The long-running litigation taken by Karen Millen, the UK high-street fashion company, against Dunnes Stores over the alleged infringement of unregistered Community design rights in items of women’s clothing is a step closer to being decided now that an Advocate General of the EU Court of Justice has delivered his opinion on the legal issues in the case.
The EU Community Designs Regulation provides for two separate Community design rights: a registered Community design and an unregistered Community design. The unregistered Community design is intended in particular for products having a short market life, such as clothing.
In 2007, Karen Millen claimed successfully in the Irish High Court that it had unregistered Community design rights in certain items of women’s clothing, namely a striped shirt and a black top, and that Dunnes Stores had infringed these by copying the designs. While Dunnes Stores did not dispute that it had copied the garments, it appealed the High Court’s finding that Karen Millen had unregistered Community design rights in the garments, arguing that the garments lacked the necessary "individual character".
The Supreme Court referred a number of questions on the proper interpretation of the EU Regulation, and the phrase “individual character”, to the Court of Justice of the European Union. The judgment of the EU Court is awaited. However, in an opinion delivered on 2 April 2014, an Advocate General, advisor to the EU Court, expressed the view that for a design to have "individual character", the overall impression it makes on an informed user must be different from that produced on the same user by “one or more earlier designs taken individually and viewed as a whole, not by an amalgam of various features of earlier designs.”. This point was argued by Karen Millen as it is considerably easier to prove that the garments in question had "individual character” on this basis rather than having to do so by reference to a variety of earlier designs.
It is open to the EU Court to take a different view to the Advocate General, but those recommendations are generally followed by the Court. The decision of the Irish Supreme Court will be made when the EU Court confirms its position.
In the meantime, the Irish Supreme Court has rejected a claim by Dunnes Stores that the High Court had ignored the substance of evidence given by its witnesses.
Both developments in this ongoing dispute are in favour of Karen Millen but we have to await the decision of both the EU Court and the Irish Supreme Court before the matter is fully resolved.