The Court of Justice of the European Union (CJEU) has followed the Opinion of Advocate General Wathelet, delivered in April 2014, answering questions referred to it by the Irish Supreme Court in Karen Millen’s favour. The questions concerned how the individual character of a design which is claimed to be entitled to be protected as an unregistered Community design is to be assessed.
Karen Millen is a UK registered company which produces and sells women’s clothing in a number of retail outlets and in its own stores in Ireland. Dunnes Stores also has a retail business in women’s clothing in Ireland. Karen Millen brought proceedings against Dunnes Stores in Ireland in 2007, claiming that a black knit top, a blue shirt and a brown shirt offered for sale by Dunnes Stores under its ‘Savida’ label in 2006 infringed its unregistered Community designs in garments which it had offered for sale in Ireland in 2005. At the trial before the High Court of Ireland, Dunnes Stores did not deny that its top and shirts had been produced by copying Karen Millen’s designs. However, it denied that Karen Millen was entitled to unregistered Community designs in its top and shirts on the grounds that: (i) The Karen Millen garments did not have individual character, and (ii) the Design Regulation required Karen Millen to prove, as a matter of fact, that the garments had individual character. The High Court of Ireland refused to make a reference to the CJEU and found that Dunnes Stores had failed to establish that Karen Millen’s top and shirts did not fulfil the individual character requirement in Article 6. Dunnes Stores appealed to the Irish Supreme Court which referred the questions below to the CJEU.
“Unregistered designs are an important IP right for the fashion industry, given the short lives of fashion designs which may not justify the cost of design registrations”
Questions referred to the CJEU
The questions referred to the CJEU by the Irish Supreme Court were as follows:
- 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 Council Regulation (EC) No 6/2002 of 12th December, 2001 on Community designs (the “Design Regulation”), 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
- any individual design which has previously been made available 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 for the purposes of Article 85(2) of the Design Regulation 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 CJEU has ruled as follows:
- In order for a design to be considered to have individual character, the overall impression it produces on the informed user must be different from that produced on such a user not by a combination of features taken in isolation and drawn from a number of earlier designs, but by one or more earlier designs, taken individually.
- In order for a Community design court to treat an unregistered Community design as valid for the purposes of Article 85(2) of the Design Regulation, the right holder need only indicate the element or elements of the design concerned which give it individual character.
The CJEU’s ruling is therefore in Karen Millen’s favour in respect of both questions referred.
The CJEU’s decision will be welcomed by Karen Millen and other high end fashion designers and retailers who rely on unregistered design rights in their designs. Unregistered designs are an important IP right for the fashion industry, given the short lives of fashion designs which may not justify the cost of design registrations. The CJEU’s decision bolsters the protection afforded to designs which are new and have individual character, and require lower-end, ‘fast fashion’ retailers to take even greater care when producing similar designs for sale at a lower price point, given the high threshold for challenging the validity of unregistered design rights.