. Technip

France [2002] E.W.C.A. Civ. 381 Jacob L.J restated his own words in Routestone v. Minories France [1977] B.C.C. 180 that merely

because the opinion is admissible in evidence:

“it by no means follows that the court must follow it. On its own (unless uncontested) it would be ‘a mere empty

rhetoric’...What really matters in most cases is the reasons given for the opinion. As a practical matter a well-constructed

expert’s report containing opinion evidence sets out the opinion and the reasons for it. If the reasons stand up the opinion

does, if not, not. A rule of evidence which excludes this opinion evidence serves no practical purpose. What happens if the

evidence is regarded as inadmissible is that experts’ reports simply try to creep up to the opinion without openly giving it. They

insinuate rather that explicate.” (para. 14)

Jacob L.J. also made an observation which has a resonance in this case:

“Because the expert’s conclusion (e.g. obvious or not), as such, although admissible, is of little value it does not really matter

what the actual attributes of the real expert witness are. What matters are the reasons for his or her opinion. And those

reasons do not depend on how closely the expert approximates to the skilled man.” (para. 15)

Subsequently in Smithkline Beecham Plc & Anor v Apotex Europe Ltd & Ors [2004] E.W.C.A. Civ. 1568 Jacob L.J. returned to this

theme and said:

“[A]lthough it is inevitable that when an expert is asked what he would understand from a prior document's teaching he will give

an answer as an individual, that answer is not as such all that helpful. What matters is what the notional skilled man would

understand from the document. So it is not so much the expert's personal view but his reasons for that view – these the court

can examine against the standard of the notional unimaginative skilled man.” (para. 52)

25 In this case, these observations apply with particular force. As already observed, the questions arising field of designs, especially

as to overall impression, are often less technical than the issue which can arise in the field of patents. The opinion of the individual

witness adds little if anything to the reasons already given, and the matters of fact already identified. That is particularly so where,

as here, that opinion was itself dependent upon views as to the nature of the design corpus to which the garment was to be

compared, and the test of what was individual character, on both of which the judge had differed from the approach of Dunnes’

witnesses. The judge was entitled to apply the traditional rule in relation to evidence as the ultimate issue and that may have been a

convenient course given the objection raised by Dunnes. In any event, in this case, given the limited scope for expert evidence on

design matters, and the fact that the conclusion of the individual was clearly predicated upon a view of the law as to the appropriate

comparator and the nature of individual character, and given the fact that the trial judge took a different view on both those issues,

it is impossible to say that the exclusion of the evidence of the impression formed on the individual witnesses had any impact on the

outcome of the case.