The dispute between the high-end, high-street retailer and the Irish department store, Dunnes, centres on the design of a black jumper and a striped shirt.
Dunnes admitted that they purchased the Karen Millen garments and instructed their own design team to create lookalike garments, which were later sold in store.
Karen Millen claimed that Dunnes had infringed their unregistered Community design rights, which protected the aesthetic appearance of the garments. Karen Millen were successful in the first instance, but Dunnes appealed to the Irish Supreme Court.
In their appeal, Dunnes argued that Karen Millen's designs were invalid. In particular, they claimed that Karen Millen's designs lacked "individual character" in that the features of the garments, such as the stripes, were already known in the field and were simply taken from other earlier designs.
The Irish Supreme Court sought guidance from the CJEU on the meaning of the term "individual character". In particular, the CJEU was asked to clarify whether a design could have "individual character" where the protected features are known separately.
The CJEU was also asked to confirm whether Karen Millen would have to positively prove that their designs had "individual character" or simply indicate the elements of the design which they feel have individual character.
Its judgment states:
"In order for a design to be considered to have individual character, the overall impression which that design produces on the informed user must be different from that produced on such a user, 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."
"The right holder of that design is not required to prove that it has individual character...but need only indicate...what, in his view, are the element or elements of the design concerned which give it individual character".
Dunnes' defence hinged on the allegation that Karen Millen’s designs were invalid because they consisted of a combination of features from its earlier designs and therefore lacked individual character.
The CJEU disagreed and its judgment can be interpreted to mean that in order to challenge Karen Millen’s unregistered design rights, Dunnes would have to prove that the design created the same overall impression to a single earlier design and not with respect to a combination of features from different previous garments.
The Irish Supreme Court will now apply this guidance to the facts at hand and will shortly hand down a decision. It is expected that Karen Millen will succeed. This ruling will no doubt be a great relief for fashion designers who often rely on unregistered design rights, which give them an automatic right to three years’ protection against copying under EU law.
The CJEU's decision means that from now on, they simply have to point out what they believe are the individual characteristics of their design, rather than having to prove that it meets the legal standard. It will be up to the potential infringer to prove the lack of individual character.
This should serve as a warning to any copycat retailers that they can no longer get away with copying the designs of others.
Even if a particular feature of the design has been seen before on a different garment, retailers should be aware that unregistered design rights may still remain in force in the garment they are looking to copy.
Richard Worthington, head of Withers & Rogers' Designs Group