The once unmarked territory of designs, which has been in need of a good sprucing from both the IP community and the Luxembourg Courts, has finally received the attention that it requires from the Court of Justice of the European Union (CJEU). The recent Irish Supreme Court decision,Karen Millen Fashions Ltd v Dunnes Stores (Limerick) Ltd has begun to shape the United Kingdom’s case law surrounding designs by smoothing out some ambiguities pertaining to the area of unregistered designs.
Starting with a striped shirt and a black knit top, made and sold originally by Karen Millen, this case was spun into motion when Dunnes admittedly copied and sold these women’s luxury clothing items. In 2007, Karen Millen responded to these actions in a proceeding against Dunnes in the Irish High Courts where the company claimed infringement of an unregistered Community design under the Community Design Regulation 6/2002 (CDR).
In their defense, Dunnes claimed that their clothing items were new and furthermore challenged the validity of Karen Millen’s unregistered Community design on the grounds that it lacked “individual character”. Evidently, Dunnes assumed that Millen’s designs were simply a combination of features drawn from earlier designs, such as a grey Dolce & Gabana knit top and a Paul Smith Blue striped shirt. Lastly, Dunnes alleged that Karen Millen also had to prove that their respective design was individual in character.
Dunnes’ assessment of the Karen Millen design, taken with uncertainty, formed the basis of the questions posed to the CJEU. After Millen’s claims were initially granted in the Irish High Courts, Dunnes appealed to the Supreme Court, which decided to pass the decision over to the CJEU.
The outcome of this decision on designs begins to define the lines that shape the way in which courts can assess individual character, the overall impression and the issue of the burden of proof pertaining to designs; the quintessential accessories of any valid unregistered design. In effect, the concision of this decision has equally provided designer brands with statutory tools of protection against knock-off and look-alike designs that seek to emulate their brand’s appeal at a lower price. Therefore, this decision will certainly be welcomed by high end designers and retailers. At the same time, designers working in the lower end of the market, so to speak, “fast fashion” retailers must now take further precautions when seeking to replicate higher end looks for a lower price given the higher threshold introduced in this case for challenging the validity of an unregistered design.
The CJEU had to design on the following matters: within the purpose of the Community Design Regulation No 6/2002, should the overall impression of a design produced on an informed user be considered in whether it differs from the overall impression produced on such a user by any individual design made public, or any combination of known designs and/or their features, drawn from more than one such earlier designs? Furthermore, within the purpose of Article 85(2) of Regulation No 6/2002, is a Community design court bound to uphold the validity of an unregistered Community design where the right holder merely indicates what constitutes the individual character of the design or is the right holder bound to prove that the design has individual character in order to assert its validity?
As it was decided, Article 6 is to be interpreted as meaning that the overall impression that is produced on an informed user must differ from individual designs made public, not from a combination of different designs and/or their features. Next, Article 85(2) of Regulation No 6/2002 is to be interpreted as meaning that the right holder must merely indicate what constitutes the individual character of the design, and therefore is not bound to prove that the design has individual character in order to assert the validity of the design. In practice this means that designers can explain the individual character of their design by drawing attention to certain elements that they feel give it individuality as opposed to proving that the design itself is has individual character.
Within the design and fashion community, as it has been noted, the effects of this decision will depend on where a brand is situated in the market. Whether or not this decision will be act as a powerful precedent for those to come is still unknown, but future case law will indicate as so. Unregistered designs are, especially within the workings of the fashion industry, an important Intellectual Property right, given the short lives of designs that may not justify the cost of design registrations.
This decision will now travel back to the Irish Supreme Court where the final decision awaits. It seems likely that the decision will follow the guidance and advice of the CJEU.