CJEU Strengthens Design Protection in Fashion Sector

June 2014

The CJEU has published its decision in the case Case C‑345/13, Karen Millen Fashions Ltd v Dunnes Stores.

European Community design law provides that a design (whether registered or not) is to be protected at EU level to the extent that it is new (not made available to the public previously) and has individual character (the overall impression it produces on the informed user differs from that produced by any design which has been made available to the public previously). 

In 2005, Karen Millen Fashions designed and placed on sale in Ireland a particular striped shirt (in a blue and a stone brown version) and a black knit top. Examples of those garments were purchased by representatives of Dunnes Stores, an Irish retail chain, from one of Karen Millen’s Irish outlets. Dunnes subsequently had copies of the garments manufactured outside Ireland and put them on sale in its Irish stores in late 2006.  In January 2007, Karen Millen Fashions commenced proceedings in the Irish courts, seeking to have Dunnes restrained from using its unregistered designs, and damages for the unauthorised use of the designs at issue.

Dunnes argued that there was no “individual character” in the designs at issue, so Karen Millen Fashions was not the holder of an unregistered Community design, especially where a new design was merely an amalgam of specific features or parts of earlier designs.  The Supreme Court (Ireland), referred the case to the CJEU on how to assess individual character in a design, and whether a right holder needs to prove such individual character. 

 Today in its press release, the CJEU stated:

(i)                  that the individual character of a design for the purposes of protection under the regulation must be assessed by reference to one or more specific, individualised, defined and identified designs from among all the designs which have been made available to the public previously. Consequently, that assessment cannot be conducted by reference to a combination of features taken in isolation and drawn from a number of earlier designs.

(ii)                in infringement actions, the regulation introduced establishes a presumption of validity of unregistered Community designs so that, in such actions, the right holder of an unregistered Community design is not required to prove that it has individual character. The right holder need only indicate what constitutes the individual character of that design, that is to say, indicates what, in his view, are the element or elements of the design concerned which give it its individual character. The defendant may nevertheless contest the validity of the design at issue. 

The European Court has followed the earlier opinion of the Advocate General and this decision will strengthen the position for designers in the fashion sector; it appears to be a good day for all fashion designers and indeed design rights holders.    The Irish Court will now have its say.

This update was prepared by Lee Curtis,  Partner of our Manchester office.  Tel: +44(0) 161 247 4900.

If you would like further advice on this or any other matter, please contact Lee Curtis at lcurtis@hgf.com  or your usual HGF representative or visit our Contact Page to get in touch with your nearest HGF office.