The Court of Justice of the European Union (“CJEU”) has recently given its judgment on unregistered Community designs in the well know Karen Millen Fashions Ltd v Dunnes Stores case (C-345/13). As most readers of this blog are probably aware, the case dealt with the “individual character” required, under Council Regulation no. 6/2002, in order for Community designs to enjoy protection.

Here are the facts. In 2005, the English company Karen Miller Fashions (“KMF”), which produces and sells women’s clothing, designed and placed on sale in Ireland a striped shirt and a black knit top. Examples of those garments were purchased by representatives of Dunnes Stores (“Dunnes”), an Irish retail chain, from one of KMF’s Irish outlets. Dunnes then had copies of the garments manufactured outside Ireland and put them on sale in Ireland in late 2006.

In January 2007, KMF brought proceedings against Dunnes in the Irish courts, seeking to have Dunnes enjoined from using its unregistered designs on the shirt and top in issue, and ordered to pay damages for the unauthorised use of the same. Dunnes did not contest that it had copied the KMF garments and acknowledged that the unregistered Community designs of which KMF claimed to be the holder were new. However, Dunnes stated that both designs lacked individual character and that KMF had failed to prove their individual character, hence why KMF’s claims had to be dismissed. In particular, in Dunnes’ opinion the individual character should have been assessed by reference not only to one or more individual designs made available to the public previously, but also by a combination of features taken in isolation and drawn from a number of earlier designs.

The Supreme Court of Ireland therefore decided to refer two questions to the CJEU for a preliminary ruling, concerning the interpretation of Articles 6 and 85(2) of Council Regulation No 6/2002 on Community designs. As it is known, art. 6 provides that a design shall be considered to have individual character if the overall impression it produces on the informed user differs from the overall impression produced on such a user by any design which has been previously made available to the public. Art. 85(2) establishes a presumption of validity of unregistered Community designs on condition, amongst others, that “the right holder … indicates what constitutes the individual character of his Community design”.

The Supreme Court of Ireland basically asked the CJEU whether:

  1. in order to assess a design’s individual character, one should consider : (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 designs;
  2. in order for an unregistered Community design to be considered as valid for the purposes of Article 85(2),the right holder shall merely indicate what constitutes the individual character of the design or is obliged to prove that the design has individual character.

The CJEU answered to the both questions in Karen Miller’s favour. The CJEU’s answer to the first question, regarding the interpretation of the Article 6 of the Regulation, was 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 not by a combination of features taken in isolation and drawn from a number of earlier designs.

The answer to the second question was that Article 85(2) of Regulation No 6/2002 must be interpreted as meaning that, in order for a Community design court to treat an unregistered Community design as valid, the right holder of that design is not required to prove that it has individual character within the meaning of Article 6 of that regulation. The right holder needs only indicate what constitutes the individual character of that design, that is to say, indicates what are the elements of the design concerned which give it its individual character.

The decision is good news in particular for creative fashion designers: unregistered designs are an important IP right for the fashion industry since the lives of fashion designs are often short and for that reason companies often avoid to register them.

(Written in collaboration with Silvia Laitila)