The European Court of Justice (ECJ) has clarified the method for assessing challenges to the validity of community design rights in Karen Millen Fashion’s seven year-long case against Irish chain store, Dunnes Stores.
For a design to be protected under the European Community regime, it must not previously have been made available to the public. In addition, it must have ‘individual character’ in the sense that it creates a different overall impression on users by comparison to other designs already on the market.
Karen Millen Fashions had designed a striped ladies’ shirt and top, which Dunnes Stores copied and sold in its Irish stores. Karen Millen therefore claimed its unregistered community design rights had been infringed. Despite admitting to having copied the garment however, Dunnes denied any infringement on the basis that:
a) Karen Millen’s design was just a combination of various features present in a range of designs already on the market, and therefore did not satisfy the ‘individual character’ test; and
b) Karen Millen was required - and had failed - to prove individual character in elements of the garments.
The ECJ rejected both of the above arguments. It confirmed that when considering the individual character of a design it can be compared only with any one specific pre-existing design at a time to question whether it creates a different overall impression on users. It is therefore wrong for infringers to question the originality of a design by ‘cherry-picking’ features from a range of pre-existing designs and comparing the hypothetical mismatched result to the Claimant’s design.
On the second argument, the Court explained that whilst an unregistered community design holder must be clear about what element(s) of its design it believes has individual character, it is not necessary to prove such individual character. The alleged infringer wishing to challenge the validity of the design on that basis can of course do so, but it is for them to produce the evidence to support such a challenge.
This decision will be welcomed by designers, applying a pragmatic approach to the tests applicable should they need to enforce rights connected with their creative labour.
It is nevertheless important for designers to ensure they keep proper audit trails of their design process. For example, by dating all design drawings and plans when created and being clear about what part(s) of their designs embody the fruits of their creative talents. Likewise, be aware that relying on unregistered design rights will provide a much shorter period of protection by comparison to those which are registered. This is particularly relevant for designs whose public appeal is likely to be long lasting.
Taylors’ Intellectual Property team, led by Tony Catterall, is recognised nationally and internationally for its expertise and experience in protecting and enforcing the rights of designers, particularly in the textiles, fashion and home furnishings sectors. It has won many notable and key cases in the High Court, Court of Appeal and Supreme Court against major corporates. Taylors is the only North West-based firm to have been appointed as a Legal Affiliate to the national organisation, Anti-Copying in Design (ACID).
If you have any queries, please do not hesitate to contact Tony Catterall, Head of our Intellectual Property team, on 0844 8000 263 or via email at firstname.lastname@example.org