The recent Opinion of Advocate General Wathelet delivered on the 2 April 2014 in Case C-345/13Karen Millen Fashions Ltd v Dunnes Stores, Dunnes Stores (Limerick) Ltd looks set to clarify a number of issues concerning unregistered Community design rights, should the European Court of Justice (ECJ) agree with the Advocate General’s conclusions when it subsequently hands down its judgment.

The case in question dates back to January 2007 when high-street fashion retailer Karen Millen initiated infringement proceedings against the Irish retail chain Dunnes Stores, claiming that the latter had copied certain of their clothing designs, which Millen claimed were protected by unregistered Community design rights. 

Millen sought both injunctions and damages and were initially victorious in the Irish High Court, but Dunnes Stores then appealed the ruling to the Irish Supreme Court.

Despite not disputing the fact that they had copied Millen’s designs of a striped shirt (in both brown and blue versions), as well as a black knit top, on appeal Dunnes questioned the validity of Millen’s unregistered Community design rights in these garments. Dunnes claimed that the clothing items in question had no ‘individual character’ (and therefore did not produce a different overall impression to any other earlier design) and that the onus was on Millen to prove that this was the case.

The Irish Supreme Court then sought guidance from the ECJ on two points of unregistered Community design law: the scope of the comparative test for assessing individual character and the issue of which party bears the legal burden for proving or disproving the existence of individual character in such designs.

In his Opinion, Advocate General Wathelet favoured Millen’s stance: on the question of individual character, the Advocate General stated that the overall impression of a design should be different to one or more earlier designs taken individually, and should not, as Dunnes had tried to argue, be based on an amalgamation of various features drawn from existing designs.

On the second question regarding the burden of proof, the Advocate General adopted relevant law set out in the Community Design Regulation which provides that design rights, both registered and unregistered, are presumed valid unless challenged. Placing the burden of proof of individual character on the owner of an unregistered Community design would, the Advocate General considered, contradict the nature and purpose of unregistered Community design rights. In the Opinion of the Advocate General, it should be sufficient for a holder to prove when his design was made available to the public and indicate the element or elements that give the design individual character. Unregistered Community design rights are deliberately not subject to the burden of formalities required for registered Community designs, but consequently protect novel designs for the much shorter period of three years from when they are first made available to the public.

The Opinion of the Advocate General reinforces the fundamental essence of unregistered Community design rights and the latter’s advantages over Registered Community Designs for certain sectors such as the fashion industry. Pending the final ruling of the ECJ, the fashion industry will no doubt welcome the Advocate General’s Opinion in preserving unregistered design rights as the most effective means of ensuring short-term protection for new designs.