Designs: Karen Millen Fashions v Dunnes Stores

The case arose as a result of a request for a preliminary ruling from the Irish Supreme Court. This follows an appeal by Dunnes Stores after Karen Millen had successfully sued the company in the Irish High Court alleging infringement of its unregistered Community Design rights. The case centred on the copying of two garments, namely, a striped shirt and a black knit top. Dunnes had admitted during the initial trial copying the garments; however, on appeal their defence was founded on two issues.

Firstly, Dunnes alleged that Karen Millen Fashions did not own the unregistered Community design rights because, they submitted, it had failed to prove the garments had 'individual character'. They alleged that in order for a design to have individual character, the overall impression that the design produces on the informed user needs to be different from one or more earlier designs taken individually or with a combination of features taken in isolation and drawn from a number of earlier designs. Dunnes Stores submitted that a combination of earlier known features was not able to support a claim for independent character.

The CJ rejected this claim. The court held that there was nothing in the wording of Article 6 of the Council Regulation (EC) on Community Designs (CDR) to support the view that various known features, when combined together, could not achieve the individual character necessary for the purposes of protection. Quite rightly, the court held that in order for a design to be considered to have individual character, the overall impression must be different from that produced, 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.

Accordingly, whilst some of the individual features of the Karen Millen Fashion designs may have appeared previously in products produced by third parties, it was still possible for a combination of the features to result in a protectable and new design. Any comparison that might take place would be with each of the earlier designs taken individually rather than a combination and selection of the defendant's choosing.

The second plank of Dunnes' defence argued that for Karen Millen Fashions to have a valid claim, it was required to prove that its design had individual character, ie, the onus lay with the claimant to prove this.

Again, the court rejected this and pointed out that under Article 85 of the CDR there is a presumption of validity in relation to Community designs (both registered and unregistered). The court also made specific reference to the recitals in the preamble to the CDR that underpin the idea of simplicity and 'expeditiousness' in terms of the procedures for securing protection. In rejecting the claim by Dunnes, the court confirmed that the holder of an unregistered Community design right is merely required to indicate what constitutes the individual character of the design in question. Specifically, the owner of such a right is not required to prove that the design concerned has individual character. With this the court confirmed it is sufficient for the design owner to identify the features of the design which give it individual character.

The Irish Supreme Court should shortly be issuing its decision in light of the preliminary ruling provided by the CJ. The court is to be commended in its clarity (not always the case with some of the trade mark related judgments issued).

This decision provides a salutary reminder that design rights, whether registered or unregistered, can be used effectively against third party infringers including well known retailers.

We are continuing to see clients taking an ever increasing interest in protecting their designs and this decision will be a welcome boost to those having to consider the enforcement of their rights. If you would like to discuss any aspects of design protection and enforcement, please do not hesitate to contact any member of our designs team.

Useful link

Karen Millen Fashions Ltd v Dunnes Stores, Dunnes Stores (Limerick) Ltd full decision: http://dycip.com/karenmillenvdunnes