Karen Millen Fashions is a UK-headquartered international women’s fashion brand that trades in 65 countries. In 2005 it began selling two versions of a striped shirt and a black knit top in Ireland. Dunnes, an Irish fashion retailer, purchased examples of these garments and had copies made. The copies were being sold in Dunnes' stores by late 2006.
In early 2007, Karen Millen Fashions brought proceedings against Dunnes in the High Court of Ireland, claiming that the copies infringed its unregistered Community design rights in the garments. The High Court upheld Karen Millen Fashions' action and Dunnes appealed to the Irish Supreme Court.
Whilst acknowledging that it had engaged in copying, Dunnes disputed that Karen Millen Fashions was the owner of unregistered Community design rights in the garments because, first, the garments did not have individual character and, second, even if they did, Karen Millen Fashions had not proven that as a matter of fact.
The Irish Supreme Court stayed the proceedings and referred the following questions to the CJEU:
- When assessing the individual character of a design, is it appropriate to consider whether its overall impression differs from that produced by a combination of features taken from a number of earlier designs?
- When assessing the validity of an unregistered Community design, is the owner required to prove, as a matter of fact, that it has individual character?
The CJEU made the following rulings:
- For a design to have individual character, the overall impression it produces must be different from that produced by one or more designs taken individually, not by a combination of features taken in isolation and drawn from a number of earlier designs.
- For an unregistered Community design to be valid, the owner is not required to prove that it has individual character. The owner need only indicate the elements of the design which, in his or her view, give rise to individual character.
The ruling of the CJEU is favourable to those in the fashion industry. It makes it easier for designers to enforce their unregistered Community designs rights against third parties, which is particularly helpful in the fashion world where designs often have a short life-span. On the other hand, the CJEU's ruling also means that fast fashion retailers who follow catwalk trends and sell look-alike items at a low price point will need to be more careful when creating their garments.