On 19 June 2014, the Court of Justice of the European Union ("CJEU") handed down its judgment in the long running dispute between Karen Millen Fashions Ltd v Dunnes Stores (C-345/13) in a case involving unregistered Community designs ("UCD"). The CJEU answered two questions referred from the Irish Supreme Court in relation to individual character, finding that the overall impression which a design produces on an informed user should be in reference to one or more earlier designs, not an amalgamation of features taken in isolation and drawn from a number of earlier designs.
- The CJEU's decision clarifies the law in relation to the individual character required for UCDs.
- In considering whether a new design has individual character, it will be sufficient to compare it to one or more complete existing designs (looking at such designs in their entirety), as opposed to combining individual features taken in isolation from several different earlier designs.
- Parties seeking to enforce their UCD rights should take comfort from the decision as the CJEU has set a relatively low threshold for asserting individual character. It is not a requirement to prove that a design has individual character in infringement proceedings – it will suffice for the right holder to indicate the element/s of the design which give the design its individual character.
- Those in the mid to high end fashion market are likely to welcome this decision whereas those at the lower end of the market will need to be careful when it comes to selling cheaper 'look-a-like' versions of garments.
Karen Millen designed a striped shirt and a black knit top which went on sale in its Irish stores in late 2006. Dunnes admitted that it had purchased the items and had copies made outside of Ireland, which then went on sale in its retail outlets later in 2006. The Karen Millen garments (on the left) together with the allegedly infringing Dunnes garments (on the right) are set out below.
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Karen Millen sued Dunnes for UCD right infringement in the Irish High Court in 2007. UCDs are popular in the fashion industry where designs often have a short market life due to the transient nature of fashion trends and it is generally felt that the 3 year term which UCD offers is sufficient. In order to qualify for a UCD, a design must be new and have individual character. Under Article 5.1 of Council Regulation (EC) No. 6/2002 (the "Regulation"), a design shall be considered to be new if no identical design has been made available to the public. Under Article 6.1 of the Regulation, a design will have individual character, if the overall impression it produces on the informed user differs from the overall impression produced on such a user by any design which has been made available to the public.
In defending the proceedings, Dunnes conceded that the designs as claimed by Karen Millen were new and that it had copied these designs but denied any infringement, claiming that the garments lacked the necessary individual character in order to qualify for UCD. Dunnes argued that the Karen Millen designs contained a combination of design features taken from earlier designs. The High Court found that Dunnes had infringed Karen Millen's UCDs and Dunnes appealed to the Irish Supreme Court. The Irish Supreme Court referred the following questions to the CJEU:
- 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
- any individual design which has previously been made available to the public, or
- any combination of known design features from more than one such earlier design?
- Is a Community design court obliged to treat an unregistered Community design as valid for the purposes of Article 85(2) of the Regulation 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?
Judgment of the CJEU
In relation to the first question referred by the Irish Supreme Court, there was nothing in the wording of the Regulation to support Dunnes' argument that the overall impression created on an informed user could be derived from looking at a combination of numerous individual elements of existing designs. The CJEU found that Article 6 of the Regulation must be interpreted in relation to "one or more specific, individualised, defined and identified designs from among all the designs which have been made available to the public previously".
Article 85 (2) of the Regulation proscribes a presumption of validity for UCDs in infringement proceedings and Community design courts should treat a UCD 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. However, a defendant may contest the design's validity by way of a plea or with a counterclaim for a declaration of invalidity.
In relation to the second question, the CJEU found that Article 85(2) must be interpreted to mean that in order to treat a UCD as valid, the right holder is not required to prove individual character in the design within the meaning of Article 6 of the Regulation, but need only indicate what constitutes the individual character of that design by indicating the element/s of the design concerned which give it its individual character. The wording in Article 85(2) is "unambiguous and cannot be interpreted as entailing an obligation to prove that the design concerned has individual character".
The decision of the CJEU is not particularly controversial but it is interesting for its consideration of the individual character test, in light of the fact that cases involving UCDs are rarely litigated. It seems likely that the Irish Supreme Court will follow the Hig