Good news for fashion designers

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Unregistered Community design right comes into existence automatically by the mere fact of making products incorporating the design in question available to the public in the European Union; there is no requirement for registration.

Unlike with registered Community design, there is no exclusive right conferred upon the holder, as it must first be shown that the design has been copied before an infringement can be proven. The term of protection runs for a period of three years from the date on which the design was first made available to the public in the EU. This compares unfavourably with the protection afforded by Community registered designs, which confer upon the holder an exclusive right to use the design and prevent third parties from doing so for 25 years, with no requirement to prove that the design has actually been copied. However, in industries where the design will have a short shelf-life, where the costs of registration outweigh the commercial benefits of doing so, unregistered Community design right may be very important. Probably the most obvious instance of such an industry is the fashion industry.

The nature of the protection afforded by Community unregistered design right should shortly become much clearer when the Court of Justice of the European Union (CJEU) delivers its ruling in a long-running dispute between Karen Millen and Irish retailer, Dunnes Stores. Karen Millen instituted infringement proceedings in Ireland in respect of a black knit jumper and a blue shirt and a brown shirt offered for sale by Dunnes Stores.

At trial, Dunnes Stores did not deny that it had copied Karen Millen’s designs. It argued in its defence that the Karen Millen designs lacked individual character – to benefit from unregistered Community design right, the design must be novel and have individual character – and that the burden of proof was on Karen Millen to show the existence of individual character. The Irish court referred two essential questions to the CJEU: (i) could the combination of individual design elements which in themselves were not distinctive be combined together to produce a design with individual character; and (ii) where did the onus of proof lie in proving a design had individual character.

The Advocate General has now delivered his Opinion on the two issues. An Advocate General’s Opinion is guidance for the CJEU. The CJEU is entitled not to follow an Advocate General’s Opinion although in practice it will usually do so. A favourable Advocate General’s Opinion is usually a good indicator of what to expect from the CJEU.

Accordingly, Karen Millen, rather than Dunnes Stores, can look forward to the CJEU ruling with confidence. The Advocate General opined that:

  • 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 as an amalgam of various features of earlier designs
  • in order for an unregistered Community design to be upheld as valid, the right holder need only prove when the design was first made available to the public and indicate the elements of the design which give it individual character.

The threshold of “indicating” the elements of the design which give it individual character is a decidedly modest one, leaving the onus on the defendant to show it does not have individual character.

The CJEU ruling will be very important for the fashion industry. New fashion designs are often based on an existing design which is then amalgamated with another existing design or designs to create a new design and indeed the industry would struggle to innovate if it could not do this. In the circumstances, it is perhaps unsurprising that the UK Government and the European Commission intervened on behalf of Karen Millen in the proceedings.

We will update you as soon as the CJEU delivers its ruling.