According to the Council Regulation (EC) No 6/2002 on Community designs (CDR), you can protect a design without registering it. But here is the catch: the unregistered design must be new and have an “individual character”.

So, what is individual character? A recent court case gives insight. It specifically addresses the fashion industry, but the ideas are useful for any company that does not register all of its designs.

The Court of Justice of the European Union (CJEU) clarified in its recent judgment in Karen Millen Fashions Ltd (Karen Millen) v Dunnes Stores and Dunnes Stores (Limerick) Ltd (together Dunnes) (Case C-345/13) the interpretation of “individual character” and burden of proof concerning unregistered community designs under the Council Regulation (EC) No 6/2002 on Community designs (CDR).

The judgment is of relevance within the fashion industry, but it may prove useful also for other industries where the lifespan of a design is relatively short, or where a product is copied quickly after launch.

In these industries, the protection as unregistered design without the burden of all registration formalities is considered as convenient and cost-efficient method for short-term protection against the threat of copycats.

The case of a striped shirt and knit top

The case was brought before the court by Karen Millen, a British clothing retailer. The defendant was Dunnes, a retail chain selling, among other, women’s clothing.

In 2005, Karen Millen designed and put on sale a striped shirt and a knit top in Ireland. Dunnes purchased examples of Karen Millen’s garments and produced and sold copies of these under its own brand.

Karen Millen brought the case before the High Court in Ireland in order to restrain Dunnes from using Karen Millen’s designs. The High Court upheld the action. Dunnes, however, brought an appeal against the judgment before the Supreme Court of Ireland.

In the Supreme Court of Ireland, Dunnes admitted that it had copied the garments and acknowledged that the unregistered designs were new designs. However, Dunnes claimed that Karen Millen’s garments could not benefit from the unregistered design protection under the CDR on the grounds that they lacked individual character within the meaning of Article 6 of the CDR, and further that Karen Millen was required to prove such individual character under Article 85(2) of the CDR.

The Supreme Court referred the case to the CJEU for a preliminary ruling.

The CJEU was asked to clarify how to interpret “individual character” within the meaning of Article 6 of the CDR, and what kind of proof is required within the meaning of Article 85(2) of the CDR.

Clarity on assessment of “individual character”

According to the CJEU, in order for a design to be regarded as having individual character within the meaning of Article 6 of the CDR, the overall impression the design produces on the informed user must differentiate from the overall impression produced on this user by one or more earlier designs, each taken individually – not by a mixture of individual features taken from a number of earlier designs.

With regard to the question concerning burden of proof in infringement actions, the CJEU highlighted that the right holder is not required to prove that its design has individual character within the meaning of Article 6 of the CDR in order for a design to be treated as valid. It is sufficient that the right holder only indicates what constitutes the individual character of that design.

In practice, this means you are not required to prove that a design has individual character in infringement proceedings – it will suffice for the right holder to indicate the element(s) of the design that give its individual character.

This shifts the burden of proof on the infringer to show that the indicated elements do not give the design its individual character.

A win for design right owners

The rules set by CJEU concerning assessment of individual character combined with lower threshold concerning the burden of proof mean that design right owners can rely more easily on the protection for unregistered design rights, as challenging their validity is increasingly difficult.

For producers of look-a-like products that closely imitate the original design, on the other hand, the judgement may be bad news.