In the recent case of Karen Millen Fashions Ltd v Dunnes Stores, Dunnes Stores (Limerick) Ltd, Case C-345/13, the Court of Justice of the European Union (CJEU) ruled on two questions regarding unregistered design rights, referred to it by the Irish Supreme Court. The decision will be of particular interest to the fashion industry. The case concerned the interpretation of the Community Designs Regulation (6/2002/EC).
The unregistered Community design right protects designers from having their products copied without their consent. The Regulations state that a design will be protected by an unregistered Community design right provided:
- it has 'individual character'; and
- the designer can 'indicate what constitutes the individual character of his or her design'.
A design is considered to have 'individual character' if the overall impression it produces on the 'informed user' (a person who is familiar with the products in the field but not necessarily an expert) differs from the overall impression produced on such a user by any design which has previously been made available to the public (Article 6 of the Regulations).
Karen Millen Fashions Ltd (KMF) is a well-known fashion retailer. In 2005 KMF placed on sale in Ireland a striped shirt and a black knit top. Dunnes Stores, a women's clothing retailer based in Ireland, purchased these garments and copied them, selling these copies in its outlets in 2006.
Dunnes admitted to copying the garments but contested KMF's claim for unregistered design right infringement on the grounds that:
- the garments did not have individual character within the meaning of the Regulations because the design contained a combination of elements from previous designs; and
- KMF could not prove that the design of the garments had individual character.
KMF's action was upheld and the decision was appealed. On appeal it fell to the Irish Supreme Court to refer two questions to the CJEU:
- When considering the individual character of a design, is the overall impression it produces on the 'informed user' 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 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 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 answer to the first question, the CJEU held that individual character was a question of comparison to previous individual designs, rather than to a combination of features from a number of earlier designs.
In answer to the second question, the court had no trouble in finding that the design holder only has to indicate what constitutes the individual character of the design and does not have to prove that the design has individual character.
Although the decision is not surprising, it makes clear that for an unregistered design to be presumed valid, the design owner need only identify the features of the design which give it individual character. The owner does not have the burden of proving that the design has individual character. Instead the burden falls on the defendant, who must prove that the contested design does not have individual character.
This is welcome news for mid- to high-end designers who can benefit from the protection offered by the Regulations, particularly where their design products have a short shelf life, making formal design registration unappealing. Conversely, the case highlights that retailers have to be careful when attempting to replicate current fashions to sell at a cheaper price.