Lise Charles

The decision of the Court of Justice of the European Union (ECJ) in Karen Millen Fashions Ltd v Dunnes Stores (Case C-345/13), issued this morning, will provide a boost for businesses in creative industries. The ECJ endorsed Advocate General Wathelet’s designer-friendly opinion on the test for protection of an unregistered design and the burden of proof in establishing infringement.   

The decision answers questions posed by the Irish Supreme Court in the long-running dispute between UK fashion house Karen Millen and Dunnes Stores, an Irish retailing group selling women’s clothing.

In 2005 Karen Millen designed and placed on sale in Ireland a striped shirt (in a blue and a brown version) and a black knit top. Examples of those garments were purchased by Dunnes representatives, and Dunnes put copies of the garments on sale in its Irish stores in 2006. Karen Millen took action against Dunnes, claiming that its rights in unregistered Community designs for three items of clothing had been infringed.

Dunnes did not dispute that it had copied the Karen Millen garments and acknowledged that the unregistered Community designs of which Karen Millen claimed to be the holder were new designs. However, Dunnes disputed that Karen Millen was the holder of an unregistered Community design for each of the garments on the grounds that:

  • the garments did not have individual character within the meaning of Council Regulation on Community Designs (6/2002); and
  • the regulation required Karen Millen to prove, as a matter of fact, that the garments had individual character.

The Irish Supreme Court referred questions to the ECJ, asking whether Karen Millen’s designs should be assessed for protection purposes against individual known designs considered separately or any combination of known design elements. In an opinion issued in April this year, Advocate General Wathelet sided with Karen Millen, stating that combinations of known elements can be protectable as having a different overall impression on the informed user compared to the earlier individual designs.

Today the ECJ held:

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 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.

Reacting to the decision, Niamh Hall, of FRKelly, notes that the ECJ sided comprehensively with Karen Millen’s position. The designs against which the comparison is made were also helpfully described as “specific, individualised, defined and identified designs”. Hall explains: “The decision means that designers can bring together various known design elements to produce something which is protected by unregistered design rights. They do not have to show that their design is different from the body of existing design elements.” 

However, Hall notes that the ECJ refused to be drawn into a discussion on the use of the terms ‘design corpus’ and ‘in comparison with other designs’ in the recitals of the Community Design Regulation, observing that the recitals have no binding legal force and cannot be relied on either as a ground for derogating from the actual provisions of the act in question or for interpreting those provisions in a manner clearly contrary to their wording. According to Hall, “even the notion of an indirect comparison based on imperfect recollection did not persuade the court that a different analysis was required, holding that this is not based on a recollection of specific features from several different earlier designs but of specific designs”.

The ECJ also held in Karen Millen’s favour on the issue of burden of proof, ruling that a design holder is not required to prove that the design has individual character, but need only indicate what constitutes the individual character of that design.

These clarifications by the ECJ will be very welcome by designers in this emerging area, Hall concludes. The case will now go back to the Irish Supreme Court for a final decision.



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