Background

An Advocate General of the Court of Justice of the European Union (CJEU) has given assistance that may influence how the requirement for "individual character" will be interpreted in unregistered design right (UDR) cases in which the validity of UDR is placed in issue.

Karen Millen Fashions designed and placed on sale garments which were copied and sold by Dunnes Stores in the Republic of Ireland, resulting in the former commencing infringement proceedings in the Irish High Court in January 2007 against the latter.

While Dunnes Stores conceded that they copied the garments, they disputed that Karen Millen was entitled to protection of the said garments by virtue of unregistered Community design rights. Dunnes argued that the garments lacked "individual character".

The Irish High Court ruled in favour of Karen Millen; and Dunnes Stores appealed to the Irish Supreme Court. The latter referred two questions to the CJEU for a preliminary ruling.

The Referred Questions

The questions were:

  1. In consideration of the individual character of a design which is claimed to be entitled to be protected as an unregistered Community design for the purposes of [Regulation No 6/2002] is the overall impression it produces on the informed user, within the meaning of Article 6 of that Regulation, to be considered by reference to whether it differs from the overall impression produced on such a user by
  1. any individual design which has previously been made available to the public, or
  2. any combination of known design features from more than one such earlier design?  
  1. Is a Community design court obliged to treat an unregistered Community design as valid for the purposes of Article 85(2) of the [Regulation No 6/2002] where the right holder merely indicates what constitutes the individual character of the design or is the right holder obliged to prove that the design has individual character in accordance with Article 6 of that Regulation?

Opinion

Advocate General Wathelet delivered an opinion on 2 April 2014. In summary, the Advocate General concluded that:

  1. In order for a design to be regarded as having individual character, the overall impression which that design produces on the informed user must be different from that produced by earlier designs. This impression is taken individually and viewed as a whole, and must not be an amalgam of various features of earlier designs.  
  2. There is no burden on the right holder to produce proof of the individual character of a design to show entitlement to unregistered Community design protection, as long as the holder both proves when the design was first made available to the public and indicates the elements of the design which give it individual character.

Comment

While the foregoing might signify good news to designers and retailers who rely on unregistered design protection, an Advocate General's opinion while persuasive is not binding on the CJEU. It therefore remains to be seen whether the CJEU, in its judgment, will follow or deviate from the Advocate General's advice.