CJEU rules on unregistered design

Posted by Jill Bainbridge on
Karen Millen, a UK based company, manufactures and sells women's clothing and has retail outlets in, amongst other places, Ireland. Dunnes, the Defendant, is another large retailer, in Ireland of women's clothing. In 2005, Dunnes made copies of Karen Millen's garments including a black knit top and striped shirts and began selling these garments, under its 'Savida' label, in 2006. Karen Millen brought proceedings against Dunnes in 2007 claiming infringement of its unregistered Community designs in the garments pursuant to the Community Design Regulation 6/2002 (the Regulation). The case was first heard before the Irish High Court.

At first instance, Dunnes openly conceded that it had produced new garments which were copies of Karen Millen designs, however they contended that Karen Millen's designs were merely composed of features drawn from various earlier designs and that its unregistered Community designs were invalid on the basis that its garments lacked 'individual character'. Dunnes also stated that the onus was on Karen Millen to prove that its unregistered Community designs had individual character.

The Irish High Court found in favour of Karen Millen on the grounds that Dunnes had failed to prove that the requirement of individual character had not been fulfilled by Karen Millen contrary to Article 6 of the Regulation. Dunnes appealed.

The appeal was allowed by the Irish Supreme Court who subsequently referred the issues to the European Court of Justice of the European Union (CJEU). The questions referred to the CJEU were as follows:

  • If Article 6 of the Regulation is to be interpreted as meaning that the requirement of individual character would be fulfilled if the overall impression the design created on a consumer is different from the impression created on them by an earlier design. This 'created impression' is in relation to designs taken both individually or by a combination of features taken in isolation from previous designs.
  • Whether Article 85(2) of the Regulation should be interpreted as meaning that the right holder of the design had to prove individual character (within the meaning of Article 6) or whether they needed only to indicate which elements of the design created individual character.

Question 1

The CJEU held that there was "…nothing in the wording of Article 6 of the Regulation to support the view that the overall impression referred to therein must be produced by such a combination". Thus, it was held that Article 6 should be interpreted as meaning that a design has individual character if the overall impression produced by the design on the informed user is different from that produced by one or more earlier designs taken individually. A combination of features was irrelevant.

Question 2

Article 85(2) of the Regulation states:

"…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..."

This provision has two elements: to meet the conditions in Article 11 of the Regulation; and to indicate what constitutes the individual character of the unregistered Community design. Article 11 of the Regulation says:

“A design which meets the requirements under section 1 shall be protected by an unregistered Community design for a period of three years as from the date on which the design was first made available to the public within the Community”.

The Court held that Dunnes interpretation of the provisions in question was incompatible with European law. The provision does not mean that the holder of the right had to provide evidence of all the conditions expressed in section 1 but was required only to indicate the element(s) of the design concerned which give it individual character. As such the CJEU held Article 85(2) of the Regulation must be interpreted as meaning that, in order for a Community design court to treat an unregistered Community design as valid, the right holder of that design need only indicate what constitutes the individual character of that design, i.e. "what, in his view, are the element or elements of the design concerned which give it its individual character”.

This decision is significant to fashion designers and retailers whose only means of protection is by way of unregistered design rights. Registering designs in the fashion industry are usually unjustifiable due to the cost and time involved coupled with the unpredictable nature of fashion. This decision therefore strengthens the protection given by the courts to fashion designers, as it has clarified and reduced the threshold that designers need to pass in order for their goods to be deemed to have individual character.

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For more information on registered and unregistered design rights contact Blake Morgan Intellectual Property team

About the Author

Heading up the firm’s Intellectual property group and Trade Mark prosecution team, Jill specialises in IP and IT disputes. She also heads the Commercial Litigation teams in Wales and the South.

Jill Bainbridge
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