European Court Case holds the future of fashion design in its hands

April 2014

A court case which has rumbled on for nearly eight years could now be nearing a conclusion with major ramifications for the fashion sector.

Karen Millen launched proceedings against Irish retailer Dunnes Stores in January 2007 alleging infringement of Community Unregistered Design Rights in a black knit jumper and two striped shirts in blue and brown. The case has proceeded through the Irish courts, with the Irish Supreme Court last year referring the matter to the Court of Justice of the European Union (CJEU) for guidance.  

The CJEU was asked to deliberate on two questions; (a) could the combination of individual design elements which in themselves were not distinctive be combined together to produce a distinctive design, in the words of the provision have 'individual character' and (b) where did the onus of proof lie in proving that a design had 'individual character' and thus was distinctive and thus worthy of protection before the law.

The first question is of key importance to the fashion industry. By definition fashion recycles old trends and old designs from history giving birth to new fashion creations.  A key defence of Dunnes in the case at hand was that the designs which Karen Millen claimed rights to consisted of design elements which had been on the market for some time and were not novel and new. Thus in deciding whether the Karen Millen design did have individual character, one did not compare the Karen Millen design as a whole to previous individual designs, but a comparison had to be made of the individual design elements as an amalgam. Karen Millen retorted that the combination of such elements could create a new protectable design, and that in deciding whether the Karen Millen design had 'individual character', its design had to be compared to each individual designs standing alone, and not as an amalgam.  A view supported by the UK government in its submissions on the case. 

The Advocate General of CJEU gave his opinion today on the answer to these two questions.  The Opinion is designed to give guidance to the full decision of the CJEU which is likely to given in a few months time. Although the Advocate General's Opinion is not binding on the court, the vast majority of decisions of the CJEU follow the guidance of the Advocate General in the ultimate decision. 

The Advocate General has firmly come down in favour of Karen Millen finding, in particular, that a combination of design elements which in themselves may not be distinctive and have individual character, can if brought together for the first time be considered a distinctive and protectable design. 

In paragraph 53 of the Opinion, the Advocate General states:- 

"In light of those considerations, I am of the opinion that Article 6 of Regulation No 6/2002 must be interpreted as meaning that, in order for a design to be regarded as having 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 and viewed as a whole, not by an amalgam of various features of earlier designs." 

The bad news doesn't stop there for Dunnes, the Advocate General also found in favour of Karen Millen on the second point stating in paragraph 83, again supported by the UK Government in its submissions:- 

"Consequently, I am of the opinion that a Community design court must necessarily treat an unregistered Community design as valid, for the purposes of Article 85(2) of Regulation No 6/2002, if the holder both proves when his design was first made available to the public and indicates the elements of his design which give it individual character." 

In essence, the owner of any alleged Unregistered Community Design Right need only 'indicate' it has individual character, it is for the defendant to show that it does not have such character.

Lee Curtis, a partner at trade mark and design law firm Harrison Goddard Foote commented "Although the Opinion is not binding, and ultimately it may not be followed by the court, the Opinion still is a major victory for the fashion industry and fashion designers in particular. Many distinctive clothing designs  are based on individual design elements taken from history and then combined to create a new design. In many ways that is the whole basis of the fashion industry.  This Opinion would appear to signal that the CJEU are likely to safeguard this key foundation of the fashion industry."

Rebecca Field, a trade mark and design attorney who also works at Harrison Goddard Foote commented; "If this Opinion had gone against Karen Millen, it potentially would have signalled that the CJEU were going to significantly weaken the design protection afforded by law to the fashion sector. There are to a degree only so many individual design elements which can be created in fashion.  If one could not argue that a combination of design elements creates a new design, then the legal protection afforded fashion designers would have been significantly weakened." 

Lee Curtis continued on to state "It will be interesting to see how the CJEU ultimately decides this case in a few months time, but history suggests that it will follow the general guidelines laid down in the Advocate General's Opinion."

Click here to view the Opinion.