Ireland: Unregistered Community Design Right Strengthened by Court of Justice Ruling in Karen Millen v Dunnes Stores

The Court of Justice of the European Union ("CJEU") handed down its decision on 19 June 2014 in C-345/13 - Karen Millen Fashions Ltd v Dunnes Stores. The CJEU decision has now clarified the scope of the battleground between designers on the one hand and those that challenge the validity of Community design rights on the other. The CJEU's decision has been eagerly awaited as part of long standing litigation before the Irish Courts between the international fashion house and one of Ireland's largest retailers over the last 7 years or so. The decision will provide useful guidance to the fashion industry going forward. The business impact of the decision is as follows:

  1. Fashion designers can have increased confidence in the protection afforded to them by the unregistered Community design right, which provides necessary and cost efficient IP protection for designs with limited shelf life and today's ruling has strengthened this protection.
  2. Designers need only indicate the features or elements that provide the design with individual character rather than actually prove the design has 'individual character' when claiming an unregistered Community design right.
  3. Those challenging the individual character of a design must do so based on one particular example of the prior design corpus rather than basing such a challenge on a mixture of features on different prior designs.
  4. Fashion retailers will have to exercise increased caution when producing similar designs for sale as the threshold for challenging the validity of unregistered design rights has been maintained at a high standard.

In this case Karen Millen claimed that it was the owner of unregistered Community design rights in two garments, a shirt and jumper. Karen Millen launched the garments in December 2005 in Ireland and Dunnes Stores sold similar garments as part of its Savida range in 2006. Dunnes Stores admitted to having copied the designs during the proceedings but challenged whether the Karen Millen designs were protected. The Irish Commercial Court, which handed down its decision in 2007, found in favour of Karen Millen. Dunnes Stores appealed the decision to the Irish Supreme Court, and in 2013, the Supreme Court referred a number of questions to the CJEU.

The Supreme Court asked the CJEU to rule on two aspects of how the 'individual character' of a design is to be assessed, which can be summarised as follows:

i. whether in order to assess the individual character of a design, the informed user must take into consideration only a specific prior design previously made available to the public or whether such an informed user can consider any combination of known design features from more than one such earlier design; and

ii. whether a Community Design Court is obliged to treat an unregistered Community design as valid, where the right holder merely indicates what constitutes the 'individual character' of the design or is the right holder obliged to go further and prove that the design has 'individual character'.

In relation to the first question, the CJEU, following the previous Opinion of Advocate General Wathelet, held that in order for a design to be regarded as having 'individual character', the overall impression which that design produces on the informed user must be different from that produced on such a user by one or more earlier designs taken individually only, rather than by a combination of features drawn from several designs previously made available to the public. In other words, it is not possible to "mosaic" the features of a number of earlier designs in attacking the validity of a Community design right for want of individual character.

In relation to the second question, the CJEU also held that in order for a Community design court to treat an unregistered Community design as valid the right holder need only prove when his or her design was first made available to the public and indicate the element or elements of his or her design which give it 'individual character'. To hold otherwise the CJEU considered would be contrary to the presumption of validity contained in the Community design Regulation.

In essence, 'individual character' will not be destroyed merely because particular individual design features of the garment appear on other existing designs and designers need only indicate, not prove, which features the 'individual character' applies to. This aspect of the CJEU ruling is certainly a win for fashion designers who can now be more confident that their designs will attract unregistered Community design protection. Conversely, the design parameters are tightened for retailers who now have less scope for successfully marketing similar designs at lower prices as the scope to challenge prior designs from fashion houses is more difficult.

The case will now be returned to the Irish Supreme Court where, with the assistance of today's ruling by the CJEU, the findings of the trial judge in respect of the invalidity attack by Dunnes Stores will be assessed. The Supreme Court has already earlier this year provided a ruling that as a matter of Irish law, the trial judge did not err in disregarding the evidence of the various witnesses for Dunnes Stores on the issues of novelty and individual character for the designs in issue.

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.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
 
In association with
Related Topics
 
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions