Australia: Unregistered Community Design Rights In The EU Available To Australian Designers

Last Updated: 8 September 2009
Article by Anthony B. Watson, Jonathan Feder and Jane Owen

Australian designers releasing garments in the EU have the benefit of an automatic unregistered Community Design Right that protects their garments against unauthorised copying for a period of three years from the date the garment is first made available to the public in the EU. Unregistered design rights are unique to the EU and are not available in Australia where garments must be registered pursuant to the Australian design registration system. A recent court proceeding brought in the UK by the famous designer Karen Millen is the first unregistered design infringement proceeding to be decided by an Irish Court.

The Regulations

The Community Designs Regulations (Council Regulation (EC) No 6/2002 of 12 December 2001) (Regulations) recognise two distinct types of design protection:

  1. formal registered Community Designs, in force since 1 April 2003; and
  2. automatic unregistered Community Designs, in force since 6 March 2002.

A Community Design Right, whether registered or unregistered, is valid throughout all member states of the EU. The term of protection for an unregistered Community Design is three years from the date on which the product is first made available to the public in the EU. In contrast, a registered Community right is protected for an initial period of five years from the date of filing and may be renewed thereafter for further five year periods to a maximum term of 25 years.

The unregistered Community Design Right is particularly advantageous for the fashion industry, as it provides short term protection for garments and fashion accessories without the need to seek design registrations for these products. Alternatively, if longer term protection is required for certain styles that are likely to be repeated in future collections, designers have the full advantage of the registered Community Design Right which provides greater legal certainty for the foreseeable market life of their garments.

The right to a Community Design is vested in the designer or her or his successor in title, unless the design is created by an employee in the course of her or his employment, in which case the right vests in the employer. As there are no nationality restrictions on who may own a Community Design, Australian designers releasing garments in any Member State of the EU have the benefit of the full protection of the Regulations.

Requirements For Community Designs protection

Under the Regulations, Community protection is afforded to designs that are new and which have "individual character". The requirements under both limbs are identical for registered and unregistered Community Design Rights, save for in the case of an unregistered Community Design, the relevant date in assessing novelty and individual character is the date on which the design was first made available to the public.

A Community Design is considered to be new if no identical design has been made available to the public. For unregistered Community Designs, this must be before the date on which the design in question has first been made available to the public. The Regulations deem designs to be identical if their features differ only in immaterial details.

A Community Design is considered to have individual character if the overall impression it produces on the informed user differs from the overall impression produced on that user by any design which has been made available to the public. Similarly, for unregistered Community Designs, this must be before the date on which the design in question has first been made available to the public. The Regulations provide that the degree of freedom of the designer in developing the design must be taken into consideration when assessing individual character.

Infringement Proceedings

A registered Community Design confers on its holder the exclusive right to use and prevent unauthorised third party use of the design. An unregistered Community Design affords the holder with the same protection, however, the contested use must result from the copying of the protected design. Accordingly, the Regulations deem that there will be no infringement of an unregistered design where the allegedly infringing product is the result of an independent work of creation by a designer who shows that she or he was not familiar with the design made available to the public by the holder. This differs from the rights conferred by the registered Community Design which may be enforced against a design of a third party that has been created independently and without reference to the product which is the subject of the registered design.

The Regulations stipulate a presumption of validity for Community Designs in infringement proceedings, however, in establishing that an unregistered Community Design Right exists, the holder of the design must produce evidence that the design has been made available to the public within the EU and further indicate what constitutes the individual character of her or his Community Design. The presumption of validity may be challenged by a defendant by way of plea or counterclaim for a declaration that the unregistered Community Design is invalid on the grounds that it is not new or has individual character or that the designer is not the holder of the registration.

Karen Millen Ltd v Dunnes Stores

Karen Millen Ltd v Dunnes Stores [2007] IEHC 449 was the first case to test the Regulation in Ireland, in which the Irish High Court upheld Karen Millen's claim to an unregistered Community Design Right in the designs of three garments: a black knit top, a blue striped shirt and a brown striped shirt (KM Garments). The KM Garments were designed in 2005 and released for sale in Ireland and the United Kingdom in December 2005. In November 2006, Karen Millen discovered that Dunnes Stores, a large Irish retail chain, were offering for sale three similar garments (DS Garments) and commenced proceedings in the Commercial List of the Irish High Court, claiming infringement of Karen Millen's unregistered Community Designs. Initially, Karen Millen had also alleged copyright infringement and passing off, however, these claims were not pursued at trial.

At the hearing, Dunnes Stores conceded that it had produced the DS Garments by copying the designs of the KM Garments, however it did not admit that the KM Garments were protected by an unregistered Community Design Right. Accordingly, the trial judge was left to decide the primary issue of whether Karen Millen had the benefit of an unregistered Community Design Right in each of the KM Garments.

The Court held that in an infringement proceeding, the plaintiff has the legal onus of establishing that the unregistered Community Design Right exists in the plaintiff's designs. In discharging her or his onus, the plaintiff must prove on the balance of probabilities that the design right vests in the plaintiff. The plaintiff must also prove that the design is an unregistered Community Design by showing that the design has been made available to the public within the EU, that the first date it was made available was within three years of the alleged infringement and show those elements of the design which the plaintiff contends to mean that the total design produces a different overall impression on an informed user.

The Court held that the KM Garments were protected as unregistered Community Designs and that Karen Millen had established that the KM Garments were designed by an employee. Similarly, the Court found that Karen Millen had established that the designs had been made available to the public within three years of the alleged infringement and that the designs had individual character which produced a different overall impression on an informed user in comparison to designs that had been previously made available. The informed user in this regard was a notional end user of the garments, being "a woman with a keen sense of fashion, a good knowledge of designs of women's tops and shirts previously made available to the public, alert to design and with a basic understanding of any functional or technical limitations on designs for women's tops and shirts."

In assessing the overall impression of the KM Garments on the informed user, the Court held that the overall impression produced by the KM Garments clearly differed from the Dolce & Gabbana and Paul Smith prior designs submitted by Dunnes Stores in an effort to invalidate the unregistered design rights claimed by Karen Millen.

The Court rejected Dunnes Stores' challenge to the validity of Karen Millen's unregistered Community Designs Right in all three designs and held that Karen Millen was entitled to orders restraining Dunnes Stores from selling or disposing of the DS Garments and for delivery up of the DS Garments in its possession to Karen Millen. In addition, the Court ordered an account of the profits earned by Dunnes Stores from the sales of the DS Garments.

This case highlights that it is possible for designers to protect their designs in the EU through their unregistered design rights. This is a further cause of action available to designers should they sell their products in the EU and should they find that their garments are copied by traders in the EU.

How Can We Assist?

Middletons can assist Australian designers in seeking and enforcing protection of their designs. In addition to assisting clients in registering their designs in Australia and New Zealand, Middletons can assist designers in filing design applications overseas. Middletons can also provide further advice to Australian designers on their unregistered design rights in the EU should they sell their garments and accessories into countries within the EU.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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