15 Jul 2014

Designers 1 - Copycats 0, a victory for unregistered design holders

Intellectual property alert email

The recent decision of the Court of Justice of the European Union ("CJEU") in Karen Millen Fashions Ltd v Dunnes Stores (Case C-345/13) provides helpful clarification on assessing "individual character" in relation to unregistered Community designs and the burden of proof for such designs to be considered valid.


Dunnes Stores (an Irish retailing group) admitted copying a striped shirt and a black knit top, designed by the women's clothing retailer Karen Millen, and putting them on sale. After Karen Millen won its case in the Irish High Court, Dunnes appealed to the Irish Supreme Court on the basis that Karen Millen had no unregistered Community design rights in relation to the garments, as: (i) the garments had no "individual character" within the meaning of Article 6 of the Community Design Regulation 6/2002 (the "CDR"); and (ii) Karen Millen had not proved, as a matter of fact, that the garments had individual character, and it was required to do so.


The Irish Supreme court referred two questions to the CJEU and on 19 June 2014 the court (following the opinion of the Advocate General from 2 April 2014) held that:

1 For an unregistered Community design to have individual character (for the purpose of Article 6 of the CDR) the overall impression which that design produces on the informed user must be different from that produced on such a user by one or more specific, individualised, defined and identified designs from among all designs which have been made available to the public previously, and not by mosaicing a combination of features taken in isolation and drawn from a number of earlier designs.

2 Unregistered Community designs benefit from a presumption of validity, so long as the holder of the design proves when its design was first made available to the public and indicates the element or elements of its design which give that design individual character (and which elements therefore should be protected). There is no need for the design holder to prove, initially, that the design has individual character (ie. that it satisfies all of the conditions in Section 1 of the CDR).


This decision is good news for holders of unregistered Community designs and is of particular importance for those in the fashion industry, where items typically have a short market life and are susceptible to being copied.

The decision makes it easier for rights holders to rely on and enforce their unregistered design rights and means that if, for example, a clothes designer produces a garment with a combination of design features, the fact that those design features have been seen before on separate individual items will not prevent the design from being protectable by unregistered design rights. Such a design would be enforceable against a party which copies the design or produces one that creates the same overall impression.


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