The recent decision of the CJEU in the Karen Millen case provides important guidance to fashion designers and retailers who rely on unregistered design rights in their designs according to the Council Regulation (EC) No. 6/2002 on Community Design.

The CJEU ruled in favor of Karen Millen in the proceedings, which concerned sales made by Irish retailer Dunnes Stores and which were brought pursuant to the Community Design Regulation No. 6/2002 (hereinafter the Regulation).

Karen Millen started the proceedings for damages in 2007, claiming that some of Dunnes Stores’ products infringed its unregistered designs in a striped shirt (in a blue and a stone brown version) and a black knit top, which had been produced and sold since 2005. Karen Millen also sought an injunction restraining Dunnes from using the designs.

The High Court upheld Karen Millen’s claim, following which Dunnes brought an appeal before the Irish Supreme Court alleging that the Karen Millen garments were not entitled to benefit from the unregistered Community design protection under the Regulation because of their lack of individual character, also pointing out that the Regulation required Karen Millen to prove such individual character.

The Supreme Court of Ireland decided to refer two questions to the CJEU for a preliminary ruling on how to interpret Article 6 and Article 85(2) of the Regulation.

By its first question, the referring court asked, in essence, whether, 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, or by a combination of features taken in isolation and drawn from a number of earlier designs (under Article 6 of the Regulation).

The answer to the first question was that the overall impression which the 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.

By its second question, the referring court asked, in essence, whether, in order for a Community design court to treat an unregistered Community design as valid, the right holder of that design is required to prove that it has individual character within the meaning of Article 6 of that Regulation, or needs only to indicate what constitutes the individual character of that design (under Article 85(2) of the Regulation).

The answer to the second question was that the right holder is not required to prove the individual character of its design but need only indicate what, in his view, are the element(s) of the design concerned which give it its individual character.

The decision will be warmly welcomed by rights holders in the fashion industry, who can now benefit from a strengthening of the protection afforded to unregistered designs. We may, however, ask ourselves how this move would affect the registration system, which should remain the preferred way to protect creative designs.