Advocate General Wathelet has just issued his opinion in Case C-345/13, Karen Millen Fashions v Dunnes Stores (available here), in which he proposed answers to the questions posed by the Irish Supreme Court in the area of unregistered designs. Essentially he said that a design can infringe if it has the same overall impression to the informed user as one or more earlier designs taken individually and viewed as a whole, but not by reference to an amalgam of various features of earlier designs.  So one can compare the contested item against a body of designs but not against a mosaic of different features taken from those designs where this is something which does not actually exist in real life. He also proposed that 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, and that the right holder does not have to prove that the design has individual character (which one would think could be an almost impossible task in practice in any event).

The opinion is likely to be welcomed by rights holders in this often neglected area, particularly as it supports a comparison with a body of designs as a valid test and it also clears up the issue of proof of individual character.

Those questions and answers in full:

Question 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:

  1. any individual design which has previously been made available to the public, or
  2. any combination of known design features from more than one such earlier design?

Advocate General’s Answer: Article 6 of Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs 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.

Question 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?

Advocate General’s 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 No 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.