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] EWHC 3154 (Ch) and [2007] EWCA 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] EWHC 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] EWCA 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] EWCA 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.
