ECJ issues 'designer-friendly' decision in Karen Millen case

In a decision widely billed as 'designer-friendly', the Court of Justice of the European Union (ECJ) has considered issues relating to the enforceability of unregistered design rights in Karen Millen Fashions Ltd v Dunnes Stores (Case C-345/13).

The case related to garments that had been designed and sold by Karen Millen Fashions Ltd in 2005, and subsequently copied and sold by Dunnes Stores (an Irish retailing group) in 2006.  Although there was no dispute as to whether the garments had been copied, Dunnes claimed the unregistered rights that Karen Millen sought to rely upon were not capable of protection. 

In order to be protected, unregistered Community designs must be novel (in that no identical designs have previously been made available to the public), and must have individual character (in that the overall impression they produce differs from that produced on the informed user by previous designs). It was the second of these requirements that Dunnes claimed Karen Millen’s designs did not satisfy, therefore precluding the designs from protection under the Regulation on Community Designs (6/2002). In particular, Dunnes argued that in assessing individual character in a design, the correct test was whether the overall impression produced differed from that produced by any combination of known design features from multiple earlier designs. Dunnes also argued that rights holders seeking to enforce unregistered Community designs were first obliged to prove the designs had individual character.

In a short decision, the ECJ was quick to reject Dunnes’ arguments and held that the assessment of individual character must be related to “one or more specific, individualised, defined and identified designs” from those previously made available. There was no basis from derogating from this approach. In particular, the ECJ noted that, where possible, the informed user will make a direct comparison between the designs at issue, rather than “an amalgam of specific features or parts of earlier designs”. Even where a direct comparison is not possible, and the informed user instead bases the comparison of overall impression on an imperfect recollection, that recollection nevertheless relates to specific designs, rather than specific features of several different earlier designs.

Dunnes’ contention that Karen Millen had the initial burden of proving the designs had individual character was also rejected by the ECJ. Article 85(2) of the regulation contains a presumption of validity that applies to unregistered Community designs, requires that rights holders indicate what constitutes the individual character of the design, and provides that defendants can contest the validity of the design by a plea or counterclaim. Dunnes’ arguments were therefore incompatible with those provisions and, if accepted, would render both the text and the objectives of the regulation meaningless. Further, the recitals to the regulation make it clear that the rationale for protecting unregistered designs relies upon the simplicity and expeditiousness of the system. The interpretation favoured by Dunnes would negate these benefits, potentially removing the incentive for rights holders to rely on unregistered Community designs at all.

It is easy to see why this case has been welcomed by designers and rights holders. Unregistered designs are often used in relation to fast-moving products with a limited shelf life (such as fashion garments) where the value for rights holders lies in protection without the inconvenience of registration formalities, rather than the duration of protection. The ECJ’s decision reinforces the protection of unregistered Community designs, and saves rights holders from the burden (and expense) of proving that their designs have individual character before they can be enforced against infringers. However, it is less easy to see why the case progressed to the highest court in the European Union in the first place. While the clarity provided by the ECJ is to be welcomed, the decision is unlikely to come as a surprise, and indeed reflects the existing approach of most design practitioners. 

Riecha Sharma, Edwards Wildman Palmer UK LLP, London