The Court of Justice of the European Union (CJEU) has handed down its decision on the long-running IP battle between Karen Millen and Irish retailer Dunnes Stores. The decision gives some useful guidance to fashion designers on Community Unregistered Design Rights (CUDRs).
In 2005 Karen Millen designed and placed on sale in Ireland a striped shirt and a black knit top. Dunnes Stores put copies of these garments on sale in Ireland as part of its Savida range in 2006. In 2007 Karen Millen started proceedings, claiming that it owned CUDRs which protected its designs, and that by copying the designs, Dunnes had infringed its CUDRs.
Community Unregistered Design Right
The Community Design Regulation provides that the appearance of the whole or part of a product is protected against copying for three years from the date it is first marketed, provided that the design is new and has individual character. As the name suggests, CUDRs arise automatically and there is no need to register them.
Dunnes Stores' defence
Dunnes admitted it had copied Karen Millen's products. However, it denied that Karen Millen owned any CUDRs in the products, on the grounds that the garments did not have individual character. Dunnes argued that it was for Karen Millen to prove, as a matter of fact, that the garments had individual character.
The Irish Commercial Court found in favour of Karen Millen. Dunnes Stores appealed the decision to the Irish Supreme Court, who in turn stayed the proceedings and asked the CJEU for guidance.
The CJEU was asked whether it was for Karen Millen to prove its designs had "individual character". Guidance was also sought on how individual character can be proved, and particularly whether a product can have individual character if it is an amalgamation of features from several earlier designs.
In response to the first question, the CJEU explained that in order 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 any previous designs. Therefore, a new design will still be considered to have individual character even if individual design elements from previous garments in history appear in the design.
In other words, a new design can be made up of a selection of features from previous designs. So long as the resulting design creates a different overall impression from any single previous design – perhaps because it is a unique combination of design features – then it will have "individual character". This is so even if each individual feature of the design has appeared in other designs in the past.
In relation to what Karen Millen was required to prove, the CJEU held that the right holder need only provide details of when the design was first made available to the public and indicate what it considers are the element or elements that constitute the individual character of the design. Unless the defendant can prove that the design does not have individual character, that will be sufficient to enable enforcement of the CUDR against copiers.
This decision will be welcomed by designers who rely on the immediate and free Community Unregistered Design Right in fast-moving industries, where designs often have a short life-span. However, designers looking to emulate competitors' products will need to take greater care when producing look-alike items, as it will now be more difficult to challenge the validity of CUDRs.
This publication is intended for general guidance and represents our understanding of the relevant law and practice as at August 2014. Specific advice should be sought for specific cases; we cannot be held responsible for any action (or decision not to take action) made in reliance upon the content of this publication.
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