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Karen Millen v Dunnes Stores: A cautionary tale for fashion retailers

On 19 June 2014, the Court of Justice of the European Union (the CJEU) provided its judgment in the long standing dispute between Karen Millen Fashion Ltd (KMF) and Dunnes Stores, Dunnes Stores (Limerick) Ltd (Dunnes). This judgment provides important guidance to those in the fashion industry on the protection and validity of unregistered Community design rights.  Whilst it is a decision that will be welcomed by fashion designers, it also highlights to fashion retailers the dangers of producing designs similar to those already available to the public.

KMF is an English fashion company and Dunnes is an Irish retailer that sells, amongst other things, clothing.  Examples of a KMF striped shirt (in a blue and a stone brown version) and black knit top (the KMF Garments) were purchased by representatives of Dunnes from one of KMF's Irish outlets. Dunnes subsequently had copies of the KMF Garments manufactured outside Ireland and put them on sale in its Irish stores in late 2006.

Whilst Dunnes conceded that KMF’s designs were new and that it had copied the designs, it claimed that the designs could not benefit from the protection of an unregistered Community design right on the basis that (1) the KMF Garments did not have individual character within the meaning of Regulation No 6/2002 (the Regulation) and (2) KMF had not proved the individual character of the KMF Garments.

The Irish Supreme Court stayed proceedings and referred two questions to the CJEU for preliminary ruling.

The first question – The interpretation of ‘individual character’ under Article 6 of the Regulation

Article 6(1) of the Regulation provides:

“A design shall be considered to have individual character if the overall impression it produces on the informed user differs from the overall impression produced on such a user by any design which has been made available to the public:

(a) in the case of an unregistered Community design, before the date on which the design for which protection is claimed has first been made available to the public;

(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 question put before the CJEU by the Irish Supreme Court was:

For a design to have individual character and therefore be entitled to protection as an unregistered Community design under the Regulation, must the overall impression on the informed user be different to either (1) any individual design previously available to the public or (2) any combination of known design features from more than one such earlier design?

The CJEU found that the correct test was the first one.  This means that the individual character of a design can only be challenged by comparison against one particular prior design rather than a mixture of features of different prior designs.

The second question – validity under Article 85(2) of the Regulation

Article 85(2) of the Regulation provides:

“In proceedings in respect of an infringement action or an action for threatened infringement of an unregistered Community design…[it] shall be valid if the right holder produces proof that the conditions laid down in Article 11 have been met and indicates what constitutes the individual character of [the] design. However, the defendant may contest its validity by way of a plea or with a counterclaim for a declaration of invalidity.”

The question put before the CJEU by the Irish Supreme Court was: for an unregistered Community design to be upheld as valid, must the right holder either (1) prove that it has individual character within the meaning of Article 6 of the Regulation or (2) only indicate what constitutes the individual character of that design?

The CJEU found 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 or elements of the design concerned which give it its individual character.

Conclusion

This case provides welcome guidance to fashion designers on the validity and protection afforded to them by unregistered Community design rights.

For the purposes of enforcement, it is only necessary to show the elements of a design that provide “individual character” rather than the design as a whole.  This will provide confidence to holders of unregistered Community design rights within the fashion industry.

For fashion retailers however, careful consideration will now need to be given as to whether their designs bear elements that are similar to those of designs already available to the public.

This information is intended as a general discussion surrounding the topics covered and is for guidance purposes only. It does not constitute legal advice and should not be regarded as a substitute for taking legal advice. DWF is not responsible for any activity undertaken based on this information.