Following the decision in February 2014 which the English Court of Appeal handed down in the case of Magmatic Ltd v PMS (“the Trunki case”)[1], there was considerable disappointment expressed by some leading UK designers who were of the belief that the UK courts were placing an unduly narrow interpretation as to what should constitute the infringement of designs.   However, in an action[2] brought by Karen Millen Fashions, (“KMF”) a producer and retailer of women’s clothing against Dunnes Stores, (“DS”) the Irish department chain,  the European Court of Justice, (“the CJEU”) has now handed down a decision which should give designers considerable comfort in two aspects of the Community Designs Regulation (6/2002/EC) (“the Regulation”), the law which governs design law across Europe.


Whereas the Magmatic decision had concerned registered design, KMF had brought a claim for infringement of its unregistered Community design right, (“UCDR”) against DS for copying two of its garments, a striped shirt and a black knit top.

DS admitted that they had copied the designs, but submitted that KMF did not own UCDR for the garments because KMF had failed to prove that the garments had “…Individual character..” within the meaning of Article 6 of the Regulation which reads “…A design shall be considered to have individual character if the overall impression it produces on the informed user differs from the overall impression on such a user by any design which has been made available to the public: (a) in the case of an [UCDR], before the date on which the design for which protection is claimed has first been made available to the public; [and] (b) in the case of a registered Community design, before the date of filing the application for registration or if a priority is claimed, the date of priority…”.

The Irish High Court had upheld KMFs claim and DS appealed to the Irish Supreme Court.

DS argued that (i) a design could not be said to have “individual character” if each of the various features of the garments in question could be found in features differing only in immaterial respects drawn from a number of earlier designs taken in isolation of each other; and (ii) the onus is on the owner of the alleged UCDR  to prove that the Community design has individual character.      

The Irish Supreme Court stayed proceedings and referred these two issues to the CJEU for the purpose of interpretation

1. Can A Combination Of Earlier Known Features Have Independent Character?

The CJEU rejected the submissions by DS and held that there was nothing in the wording of Article 6 to prevent a combination of known features from having independent character.  The test is simply whether a different impression is made on the informed user and the basis for making that comparison is not via a combination of features taken in isolation and drawn from a number of earlier designs but rather by making a comparison with “ or more earlier designs, taken individually …”.  In other words, a person alleged to have infringed a Community design cannot address the challenge by creating a hypothetical  mosaic of earlier designs and contend that each contains a substantially similar feature which also happens to appear in the Community design

2. Must A Right Holder Prove The Presence Of Individual Character

Article 85(2) of the Regulation provides that “..In proceedings in respect of an infringement action or an action for threatened infringement of an unregistered Community design, the Community design court shall treat the Community design as valid if the right holder produces proof that the conditions laid down in Article 11 [the three year period from when the design was made available during which UCDR subsists ] have been met and indicates what constitutes individual character of his Community design…”. 

The CJEU provided a number of reasons for rejecting DS’s submissions that KMF should have to demonstrate the existence of individual character in the garments rather than just indicate their view as to what element or elements of the Community design, contain subsisting individual character:

  • such submissions by DS were incompatible with the presumption of validity Article 85 confers on a CDR holder
  • the submissions contradict the actual wording of Article 85(2)
  • the submissions militate against the rationale behind the Regulation namely a European wide right that was should be simple and efficient.


The CJEU’s decision should serve as a reminder that under the Regulation, design right, whether registered or unregistered, has emerged as a valuable asset to consider as part of the management of an intellectual property portfolio.