Karen Millen design case: Advocate General delivers Opinion
Karen Millen will welcome the Opinion of Advocate General Wathelet delivered last week concerning unregistered design rights. By Hilary Atherton
The dispute involves three of its garments which have been the subject of its long running legal battle with Dunnes Stores in Ireland.
The Advocate General indicated that questions referred to the CJEU by the Irish Supreme Court should be answered in Karen Millen's favour. The questions concern how the individual character of a design which is claimed to be entitled to be protected as an unregistered Community Design is to be assessed.
Karen Millen is a UK registered company which produces and sells women's clothing in a number of retail outlets and in its own stores in Ireland. Dunnes Stores also has a retail business in women's clothing in Ireland. Karen Millen brought proceedings against Dunnes Stores in Ireland in 2007, claiming that a black knit top, a blue shirt and a brown shirt offered for sale by Dunnes Stores under its 'Savida' label in 2006 infringed its unregistered Community designs in garments which it had offered for sale in Ireland in 2005. The garments in issue can be viewed here.
At the trial before the High Court of Ireland, Dunnes Stores did not deny that its top and shirts had been produced by copying Karen Millen's designs. However, it denied that Karen Millen was entitled to unregistered Community designs in its top and shirts on the grounds that: (i) The Karen Millen garments did not have individual character, and (ii) the Design Regulation required Karen Millen to prove, as a matter of fact, that the garments had individual character. The High Court of Ireland refused to make a reference to the CJEU and found that Dunnes Stores had failed to establish that Karen Millen's top and shirts did not fulfil the individual character requirement in Article 6. Dunnes Stores appealed to the Irish Supreme Court which referred the questions below to the CJEU.
Questions referred to the CJEU
The questions referred to the CJEU by the Irish Supreme Court were as follows:
•In consideration of the individual character of a design which is claimed to be entitled to be protected as an unregistered Community design for the purposes of Council Regulation (EC) No 6/2002 of 12th December, 2001 on Community designs (the "Design Regulation"), is the overall impression it produces on the informed user, within the meaning of Article 6 of that Regulation, to be considered by reference to whether it differs from the overall impression produced on such a user by
(a) any individual design which has previously been made available to the public, or
(b) any combination of known design features from more than one such earlier design?
•Is a Community design court obliged to treat an unregistered Community design as valid for the purposes of Article 85(2) of the Design Regulation 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 in accordance with Article 6 of that Regulation?
Summary of the Advocate General's Opinion
The Advocate General's opinion was as follows:
•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 and viewed as a whole, not by an amalgam of various features of earlier designs.
•In order for a Community design court to treat an unregistered Community design as valid, for the purposes of Article 85(2) of the Design Regulation, the right holder need only prove when his design was first made available to the public and indicate the element or elements of his design which give it individual character.
The Advocate General's Opinion is therefore in Karen Millen's favour in respect of both questions referred.
The First Question
Dunnes Stores submitted that Article 6 of the Design Regulation was to be interpreted as meaning that a design will not have individual character if certain features of earlier designs (such as a stripe or stitch or a combination of colours) taken together create an overall impression that is not different from that created by the design in issue. Karen Millen (and the UK Government and the European Commission) submitted that the correct interpretation of Article 6 was that a design will have individual character if the overall impression which it produces on the informed user is different from the overall impression produced by earlier designs taken separately.
The Advocate General's Opinion was that Karen Millen's interpretation of Article 6 was correct. His reasons for this conclusion were that although recital 14 to the Design Regulation refers to the 'existing design corpus', that concept is not then used in the provision of the Design Regulation itself, and there is nothing else in the provisions to suggest the notion of a comparison between the design at issue and an assortment of specific or isolated features from a number of other designs. The notion of a comparison with a "body" of designs seemed to the Advocate General to imply a comparison with precisely designed objects. In addition, although CJEU case law had established that the Design Regulation did not limit the assessment of potential designs to a direct comparison between designs, and an indirect comparison could be based on a recollection of given designs, it was clear that this did not mean that the comparison could be based on an amalgam of various features from several different designs. This was not least because, when a direct comparison could be carried out, it would be a comparison of two designs each viewed as a whole.
The Second Question
Article 85(2) of the Design Regulation requires Community design courts to treat an unregistered Community design as valid in an infringement action provided the right holder produces proof that the conditions laid down in Article 11 have been met (i.e. that the design was first made available to the public within the Community within the last three years), and indicates what constitutes the individual character of the design.
Dunnes Stores submitted that the correct interpretation of Article 85(2) was that Karen Millen was required to prove that the designs in issue had individual character in accordance with Article 6 (i.e. that they created an overall impression on the informed user different from that produced by any design previously made available to the public). Karen Millen (and the UK Government and the European Commission) submitted that it merely needed to indicate what constituted the individual character of the design.
The Advocate General's view was that Dunnes Stores' interpretation of Article 85(2) was contrary to the very objective of the provision. Firstly, if a right holder was required to show that its design was new and individual in character, the second part of Article 85(2) ("and indicates what constitutes the individual character of the design") would be rendered redundant. Furthermore, as Article 11 requires that all the requirements of Section 1 are met (including the visibility of features, the non-functional nature of the design, and the design's consistency with public policy and morality), the right holder would have to show that that was the case, which would be incompatible with the very notion of presumption. Finally, Dunnes' Stores interpretation would render the option available to a defendant under Article 85(2) of contesting validity by way of a counterclaim largely meaningless.
The Advocate General's Opinion will be welcomed by Karen Millen and other high end fashion designers and retailers who rely on unregistered design rights in their designs. Unregistered designs are an important IP right for the fashion industry, given that the lives of designs are often of short duration (and may not justify the cost of design registrations). The Advocate General's Opinion, if followed by the CJEU, will bolster the protection afforded to designs which are new and have individual character, and require lower-end, 'fast fashion' retailers to take even greater care when producing similar designs for sale at a lower price point, given the high threshold for challenging unregistered design rights.
Hilary Atherton, Associate UK, Bird & Bird
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