Karen Millen Fashions Ltd v Dunnes Stores Ltd
| Jurisdiction | Ireland |
| Judge | Mr Justice O'Donnell. |
| Judgment Date | 02 April 2014 |
| Neutral Citation | [2014] IESC 23 |
| Date | 02 April 2014 |
| Court | Supreme Court |
| Docket Number | [2007 Nos. 15 & 16P] [S.C. No. 55 of 2008] |
[2014] IESC 23
THE SUPREME COURT
Murray J.
Fennelly J.
O'Donnell J.
McKechnie J.
Clarke J.
BETWEEN:
TREATY ON THE FUNCTIONING OF THE EUROPEAN UNION ART 267
EEC REG 6/2002 RECITAL 19
EEC REG 6/2002 RECITAL 14
EEC REG 6/2002 ART 5
EEC REG 6/2002 ART 6
EEC REG 6/2002 ART 85(1)
EEC REG 6/2002 ART 85(2)
DAKA RESEARCH INC v AMPEL 24 VERTRIEBS-GMBH & CO KG UNREP OHIM BOA 22.11.2006 (CASE NO R 196/2006-3)
PROCTER & GAMBLE CO v RECKITT BENCKISER (UK) LTD 2007 ECDR 4 2007 FSR 13 2006 EWHC 3154 (CH)
PROCTER & GAMBLE CO v RECKITT BENCKISER (UK) LTD 2008 BUS LR 801 2008 ECDR 3 2008 FSR 8 2007 EWCA CIV 936
LILLY ICOS LLC v PFIZER LTD (NO 1) 2001 FSR 16 59 BMLR 123 2000 EWHC PATENTS 49
THORLEY & ORS TERRELL ON THE LAW OF PATENTS 16ED 2006
MCGRATH EVIDENCE 1ED 2005
TECHNIP FRANCE SAS PATENT; ROCKWATER LTD v TECHNIP FRANCE SA & ANOR 2004 RPC 46 2004 EWCA CIV 381
ROUTESTONE LTD v MINORIES FINANCE LTD & ANOR 1997 BCC 180 1997 1 EGLR 123
SMITHKLINE BEECHAM PLC v APOTEX EUROPE LTD 2005 FSR 23 2004 EWCA CIV 1568
Designs – Community designs - Domestic law – Evidence – Witness – Informed user – Over qualified – Notional construct – Overall Impression.
Facts: The plaintiff claimed that the defendant had infringed its rights to unregisterd designs under Council Regulation (EC) No 6/2002. The Supreme Court had already sought a preliminary ruling concerning the interpretation of this Regulation which was pending. This appeal concerned the manner in which the trial judge had dealt with witness evidence regarding the impression designs produced on an informed user. Dunnes intilaly argued that the evidence given by a witness for Karen Millen was not admissible as said witness was over qualified and as such could not be considered an informed user. In addition Dunnes argued that the judge discounted all evidence including that of it"s own witnesses which dealt with the issue of the overall impression created on an informed user.
Held by O"Donnell J. (nem diss) , that the informed user was not an individual but rather a notional construct and as such the evidence of Karen Millen"s witness could not be discounted on the grounds that she was over-qualified especially if this evidence helped the judge to put himself in the position of a notional informed user.
Regarding the argument that the judge discounted all evidence dealing with the overall impression created on an informed user, it was held that the judge did not exclude all of the evidence given by the witnesses. Rather what he did was to consider the evidence of fact and reasons given by the witnesses for arriving at the overall impression created on them whilst excluding the actual impression created on them.
Appeal dismissed.
Judgment of the Court delivered on the 2nd of April 2014, by Mr Justice O'Donnell.
Judgment delivered by O'Donnell J [Nem diss]
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 12 th of December 2001 on Community designs. The questions posed for the Couit 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 6 th 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 12 th 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:
2 "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.
3 5.2. Designs shall be deemed to be identical if their features differ only in immaterial details.
4 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.
5 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...
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