Advocate General Wathelet’s opinion in Karen Millen Fashions Ltd v Dunnes Stores (Case C-345/13) proposes answers to the questions posed by the Irish Supreme Court in this long-running saga. The opinion clarifies the test for protection of an unregistered design and the burden of proof in establishing infringement.

In the first question, the court asked whether Karen Millen‘s designs must be assessed for protection purposes against individual known designs considered separately or whether they must have a different overall impression to any combination of known design elements.

The nub of the question was whether designers can bring together various known design elements to produce something which is protected by unregistered design rights, which was Karen Millen’s contention. If combining existing elements is not protectable, designers seeking protection would have a difficult task to show that their designs differ from the design corpus, the body of existing design elements, which is exactly the test which Dunnes Stores proposed. This would logically require the use of some entirely new design element before a design would be afforded protection.

The advocate general came down in favour of Karen Millen’s position – that combinations of known elements can be protectable as having a different overall impression on the informed user compared to the earlier individual designs. The assessment is against one or more individual designs, not specific or isolated features taken from several designs.

The advocate general reached this conclusion by examining the different language versions of the Council Regulation on Community Designs (6/2002), which refer to a comparison against a single other design (in the German version, for example), several designs (in the Dutch version, for example) or a potential body of designs (in the Spanish, English, French and Italian versions). He concluded that none of these required a comparison against an abstraction of certain specific features from earlier designs in order to create a theoretical object of comparison, something that does not exist in real life. He considered that even the language versions which refer to a ‘body’ of designs implied a comparison with precisely defined objects (individual designs) rather than the creation of an amalgam of features of earlier designs.

The first question and answer were as follows:

Question:

“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 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?”

Answer:

“Article 6 of [Regulation 6/2002] is to be interpreted as meaning that, in order for a design to be considered 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 individually and viewed as a whole, not by an amalgam of various features of earlier designs.”

The advocate general considered that this answer was in line with existing Community case law which held that the comparison can be direct but, where this is impracticable or uncommon, it can be an indirect comparison based on an imperfect recollection of the designs (see PepsiCo v Grupo Promer Mon Graphic (Case C-281/10 P)).

He interpreted this reference to indirect comparison to mean that the object of comparison could be physically absent, rather than the comparison of features being indirect. Without explaining the link between these two notions, he went on to say that the reference to direct comparison must therefore mean that each design is viewed as a whole.

An interesting point arises from this, namely that a different overall impression from earlier designs is both a part of the requirements for design protection and a part of the test of infringement. If the earlier design can incorporate pre-existing design elements and still have a different overall impression from those pre-existing designs, how will this affect a defendant who takes design elements from different designs of a single designer but argues that these create a different overall impression? Perhaps this is where the imperfect recollection of the consumer might come into play in considering these designs as a collection, a true “body of designs”.

The second question was more easily dealt with by the advocate general. Dunnes Stores argued that Karen Millen must prove that its designs had individual character – namely, that they had a different overall impression from all earlier designs, which is a practical impossibility. The advocate general held that the right holder need only indicate the element or elements of its design which give it individual character.

The second question and answer were in full:

Question:

“Is a Community design court obliged to treat an unregistered Community design as valid for the purposes of Article 85(2) of [Regulation 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?”

Answer:

“In order for a Community design court to treat an unregistered Community design as valid, for the purposes of Article 85(2) of Regulation 6/2002, the right holder need only prove when his design was first made available to the public and indicate the element or elements of his design which give it individual character.”

The opinion is likely to be welcomed by rights holders in this often neglected area, particularly as it clarifies that a combination of existing design elements can be protectable and it also clears up the issue of the burden of proof of individual character. Now it remains to be seen whether the Court of Justice of the European Union’s judgment will be cut from the same cloth.

This article first appeared on WTR Daily, part of World Trademark Review, in April 2014. For further information, please go to www.worldtrademarkreview.com.