One of the biggest problems designers face today is the production of copycat items by their competitors all over the world. To prevent copycat items appearing in store windows in the UK and Europe the best way for designers to protect their designs is to secure a Community design registration. However, with the costs and administrative efforts involved, this is simply not practicable for some designers, such as fashion retailers, who have many designs in store at any one time, many with a relatively short market life.

The alternative way for designers to protect their designs is to rely on unregistered design rights. The relevant EU law provides that a design is to be protected to the extent that it is new and has individual character.

An unregistered design will be considered new if no identical design has previously been made available to the public. 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 was previously made available to the public.

On 19 June 2014, the Court of Justice of the European Union (“CJEU”) delivered a judgment clarifying the scope of the definition of individual character and providing increased protection for designs.

Background

The case heard by the CJEU involved a legal battle between the fashion retailer, Karen Millen Fashions (“KMF”) and Dunnes Stores in Ireland (“Dunnes”). This battle began in 2005, when KMF produced three garments: a black knit top, a striped shirt in blue and the same striped shirt in stone brown (the “Garments”). Representatives from Dunnes purchased the Garments at a KMF outlet in Ireland. Dunnes then copied the Garments and began selling them in stores in late 2006.

KMF claimed that they held unregistered Community design rights in the Garments and commenced proceedings in the Irish High Court on 2 January 2007.

Despite admitting that they copied the designs, Dunnes submitted that KMF was not entitled to unregistered design rights in the items on the grounds that:

  1. the items did not have individual character, and
  2. the Regulation required KMF to prove, as a matter of fact, that the items had individual character.

The Irish High Court upheld KMF’s claim, finding that Dunnes had failed to establish that the Garments did not meet the individual character requirement. Dunnes appealed this decision to the Irish Supreme Court. The Irish Supreme Court stayed the proceedings to refer two questions to the CJEU.

Questions Referred

The questions referred to the CJEU were:

  • In order for a design to have individual character, is the overall impression it produces on the informed user to be different from that produced on such a user by one or more earlier designs, taken individually, or by a combination of features taken in isolation and drawn up from a number of earlier designs?
  • 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?

The CJEU decision

The CJEU ruled:

  • In order for a design to be considered as having an individual character, the overall impression which that design 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.
  • The Regulation must be interpreted as meaning that the right holder is not required to prove that a design has individual character, but need only indicate what constitutes the individual character of that design by stating what in its view are the elements of the design that give it its individual character.

Comment

This decision will be warmly welcomed not only in the fashion industry but by other like-minded creative industries. Unregistered Community designs arise automatically and provide useful protection for fashion businesses in particular, which create large numbers of designs with a relatively short market life and therefore are less inclined to incur the cost and formality of registering such designs.

The decision of the CJEU will make it significantly easier for rights owners to protect and enforce their designs and provides one less defence for copycats to hide behind.

It will now be up to the Supreme Court to apply this CJEU judgment to the facts of the KMF and Dunnes dispute.

For the full CJEU judgment, see here.