This is a very recent decision of the CJEU in the Karen Millen case, which provides important guidance to fashion designers and retailers who rely on unregistered design rights in their designs according to the Council Regulation (EC) No. 6/2002 on Community Design.
The CJEU ruled in favour of Karen Millen in the proceeding started by Dunnes Stores before the Supreme Court of Ireland and considered the Karen Millen design on some specific products as having individual character, pursuant to the Community Design Regulation No. 6/2002 (hereinafter the “Regulation”), deserving therefore protection as unregistered Community designs.
Karen Millen started the proceeding in 2007 claiming that some of Dunnes Stores’ products infringed its unregistered designs in a striped shirt (in a blue and a stone brown version) and a black knit top which have been produced and sold since 2005 (garments can be viewed here), as well as injunctions restraining Dunnes from using the designs and damages.
The High Court upheld the Karen Millen action and Dunnes brought an appeal before the Irish Supreme Court alleging that the Karen Millen garments were not entitled to benefit from the unregistered Community design protection under the Regulation because of their lack of individual character, also pointing out that the Regulation requires Karen Millen to prove such individual character.
The Supreme Court decided to refer the proceeding and put two questions to the CJEU for a preliminary ruling on how to interpret Article 6 and Article 85(2) of the Regulation.
By its first question, the referring court asks, in essence, whether, in order for a design to be considered 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, or by a combination of features taken in isolation and drawn from a number of earlier designs (under Article 6 of the Regulation).
The answer to the first question is that the overall impression which the design produces on the informed user must be different from that produced on such a user not by a combination of features taken in isolation and drawn from a number of earlier designs, but by one or more earlier designs, taken individually.
By its second question, the referring court asks, in essence, whether, in order for a Community design court to treat an unregistered Community design as valid, the right holder of that design is required to prove that it has individual character within the meaning of Article 6 of that Regulation, or needs only to indicate what constitutes the individual character of that design (under Article 85(2) of the Regulation).
The answer to the second question is that the right holder is not required to prove the individual character of its design but need only indicate what, in his view, is the element(s) of the design concerned which give it its individual character.
The outcome of this decision would presumably be warmly welcomed in the fashion industry which can now benefit from a strengthening of the protection afforded to unregistered designs. We may however ask ourselves how this move would affect the registration system, which should remain the preferred way to protect creative designs.