The Supreme Court has rejected a challenge by Dunnes Stores to how the High Court treated witness evidence in a dispute over unregistered designs for three garments sold by Karen Millen Fashions Limited.
The appeal concerned a narrow question of domestic evidence law. A separate reference to the Court of Justice of the European Union (CJEU) remained pending on questions about how individual character should be assessed and what a claimant must establish to rely on an unregistered Community design.
Karen Millen claimed that Dunnes infringed design rights in a black knit top, a blue striped shirt and a similar brown striped shirt. By the High Court hearing, copying and novelty were no longer disputed. The contested issue was whether the garments had the required individual character. Dunnes called three witnesses who discussed earlier designs, including a Dolce and Gabbana faux shrug and a Paul Smith shirt.
Dunnes argued on appeal that the High Court had ignored its witnesses’ evidence about the overall impression the garments created. The Supreme Court said the High Court had considered their factual evidence identifying similarities and differences, including the comparisons with the faux shrug and shirt. What it excluded was their personal conclusions about the impression made on them.
Delivering the judgment on 2 April 2014, Mr Justice O’Donnell said the “informed user” under the design regulation is a notional construct, not a real person whose opinion a witness can supply. Evidence can help the court identify relevant features, and a witness’s level of expertise does not by itself make that evidence inadmissible or unhelpful. The court must ultimately make its own assessment.
The Supreme Court accepted that expert conclusions can sometimes be useful if the reasons behind them are clear. But it held that a court may follow the traditional rule reserving the ultimate issue for the judge. In design disputes, the witnesses’ personal impressions added little beyond the factual reasons they gave. Their conclusions also depended on legal approaches to the comparison and the meaning of individual character that the High Court had not accepted.
The court concluded that excluding those personal impressions did not affect the outcome in this case. It rejected Dunnes’ challenge on this evidential issue. The judgment did not resolve the questions referred to the CJEU, whose decision was still awaited.