In a victory for the fashion industry, the Court of Justice of the European Union (CJEU) has issued its judgment in Case C-345/13Karen Millen Fashions Ltd v Dunnes Stores, Dunnes Stores (Limerick) Ltd. Following the Advocate General's opinion released in April, the CJEU gave guidance on how to assess a design's "individual character", and confirmed that those wishing to enforce unregistered Community design rights are not required to prove individual character.

This was a case brought by Karen Millen, the high end high street clothes retailer, against Irish retailer Dunnes, in respect of a shirt which Karen Millen had put on the market in 2005. Dunnes had sold copies of this shirt in Ireland in 2006, and Karen Millen commenced proceedings for infringement of unregistered Community design rights in the shirt (and in a black top which it also claimed had been copied), at the High Court of Ireland in January 2007. Dunnes disputed that Karen Millen's designs were protected, on the basis that they had no individual character within the meaning of Article 6 of the Community Designs Regulation (No/ 6/2002), because they did not produce a different overall impression on the informed user, when compared with any combination of design features present in existing shirt designs. Dunnes also asserted that it was for Karen Millen to prove, as a matter of fact, that the designs did have individual character

The questions referred to the CJEU were as follows:

  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: (a) any individual design which has previously been made available to the public, or (b) any combination of known design features from more than one such earlier design?
  2. Is a Community design court obliged to treat an unregistered Community design as valid for the purposes of Article 85(2) of [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?"

The Advocate General issued its opinion in April 2014, concluding that individual designs must be considered in isolation when assessing a new design's individual character, and that the right holder need not prove individual character.

The CJEU, following the Advocate General's opinion, held that in respect of the first question, reference to earlier designs must be made by reference to “specific, individualised, defined and identified designs”, not by a combination of features taken in isolation and drawn from a number of different designs. In respect of the second question, the CJEU held that the right holder is not required to prove that the design in question has individual character within the meaning of Article 6, but only to "indicate what constitutes the individual character of that design", by indicating what, in the right holder's view, "are the element or elements of the design concerned which give it its individual character". In coming to this decision, the CJEU noted Dunnes' attempt to impose a higher burden of proof on Karen Millen was incompatible with the "objective of simplicity and expeditiousness which […] underpins the idea of protection of unregistered Community designs".

This ruling will be welcomed by designers of products with short lifespans, in which the expense of having to prove the individual character of a design would constitute a major disincentive to enforcement. In respect of the first question, the fashion industry in particular will benefit from confirmation that individual character is to be assessed on the basis of separate designs, taken individually, given the extent to which new fashion designs are often influenced by a large number of elements of various existing designs.