European Union: Unregistered Community Design Right: CJEU Provides Welcome Clarification For Designers

Last Updated: 4 July 2014
Article by Vicky Butterworth

Summary and Implications

In a long running dispute between Karen Millen, the well known British brand and retailer of women's clothing, and the Irish retailer Dunnes Stores, the Court of Justice of the European Union ('CJEU') has issued a decision1 which will assist in the protection of product designs in the EU, whether in the fashion industry or otherwise.

Unregistered Community design right is a particularly important intellectual property right in industries producing multiple designs for products which frequently have a short market life, such as seasonal fashion collections. This is because it provides protection for numerous qualifying designs throughout the EU for a relatively short period of 3 years without the formality and cost, albeit modest, of obtaining a registered design (which can last up to 25 years).

In order to qualify for protection, a Community design (whether registered or unregistered) must be new and have individual character. Essentially the design must create a different overall impression on the informed user of the design from any design which has previously been made available to the public.

In its decision the CJEU has given some welcome guidance on the requirements for assessing 'individual character' and the burden of defending the validity of an unregistered Community design right.

The CJEU decided that:

  1. When considering whether an unregistered Community design right has individual character the overall impression it produces must be different from one or more earlier designs taken individually and not from a combination of features taken in isolation and drawn from a number of earlier designs.
  2. In infringement proceedings, in order for a court to treat an unregistered Community design right as valid, the right holder need only indicate (not prove) what constitutes the individual character of that design.

It is now clear that a third party wishing to challenge the validity of an unregistered Community design right (typically the defendant to infringement proceedings) cannot "mosaic" features from a variety of previous designs in order to demonstrate that the design in question lacks individual character. This is particularly relevant for the fashion industry where certain features are often inspired by reviewing vintage designs and where the skill of the designer is using that inspiration to create a new look.

The decision is also useful to holders of registered Community designs on the issue of assessing individual character. This is because the regulation governing unregistered Community design right also covers registered Community designs and the two rights have many provisions of the regulation in common, including the key requirements for protection.

The Community designs regulation provides that in an action for infringement of an unregistered Community design right the courts should presume that the design is valid. The CJEU's judgment confirms that it is not necessary for a design holder to prove that the design has individual character in order to bring a claim for infringement. All that is necessary is to provide an indication of what, in the holder's view, are the elements of the design which give it its individual character. This does not stop a defendant from being able to contest the validity of the design by way of counterclaim (which will usually be the case), and to assert that the design does not have individual character, but the design holder is not obliged to prove their right up front.

On a practical note, right holders should ensure they have a clear record of all features of their design which they consider have individual character, together with the inspiration behind and creative process involved in the production of the design.

The Law

Article 4(1) of Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs (the 'Regulation') provides that a design is to be protected by a Community design to the extent that it is new and has individual character.

Article 5(1)(a) of the Regulation adds that an unregistered Community design right shall be considered to be new if no identical design has been made available to the public before the date on which the design for which protection is claimed has first been made available to the public.

Article 6(1)(a) provides that, in the case of unregistered Community design, a design shall be considered to have individual character if the overall impression it produces on the informed user differs from the overall impression produced on such a user by any design which has been made available to the public before the date on which the design for which protection is claimed has first been made available to the public. Article 6(2) adds that in assessing individual character, the degree of freedom of the designer in developing the design shall be taken into consideration.

Article 85(2) of the Regulation states that in infringement proceedings, the court shall treat the unregistered Community design right as valid if the right holder produces proof that the conditions laid down in Article 112 have been met, and also indicates what constitutes the individual character of the Community design. Article 85(2) adds that the defendant may contest its validity by way of a plea or counterclaim.

The Case in Detail

Karen Millen designed and placed on sale in Ireland a striped shirt and a black knitted top.

Samples of the garments were purchased from one of Karen Millen's Irish outlets by Dunnes Stores. Dunnes (which, amongst other things, sells women's clothing) subsequently had copies of the garments manufactured outside Ireland and put them on sale in its Irish stores.

Karen Millen successfully sued Dunnes for infringement of unregistered Community design right and Dunnes appealed to the Irish Supreme Court.

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

  1. the garments did not have individual character; and
  2. the Regulation required Karen Millen to prove, as a matter of fact, that the garments had individual character.

The Irish Supreme Court decided to stay the proceedings and refer the following two questions to the CJEU:

  1. When considering the individual character of a design, is the overall impression it produces on the informed user to be considered by reference to whether it differs from the overall impression produced on such a user by:

    1. any individual design which has previously been made available to the public; or
    2. any combination of known design features from more than one such earlier design?
  2. Is an unregistered Community design right to be treated as valid for the purposes of the Regulation where the right holder merely indicates what constitutes the individual character of the design or are they obliged to prove that the design has individual character?

The first question:

The CJEU commented that there is nothing in the wording of Article 6 of the Regulation to support the view that the overall impression must be produced by a combination of known design features from more than one earlier design. Reference to the overall impression produced on the informed user by 'any design' indicates that Article 6 must be interpreted as meaning that the assessment must be conducted in relation to one or more specific, individualised, defined and identified designs from among all the designs which have been made available to the public previously.

The CJEU noted that this interpretation is in keeping with the findings of previous case law, namely that where possible the informed user will make a direct comparison between the designs at issue because that type of comparison actually relates to the impression produced on that user by earlier individualised and defined designs, as opposed to an amalgam of specific features or parts of earlier designs.3

Accordingly the CJEU concluded that 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.

The second question:

Article 85 of the Regulation establishes a presumption of validity of unregistered Community designs. Dunnes argued that this presumption was, by its very nature, incompatible with the interpretation of Article 85(2). It said that validity needed to be proved in order to met the first condition in Article 85(2) i.e. demonstrating that the conditions of Article 11 had been met (see footnote 2).

The CJEU said that Dunnes' interpretation would have the effect of rendering meaningless the second condition in Article 85(2), namely, that the holder of a design must indicate what constitutes the individual character of that design. It added that if Article 85(2) was interpreted as meaning that an unregistered Community design right may be treated as valid only if its holder proves it is, would render the possibility for the defendant to contest the validity of that design largely meaningless.

The CJEU concluded that in order for a court to treat an unregistered Community design as valid, the right holder is not required to prove that it has individual character but need only indicate what constitutes the individual character of that design, that is to say, indicate what, in the holder's view, are the elements of the design concerned which give it its individual character.

This does not stop the defendant from being able to contest the validity of the design, but does mean that the right holder does not, up front, have the burden of proving that the design has individual character.

This provides clear guidance, which is binding on all courts in the EU, on the implementation of these elements of the Regulation.

Footnotes

1 Karen Millen Fashions Ltd v Dunnes Stores, Dunnes Stores (Limerick) Ltd, Case C-345/13, 19 June 2014

2 Article 11: "A design which meets the requirements under Section 1 [i.e. Articles 3 to 9] shall be protected by an unregistered Community design for a period of three years as from the date on which the design was first made available to the public within the Community".

3 The CJEU recognised, however, that a direct comparison might be impracticable or uncommon in the sector concerned, in particular because of specific circumstances or the characteristics of the items which the earlier mark and the design at issue represent.

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 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
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). 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 & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.

Disclaimer

Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd 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 or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.

Registration

Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.

Cookies

A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.

Links

This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.

Mail-A-Friend

If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.

Security

This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.