Karen Millen is a UK company which produces and sells women's clothing. In 2005, Irish company Dunnes Stores manufactured copies of two Karen Millen garments which were then put on sale the following year.
In 2007, Karen Millen brought proceedings against Dunnes before the High Court of Ireland for infringement of its Community unregistered designs. At trial, Dunnes did not dispute that it had copied the garments, but denied that Karen Millen was the holder of unregistered Community designs for each of the items on the grounds that the items did not have individual character. The High Court upheld Karen Millen's claim. Dunnes then appealed to the Irish Supreme Court which stayed proceedings and referred two questions regarding Community unregistered designs to the CJEU for a preliminary ruling.
The questions referred to the CJEU
The following questions were referred to the CJEU:
(1) In consideration of the individual character of a design, is the overall impression it produces on the user, within the meaning of the Community Designs Regulation (6/2002/EC), to be considered by reference to whether it differs from the overall impression produced by:
(a) any individual design which has previously been made available to the public; or
(b) any combination of known design features from more than one such earlier design?
(2) In order for a Community design court to treat an unregistered design as valid for the purposes of the Community Designs Regulation, is the design right holder obliged to prove that the design has individual character?
The Opinion of the Advocate General
The AG recommended that the CJEU answer the referred questions as follows:
(1) For a design 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 and viewed as a whole, not by an amalgam of various features of earlier designs.
(2) For a Community design court to treat an unregistered Community design as valid, the right holder need only prove when his design was first made available to the public and indicate the element or elements of his design which give it individual character. If the right holder was expected to prove individual character, this would place a heavy burden on it.
The AG's Opinion, if followed by the CJEU, will provide greater protection for those who rely on Community unregistered design rights. The Opinion narrows the potential scope of prior art which can be relied upon to invalidate a claimed design and will be welcomed by the fashion industry in particular.
This commentary was co-authored by Thomas Cox.