An Advocate General of the CJEU has recently handed down his Opinion following a referral from the Irish High Court in the case of Karen Millen v Dunnes Stores. The CJEU were asked whether, for the purposes of design right infringement, the "individual character" of a design should be assessed against one or more earlier designs taken separately and viewed as a whole, or against an amalgamation of various features from earlier designs.

What is the background to this case?

This case involves a long-running saga between fashion retailer Karen Millen and Irish retail chain Dunnes Stores. Karen Millen brought proceedings against Dunnes Stores in the Irish High Court back in 2007 claiming that Dunnes Stores had infringed the unregistered Community design rights in a knitted jumper and striped shirt marketed by Karen Millen.

Dunnes Stores admitted that it copied the designs but denied infringement of Karen Millen’s unregistered Community design right. Dunnes Stores asserted that the garments did not have a sufficiently ‘individual character’ to be afforded protection under Council Regulation (EC) 6/2002 (the Regulation), and that in any event the evidential burden as to whether the garments possessed an individual character was on Karen Millen.

In particular, Dunnes Stores contended that the copied garments comprised a combination of existing design features that could be identified from various designs within the fashion industry prior to Karen Millen’s designs. Karen Millen contended that ‘individual character’ was not to be assessed through a comparison with an amalgamation of existing designs, but that a Community design should be compared against individual existing designs in their entirety.

Karen Millen was successful in its infringement claim before the Irish High Court. Dunnes Stores appealed the decision to the Irish Supreme Court and the case was then referred to the Court of Justice of the European (CJEU) for a decision on the interpretation of the Regulation. Advocate General Wathelet has just handed down his Opinion that in order for a design to have individual character, 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 earlier designs taken separately viewed as a whole, not by a composite of various features from earlier designs.

What is your view of how the Advocate General characterised the prior art as needing to be whole designs rather than an amalgamation of design features?

I agree with the approach adopted by the Advocate General. This builds on, and is line with, existing CJEU case law regarding the interpretation and parameters of ‘individual character’.

Probably the most convincing justification provided by the Advocate General in support of his approach is contained in the following extract from his Opinion:

‘[None of the translated versions of the Regulation]…permit the abstraction of certain specific features from one or more earlier designs in order to create a theoretical object of comparison.’

The Advocate General seems to suggest that if art 6 was intended to be interpreted as allowing for the creation of a ‘theoretical object of comparison’, the Regulation would expressly allow for the amalgamation of previously disclosed design features. The Regulation does not however allow for it and such a construction should not be implied.

How does the Advocate General’s view on this point fit with previous CJEU cases?

I do not believe the Advocate General’s Opinion is particularly controversial and in fact it closely mirrors the findings of the General Court of the CJEU in Shenzhen Taiden v OHIM: T-153/08, a decision from 2010. In that case the court found:

‘A comparison should be made between, on the one hand, the overall impression produced by the contested Community design and, on the other, the overall impression produced by each of the earlier designs legitimately relied on by the party seeking a declaration of invalidity.’

Advocate General Wathelet quoted this passage with approval in finding that comparisons should be made with ‘each’ individual garment presented, not a hypothetical amalgamation of features from different designs.

What is your view of how the Advocate General characterised a design owner having to give an indication of individual character rather than having to prove it?

Article 85(2) creates a presumption of validity in respect of an unregistered Community design right in an infringement action, provided that the provisions contained within art 11 are met and the holder of the design right can ‘indicate what constitutes the individual character of the design’. Article 11 states that a design right will be valid where the requirements of section 1 (arts 3–9) are met, and the design has been made available to the public within the last three years.

Article 6 provides that a design must be shown to produce a different overall impression on informed users. So there appears to be an inherent conflict in art 85(2), as the requirement only to ‘indicate’ the individual character of the design does not fit with the more onerous art 6.

The Advocate General dealt with this apparent conflict by opining that if one was to read art 85(2) and art 11 as Dunnes Stores had (ie that in order to be afforded protection a designer would need to prove compliance with arts 3–9), then in order for a design to be protected, the right-holder would also need to prove that they had met the requirements of ‘visible features’, ‘normal use’, ‘novelty’ and ‘disclosure’. To require evidence of the aforementioned would undermine the whole purpose of the presumption of validity afforded under art 85.

If this Opinion is followed in the CJEU decision, who will be the wider industry winners and losers?

Due to the transient nature of fashion which militates against the cost of registered designs, the unregistered Community design which lasts for three years is an integral part of a fashion designer/retailer’s IP tool kit. In the event that the CJEU affirm the Advocate General’s Opinion, the undoubted winners will therefore be mid to high end fashion designers and retailers. This approach gives them comfort that provided a new design possesses an individual character when contrasted with existing whole designs, they will be able to enforce a right in that design against those who copy it.

By contrast, designers and retailers at the lower end of the spectrum who make their margins by selling lower quality versions of high-end products will need to be wary of such a decision. The Advocate General has effectively endorsed a relatively low threshold in respect of the ‘individual character’ test.

This article was first published on Lexis®PSL IP & IT on 10 April 2014 and is in a Q&A format with Kate Beaumont.