Unregistered Community design rights in clothes held to be valid

Ireland

In Karen Millen Limited v Dunnes Stores ([2007] IEHC 449, December 21 2007), the High Court has held that the defendants' garments infringed Karen Millen Limited's unregistered Community designs for three items of clothing pursuant to the Council Regulation on Community Designs (6/2002).

Karen Millen commenced proceedings against Dunnes Stores and Dunnes Stores (Limerick) Limited claiming that its rights in unregistered Community designs for three items of clothing (namely a black knit top, a blue shirt and a brown shirt) were infringed by Dunnes's products (a black knit top, a blue shirt and a brown shirt for sale in Ireland). At the hearing, Dunnes no longer denied that its garments were produced by copying Karen Millen's designs. Therefore, the case turned on whether Karen Millen had, as claimed, the right to an unregistered Community design for each or any of the designs in question.

The court held that it will treat an unregistered Community design as valid; if its validity is challenged, the court must move to consider the challenge. Regardless of whether the challenge is by way of a plea of invalidity or a counterclaim for a declaration of invalidity, the onus is on the defendant to prove that one or more of the grounds of invalidity exist on the normal civil balance of probabilities.

Where a plaintiff claims infringement of an unregistered Community design, the legal onus of proof is on the plaintiff to establish a right to the unregistered Community design and its infringement. There will normally be two distinct aspects of the claim to the right, namely:

  • the claim that the design right vests in the plaintiff; and

  • the claim that the design is an unregistered Community design.

The onus of proving that the design right vests in the plaintiff is and remains on the plaintiff until proved in accordance with the normal civil burden of the balance of probabilities. Article 85(2) of the regulation specifies the evidential burden which must be discharged by the plaintiff for the court to treat the design as a valid unregistered Community design. This evidential burden consists of:

  • evidence that the design has been made available to the public within the European Union;

  • evidence that the first date on which it was made available is within three years of the date on which the plaintiff claims the right to protection to subsist for the purpose of the alleged infringement; and

  • identification of those elements of the design which, according to the plaintiff, imply that the total design produces a different overall impression on the informed user.

If a court finds that a plaintiff has discharged the evidential burden, it will treat the design as a valid unregistered Community design subject to the defendant's challenge (if any) to its validity. Where such a challenge is made (either by a plea of invalidity or counterclaim), the onus shifts to the defendant to establish that one or more of the grounds of invalidity is made out on the normal civil balance of probabilities. Where a defendant denies validity on the grounds that the design fails to meet the requirements for individual character, the burden of establishing that the design does not meet the requirements is on the defendant. If the defendant's plea of invalidity succeeds, the court ceases to treat the design as a valid unregistered Community design and no issue of infringement arises. If the defendant's challenge to validity fails, the court continues to treat the design as a valid unregistered Community design and moves to consider infringement. The burden of proving the infringement is on the plaintiff.

In the present case, the court found that Karen Millen had established that the designs were made available to the public within the European Union within the relevant timeframe. It also said that sufficient evidence had been adduced of what constitutes the individual character of the Community designs in question. The court therefore treated Karen Millen's designs as valid and moved to consider Dunnes's challenge. Dunnes alleged that the designs did not fulfil the requirements of Article 6 of the regulation for individual character - that is, they did not produce on an informed user an overall impression which differs from the overall impression produced on such users by any design made available to the public.

As regards the informed user, the court reached the following conclusions:

  • The informed user is a notional person;

  • He or she is "an end user of the product to which the design relates"; and

  • By end user, the court meant a person who uses the products for the purpose which they are intended to serve, as distinct from any intermediate use (eg, retail sale).

On the facts of this case, the court held that the informed user is a woman who purchases and wears knit tops and shirts. The informed user is aware of similar designs which form part of the relevant design corpus. In this case, the informed user will be a woman with a keen sense of fashion, who has a good knowledge of the designs of knit tops and shirts which have been made available to the public, but is not necessarily aware of every such design. She will be alert to design issues and better informed than the average consumer in trademark law. However, the extent to which an informed user should be considered as alert to design falls short of a specialist interest in design detail which might be expected from a designer.

As regards overall impression, the court held that in accordance with previous decisions, it is neither necessary nor relevant for the court to consider evidence of the overall impression produced on a witness, even if that witness has the characteristics of the relevant notional informed user. Rather, it is for the court to make its own assessment of the overall impression as compared with the earlier design relied upon. The court held that the comparison must be between the overall impression created by the whole challenged Community design and the overall impression created by one or more specified earlier designs made available to the public. The overall impression produced by the challenged Community design and relevant prior designs on the notional informed user must be assessed and determined by the court "donning the spectacles of the informed user".

In assessing the overall impression created by the designs, the court should have regard to the colour, texture and material of the products, among other things. On the facts before it, the court held that Dunnes had failed to establish as a matter of probability that any of the designs did not fulfil the requirements for individual character and rejected the challenge to the validity of Karen Millen's unregistered Community design in each of the garments. Therefore, the court continued to treat Karen Millen's unregistered designs as valid. As Dunnes's items were produced by copying Karen Millen's designs, the court found that they constituted infringement.

Patricia McGovern, DFMG Solicitors, Dublin

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