Karen Millen Fashions Ltd v Dunnes Stores, Dunnes Stores (Limerick) Ltd, C-345/13, EU:C:2014:2013, Court of Justice of the European Union, 19 June 2014
Journal of Intellectual Property Law & Practice (2014) doi: 10.1093/jiplp/jpu153, first published online: September 9, 2014
The Court of Justice of the European Union (CJEU) has confirmed that, when assessing the individual character of a Community design, it is not legitimate to do so by reference to a combination of features taken from a number of earlier designs. The assessment must instead be made by reference to specific earlier designs taken individually. The CJEU has also confirmed that the holder of a Community design does not need to prove that its design has individual character but must merely indicate what constitutes the individual character of that design.
Article 4(1) of the Regulation provides that a design will be protected by a Community design to the extent that it is new and has individual character.
Article 6(1) provides that a design will have individual character:
[I]f 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:Article 11 provides that an unregistered design that meets the requirements in Section 1 (i.e. Articles 1-9) of the Regulation shall be protected by UCD for three years from the date on which the design was first made available to the public within the Community.
(a) in the case of an unregistered Community design, before the date on which the design for which protection is claimed has first been made available to the public … .
In relation to infringement proceedings, Article 85(2) states:
[T]he Community design court shall treat the Community design as valid if the right holder produces proof that the conditions laid down in Article 11 have been met and indicates what constitutes the individual character of his Community design … .Facts
In 2005 Karen Millen, a company, began marketing three women's fashion garments in Ireland: two striped shirts (one blue, one brown) and a black knit top. Dunnes Stores representatives bought samples of the garments and arranged for copies to be made on its behalf, which it put on sale in its Irish stores in late 2006. In January 2007, Karen Millen commenced proceedings in Ireland against Dunnes Stores for infringement of the UCD in its designs. Dunnes Stores accepted that it had copied the designs but disputed that the designs for the three garments were protected by UCD.
In particular, Dunnes Stores argued that:
* the garments did not have individual character as required by Article 6(1) and
* Karen Millen was required to prove, as a matter of fact, that the garments had individual character.
The High Court of Ireland decided in favour of Karen Millen. On appeal, the Irish Supreme Court referred two questions to the Court of Justice of the European Union (CJEU), summarized as follows:
When assessing the individual character of a design for UCD, 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:Analysis
* any individual design which has previously been made available to the public, or
* any combination of known design features from more than one such earlier design?
Is a Community design court obliged to treat a UCD as valid where the right holder merely indicates what constitutes the individual character of the design or is the right holder obliged to prove that the design has individual character?
The first question concerned the assessment of the overall impression that a design produces on the informed user compared to that produced by any earlier design which has been made available to the public. Dunnes Stores had relied upon a range of features taken from a number of earlier designs which it argued, taken in combination, meant that the Karen Millen designs lacked individual character.
The CJEU decided that the assessment of individual character should be made by reference to one or more specific earlier designs, taken individually. It rejected Dunnes Stores' argument that the court could take into account a combination of features drawn from a number of earlier designs.
Dunnes Stores relied upon recitals 14 and 19 to the Regulation, which use the expressions ‘the existing design corpus’ and ‘in comparison with other designs’, respectively. However, the CJEU noted, these expressions were not carried through to the articles of the Regulation and did not, in any event, support the view that it was legitimate to take a combination of features in isolation from a number of earlier designs. Dunnes Stores also referred to Article 25(1) of the Agreement on Trade-related Aspects of Intellectual Property Rights (‘TRIPS Agreement’) which provides that ‘… Members may provide that designs are not new or original if they do not significantly differ from known designs or combinations of known design features … ’. However, the CJEU noted that this was optional wording; Member States were not required to provide for novelty or originality of a design to be assessed in comparison with such a combination of features.
Proof of individual character
On the second question, the CJEU decided that a UCD holder does not have to prove that its design has individual character, but only has to indicate what constitutes the individual character of the design. The wording of Article 85(2) was, the CJEU said, unambiguous. A requirement of proof of individual character would be contrary to the presumption of validity; it would make nugatory the requirement in Article 85(2) that the design holder must indicate what constitutes the individual character of the design and the possibility for the defendant to challenge validity. It would also be contrary to the objective of simplicity and expeditiousness which underpinned the reasoning behind the UCD. Accordingly, the UCD holder was simply required to identify the features of the design which gave it individual character.
Recitals 16 and 25 to the Regulation provide the context for the introduction of UCD, specifically noting its value for those sectors which produce large numbers of designs which may only have a short market life (or indeed which may not actually be commercialized). For those industries—a major one being the fashion industry—the UCD is a valuable right in that it provides an appropriate level (and term) of protection without imposing registration formalities and attendant costs. That said, where appropriate, applying for registered protection through an RCD does have distinct advantages over relying upon UCD protection. As well as providing a longer term of protection (up to 25 years), the registered right can more easily be exploited and enforced (with UCD, there is the additional need to prove copying, over and above the requirement that the alleged infringement does not produce a different overall impression on the informed user). Further, from October 2014, some infringements of registered designs can be the subject of criminal prosecutions in the UK.
The CJEU's decision, while framed in the context of UCD, applies equally to the assessment of individual character of RCDs and harmonized designs under the Design Directive (98/71). It sets a high hurdle for a party wanting to challenge the individual character of a design. The burden of proof is on that party to show that the design does not have individual character, which it will have to prove by reference to specific, earlier designs taken individually, rather than seeking to combine a number of features from the ‘design corpus’ as a whole. This is a particularly important finding for the fashion industry—where it is common for designers to draw on design aspects from a range of previous collections—but also for other design-led industries.