On June 24, 2013, the Court of Justice of the European Union received a request for a preliminary ruling from the Irish Supreme Court, concerning the interpretation of Articles 6 and 85 (2) Community Designs Regulation (CDR). The request was made in proceedings between Karen Millen Fashions Ltd., on the one hand, and Dunnes Stores and Dunnes Stores (Limerick) Ltd., on the other, concerning asserted rights in an unregistered Community design. The following two questions were referred to the Court of Justice for a preliminary ruling:

  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 the CDR, is the overall impression it produces on the informed user, within the meaning of Article 6 CDR, 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?
  2. Is a Community design court obliged to treat an unregistered Community design as valid for the purposes of Article 85 (2) CDR 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 CDR?

I.

Turning to the first question, the Court of Justice started with finding that there is nothing in the wording of Article 6 CDR supporting the view that the overall impression referred to therein may be taken from a combination of features drawn from a number of earlier designs. Rather, the reference to the overall impression produced on the informed user by “any design”, under Article 6 CDR, indicated that any “[…] assessment as to whether a design has individual character must be conducted in relation to one or more specific, individualised, defined and identified designs from among all the designs which have been made available to the public previously”.

As regards Recitals 14 and 19 CDR, where the expressions “the existing design corpus” and “in comparison with other designs” appear, the Court held that the preamble to a Community act had “[…] no binding legal force and cannot be relied on either as a ground for derogating from the actual provisions of the act in question or for interpreting those provisions in a manner clearly contrary to their wording”. Moreover, as regards the reference to “combinations of known design features” in Article 25 (1) Sentence 2 TRIPS Agreement, the Court found that that provision is “[…] worded in optional terms and that, consequently, the parties to that agreement are not required to provide for the novel character or originality of a design to be assessed in comparison with such combinations”.

Consequently, according to the Court of Justice, Article 6 CDR “[…] must 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 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”.

II.

As regards the second question, the Court started with stressing that, in order for an unregistered Community design to be treated as valid pursuant to Article 85 (2) CDR, the right holder of that design is required to prove that the conditions laid down in Article 11 CDR have been met and to indicate what constitutes the individual character of that design.

Given that Article 85 (2) CDR establishes a presumption of validity of unregistered Community designs, the implementation of such presumption, according to the Court, is, by its very nature, incompatible with requiring the holder of a design to prove that it has individual character, i.e. “conditions laid down in Article 11” does not extend to Articles 3 to 9 CDR, including Article 6 CDR.

Turning to the second condition laid down in Article 85 (2) CDR, the Court of Justice ruled that requiring the holder of an unregistered Community design to indicate what constitutes the individual character of that design is “[…] unambiguous and cannot be interpreted as entailing an obligation to prove that the design concerned has individual character”. Rather, and “[…] although, given the lack of registration formalities for this category of design, it is necessary for the holder of the design at issue to specify what he wants to have protected under that regulation, it is sufficient for him to identify the features of his design which give it indivi­dual character”.

Consequently, according to the Court of Justice, Article 85 (2) CDR “[…] 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 CDR, but need only indicate what constitutes the individual character of that design, that is to say, indicates what, in his view, are the element or elements of the design concerned which give it its individual character”.

Remarks

The decision in Karen Millen v Dunnes covers at least four aspects which appear worth being discussed in more detail:

Firstly, the Court confirms that the preamble to any Community act and, in particular, the Recitals of the Community Designs Regulation have no binding legal force and cannot be relied on for interpretation purposes in a manner clearly contrary to the wording of the text. This should be also valid in other situations, such as, for instance, when Recital 14 CDR requires that the “[…] assessment as to whether a design has individual character should be based on whether the overall impression produced on an informed user viewing the design clearly differs from that produced on him by the existing design corpus” (emphasis added) while Article 6 (1) CDR 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 […]”.

Secondly, according to the Court, Article 25 (1) Sentence 2 TRIPS Agreement (“combinations of known design features”) is worded in optional terms and, consequently, the parties to the TRIPS Agreement are not required to provide for the novel character or originality of a design to be assessed in comparison with such combinations. In view of the wording of the Designs Directive as regards determining the individual character, which is identical with the wording of the CDR, the same interpretation would also apply to national designs.

Thirdly, the Court of Justice spent some paragraphs addressing and clarifying former guidance provided in PepsiCo v Grupo Promer (BARDEHLE PAGENBERG IP Report 2011/V) and Neuman (BARDEHLE PAGENBERG IP Report 2012 Special/IV). The discussion is basically about whether it is correct to hold, in the Court’s words, “[…] that, when possible, the informed user will make a direct comparison between the designs at issue […] because that type of comparison actually relates to the impression produced on that user by earlier individualised and defined designs, as opposed to an amalgam of specific features or parts of earlier designs”. The Court continued to confirm that “[…] it cannot be ruled out that a direct comparison might be impracticable or uncommon in the sector concerned, in particular because of specific circumstances or the characteristics of the items which the earlier mark and the design at issue represent. […] It should be remembered, however, that although the Court acknowledged the possibility of an indirect comparison of the designs at issue, it went on to hold merely that the General Court had not erred in basing its reasoning on an imperfect recollection of the overall impression produced by those designs”. The Court does not explicitly disavow the “indirect comparison” approach but obviously sees a need to explain its previous judgments. However, these explanations do not provide a clearer picture: For instance, when might a direct comparison be “impracticable or uncommon in the sector concerned” and, in particular, what is meant and/or required when considering the “[…] specific circumstances or the characteristics of the items which the earlier mark and the design at issue represent […]”?

Fourthly, the Court’s guidance, under the second condition set out in Article 85 (2) CDR, according to which it is sufficient for the holder of an unregistered Community design to “identify the features” or to indicate the “element or elements of the design concerned” which give it its individual character is clearly helpful but lacks clarification, in the absence of any corresponding question of the referring Irish Supreme Court, as to how such identification must be exercised. For instance, does the right holder need to provide a complete language, including and weighing major and minor features of appearance, so as to identify completely and properly the overall impression of the design or does it suffice to submit a plain drawing or other picture indicating in simple terms the contours or elements of the design? Is the requirement to identify the features or elements establishing individual character a question of fact or a question of law? Should the right holder consider prior art when producing any kind of “claim”?

For now, it will be for the national courts to fill in these general indications of the Court. Hopefully further referrals to the Court of Justice will address these and other issues that may appear secondary but in fact may actually often be outcome-decisive.